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Miles Thatsme
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If the above assessment is right, it seems to me the more difficult question is this one. Assume at Step 4 that D3 has been enjoined from manufacturing. After Step 5, does D3 have a cause of action against Patentee for the now-determined-wrongful injunction?
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Maybe this is illustrative of my ignorance of US law, but isn't a declaratory judgment of *in*validity an in rem determination? It is in Canada and the UK (and, I would guess, Australia, NZ, etc.). If that is the case, there is no issue of 'preclusion'. The patent has ceased to exist against the world. The converse does not apply, as other posters have noted. A failed invalidity attack only precludes the same party from litigating that issue. Although this might be argued to simply be a matter of failed "burden of proof", the substantive policy reason is that invalid patents are a public mischief.
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Your readers might be curious about Canadian treatment of these issues (although I find the analysis rather unsatisfying): http://www.canlii.org/en/ca/scc/doc/2004/2004scc34/2004scc34.html The Canadian Patent Act was originally modeled on the American, although it's seen some departures. Canadian law on IP exhaustion is extremely underdeveloped (there is simply a suggestion that it may exist: http://www.canlii.org/en/ca/scc/doc/2007/2007scc37/2007scc37.html)
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Your argument is profoundly literal, so my initial reply would be that, no, your Congress did not provide, in Art. 282(2), "under the headings 'Conditions of Patentability'", as it might have. It instead referred to the entire part, and to anything that might be considered "conditions of patentability". I am not suggesting that "part II" means less or more than "part II"--you are suggesting that those words mean less, and in particular, "only two provisions of part II". To get there, you need to establish that *only* 102 and 103 answer to the name "conditions of patentability". How would you describe the content of 101? Indeed, if we are focused on headings, how would you describe the heading? It either means, "Inventions [*are*] Patentable" (in which case, we must search for a definition of "invention", whose parameters describe the conditions), or it means "[Conditions under which] Inventions Patentable" or "[Kinds of] Inventions Patentable". I understand your argument--ignore any context, ignore the dictionary definition of "condition", and focus exclusively on the headings used. I don't think it's fruitful to argue about "burden of proof"--but I would say, given the acknowledged novelty of your position and its extraordinary consequences, you may be the one "fighting uphill". My third point was that, even if one accepted that the exclusive reference was to 102 and 103, those provisions refer to "patents" and "inventions". If you do not even have a "patent" or an "invention" (100, 101), it is an even more radical defect, and one cannot possibly meet the "conditions of patentability" described (102, 103). One could make the same argument that the reference to a "patent" in 282 requires reference to the same definitions (without which even the presumption of validity would not apply). Absurd consequences could follow from any other interpretation: could I assert a foreign "patent" with no available defence? Could I assert that a handwritten document bearing the words "patent" entitled me to rights without a defence? Completely acontextual interpretation in unlikely to lead anywhere...
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I think you have a few problems with that analysis. 1) It relies exclusively upon the language of the headings of 102 and 103. Although you contend that these are, in fact, "conditions" of patentability, it seems to me incredibly hard to argue that the mandatory criteria for a "patent" or an "invention" are not such substantive "conditions". 2) Your interpretation would be more consistent with a 282(2) reference to 102 and 103, rather than "part II". 3) The provisions 100-103 are not hermetically-sealed. Would you contend that we should overlook the definitional provisions in 100, in examining a 102-103 argument? If not, I can't see license for overlooking that definitional narrowing in 101.
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I'm not suggesting the hammer was the pinnacle of innovation. But calling thinking antiquated doesn't advance the discussion. Your cavemen had painting, linguistic abstraction and music 40,000 years ago. It's not like it has remained incomprehensible or has not been assigned any social or economic value. The issue is whether like abstractions should receive the *same* protection. There is a linguistic, metaphysical and ontological difference between denotation and the denoted.
