The Federal Circuit affirmed the invalidity of the claims at issue in MySpace, Inc. v. GraphOn Corp. The claims at issue in the case are directed to methods and apparatus that allow a user to create, modify, and search for a database record over a computer network. The district court granted motions for summary judgment that all of the claims were invalid based on prior art under §§ 102 and 103 of the Patent Act. The Federal Circuit affirmed. End of case, right? Not quite.
Despite the issue not being raised by any party to the litigation, nor being addressed by the district court, Senior Judge Robert Mayer filed a 13 page dissent that the claims were invalid as not being directed to patentable subject matter under § 101. He argued that subject matter eligibility is an “antecedent question” that must be addressed before the court can consider whether the claims are invalid under §§ 102 or 103.
In response, in the opinion of the court, Senior Judge Plager spends 8 pages arguing against Judge Mayer’s view. He doesn’t address the § 101 question on the merits. Instead, he argues that principles of judicial efficiency caution against addressing patent eligibility issues when not raised by the parties and when cases can be more easily decided, as in this case, by other sections of the Patent Act.
He goes on to suggest the complexity of § 101 jurisprudence, comparing it to the activity of oenologists trying to describe a new wine. They have numerous adjectives to use, but choosing the correct one is very difficult and subjective. So too with the current state of § 101 law. Many courts have written many pages on the subject, but they seem no closer to a resolution of the issue now than at the beginning.
When it comes to explaining what is to be understood by “abstract ideas” in terms that are something less than abstract, courts have been less successful.
Judge Plager advocates § 101 being a “coarse filter” such that if it is very clear that the claim is abstract. This would be a rather unusual and infrequent circumstance.
If instead, as in this case, the issues under §§ 102 and 103 are clear, there is no need to wade into the morass of § 101 law.