Judge Lourie and Newman: Call for Congress to Act

by Dennis Crouch

As part of the court’s en banc denial in Berkheimer v. Hp Inc., 2018 U.S. App. LEXIS 14388 (Fed. Cir. 2018), Judges Lourie and Newman joined together in an interesting concurring opinion that argues for some higher power to revisit the doctrine of patent eligibility to provide clarification and policy guidance.  The opinion is republished below:

Lourie, Circuit Judge, with whom Newman, Circuit Judge, joins, concurring in the denial of the petition for rehearing en banc.

I concur in the court’s declining to rehear this case en banc. There is plausibility to the panel holding that there are fact issues potentially involved in this case concerning the abstract idea exception to patent eligibility. And the panel, and the court, are bound to follow the script that the Supreme Court has written for us in § 101 cases.

However, I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems. Individual cases, whether heard by this court or the Supreme Court, are imperfect vehicles for enunciating broad principles because they are limited to the facts presented. Section 101 issues certainly require attention beyond the power of this court.

We started from the statute that provides for patents on “any new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court put a gloss on this provision by excluding laws of nature, natural phenomena, and abstract ideas. Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174-75 (1852) (“[A] principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”); Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (“The laws of nature, physical phenomena, and abstract ideas have been held not patentable.”). So far, so good. Laws of nature (Ohm’s Law, Boyle’s Law, the equivalence of matter and energy), properly construed, should not be eligible for patent. Nor should natural phenomena (lightning, earthquakes, rain, gravity, sunlight) or natural products, per se (blood, brain, skin). Of course, the latter are also unpatentable as lacking novelty under § 102.

But it’s in the details that problems and uncertainties have arisen. The Court held in Mayo Collaborative Services v. Prometheus Laboratories, Inc., that the claim at issue “set forth laws of nature” and was ineligible under § 101 as “a drafting effort designed to monopolize the law of nature itself.” 566 U.S. 66, 77 (2012). That claim recited “[a] method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising” administering a drug and then measuring the level of a metabolite of the drug. Id. at 74-75 (quoting U.S. Patent 6,355,623).

The Supreme Court whittled away at the § 101 statute in Mayo by analyzing abstract ideas and natural phenomena with a two-step test, including looking for an “inventive concept” at step two, thereby bringing aspects of §§ 102 and 103 into the eligibility analysis. Id. at 72-73, 90. The decision we now decide not to rehear en banc holds that step two of the two-step analysis may involve the type of fact-finding that underlies §§ 102 and 103, further complicating what used to be a fairly simple analysis of patent eligibility under § 101. We now are interpreting what began, when it rarely arose, as a simple § 101 analysis, as a complicated multiple-step consideration of inventiveness (“something more”), with the result that an increasing amount of inventive research is no longer subject to patent. For example, because the Mayo analysis forecloses identifying any “inventive concept” in the discovery of natural phenomena, we have held as ineligible subject matter even meritorious inventions that “combined and utilized man-made tools of biotechnology in a way that revolutionized prenatal care.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (internal quotation marks omitted).

The case before us involves the abstract idea exception to the statute. Abstract ideas indeed should not be subject to patent. They are products of the mind, mental steps, not capable of being controlled by others, regardless what a statute or patent claim might say. Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“[M]ental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). No one should be inhibited from thinking by a patent. See Letter from Thomas Jefferson to Isaac McPherson (Aug. 13, 1813) (“[I]f nature has made any one thing less susceptible, than all others, of exclusive property, it is the action of the thinking power called an Idea.”). Thus, many brilliant and unconventional ideas must be beyond patenting simply because they are “only” ideas, which cannot be monopolized. Moreover such a patent would be unenforceable. Who knows what people are thinking?

But why should there be a step two in an abstract idea analysis at all? If a method is entirely abstract, is it no less abstract because it contains an inventive step? And, if a claim recites “something more,” an “inventive” physical or technological step, it is not an abstract idea, and can be examined under established patentability provisions such as §§ 102 and 103. Step two’s prohibition on identifying the something more from “computer functions [that] are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry,” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2359 (2014) (alteration in original) (quoting Mayo, 566 U.S. at 73), is essentially a §§ 102 and 103 inquiry. Section 101 does not need a two-step analysis to determine whether an idea is abstract.

