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Resolving Patent Eligibility and Indefiniteness in Proper Context: Applying Alice and Aristocrat
by Raymond A. Mercado
20 Va. J.L. & Tech. 240 (2016)   View PDF

In the wake of the Supreme Court’s revolution in § 101 jurisprudence, district courts have begun resolving questions of patent eligibility at an early stage in patent litigation, without evidence or formal claim construction. This chaotic new trend represents a departure from the test ... [show]
In the wake of the Supreme Court’s revolution in § 101 jurisprudence, district courts have begun resolving questions of patent eligibility at an early stage in patent litigation, without evidence or formal claim construction. This chaotic new trend represents a departure from the test set forth in Mayo/Alice, which requires courts to determine whether a patent teaches an “inventive concept” or merely recites “conventional” structure—a determination that overlaps with the question of novelty often requires the resolution of significant factual issues. Courts have made a similar departure in the law of indefiniteness, unmooring the analysis from the perspective of the skilled artisan. This article contends that both eligibility and indefiniteness must be decided in context, as they long have been. Context demands that courts adopt the perspective of the skilled artisan, often taking evidence in the form of expert testimony. Particularly with respect to eligibility, it requires that courts assess the claimed invention as part of the field within which it arose. Thus, reading the prosecution history and the prior art will often be necessary. The current tendency among judges to decide these issues “in a vacuum”—absent prior art evidence and without the understanding of the skilled artisan—is rooted in a fear of overly preemptive patents and broad functional claiming. While these concerns are not without merit, current trends have gone much too far, and patents are often being held invalid on scant evidence. To restore balance in these inquiries, this article argues that courts must return to context-based decision-making. This Article illustrates the conflicts within the Federal Circuit’s indefiniteness doctrine that wrongly preclude the use of expert testimony and the need to be resolved en banc. It also argues that, although the Mayo/Alice framework clearly indicates that eligibility doctrine rests on crucial questions of fact— questions usually inappropriate at the motion to dismiss stage—further procedural guidance is necessary to clarify how courts should decide eligibility properly. Judicial intervention comparable to Markman, which created so-called Markman hearings on claim construction and began a revolution in patent procedure, may be necessary in the eligibility context to clarify how (and when) courts are to decide eligibility and what fact issues are relevant. In the absence of such guidance, it may be necessary for Congress to amend §§ 101 and 112 to clarify the contextual nature of these inquiries. [hide]


The Co-Evolution of Autonomous Machines and Legal Responsibility
by Mark A. Chinen
20 Va. J.L. & Tech. 338 (2016)   View PDF

This Article sets out a possible trajectory for the co- evolution of legal responsibility and autonomous machines. Commentators have responded to the problem of legal responsibility for harms caused by such machines with already- existing legal doctrines related to defective products, agency law, and ... [show]
This Article sets out a possible trajectory for the co- evolution of legal responsibility and autonomous machines. Commentators have responded to the problem of legal responsibility for harms caused by such machines with already- existing legal doctrines related to defective products, agency law, and international humanitarian law, among others. There is a debate about the extent to which those doctrines in their current forms can address adequately the situations that will arise when autonomous machines become more prevalent. To the extent they do not, it is because of the law’s general discomfort with associative responsibility, a discomfort shared and informed by most of the literature on ethics. The ethical literature most relevant to the problems of associative responsibility provides some guidance on the issue but no completely satisfactory answers. In turn, the concern that there will be gaps in responsibility for harms caused by machines leads to two interweaving lines of development. The first is to refine the concept of responsibility as a way to lessen that gap. The second is to reduce harm by designing autonomous machines with prosocial behaviors. If that second effort is successful, that very success, together with calls to grant legal personhood to machines for legal and pragmatic reasons and the human tendency to anthropomorphize, will strengthen what are now nascent calls to treat such machines as moral agents. This trajectory, however, must be placed in the context of society’s current attitudes about how far responsibility in general should extend. [hide]




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