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John Kong

Mr. Kong is a partner with Westerman, Hattori, Daniels & Adrian, LLP (WHDA) and can be reached at jkong@whda.com. The views expressed in this paper are personal to the author. They do not represent the views of WHDA, its employees, or its clients.

Recent Articles by John Kong

Surviving §101 Step 2: Is there ‘Significantly More’?

Earlier this year the Supreme Court issued a ruling in Alice Corp. v CLS Bank Int’l, which applied the Mayo 2-part test to computer-implemented subject matter.[2] The 2-part test asks: (1) whether the claims at issue are directed to patent-ineligible concepts; and (2) if yes, is there something “significantly more” in the claim to ensure that the claim is not…

Surviving 101 Challenges After Alice Gone Wild

The judge made exception to §101 for laws of nature, natural phenomena, and abstract ideas exists because a patent on these would impede innovation more than promote it, contrary to the primary objective of patent law. As the Supreme Court emphasized, we must distinguish between claims to the building blocks of human ingenuity versus those that integrate the building blocks into something more. The former would risk pre-empting or disproportionately tying up the use of the underlying ideas – to the detriment of progress in the useful arts. Basically, the purpose of the Mayo test is to ensure that patent law not inhibit further discovery by preempting or improperly tying up the future use of building blocks of human ingenuity.

The Alice in Wonderland En Banc Decision by the Federal Circuit in CLS Bank v. Alice Corp

All the Judges rely on the same Supreme Court precedents in Gottschalk v Benson, Parker v. Flook, Diamond v. Diehr, Bilski v. Kappos, and Mayo v. Prometheus. All the Judges recognize the same judicial exception to statutory subject matter under §101 for laws of nature, natural phenomena, and abstract ideas. All the Judges recognize that a claim must include “meaningful limitations” that go beyond an abstract idea. Hollow field-of-use limitations and insignificant pre or post-solution activity don’t count. However, this is where their similarities end.