I therefore believe that § 101 requires further authoritative treatment. Thinking further concerning § 101, but beyond these cases, steps that utilize natural processes, as all mechanical, chemical, and biological steps do, should be patent-eligible, provided they meet the other tests of the statute, including novelty, nonobviousness, and written description. A claim to a natural process itself should not be patentable, not least because it lacks novelty, but also because natural processes should be available to all. But claims to using such processes should not be barred at the threshold of a patentability analysis by being considered natural laws, as a method that utilizes a natural law is not itself a natural law.

The Supreme Court also held in Association for Molecular Pathology v. Myriad Genetics, Inc., that claims to isolated natural products were ineligible for claiming “naturally occurring phenomena.” 569 U.S. 576, 590 (2013). The Court concluded that those claims “are not patent eligible simply because they have been isolated from the surrounding genetic material.” Id. at 596.

However, finding, isolating, and purifying such products are genuine acts of inventiveness, which should be incentivized and rewarded by patents. We are all aware of the need for new antibiotics because bacteria have become resistant to our existing products. Nature, including soil and plants, is a fertile possible source of new antibiotics, but there will be much scientific work to be done to find or discover, isolate, and purify any such products before they can be useful to us. Industry should not be deprived of the incentive to develop such products that a patent creates. But, while they are part of the same patent-eligibility problems we face, these specific issues are not in the cases before us.

Accordingly, I concur in the decision of the court not to rehear this § 101 case en banc. Even if it was decided wrongly, which I doubt, it would not work us out of the current § 101 dilemma. In fact, it digs the hole deeper by further complicating the § 101 analysis. Resolution of patent-eligibility issues requires higher intervention, hopefully with ideas reflective of the best thinking that can be brought to bear on the subject.

Berkheimer v. Hp Inc., 2018 U.S. App. LEXIS 14388 (Fed. Cir. 2018) (concurring opinion).

The call for higher authority to change the law is interesting here.

I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems. Individual cases, whether heard by this court or the Supreme Court, are imperfect vehicles for enunciating broad principles because they are limited to the facts presented. Section 101 issues certainly require attention beyond the power of this court.

For a federal appellate court, there are typically two such “higher authority” mechanisms for altering the law: (1) Supreme Court reinterpretations and (2) changes in the law itself.  In the opinion, Judge Lourie rules out a reinterpretation by the Supreme Court as insufficient — thus leaving us with changing of the law.

Typically, the Patent Act is modified through typical Congressional legislative process. I wonder why Judge Lourie did not then simply call for Congressional action but rather called on action by “higher authority, perhaps by Congress.” An intriguing question here is what other higher authority might Lourie be calling upon?  One potential is not for Congress to reexamine the law, but rather to provide the USPTO with rulemaking authority to reconsider the law of eligibility.

66 thoughts on “Judge Lourie and Newman: Call for Congress to Act

  1. 10

    OP: “I wonder why Judge Lourie did not then simply call for Congressional action but rather called on action by “higher authority, perhaps by Congress.” An intriguing question here is what other higher authority might Lourie be calling upon?”

    Actually, the power of The People — through Congress — to clarify the scope the “Progress” clause, via amendment. In the dim, distant past (in a 2 Nov 2008 post regarding Bilski) I warned that KSR could be read to imply that there were constitutional standards for obviousness and that I suspected the Court “would certainly be willing to discern a constitutional standard of subject matter as well.”

    Having created limits where none existed it is unsurprising that this Court has stumbled in explaining whatever it thinks it has discerned about the constitutional limits on Congressional power under Art. I, Sect. 8. The power is to promote the Progress of Science and the Useful (cf. Fine) Arts — if the subject matter is in a Useful Art, the power of Congress to promote Progress would appear to plenary.

    (IMHO this Court has similarly stumbled in granting plenary unenumerated powers to Congress in the Fine Arts, but that’s a topic for another time.)

    The alternative is to expand the Court to dilute power of the uber-reactionary judicial activists that have frustrated the plainly constitutional will of the people in a variety of matters. I’m not holding my breath on that one.

    1. 10.1

      KSR could be read to imply that there were constitutional standards for obviousness…

      Whether or not KSR could be read to imply as much, Graham says so explicitly.

      Graham v. John Deere Co., 383 U.S. 1, 6 (1966) (“Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain… This is the standard expressed in the Constitution and it may not be ignored”).

      I would not suppose that this is a particularly controversial view. Everyone ranging from Justice Breyer to Judge Rich acknowledges that the nonobviousness requirement is essential in order for the patent system to be constitutionally supportable.