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Indeed, I'm not sure why I post on this blog. It seems to attract a great deal of imperious and socially inept people, who believe an engineering degree has bestowed them with great philosophical acumen. They don't attempt persuasion but just assert the ignorance of their (unknown) audience. Unsurprisingly, it seems to be the same people who are terribly dissatisfied that they failed to persuade the public of their program for legal change. Without getting into philosophical debates about wave-particle duality, my point was pretty simple. A line of code is not a hammer. Show me a software program that can put a nail in my wall without any "hardware" and I will grant your point.
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I'm afraid the debate can't be simply reduced to this skewed question: "Is an invention that is patentable in hardware, equally patentable if implemented in software?" One problem is that it uses an undefined (and likely bizarre or shifting) notion of "implementation". Software *cannot* produce physical effects like hardware or in the absence of hardware. Likewise, it requires bending our notions of the physical activities of "make, use and sell" over which exclusive rights are provided. Even accepting the formulation of the question, it fails to resolve the issue of competing regimes for software (which Goetz has attempted to address elsewhere, but this framing does not respond to). The fascinating--but likely fallacious--aspect of Goetz' post is the notion that *the patent itself* can be analogized to software, therefore software *is* invention. I think the premise to that argument is probably correct/fair. But the conclusion doesn't follow. I think it is probably not simply the activity of abstracting from some (physical/empirical) discovery alone, or *articulating it* that constitutes the "invention". If that were the case, the inventors for every patent would be the patent agents. While that may be a very appealing proposition for readers of this blog, it doesn't seem tenable.
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H_itler video, no. Bandwidth is terrible. "...apparently disclaimed". The *step*. Not the claim containing it (amongst others). "...up to now, that was not a 101 question". I think patent lawyers have a tendency to attempt to constrain categories of legal requirements to the extent they evacuate them of meaning and divorce them from their context. Sach's post deploys the very language of "discovery" and "invention". As to your last point, the idea of my initial post was obviously not to give currency to the published opinion of SCOTUS. I repeated its further arguments in response to a Reply to ensure we were still talking about Sach's point... about which you evidently have no opinion.
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If you're differing with the SCOTUS interpretation, fine, if you're saying I'm misstating it and you are correctly representing it, you're incorrect. The "administering" step of the test wasn't inventive and apparently disclaimed (see 9, at "First..."). The "wherein" step does not require any particular treatment (6, end of page). The "determining" step, likewise, did not depend on any particular process, inventive or otherwise (see 10, at "Third..."). The combination added nothing (10 at "Fourth...").
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This is a puzzling rejoinder. In essence, it appears to say, "let us take the debate from the legal domain with its recognized jargon ("laws of nature", "abstract idea") to a scientific or epistemological one, where I can assert imprecision or confusion amongst the concepts that I employ". Okay, in our post-Newtonian paradigm, it's inapt to speak of anything being "invariant", "immutable" or even a "law". So what? Does that mean that the function of legal exclusion, "laws of nature" is now just outdated and should be abolished? I'm not sure it means that at all. Indeed, employing the same kind of logic, one could develop a radically anarchist proposition that law itself makes no sense, with no firm referents. The actual insight here seems to restate the problem: "The prohibition of patent claims in this regard is for claims on the phenomenon itself, not on the specific application of a phenomenon." The Court was precisely concerned with what distinguished the "law of nature" from its "application". The post doesn't assist in drawing that distinction. Indeed, it elides it, by, in one paragraph asserting that one can claim means of "harnessing" a natural phenomenon, but in the next speaking to "discovery" of empirical scientific facts. SCOTUS noted that the Prometheus patent was not limited to employing a particular medical treatment--in essence, it said, if you employ known methods and something occurs *by itself* (not necessarily triggering any further human action)--you are infringing. I think fertile ground for the laws of nature/application analysis looking at, not the "discovery" aspect, but the "restraint" aspect (i.e. is that which you seek to claim something in respect of which human action to make, use, sell can actually be constrained...)
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Mar 26, 2012