Sunday, April 26, 2020

The CAFC does fishing and 101 in In re Rudy

Of note in In re Rudy, decided adversely to patent applicant, appellant Rudy:

Mr. Rudy argues that the Office Guidance “simplistically represent[s] patent-eligible subject matter law,” and
is used by the Patent Office as a “shortcut to ease Mayo/Alice test application, with no force or effect of law.” Appellant’s Arg. 33; Reply Br. 7–8. We agree with Mr. Rudy that
the Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our
patent eligibility analysis.


We are not, however, bound by the Office Guidance,
which cannot modify or supplant the Supreme Court’s law
regarding patent eligibility, or our interpretation and application thereof.


To the extent the Office Guidance contradicts or does not fully accord with our
caselaw, it is our caselaw, and the Supreme Court precedent it is based upon,
that must control. See id. at 1021
(holding claims ineligible, despite Office Guidance suggesting otherwise,
where statements and examples in the
Guidance were inconsistent with Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)).

But Appellant Rudy loses:

Turning to Mr. Rudy’s case, we conclude that although
a portion of the Board’s analysis is framed as a recitation
of the Office Guidance, in this particular case the Board’s
reasoning and conclusion are nevertheless fully in accord
with the relevant caselaw.

As to claim preambles:

We are not persuaded by Mr. Rudy’s arguments otherwise. Mr. Rudy
contends that claim 34’s preamble, “a
method for fishing,” is a substantive claim limitation such
that each claim requires actually attempting to catch a fish
by placing the selected fishing hook in the water. Appellant’s Arg. 8–9.
Even if that were true, which we need not
decide, such an “additional limitation” would not alter our
conclusion because the “character of claim [34], as a whole,
remains directed to [an] abstract idea.” Chargepoint, Inc.
v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019).

Of note:

While the machine-or-transformation test remains “a useful and important clue” for determining eligibility under
§ 101, Bilski v. Kappos, 561 U.S. 593, 604 (2010), we need
not decide in this case whether the transformation from
free fish to hooked fish is the type of transformation discussed in Bilski and its predecessor cases. As Mr. Rudy
explains elsewhere in his brief, even if claim 34 was read
to require the act of fishing, “landing a fish is never a sure
thing. Many an angler has gone fishing and returned
empty handed.” Appellant’s Arg. at 18. Claim 34 therefore
does not actually recite or require the purported transformation that Mr. Rudy relies upon.

Opinion by CJ Prost


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