      1. 10.1.1

        And yet, compare and contrast to the treatment of the exact same Constitutional clause (and the offering of actual actions to the contrary of what the Justices in Deere “demand”) in the Golan v. Holder case.

        1. 10.1.1.1

          ..which should cause one to postulate that the DICTA in Deere does not hold what you may at first blush deem it to hold.

          Let’s not forget that not everything out of the mouths of the Supreme Court actually merits inclusion with the force of law.

      2. 10.1.2

        The issue though, Greg, is where and how to test for nonobviousness.

        The reality is that the SCOTUS should not be setting up their private little tests where they have absolutely no expertise and no knowledge of science, technology, or innovation.

        It is the same with Alice.

        The SCOTUS coming up with their foul tests and then claiming that patents granted that do not meet their tests were granted unconstitutionally is outrageous.

        Let’s get it clear that that is the game. No one has come up with a better explanation of Alice than I have and no one has refuted what I have said about the holding of Alice that holds water.

        Alice and KSR are tests where the SCOTUS says that if you don’t meet the test than the granting of the patent was unconstitutional. Think about about what a grab for power that is. It takes away the authority of Congress to make patent law despite the Constitution saying it is their right.

        1. 10.1.2.1

          then claiming that patents granted that do not meet their tests were granted unconstitutionally is outrageous.

          Note the language used.

          Then note that a grant of a patent – the act itself – is NOT something that can be considered “Unconstitutional.”

          It is only the law under which a grant may occur that may (or may not) be “Unconstitutional.”

          This is not a pedantic semantic.

          This ties directly to the elephant in the room as to what the Supreme Court is attempting to do with a law, written by Congress, with authority to write that law directly and unequivocally allocated only to ONE single branch of our government,

          Hey, I am not against common law, its presence, or APPROPRIATE use – I am against a branch of the government acting as if that branch has NO Constitutional restraints on its own actions.

          (in other words, Night Writer is correct, and the phrasing may vary, even though the point is the same)

          1. 10.1.2.1.1

            anon, that is a good subtle point. I guess what the holding of Alice and KSR should have been was that the 1952 patent act was unconstitutional because it permitted the granting of patents that went beyond the power of Congress.

        2. 10.1.2.2

          SCOTUS should not be setting up their private little tests where they have absolutely no expertise and no knowledge of science, technology, or innovation.

          It is the same with Alice.

          Agreed. One can quite consistently acknowledge that the nonobviousness requirement is constitutionally essential without also conceding that the particular test articulated in KSR is either necessary or proper.

          1. 10.1.2.2.1

            KSR orAlice, I should have said.

    2. 10.2

      Cass—

      I think was well put and I agree. It is also pretty outrageous that the SCOTUS uses journal articles with no peer review and with no recourse for unethical conduct for findings of fact even if they don’t label them as findings of fact.

      The power of the privy counsel for Oil States was a finding of fact that was dispositive and it was based on a journal article from Lemley that the dissent said they did not believe was correct. The conduct of the SCOTUS is outrageous.

      1. 10.2.1

        Checks and Balances are only worthwhile when they are actually employed.

        It amazes me – absolutely amazes me not only is the elephant in the room not mentioned, but that so many attorneys seemingly are clueless as to their own ethical obligations under their various state attorney oaths to NOT place the Supreme Court above the Constitution.

        I have seen one – and only one – state attorney oath that even comes arguably close to the permissiveness that runs rampant in the legal community (Massachusetts). All others that I have seen are clear in that we as attorneys have a greater responsibility to speak out against the Supreme Court when that Court goes astray.

      2. 10.2.2

        The power of the privy counsel for Oil States was a finding of fact that was dispositive…

        Er, no. Not even close.

        1) The mention of the privy council in Oil States was mere icing on the cake. The holding could and would have been exactly the same even if the privy council’s role in patents had ended in 1740.

        2) Every UK patent issued up until the early XX century included a clause right up front notifying that the patent was subject to unilateral revocation by the privy council. In other words, this factual assertion quite definitely did not rest merely on Prof. Lemley’s say-so. If you doubt it, you can look for yourself.

        1. 10.2.2.1

          First, Greg, yes I am correct it is dispositive. The dissent says so.

          Without the privy counsel’s ability to invalidate a patent we have an action at common law which means that invalidation of a patent must be determined by a district court. The dissent discussed this.

