how to improve 101 analyses

One troubling side-effect of this case is that Accenture’s decision to limit its appeal to its most defensible claims (the system claims) seems to have come at a high price.  Accenture’s silence about its ‘284 method claims was deemed by the majority to be a sort of admission that fueled the system claim analysis.  (The panel was split on this issue as well.)  Anyone who has done appellate work knows that pages and time are limited and precious commodities that cannot be wasted.  An entire case must be distilled into minutes at oral argument.  This decision may make future appeal briefs more verbose and lengthy to preserve a patent owner’s rights and avoid the same problem in the future.

 

A problem in this case is that certain claim limitations were discounted for purposes of the § 101 analysis.  One way to avoid inconsistent patent-eligibility rulings would be to require that any party arguing § 101 invalidity demonstrate why claim language ignored for purposes of a patent-eligibility analysis would not need to be proved to show infringement of the claim.  After all, if a claim is so abstract as to be ineligible for patenting, there should not be tangible limitations that were ignored for the patent eligibility test, yet would still have to be proven for purposes of infringement.

 

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