Guest post by Professor Joshua D. Sarnoff of DePaul College of Law. Below, he responds to Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
In Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas, Mr. Doerre states that “[n]otably, however, there is no similar need to resort to use of an implicit exception to prevent undue preemption of known prior art abstract ideas, as 35 U.S.C. § 102 and 35 U.S.C. § 103 already ensure that claims do not disproportionately ‘“t[ie] up the use of  underlying” [prior art] ideas.’ This can be seen in that, under 35 U.S.C. § 103, a claim must be inventive over all known prior art ideas, and cannot simply be an obvious application of a prior art abstract idea, or an obvious combination of several prior art abstract ideas.” Of course, since Section 103 often requires detailed factual evaluations not readily resolved early in litigation, the pressure to use Section 101 remains even for ineligible subject matter that is in fact prior art against the applicant. And unlike for Section 103, the nature of the creative advance over that discovery may be readily apparent on the face of the patent’s disclosure (particularly where it lies in the discovery itself and thus there is no meaningful additional creativity to render the practical application non-obvious). But courts are unlikely to grant motions to dismiss under Section 103, and for some bizarre reason we keep giving this ultimate question of law to juries. Further, Section 103’s obviousness standard in fact is not much clearer than Section 101 standards.
But the important point is that Section 101 is needed for precisely the case Mr. Doerre avoids, when the ineligible discovery is not prior art against the applicant. Mr. Doerre would be absolutely correct that we do not need to use Section 101 if Section 103 could do the job (of excluding uncreative applications of ineligible discoveries in the three categories of excluded subject matter – which are judicial interpretations of the meaning of “invention or discovery” and are not “judicial exceptions” to Section 101 subject matter). But Section 103 cannot do that job as current written, even though both provisions derived from the same statutory section under the pre-1952 Act. And that is because such ineligible discoveries are not normally among the categories of Section 102 prior art as applied to an applicant who is also the discoverer of that ineligible subject matter.
As I have written before (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1757272 and the briefs for amici law professors that I filed in Bilski, Mayo, and Myriad), the ineligible subject matter is often discovered by the applicant himself or herself, and thus does not qualify as Section 102 prior art for Section 103 obviousness analysis. If it did, then 103 in fact would be able to do the job, although given the tremendous uncertainty over what qualifies as a non-obvious advance under Section 103 we would still have roughly the same amount of uncertainty in the law. Further, no person who objects to using Section 101 to exclude categorically ineligible discoveries claimed as practical applications thereof would be the happier if we were to amend Section 102 to permit Section 103 to do the job now being performed (and only capable of being performed) by Section 101. This is because then we would just use obviousness law to have to make the difficult decisions as to whether the claim as a whole represents a non-obvious advance over the ineligible discovery while treating the discovery as prior art against the applicant. And as just noted, we don’t have a clear theory of how much creativity constitutes a non-obvious advance. Although the amicus brief I filed for law and economics professors in KSR sought to have the Court explicitly adopt a time and money threshold of ordinary creativity so as to create that clear theory, predictably the Supreme Court declined the invitation to make the law clearer (while still correcting the errors of analysis of the Federal Circuit in assessing what constitutes an “obvious” advance over the prior art of record).
Further, as Professor Katherine Strandburg has persuasively explained (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2196844) and as the recent and less recent history clearly reflects, the current concern (since Benson) with preemption is not in fact either the source of the current eligibility doctrine nor the grounds for finding any practical applications to be ineligible. As I explained in both the cited paper and briefs noted above, non-preemption is a consequence of having an inventive application of ineligible subject matter; lack of preemption says nothing about whether the application is in fact inventive in light of the discovery of such ineligible subject matter. Consequently, were preemption of the entire set of applications of ineligible discoveries actually the concern driving application of the doctrine, none of the claims held invalid by the Supreme Court or the Federal Circuit should have been held invalid, as all those claimed specific applications did not preempt many other things that might have been claimed when employing the ineligible discoveries. (Of course, some of those held-to-be invalid claims may have covered all of the valuable, then-known applications. But the Supreme Court had held in the Telephone Cases that claiming all valuable applications was perfectly fine, so long as the claims reflected the actual “invention” – meaning, at the time, a creative advance over ineligible subject matter). Parker v. Flook’s terminology made this quite clear, requiring “some other inventive concept in its application” than mere (i.e., uncreative) application of the categorically ineligible discovery. Flook’s language (and approach) was explicitly reaffirmed by Mayo’s recitation of a requirement for an “inventive concept” (notwithstanding the failure of the Supreme Court to explicitly acknowledged that Diamond v. Diehr had impliedly overruled Flook on this point, and that Mayo has now impliedly overruled Diehr on this point by reinstating Flook. That Mayo also improvidently reiterated Benson’s preemption rationale without applying it in any way in the analysis is simply another example of uncareful opinions of the Supreme Court that engender further confusion rather than clarifying the law. As Professor Strandburg has suggested, we would do well to simply ignore the “preemption” language and focus on the real question, which Professor Jeffrey Lefstin has correctly described (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2398696) of whether we want a standard of inventive application or only of practical application. (Although I disagree with Professor Lefstin in regard to whether Funk Brothers was in fact the first instance of inventive application, we agree that the 1952 Act did not clearly overrule Funk Brothers. This is important so that people will not continue to argue that Giles Rich was correct in his later revisionist history (see https://books.google.com/books/about/Laying_the_Ghost_of_the_invention_Requir.html?id=xH1etwAACAAJ) that all questions of inventive creativity were placed in Section 103 by the 1952 Act, notwithstanding that P.J. Federico, who was the other principal co-author of the 1952 Act, argued the opposite – successfully – in the Application of Ducci case, 225 F.2d 683 (C.C.P.A. 1955) that Section 101’s “process” category (incorporating Section 100(b)’s definition of “process”) continued the “analogous use” test of inventive creativity requirement for claimed processes that the Supreme Court had articulated in Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U.S. 11 (1892)).
In summary, Mr. Doerre is simply wrong that Section 103 can do the job as currently written. But if it could, he would be no happier with the state of the law, so long as inventive application remained the law for what constitutes an eligible (or a patentable) “invention,” and all without regard to “preemption.” Should legislation move forward to eliminate the requirement for inventive application, we will have to learn if it in fact is a requirement of constitutional stature in granting authority to “inventors for their discoveries” (or is simply like the dicta in Graham v. John Deere, 386 U.S. 1, 6 (1966), that Congress may not remove inventions that have entered the public domain by granting patents on them – which the Supreme Court subsequently rejected in the copyright context as a constitutional limitation on legislative power in Golan v. Holder, 565 U.S. 302, 323-24 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 202 n.7 (2003)). But first, Congress would have to enact such legislation, and there are good reasons not to eliminate the inventive application requirement wholly without regard to the politics of which industries’ oxen will be gored thereby. And let’s hope that if Congress does go there, that Congress is careful not to thereby permit aesthetic creativity to provide the “practical application” that thereby authorizes the grant of a utility patent as novel and nonobvious subject matter (whenever the aesthetic contribution to the claimed invention functionally interacts with the substrate that forms the remainder of the “claim as a whole,” so that the printed matter doctrine will not apply and thus the aesthetic creativity will thereby prevent a finding of non-obviousness, so we will end up with a design patent on steroids issued as a utility patent).
Disclosure statement: I have no current financial interest in the issues addressed.