          So, first of all, it was dispositive.

          Second of all, I get that there is disagreement about this point. We know that because the dissent says that they do not agree with the majority’s findings of fact about the privy counsel.

          Your post is odd. Both the majority and the dissent discuss this at length and you brush it off as icing on the cake. No icing. No invalidation by privy counsel equals Oil states overturned. Yes invalidation by the privy counsel equals Oil states affirmed.

          1. 10.2.2.1.1

            [I]t is dispositive. The dissent says so.

            Well, yes, the dissent says so. That and $2.50 will buy you a cup of coffee. If all you mean to say is that the dissent thinks this point dispositive, I will not contradict you, but there are long leagues between “this issue is important” and “a two justice minority considers this issue important.”

            Both the majority and the dissent discuss this at length…

            The majority does not even get to this issue until section III.C of the opinion, and then only to answer the dissent. That claim scope is a matter of public rights is established in III.A without ever touching on anything to do with the privy coucil. Once that point is established, the rest of the holding follows as ineluctably as night follows day, regardless of what sort of dust the dissent cares to kick up.

            Without the privy council’s ability to invalidate a patent we have an action at common law…

            Not at all. Just because a matter can be adjudicated in court does not mean that it must thusly adjudicated. Some matters in common law courts must be settled there, but a matter touching on public rights can be settled in court or can be settled elsewhere. As I say, the majority carries the public rights point by III.A, so the observation that some validity challenges get settled in courts is of no more moment than the observation that some other matters of public rights are settled in court. Once that point is established, the dissent has already lost. The observation about the privy council is a mere coup de grâce at that point.

            1. 10.2.2.1.1.1

              Greg–please.

              “C
              Oil States and the dissent contend that inter partes
              review violates the “general” principle that “Congress may
              not ‘withdraw from judicial cognizance any matter which,
              from its nature, is the subject of a suit at the common law,
              or in equity, or admiralty.’” Stern, 564 U. S., at 484 (quoting
              Murray’s Lessee, 18 How., at 284). ”

              The majority does not dispute this. They dispute that it was a subject at common law.

              “But this history does not establish that patent validity
              is a matter that, “from its nature,” must be decided by a
              court. Stern, supra, at 484 (quoting Murray’s Lessee,
              supra, at 284). The aforementioned proceedings were
              between private parties. But there was another means of canceling a patent in 18th-century England, which more
              closely resembles inter partes review: a petition to the
              Privy Council to vacate a patent. See Lemley, supra, at
              1681–1682; Hulme, Privy Council Law and Practice of
              Letters Patent for Invention From the Restoration to 1794,
              33 L. Q. Rev. 63 (1917). ”

              So again what I said was accurate. Whether the privy counsel canceled patents at the time of the adoption of English Common law is dispositive. The majority does not dispute this and the dissent asserts this. Again—the majority is using Lemley’s paper as a finding of fact that the prevy counsel canceled patents (or had the power to) at the time of the adoption of English common law into the US.

              Your argument that they had made their conclusions and this was icing is absurd. There is no linearity implied by the ordering. This is not icing. This majority had to dispose of this argument or IPRs had to be held to be unconstitional.

  2. 9

    I like the idea below to have an executive order for the PTO to only reject claims under 101 if the fact pattern matches the fact pattern in one of the 101 cases at the SCOTUS.

    That would be a way that Trump could try to push Congress to act.

    1. 9.1

      A (slight) alteration, but one that accords with the Act of 1952, and the THEN removal of power from the Supreme Court by the Congress of setting the meaning of the word “invention” through the power of common law evolution, as Congress at that time opted instead to break up the prior single paragraph into the separate sections of 101/102/103 (as explained by Judge Rich):

      have an executive order for the PTO to only reject claims under 101 if the fact pattern EXACTLY matches the fact pattern in one of the PRE-1952 “101 cases”** at the SCOTUS.

      **This most likely would have to use the exact words, as there was NO actual pre-1952 section 101 – that section being created in 1952, as noted above.

      1. 9.1.1

        Yes that is a good change anon. I think this is something that might realistically be done.

        We should all push for this. Trump loves executive orders and this one would put pressure on Congress to pass legislation regarding 101.

  3. 8

    “An intriguing question here is what other higher authority might Lourie be calling upon? ”

    He is obviously referring to Yahweh.

