The Federal Circuit is Shirking Its Constitutional Duty to Provide Certainty for Critical Innovation

If the Federal Circuit is not going to fulfill its independent, constitutional judicial role to properly interpret the limited holdings of Supreme Court patent eligibility decisions and stop killing real and momentous innovations, all the progress and momentum we have seen under Director Iancu will be lost.

Here we go again! Another patent whose claims have been invalidated at the Federal Circuit—predictably, another medical diagnostic patent. Athena Diagnostics v. Mayo Collaborative (Fed. Cir. Feb. 6, 2019). This is getting old, tired and fundamentally ridiculous. The statute, which is all of one-sentence long, specifically lists discoveries as patent eligible. So why are discoveries being declared patent ineligible? To the extent these decisions are mandated by the Supreme Court, they directly contradict the easy to understand and very direct language of the statute.

The Federal Circuit is wrong, period. Perhaps they are so close to these cases and trying so hard to do what they think is right that they have lost perspective, but these rulings are fundamentally saying that discoveries are not patent eligible. We are told repeatedly that they are mandated by Supreme Court precedent. Obviously, that cannot be correct. The statute says: “Whoever invents or discovers… may obtain a patent…” Clearly, Congress wants discoveries to be patented, and in our system of governance, Congress has supremacy over the Supreme Court with respect to setting the law unless the law is unconstitutional. 35 U.S.C. 101 has never been declared unconstitutional, so discoveries must be patent eligible, period.

Barring Medical Breakthroughs

This shouldn’t be shocking, though. In the age of advanced science and medicine, and on the cusp of predictions that, thanks to advances in treatments and cures, humans will be able to one day—perhaps soon—live to be 140 or 150 years old, it makes no sense for the diagnostic innovations that will eventually lead to these treatments, devices and cures to be patent ineligible. Without a patent, these won’t be created or commercialized. The Cleveland Clinic, for example, has abandoned medical diagnostics because they cannot obtain funding for their startups based on such technology.

Congratulations Federal Circuit. In a myopic way, you have followed the precedent of the Supreme Court. Condolences to society. With the Federal Circuit failing to exercise independent judgment constitutionally vested in judicial officers of the United States, the judges are attempting to divine the will of the Supreme Court rather than apply the narrow teachings and holdings of the actual precedents they are charged with weighing. In so doing, under the guise of merely following Supreme Court precedent, the Federal Circuit has dramatically expanded the holding of Supreme Court patent eligibility jurisprudence to make vast categories of innovation unpatentable that the Supreme Court never considered.

Consider, for example, that in Mayo v. Prometheus the Supreme Court was faced with patent claims that were extraordinarily broad and practically claimed a natural law. No one in the patent community thought for even a moment that the patent claims at issue in that case were novel or nonobvious, or even that the patent adequately described the innovation being claimed. Yet, the Supreme Court took the opportunity to invalidate the claims as being patent ineligible because the claims at issue added so little beyond observing the natural law that the defined claim couldn’t possibly be worthy of a patent.


Bad Facts Make Bad Law

Consider, for example, that in Alice Corp. v. CLS Bank International the Supreme Court was faced with patent claims to a claimed invention that related to computerizing the function of what was essentially, in the view of the Supreme Court, a checkbook register. The Supreme Court during oral argument was even told—not once but twice—that the invention could have been coded by a second-year engineering student over a weekend. Obviously, as admitted by the attorney representing the inventor before the Supreme Court, this was not at all revolutionary. Indeed, if anything can be coded so that it actually works without bugs and is ready for release over a weekend, the code must be extraordinarily trivial. Second-year engineering students have taken, at best one, or maybe two coding courses, and a single weekend of coding isn’t even enough time to code a minimally complex e-commerce website that does nothing at all new. Coding anything just takes time.

With the two central cases considered by the Supreme Court covering “innovations” of a truly trivial magnitude, what exactly do these decisions say about innovations relating to artificial intelligence or machine learning? What do they say about a life sciences invention where all the judges on the Federal Circuit acknowledge that the invention is one of the most important medical innovations of our time, but simply not patent eligible? How can these decisions have any relevance or application with respect to real innovation?

It is time to face the facts—the Supreme Court has considered only bad cases, with bad facts, where there was really no innovation presented in the claims, or even in the patent application as a whole. These decisions have absolutely no meaning or proper application with respect to any inventions, let alone inventions of monumental complexity such as true artificial intelligence, autonomous vehicles, or new medical diagnostics that allow risk-free testing of common ailments, where previously existing tests required potentially catastrophic risk.

