Pulling The Rug Out

We’re patently fascinated by Patently–O’s recent debate as to whether subject matter eligibility under Section 101 of the Patent Act (i.e. whether the subject matter of a proposed invention is even susceptible to patent protection or not) is a proper defense in patent litigation, since the Patent Act seems to omit it from the list of validity defenses in Section 282.

In other words, while the patent asserted against you may improperly attempt to claim a monopoly on the sun, moon & stars (phenomena of nature being one example of a non–patentable subject), tough break, Mr. Litigant, as the PTO’s oversight is not an available defense in your lawsuit.

This might prove somewhat embarrassing to the Supreme Court—which has recently considered two high–profile cases (Bilski and Prometheus) on Section 101, as well as the Federal Circuit, which is heating up for a donnybrook on the same topic. However, there are signs that this academic debate is becoming not–so–academic. In RMail v. Amazon.com and PayPal, pending (where else) in the Eastern District of Texas, RMail’s opposition to a motion for partial summary judgment on invalidity based on Section 101 made use of an argument that “Congress Did Not Permit Section 101 To Supply A Litigation Defense.”

Read it yourself here.