    1. 8.1

      …or maybe something a little more prosaic: $

  4. 7

    One last thought from me–can Alice be overturned by Congress? I don’t think so. Alice if read properly holds that a patent to an abstract idea as defined by the two step process is unconstitutional because it may tend to not promote the useful arts.

    That is the holding of Alice. I know that few people agree with me.

    1. 7.1

      There are some good law journal articles about this type of case and whether Congress can overturn it. They are from the 1950’s before the likes of Lemley came along and turned law journal articles into political junk that is paid for by corporations.

    2. 7.2

      I note that I have not read another interpretation of the holding of Alice that holds water.

    3. 7.3

      I have seen your “Congress cannot overturn Alice” meme before.

      It is critically deficient, given the allocation of authority in our Constitution.

      1. 7.3.1

        anon, why is that? What do you think the holding in Alice is?

        And you statement “given the allocation of authority in our Constitution,” is rather ironic given that what the SCOTUS said was that it was unconstitutional to grant a patent that fit the Alice test.

        1. 7.3.1.1

          It does not matter as to any particular holding – you are attempting to elevate any such holding to be a different allocation of authority as per the Constitution.

          The Constitution simply did not allocate authority to the judicial branch as your statement necessarily leads to.

          1. 7.3.1.1.1

            The only other possible holding is that the 1952 Patent Act is unconstitutional as it permits the granting of patents that do not (they say may) promote innovation.

            What other attorneys are saying is that they don’t know where the power of Alice comes from and that somehow it has to do with exceptions to a statute. Their interpretation has no basis in the Constitution.

            1. 7.3.1.1.1.1

              Agreed – the elephant in the room is the refusal of people to even consider the fact that the Supreme Court is itself violating the Constitution in how they are acting.

      2. 7.3.2

        My bet is that if Congress passes a new 101 like the AIA proposal that the SCOTUS will say that Alice is still good law.

        1. 7.3.2.1

          Exactly. That is why—in order to achieve a legislative override—Congress would not only need to amend section 101, but also amend the judiciary act to remove patent matters from the SCotUS’s appellate jurisdiction.

        2. 7.3.2.2

          The IPLAC rendition IS explicit and removes your suggested possibility (not that I would be adverse to Greg’s idea).

          See: link to patentdocs.org

          1. 7.3.2.2.1

            Not sure what is going on with you anon. You don’t seem to get it. Alice is based on a holding that a patent issued that fits the Alice test was unconstitutionally granted.

            The only way I see getting around Alice is to do what Greg says.

            Again, I will bet that if a new 101 is passed that no matter how broad the language and even if it says Alice is no good that the SCOTUS will hold that Alice is still good law.

            1. 7.3.2.2.1.1

              See above – there is no such thing as a single patent being “unconstitutionally granted.”

              It is the underlying law that is either Constitutional or not Constitutional. The Court lacks authority to rewrite the law as it is attempting, and any scrivening on its own to make it appear that a “single grant” carries some “Constitutional” aspect, when it is the law under which that grant occurs that must be evaluated – is nothing more than one massive quaffing of Koolaid.

              As to the actions of the Court – I do not disagree (hence my long standing solution of Congress properly applying their own Constitutionally granted power of jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court).

              (to toot my own horn here – this is NOT Greg’s solution, and I do believe that I was the very first to advocate this path – leastwise, the very first that interacts on these boards).

              1. 7.3.2.2.1.1.1

                I agree anon that the SCOTUS does not have the authority to do what they are doing. But they are doing it.

                And I get your argument about a single patent.

                I get your arguments. But we have Alice.

                1. Yes.

                  We do have a scoreboard that is broken.

                  But the issue then, is NOT the score on the scoreboard.
                  The issue then is that the scoreboard IS broken.

                  (ps, I know that YOU “get” this – alas, far far far too many other people not only do NOT “get” this, they shows signs that they do not WANT to “get” this)

  5. 6

    It is too bad he didn’t include information processing in that. In fact, he has shown himself to be as shameful as the justices by leaving out the electrical arts/information processing.

    But, this is also a joke in that anyone with half a brain knew all this as soon as Bilski came out.

    1. 6.1

      Although, I will say Lourie’s interpretation of Benson would overturn the holding of Benson. He seems to be saying that Benson should be overturned as well.

      And, of course, Benson is the heart of all evil in patent law and should be expressly by Congress or the SCOTUS overturned.