Athena Diagnostics

It is long past time for the Federal Circuit to do the right thing. Footnote 4 from the February 6 majority opinion in Athena Diagnostics v. Mayo Collaborative explicitly agrees with the dissent, but finds that the Supreme Court precedent does not allow for a different decision, and since a previous panel felt similarly compelled not to distinguish the non-invention in Mayo v. Prometheus from the revolutionary invention present in Ariosa Diagnostic v. Sequenom, 788 F.3d 1371, 1376 (Fed. Cir. 2015), this panel is restricted and must find the claims patent ineligible. But what about Rapid Litigation Management v. Cellzdirect, 827 F.3d 1042 (Fed. Cir. 2016)? What about Vanda Pharmaceuticals, Inc. v. Westward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018)? There are judges on the Federal Circuit who are well capable of distinguishing the non-inventions of Mayo and Alice with the truly compelling inventions that are being presented in the numerous cases where claims are being unceremoniously invalidated under the guise of a mandatory precedent that is simply not present.

Iancu Can’t Do it Alone

“I would urge the [Federal Circuit] to reassess Supreme Court precedent and see if it is really that restraining,” said United States Patent and Trademark Office Director Iancu of Athena v. Mayo, at the Inventing America conference on February 12 in Washington, D.C. at Covington Burling.

There is great optimism among patent owners and innovators that things are changing and will continue to improve at the USPTO under Director Iancu’s guidance, but he is just one decision maker. Much of the industry is behind him, and his energetic support for a better, fairer, more predictable patent system has given many courage to follow him, stand up and speak, including both industry leaders and politicians. So far, he has been literally carrying the banner of patent protection with the industry following. But we are rapidly reaching the point in time where he is going to need the kind of help the industry cannot provide. If the Federal Circuit is not going to fulfill its independent, Constitutional judicial role and actually properly interpret the limited holdings of Supreme Court patent eligibility decisions and stop killing real and momentous innovations, all the progress and momentum will be lost.

Hope in Congress

Of course, there is another option, which is Congressional patent reform that overrules the Supreme Court and realizes that real patent reform that helps real innovators will be an economic stimulus package that helps America compete on the international stage. That message is getting through to many Members of Congress; Representatives Doug Collins (R-GA) and Hank Johnson (D-GA), both on the House Judiciary Subcommittee for IP, understand the importance of patents, as well as Representatives Steve Stivers (R-OH), Thomas Massie (R-KY) and Marcy Kaptur (D-OH), and others. Senators Chris Coons (D-OH), Dick Durbin (D-IL) and Mazie Hirono (D-HI) are also supporters of innovators and on the Senate Judiciary Committee.

Still, patent reform that benefits innovators in the 116th Congress will be a heavy lift. It will take time—likely, too much time, before things shutdown for the 2020 election cycle. That doesn’t mean we shouldn’t try to persuade Congress, planting a seed for the 117th Congress and hoping for the best during the 116th Congress. However, it does mean the battle will likely be won, or lost, over the next several years in the courts. And that means the Federal Circuit.

A Plea to the CAFC

To the Federal Circuit: Director Iancu is asking for fresh eyes on the relevant precedent. That ask seems both fair and reasonable. When was the last time you read Mayo and Alice cover to cover? Perhaps now is a good time to do just that, followed by an all-judges session to discuss. The industry—the U.S. economy—needs the Federal Circuit to get on the same page with respect to patent eligibility. Director Iancu has set forth a plausible test under Supreme Court and Federal Circuit precedent for both Steps 2A and 2B of the Alice/Mayo framework. Considering that framework in light of the truly limited holdings in Mayo and Alice, directed to poor, non-inventive claims, is necessary in order to provide certainty—which is, after all, the role of the law.

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Copyright: billperry 


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Join the Discussion

26 comments so far.

  • [Avatar for PTO-Indentured]
    February 23, 2019 09:39 am

    Court-sustained IP jabberwocky: the delight of big-co. oligarchs / the death of U.S. individual inventors.

    And thus, a caste system prevails

  • [Avatar for chrisw]
    February 21, 2019 05:53 pm

    Those with the weal that influenced congress to pass AIA, and those involved with these sabots, have the mentality of an ape sitting on the wrong side of a tree branch as they saw at it. Fewer and fewer want their gadgets, the average Pat is scrambling to keep the rent paid and food on the table. The system even cut out the dude with the water-balloon refilling invention, by its enablement of such schemes to deprive the inventor. This hurts all, including patent lawyers. Imagine the damage this has done not only to our individual inventors who historically are responsible for the vast majority of new innovation, but to patent lawyers as a group. I wonder how may billions its cost. Evidently ABA isn’t effective as protecting its members’ interests as are most other trade organizations like AMA, ADA, plumbers, electricians, and teachers unions. Just throw them patent lawyers under the bus by putting monkey wrenches in the work, and watch it come to a grinding stop. Some small group somewhere is happy about this.

