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Fishing for a Patent: The One that Got Away

Christopher John Rudy from Port Huron, Michigan, likes to hunt and fish, and as a patent attorney, he plays the patent system with the same sense of adventure. He has tested the system a number of times with offbeat hunting and fishing patent applications, pursuing them for decades, and not without success. Unfortunately he failed to land the federal circuit court last month, but his Hemingway-esque story deserves to be told. Rudy, No. 19-2301 (Fed. Cir. 2020).

Mr. Rudy became a patent attorney in the 1980s and filed his ’360 patent application in 1989, a time when “anything under the sun that is made by man” was patentable. Diamond v. Chakrabarty, 447 US 303 (1980). The ‘360 application covered a method of selecting a fishing hook color based on observed and measured water clarity with reference to a comparison chart. During the next 24 years, Mr. Rudy unsuccessfully battled with the U.S. Patent Office and the judiciary, enduring four patent appeals and an earlier visit to the federal circuit, which affirmed the obviousness of all his claims. Nevertheless, the U.S. Patent Office also rejected his hook-selection claims under 101 as being a non-patentable abstract idea, and, with only pride at stake, Mr. Rudy appealed.

Mr. Rudy’s arguments were reminiscent of a bygone Chakrabarty era, reminding the court that the U.S. Patent Office used to issue patents similar to his, and that under the “machine-or-transformation test,” his claims transform a “freely swimming fish to hooked and landed fish.” The federal circuit reviewed de novo, acknowledging that the machine-or-transformation test remains “a useful and important clue” for determining eligibility under §101 (citing Bilski v. Kappos, 561 U.S. 593, 604 [2010]). However, the court pointed out that “many an angler has gone fishing and returned empty handed.” Going on to apply the infamous two-step analysis of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the panel judges found the claim as being directed to the abstract idea of “selecting a fishing hook based on observed water conditions” and deemed that nothing transforms the claim into a patent eligible application of that abstract idea. In patents, as in fishing, many a practitioner has fought §101 and returned empty-handed.

Royal W. Craig
410-576-4109 • rcraig@gfrlaw.com