      1. 6.1.1

        [O]f course, Benson… should be expressly by Congress or the SCOTUS overturned.

        Hear, hear!

  6. 5

    Eligibility law is an abomination. It ignores the broad language of section 101. It is an arbitrary test that offers no predictability. It denies ownership of many things most would agree we want to encourage. The only thing it is good for is illustrating the qualities of poor jurisprudence.

    Congress to the rescue! Hah hah.

  7. 4

    Lourie: A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”); Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (“The laws of nature, physical phenomena, and abstract ideas have been held not patentable.”). So far, so good. Laws of nature (Ohm’s Law, Boyle’s Law, the equivalence of matter and energy), properly construed, should not be eligible for patent. Nor should natural phenomena (lightning, earthquakes, rain, gravity, sunlight) or natural products, per se (blood, brain, skin). Of course, the latter are also unpatentable as lacking novelty under § 102.

    Hey, super serious Judge Lourie, here’s some other minor inconsequential things that can’t be “patented”: logic, correlations and information itself.

    And let’s be perfectly clear about one other thing: the correct way to approach the problem of ineligibile subject matter is not to ask what can or can not be “patented” but rather to recognize that certain subject matter can not be protected by resort to the patent system. This distinction is the difference between a purely technical requirement that can be scrivened around by a five year old and a genuine prohibition with teeth that reasonable adults understand is necessary to keep the system from melting down and turning into a free-for-all for attorneys and b0 tt 0m feederz.

    Wake up already.

    1. 4.1

      Bad patents, make bad facts, and bad facts causes confusion in the law. Mayo claim is a joke. You think you have a fever, take your temperature, if too high take a Tylenol, if ok do nothing. If you have bad liver levels because your taking a particular statin, then switch to another statin. Many folks say that this reasoning is based in obviousness, but I say you do not even get there with such a claim. A patent claim is a limited monopoly to exclude others and therefore requires more, how much more, I can’t say but as Justice Marshall said. “you know it when you see it”.

    2. 4.2

      Obviously this post triggered you.

      1. 4.2.1

        It is not the triggering that is an issue / it is the response (and lack of meaningful content in Malcolm’s response) that is an issue.

        His “feelings” simply are inappposite to the reality of innovation.

  8. 3

    Maybe Lourie and Newman, as Federal Circuit “representatives”, should look in the mirror instead of passing the buck to the Supreme Court which is mostly just cleaning up the mess the CAFC has made.

    Lourie: However, finding, isolating, and purifying [DNA molecules] are genuine acts of inventiveness

    Tell it to Incyte. Sure, that decision was cast as a “utility” issue at the time but those same lack-of-specific-utility arguments could have been used to tank isolated DNA claims, particularly where the alleged utility of the claimed DNA was to detect itself or its complement or to be tested for further utility. Like whoopiteefreakingdingd0ng.

    Anyway, the grown-ups in the chem-bio biz have mostly moved on and the narrow holding in Myriad isn’t much of a problem for anybody.

    As for Prometheus v. Mayo issue, that was a glorious and spectactular failure on the CAFCs part. Many of the judges still haven’t come to terms with the fundamental underlying issues and its possible that grappling with those issues is something that their fossilized brains simply can’t handle, especially when the third rail of logic ineligibility is beaming directly in their eyeballs.

  9. 2

    I wonder why Judge Lourie did not then simply call for Congressional action but rather called on action by “higher authority, perhaps by Congress.” An intriguing question here is what other higher authority might Lourie be calling upon? One potential is not for Congress to reexamine the law, but rather to provide the USPTO with rulemaking authority to reconsider the law of eligibility.

    I think that you are overthinking this, here. In order for new PTO rulemaking to lead to the outcome that Judge Lourie is contemplating here, the CAFC would first have to overrule Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996) en banc (“[T]he broadest of the PTO’s rulemaking powers… does NOT grant the Commissioner the authority to issue substantive rules”). It would be odd—if Judge Lourie has PTO rulemaking in mind—that Kessler does not get even a whisper of a mention.

    I expect that Judge Lourie is just trying to be sly in his allusions here. He knows that the SCotUS does not like to be overruled by Congress any more than the CAFC likes to be overruled by the SCotUS, but it will not do for a circuit judge to be seen to be threatening the SCotUS. So instead of saying “Congress might overrule you, dear SCotUS,” he writes “someone might overrule this jurisprudence, perhaps Congress.” It is simply a more tactful way of phrasing the exhortation/admonition.

