Alan D. Lourie
How Judge Lourie rules, drawn from 38 signed orders. Every observation links to the order it came from.
How Judge Lourie decides
Patterns drawn from this judge's own signed orders. Every observation links to the order it came from.
What persuades
In science-heavy patent cases he treats the specification as the measure of what an inventor actually possessed: a patent that claims a broad genus of compounds but discloses only a fraction of it, without teaching how to identify the rest, fails written description and enablement, no matter how valuable the invention proved to be. He holds the disclosure to the full scope of the claim.
“Because we conclude that the district court erred in failing to grant JMOL for lack of written description and enablement, we reverse.”
On patent-eligibility he reads claims for what they are directed to at their core: a claim that harnesses a natural phenomenon, such as the correlation between a bodily signal and a medical condition, using only conventional, well-understood techniques is ineligible, because detecting a natural fact with routine methods adds no inventive concept that transforms the discovery into a patentable application.
“Because the asserted claims in the ’652, ’497, and ’607 patents are directed to a natural law together with conventional steps to detect or quantify the manifestation of that law, they are ineligible under § 101.”
For an asserted patent to obtain an earlier prior-art date under the America Invents Act, he treats statutory entitlement to priority as substantive: the earlier application must provide written-description support, and a tribunal cannot replace that requirement with a merely administrative priority check.
“the statutory text expressly conditions entitlement to priority on satisfaction of § 112’s written description requirement.”
Procedural preferences
He insists that a party actually make its argument, on the page, rather than gesture at a mountain of exhibits: burying a prior-conception or reduction-to-practice theory in declarations and incorporating them by reference into the briefs, without meaningful explanation, forfeits the point: the tribunal is not obliged to mine the record to build a party's case for it.
“For the reasons provided below, we affirm.”
In fee-shifting and mandamus disputes he reads 'prevailing party' strictly: a claimant who obtains only a remand for further proceedings, or whose petition is dismissed as moot after the agency voluntarily grants the relief sought, is not a prevailing party, because there is no court-ordered, enforceable change in the parties' legal relationship.
“Because the Veterans Court did not err in determining that Winters is not a ‘prevail- ing party’ under EAJA, we affirm.”
Cautions
He enforces the principle that courts decide the case the parties present: even on an issue as fundamental as patent eligibility, a court may not reach out on its own to invalidate a claim on a ground the accused infringer abandoned and never litigated at trial. Deciding a dispositive question sua sponte, outside the litigated issues, is reversible error.
“For the rea- sons set forth below, we vacate the judgment and remand.”
He gives real weight to objective evidence of nonobviousness. Where a patent owner marshals compelling proof of copying, industry praise, commercial success, or long-felt need, a review board cannot brush it aside; failing to properly weigh that secondary-considerations evidence, or to tie it to the claimed invention, is grounds to vacate an obviousness ruling.
“For the reasons articulated below, we vacate and remand.”
When a patent uses a relative term near the edge of the prior art, he looks for consistent boundaries across the claims, specification, and prosecution history; conflicting examples and unexplained usage can leave the claim indefinite.
“The ’321 patent specification’s conflicting guidance thus does not allow a skilled artisan to determine the scope of ‘about’ with reasonable certainty.”
Signed rulings
A grounded sample of orders signed by this judge, with the verbatim dispositive language.
“For the reasons provided below, we affirm.”
“For the reasons provided below, we affirm.”
“REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED”
“For the following reasons, we affirm.”
“For the rea- sons set forth below, we vacate the judgment and remand.”
“we affirm the Board’s con- clusions that claims 1–45 are unpatentable. We further af- firm the Board’s denials of Pfizer’s motions to amend by adding proposed claims 46, 47, and 50–52. But we vacate those denials as to proposed claims 48 and 49, and remand to the Board for further consideration of those claims.”
“Because we conclude that the district court erred in failing to grant JMOL for lack of written description and enablement, we reverse.”
“For the following reasons, we affirm in part and dis- miss in part.”
“For the fol- lowing reasons, we affirm.”
“For the reasons provided below, we affirm.”
“For the reasons articulated below, we vacate and remand.”
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