  • [Avatar for Anon]
    February 21, 2019 10:33 am


    Sand in the machine…

    … or sabots… 🙂

  • [Avatar for chrisw]
    February 20, 2019 05:51 pm

    hah. The Dow isn’t up 150%, since it was trading around 16000 around Alice time in 2014, 150% of that number would be 24,000 so an increase of 152% would put it at 40,000 or so. Maybe you meant 52%. Importantly, the Dow isn’t an Innovation Index !! There are many components, one of which is inflation. Look at the “national debt”, mention the percentage it is increased since 2014 and tie that to innovation !! It is innovative in a way, printing all that commercial paper, a practical use of innovations in printing !! One issue I see is proliferation of judicially-created doctrines, it must be checked. Congress needs to get its rear in gear, we haven’t seen any real innovation lately, like we did back in the day and its b/c somebody threw sand in the machine.

  • [Avatar for B]
    February 20, 2019 05:43 pm

    At Litig8or: “you didn’t even attempt to answer my question. And nobody has posted any data to support the argument that Section 101 decisions are bad for the American economy”

    Your question is beyond stupid. Seriously. How can one gauge the damage done to portions of the economy based on the whole of the economy, and in the patent realm the damage is all long term.

    Short term big companies win as the steal the innovations of small business.

    In the long term innovation is stifled and small innovative businesses die.

    Your apologetic anti-patent opinions are just expressions of ignorance.

    There’s your answer. I’m embarrassed for you that I had to answer your question.

  • [Avatar for Litig8or]
    February 20, 2019 05:16 pm

    B- you didn’t even attempt to answer my question. And nobody has posted any data to support the argument that Section 101 decisions are bad for the American economy.

  • [Avatar for B]
    February 20, 2019 05:09 pm

    @ Litig8tor “So what is the data showing that the ‘industry’ needs the Fed Cir to do something different”

    When is it wrong to demand that the CAFC follow statutory law rather than their own preferences? Judges do amazing damage to individuals and to society every time they knowingly disobey the law.

    In five years the Chinese will be eating our lunch in software (especially AI) and 5G communications because a number of now very bright people wearing black robes believe that they know what the law should be rather than address the laws as written.

    Why not make every statutory provision optional to the whims of judges. Heck, same with the rules of civil procedure and evidence. Isn’t due process overrated?

    I’ve not gotten into most of your generally idiotic posts in the past, but your short-sightedness in technology development is beyond astounding, and your grasp of the law is tenuous at best.

  • [Avatar for Litig8or]
    February 20, 2019 09:28 am

    The Dow Jones is up 152% since Alice. So what is the data showing that the “industry” needs the Fed Cir to do something different? Not asking to pick a fight, but really curious as to any data backing this argument. Thx

  • [Avatar for B]
    February 14, 2019 03:35 pm

    @ Anon “The PRIMARY designation has more to do with which entity initiated the mess.”

    Interestingly enough that would have been the CAFC starting in Bilski. Both the CAFC and SCOTUS were in agreement that the claims were patent ineligible based on their own special departures from the statutory language of 101.

    Granted, however, the SCOTUS had the power to actually read s101 and obey the Constitution by interpreting, not re-writing, s101.

    How freaking stupid was it that the SCOTUS gave the backhand slap to the CAFC by righteously poo-poo’ing the Machine-or-Transformation test as an unreasonable interpretation of s101, then in the same opinion hold Bilski patent-ineligible by failing to follow the statutory language of s101.

    And these are supposedly the smart guys.

  • [Avatar for Anon]
    February 14, 2019 03:26 pm


    I have to disagree with your statement of:

    It really is a hard one to apportion blame. The reality is that neither the SCOTUS nor the CAFC are willing to address their own nonsense.

    My point as to one entity being the PRIMARY has nothing to do with whether or not more than one entity IS to blame.

    The PRIMARY designation has more to do with which entity initiated the mess. In my psychological thought experiment of simian-training in a cage with a fire-hose, there is clear distinction as to which judicial entity represent the simians and which judicial entity is holding the fire hose.