    1. 2.1

      Thanks Greg – You are probably correct. In my view PTO does not currently have this authority, so it would take an Act of Congress to first grant PTO rulemaking authority on eligibility doctrine.

      1. 2.1.1

        Completely disagree Dennis. The Director could find a case – and sit on the PTAB panel – and issue a decision just like Lourie wants, and say that’s the law. CAFC might then have a chance to overturn, agree, or R.36. Just like In Re Perne – establishing collateral estoppel for the BOAPI.

        1. 2.1.1.1

          Er, no, that plan cannot work. Lourie wants a more permissive approach to 101–something akin to the “coarse filter” (as Judge Rader styled it) that used to serve pre-Mayo. Now if the PTAB were to set a precedential rule applying a more lenient approach to 101, then this would imply that the PTAB reverses an examiner’s 101 rejection. But if the PTAB reverses the 101 rejection, then—by virtue of the Art. III case-or-controversy requirement—there can be no appeal to the CAFC.

          There is no way that the CAFC would ever be able to ratify such a rulemaking. In fact, the only sort of PTO-made 101 rule that the CAFC could get a hold of would be a rule that tightened 101 (because that would give rise to a rejection from which the applicant could appeal), but that is the opposite of what Lourie purports to want.

          Only Congress can answer Judge Lourie’s call. Regrettably, our Congress can barely get it together to deal with absolute essentials like budget resolutions, so I am not holding my breath that they will answer Judge Lourie’s (sane & salutary) call.

          1. 2.1.1.1.1

            The Director could potentially use a PGR or CBM proceeding in which the petitioner brought a 101 challenge.

            1. 2.1.1.1.1.1

              Good point. I withdraw my 2.1.1.1.

      2. 2.1.2

        I guess an executive order couldn’t change this. I wonder what could be done with an executive order. I suppose that Trump could say that the SCOTUS is out of their minds, which they are, and issue an executive order to the PTO about how to interpret 101.

        Still, the federal courts would do whatever they wanted.

        1. 2.1.2.1

          I will welcome correction from some like David Boundy—who knows more administrative law than do I—but I believe that Pres. Trump would be entirely within his authority to direct the PTO not to examine claims for 101 compliance. This really would not solve any actual problems with the current patent system, however. Such a move would simply serve to permit a bunch of claims that should—in a sane world—survive to die in a tardy and expensive manner in court instead of in a quick and inexpensive manner in the PTO.

          A mere executive order, however, cannot make such claims actually enforceable. For that, we need Congress to both: a) revise 101 to over turn the recent quartet; and b) to strip the SCotUS of certiorari or mandamus jurisdiction over the CAFC, so that the Court cannot merely “interpret” the 101 amendments into a dead letter.

          1. 2.1.2.1.1

            Alternatively, President Trump could direct the USPTO to only hold claims to be patent ineligible under 35 USC 101 if the claims are a direct match for the fact situations of the Supreme Court cases in which claims were found by the Supreme Court to be patent ineligible. The USPTO deciding to act in this way, would not appear to violate the “arbitrary and capricious” standard of the Administrative Procedure Act (APA).

            1. 2.1.2.1.1.1

              Yes ARP that would work. The president could do that as a shot to Congress to act.

            2. 2.1.2.1.1.2

              The aspect of “direct match” hints at a bigger elephant in the room:

              The judicial branch lacks express authority (from Congress) to apply common law evolution to the section of law encompassed by 101.

              Lacking that authority, the Court cannot (properly) add anything – caveats, exceptions, – anything.

              What they are limited to is to judge the law as they find it. If they find the law itself unconstitutional (for example, as in Tam), then they can only strike down that law. They do not have any type of line-item “rewriting” that they arguably had BEFORE the Act of 1952 was passed.

              1. 2.1.2.1.1.2.1

                Anon,

                Correct. Furthermore, it is not the responsibility of the USPTO as an administrative agency of the Executive Branch to do rulemaking with respect to 35 USC 101 to execute any “legislation” improperly created by the Supreme Court.

          2. 2.1.2.1.2

            but I believe that Pres. Trump would be entirely within his authority to direct the PTO not to examine claims for 101 compliance

            That simply would not be in his authority.

