by Dennis Crouch
I have really enjoyed reading the new article by Professors Rantanen and Datzov providing empirical evidence that eligibility outcomes are now quite predictable. When the Supreme Court decided Bilski back in 2010, I was quite concerned about predictability and co-authored a BTLJ article with Prof. Rob Merges on the topic. If you recall though, in Bilski the Supreme Court offered no decision making framework beyond suggesting a case by case approach. At the time, there were only a sparse few prior cases to guide future decisions. But a more complete legal framework was developed fairly quickly in the subsequent cases of Alice Corp and Mayo, and the lower courts decided several hundred eligibility cases that provided substantial guideposts that so often seek in our common law system.
Although I was initially surprised at their reported high affirmance rate of eligibility decisions — on reflection it has begun to make sense. The framework provided a key procedural process and hundreds of decisions gave the opportunity to work through ambiguities. In our 2010 article, Merges and I were particularly concerned about USPTO patent examiners being able to follow the atextual guidelines offered by Bilski, but the Patent Office also acted to create and then repeatedly modify its eligibility examination guidelines in a way that offered a straightforward path for non-lawyer examiners to substantially follow the law set out by the Court.
The article addresses the rhetoric of unpredictability and argues that “there is significant reason to think the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges, may be more of a misconception than an accurate narrative.”
For folks fighting through eligibility cases these days, the biggest concern is no longer unpredictability, but that the law has pushed too far against patentability. Many like the pendulum analogy because it suggests a return — that the pendulum will swing back.
In my view, the pendulum will (and is) swinging back, but not via a change in the law. Most of the patents that have been invalidated were those applied-for prior to the Supreme Court’s radical change in eligibility law. Since then patent prosecution attorneys have substantially modified their approach to drafting patent applications in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments. Likewise, patent litigators are wary of asserting claims that are likely to be found ineligible and so shy away from those potential case killers. The result then is that I expect to see far fewer eligibility cases in the coming years, but that will reflect in a change in practice rather than another change in the law.