  • [Avatar for ChrisW]
    February 13, 2019 10:37 pm

    FWIW I ran across this Sup. Ct. passage:

    “The executive not only dispenses the honors, but holds the sword of the community. The Legislature not only commands the purse, but prescribes the rules by which the duties and rights of every citizen are to be regulated. The judiciary, on the contrary, has no influence over either the sword or the purse; no direction either of the strength or of the wealth of the society; and can take no active resolution whatever. It may truly be said to have neither force nor will, but merely judgment.” Evans v. Gore, 253 U.S. 245, 249, 40 S.Ct. 550, 551 (1920)

    hmmmm… “…can take no active resolution whatever.” My, how attitudes have changed.

  • [Avatar for B]
    February 13, 2019 09:35 pm

    “Forgive me if I find Judge Newman’s recent dissent worthy of any great amount of consideration.”

    Correction: Forgive me if I find Judge Newman’s recent dissent unworthy of any great amount of consideration.

  • [Avatar for B]
    February 13, 2019 05:06 pm

    @ anon “Is the CAFC to blame?


    Are they the primary judicial entity to blame?

    Absolutely not.”

    It really is a hard one to apportion blame. The reality is that neither the SCOTUS nor the CAFC are willing to address their own nonsense.

    I will give credit to Judge Michel given that he aptly described the problem created by Bilski and predicted the chaos that Alice Corp. would cause.

    That said, I’m still looking for a CAFC decision on rehearing where a CAFC judge actually does the right thing that shakes up the mess created by the courts. Berkheimer is the closest the CAFC ever came to doing so, but it appears that the majority of CAFC judges now treat Berkheimer as dead-letter law.

    So beyond the writings of Judge Michel and the occasional angst demonstrated by Judges Plager and Newman when it counts for nothing in a dissenting opinion, I’m not impressed.

    I recently queued up every one of these issues to the CAFC in a petition on rehearing. Every single one.

    They responded with silence.

    Maybe one of these CAFC judges will eventually explain their own lawlessness, and maybe one day they will explain why they refused to do the right thing when it counted.

    Personally, I think that the oath to the Constitution that judges take enables them to defy an unconstitutional SCOTUS decision. Let the SCOTUS take up a cert. petition and defend their Bilski/Mayo/Alice nonsense on Constitutional grounds.

  • [Avatar for Anon]
    February 13, 2019 04:30 pm

    Perkins @10,

    Please be careful, as you appear to be treading into the use of legal terms outside of their meaning.

    “Ownership,” for example, is likely being misapprehended by you.

    Grant remains important, as it is THAT grant that takes an inchoate right and makes it into a full and proper legal right.

  • [Avatar for B]
    February 13, 2019 04:22 pm

    @ anony “One of the bright spots in the Athena decision is the dissent by Judge Newman. Judge Newman indicates that, yes, the claims should be considered as a whole (per Diamond v. Diehr) and the natural law and the individual steps used to observe the law should not be analyzed in separate vacuums.”

    I recently filed a petition for rehearing to the CAFC on the “claims as a whole” issue, and even cited Diehr. Not even the PTO responded by claiming that the claims as a whole issue had been addressed. Nope, in the end the CAFC was satisfied that there was no “inventive concept” regardless of whether or not the APA had been satisfied.

    Judge Newman, as with every other judge on the CAFC, said nothing. Forgive me if I find Judge Newman’s recent dissent worthy of any great amount of consideration.

  • [Avatar for Anon]
    February 13, 2019 02:05 pm

    anony @ 9,

    What you point out is merely the Gordian Knot that the Supreme Court has created with the Diehr case and subsequent cases that indicated NOT ONLY that the Diehr case was “most on point,” but also expressly indicated that the Diehr case was not only NOT CHANGED (unlike how the Benson AND Flook cases were changed, even though this fact has been subsequently ignored), but the Diehr case remained good law at the same time the Court scrivened itself into a direct contradiction with the Diehr case.

    Cue the Kavanaugh Scissors.

  • [Avatar for Perkins]
    February 13, 2019 01:35 pm

    Article I Section 8. Clause 8 – “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Please don’t forget that it is their writings and discoveries. Their property, which they already own and to which that exclusive right is secured, not granted. As Gene clearly points out, they own all of their discoveries and writings, not just particular types, despite what some misguided PTAB APJs, CAFC judges and SCOTUS justices think.