      3. 2.1.3

        Dennis,

        Why can’t the PTO just have a policy limiting determinations patent ineligibility under 35 USC 101 to fact situations that directly match the fact situations in Supreme Court and Federal Circuit cases where patent ineligibility was found. The “judicial exceptions” to patent eligibility under 35 USC 101 are “exceptions” to the general rule set forth in the statute. There is no requirement that the USPTO, as an administrative agency “guess” what type of fact situations a court might decide invoke the judicial exception. In a sane world, I don’t see, absent an Act of Congress, where the PTO has rulemaking authority to “guess” what fact situations might invoke a “judicial exception” if such fact situations came before a court in deciding that a claim is patent ineligible because of such a hypothetical “judicial exception.”

        1. 2.1.3.1

          The executive branch is charged with execution of the law and not the execution of its version of the law….

          You appear to (perhaps unwittingly) be suggesting sedition against our properly functioning three-branch, separation and limitation of powers structure.

          The Ends (even Ends I agree with) do not justify the Means.

          1. 2.1.3.1.1

            Anon,

            The “law” is what is stated in 35 USC 101. Under our system of the separation of powers, the USPTO as an administrative agency of the Executive Branch is empowered to make rules to administer the law passed by Congress.

            The Supreme Court has identified in Alice and Mayo “judicial exceptions” to the law as stated in 35 USC 101. So the USPTO cannot properly make rules that would make the specific technology identified by the Supreme Court as being “patent ineligible” based on a Court identified “judicial exception” patent eligible. But, subject to this narrow restriction, the USPTO’s responsibility is to administer 35 USC 101 as written.

            1. 2.1.3.1.1.1

              See my modification above – that modification DOES arguably apply to the actual law as Congress has written (and properly disposes of judicial gloss, of which has had no proper place in the actual section of 101, as written by Congress in 1952).

            2. 2.1.3.1.1.2

              See my alteration above at 9.1 – which WOULD (arguably) BE within the president’s authority to execute the actual law as written by Congress without the (unauthorized) judicial gloss on the actual 101 as written by Congress in 1952.

              (I noticed that the “count” filter has been “upgraded” and that posts over the (arbitrary) count level do not even appear anymore to be captured “in moderation.” A step in the wrong directions, editors)

        2. 2.1.3.2

          I think that Pres. Trump could issue such an executive order, or the PTO could promulgate such a rule, but you have to ask yourself what problem such a policy is supposed to solve. Patents are meant to incentivize investment in R&D. If one knows that one can get a patent out of the PTO, but that the judge-made rules are such that the patent thus obtained is merely a worthless piece of paper that will not stand up in court, then one still lacks the forward looking security needed to justify the R&D investment. In other words, you have just moved the problem around, but not really solved anything.

          1. 2.1.3.2.1

            Greg,

            Changing policy at the USPTO is not an ideal solution to the problems created by the Supreme Court, but it is a start. Also, judges and Justices do not live forever. And we don’t know the potential effects with respect to patent law of future judicial appointments by President Trump or a Republican presidential successor. Given the ages of the current Supreme Court justices, in the not too distant future it is entirely possibly you could have two of the liberal anti-patent justices replaced by justices more similar to Gorsuch with respect to their treatment of patents.

            Without the presence of Gorsuch on the Supreme Court, I wonder if Roberts would have been willing to be the sole dissenter in Oil States. Similarly, I wonder in a hypothetical future Supreme Court with two more Gorsuch-type justices, if the remaining conservative Supreme Court justices will be as willing to be on anti-patent majority opinions with the liberal justices. Hard to know.

    2. 2.2

      Greg,

      I agree – the forum here lends itself to a more direct and confrontational tone, and the CAFC has already been whipsawed when it attempted to “diss” Justice Breyer.

      We should not forget (also) that the judicial branch still has the CAFC “answering to” SCotUS – and the psychological thought experiment that I laid out previously of training monkeys in a cage with a fire hose very much applies to the CAFC (and will continue to apply until Congress “wakes up” and uses its Constitutional power of jurisdiction stripping to strip the non-original jurisdiction of patent appeals from the Supreme Court).

  10. 1

    worth noting: Congress may delegate its authority, but any such delegation has (when noted properly) had to follow some strict requirements,

    worth also noting: the Supreme Court has NOT followed those requirements.
    (ps: see the “rant” over on the Hricik side of the blog for what is in essence the activist Court overstepping its allocated authority)

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