  • [Avatar for anony]
    February 13, 2019 11:56 am

    Where the article mentions Alice, the article seems to suggest that it is okay to use 101 judicial exceptions to deny patents on inventive concepts of “trivial magnitude”. This is at odds with the objective application of section 101, which is advocated elsewhere in the article (“Whoever invents or discovers… may obtain a patent…”). Arguably, the Alice decision is objectively wrong on its face because the claims are not considered as a whole. Rather, the claims are split into two parts: i) the abstract idea and ii) the steps using modern computer technology to perform the abstract idea. After splitting the baby, Justice Thomas facetiously declares that the claims are not eligible because neither the abstract idea, the individual steps, nor the modern computer technology form an inventive concept.

    One of the bright spots in the Athena decision is the dissent by Judge Newman. Judge Newman indicates that, yes, the claims should be considered as a whole (per Diamond v. Diehr) and the natural law and the individual steps used to observe the law should not be analyzed in separate vacuums [1]. “[A] new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Athena quoting Diehr. It is nice to see a judge recognize the logical fallacy of most 101 judicial exception rejections. Hopefully logic and objectivity will eventually prevail. As it stands now judges are free to either subjectively reject claims using a piecemeal attack under the Alice/Mayo two step or to subjectively allow claims by considering them as a whole under the Alice/Mayo two step. All the power is in the judges’ personal beliefs as to what subject matter should be patented and what claim features are inventive *enough*.

    [1] Note that Alice considered an abstract idea performed with computer technology and that Athena considered a natural law observed with medical diagnostic steps.

  • [Avatar for PTO-Indentured]
    February 13, 2019 10:11 am

    Witting ambiguity in such law / rule making — ‘The Breakfast of Oligarch Champions’

  • [Avatar for Night Writer]
    Night Writer
    February 13, 2019 10:00 am

    @4 Paul Cole —maybe you will get that the CAFC has been spitting in the face of patent attorneys in the USA now for about 15 years.

    Appeal to the CAFC? That is a laugh. That is like appealing to Google to help improve IP protection. Good luck. The CAFC judges were most likely selected by Google and appointed by Obama. They were selected for their dislike (and often ignorance) of IP rights.

  • [Avatar for Paul Cole]
    Paul Cole
    February 13, 2019 08:01 am

    I should have said Judge Lourie. Apologies.

  • [Avatar for Anon]
    February 13, 2019 07:53 am

    Paul Cole,

    The simians in the cage of the CAFC have by now been well fire-hosed by the Supreme Court whenever any simian attempts to climb the ladder in the middle of the cage and reach for the “true facts” of the bananas hanging within reach at the top of the ladder.

    Is the CAFC to blame?


    Are they the primary judicial entity to blame?

    Absolutely not.

  • [Avatar for Paul Cole]
    Paul Cole
    February 13, 2019 05:37 am

    Athena marks a further precedent deeply rooted in the quicksand of fake fact and lack of attention to detail, and in that respect brings US jurisprudence into yet further disrepute internationally.

    Attention is directed to the CIPA amicus brief downloadable from, and in particular to the chart on page 6 which contains a line dividing products of nature from products created by human intervention including as end product a three-component precipitated autoantibody which a substance new to science and is isolated as a pellet and radioactively counted. The point of inclusion of that chart was to enable even a non-technical reader such as Judge Reyna to see the point if so minded.

    One of the most disgraceful aspects of the decision is that Judge Plager originally trained as a chemist, and was therefore of his own knowledge (to the extent that it has not been lost through Alzheimers) capable of seeing his way through to the true facts.

    In Ariosa, the CAFC merely insulted Oxford University. In Athena it has insulted both Oxford and the Max Plank, two of the most distinguished research institutions in the world. A smack in the eye for the UK AND a smack in the eye for Germany. Well done!

  • [Avatar for B]
    February 12, 2019 08:44 pm

    “A Plea to the CAFC”

    Wasted breath.

    The CAFC does not care about right from wrong, and the few judges who apparently understand some of the problems don’t see the problems they created. Alice/Mayo was idiotic enough on its own, but the CAFC couldn’t be bothered with the most sage advice of Alice Corp.. i.e., tread lightly. While Judge Plager eventually got around to reading an article or two by Judge Giles Rich, he’s done zip to address problems the CAFC, not the SCOTUS, created.

  • [Avatar for B]
    February 12, 2019 08:35 pm

    “The statute, which is all of one-sentence long, specifically lists discoveries as patent eligible.”

    You need to read the petition for Asghari-Kamrani v. U.S. Automobile Ass’c.

    Filed soon in a Supreme Court near you.

  • [Avatar for Anon]
    February 12, 2019 05:07 pm

    Cue the Kavanaugh Scissors.