Why the Federal Circuit is to Blame for the 101 Crisis

“What should the Federal Circuit be doing? Distinguishing Alice and Mayo for what they really are would be a wonderful start…. It is time for the judges of the Federal Circuit to stand up and fulfill their Constitutional Oaths. They must interpret Supreme Court precedent—all of it—consistent with the statute and the Constitution.”

The following remarks were delivered by Gene Quinn at the Utah IP Summit on February 22.

When the Supreme Court believes that the Federal Circuit has made an error, they will reverse and remand with broad guidance, but often are not able to determine what the proper test should be. The Supreme Court wants, and expects, the Federal Circuit to determine the proper test because, after all, it is the Federal Circuit that is charged with being America’s chief patent court. But the Federal Circuit has become myopic. It is getting tiring to read in case after case— where real innovation is involved—the Federal Circuit saying that they are constrained, even forced by either Alice or Mayo, to find the very real innovation to be declared patent ineligible. This madness has to stop!

A Bilski Moment

“I would urge the court to reassess Supreme Court precedent and see if it is really that restraining,” Director Iancu said at Inventing America on February 12 in Washington, D.C. He is, of course, correct. It is time for the CAFC to have—what I will refer to as— a “Bilski moment.” You will recall in Bilski v. Kappos the Supreme Court explained that at least some business method patents must be patentable for a variety of reasons, including the fact that the statute actually refers to business method patents.

It is time for the Federal Circuit to return to first principles. At least some discoveries, for example, must be patentable.

We learn in our first semester of law school the importance of distinguishing cases based on the facts and applying the law and statutes to those facts. Somewhere along the way, the Federal Circuit has forgotten what we all learned as first year law students.

We must all recall that, in both Mayo and Alice, the Supreme Court explained the importance of treading lightly in construing exclusionary principles because there is real concern that exclusionary principles can “swallow all of patent law.” That is because every invention starts with an idea or builds on a law of nature or natural phenomena.


Looking Beyond Bad Facts

So, what should the Federal Circuit be doing? Distinguishing Alice and Mayo for what they really are would be a wonderful start.

In Alice Corp. v. CLS Bank the Supreme Court was faced with patent claims 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. How trivial must the code be for that to be correct?

Obviously, as admitted by the attorney representing the inventor before the Supreme Court, the code was simplistic, and the invention was not at all revolutionary. In fact, it wasn’t an invention at all. Indeed, if anything can be coded so that it actually works without bugs and is ready for release over a weekend, the code must necessarily be extraordinarily trivial. Second-year engineering students have taken, at best one, or maybe two coding courses, in languages that are very basic. And a single weekend of coding isn’t even enough time to code a simple e-commerce website that does nothing at all new. Coding anything just takes time.

Consider 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 that the patent claims at issue in that case were novel or nonobvious, or even that the patent adequately described the alleged innovation that was 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. Again, there was no invention present.

So, with these two central cases considered by the Supreme Court—Alice and Mayo—the alleged inventions, if they existed at all, were of a truly trivial magnitude. So, exactly what do these decisions say about innovations relating to artificial intelligence or machine learning? What do these decisions say about a life sciences invention where everyone acknowledges that the invention is one of the most important medical innovations of our time because it eliminates all risk for mother and unborn child? How can these decisions have any relevance with respect to any real innovation?

It is time to face the facts—the Supreme Court has considered only bad cases, with bad facts, where there was 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 artificial intelligence, autonomous vehicles, or new medical diagnostics that allow risk-free testing of common ailments, where previously existing tests required potentially catastrophic risk.

This should be self-evident to any first-year law student who has completed legal analysis and legal writing.

Study the Statute

But let’s not stop there. Let’s actually look at the statute. The statute, which is all of one-sentence long, specifically lists discoveries as patent eligible. So why are discoveries being declared patent ineligible? We are repeatedly told by the Federal Circuit that they are mandated by Supreme Court precedent to find patent claims invalid. But why? Is that true? Simply put, NO. To the extent decisions by the Federal Circuit find discoveries patent ineligible, they directly contradict both the statute and the Constitution. The Federal Circuit is wrong, period.

Perhaps they are so close to these cases and, and maybe a little myopic at times. But what is undeniable is that rulings that result in conclusions that discoveries are not patent eligible are wrong. 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. So, the Federal Circuit should be working backwards from any conclusion that is inconsistent with the statute. Figure out where the analysis goes awry, and adjust accordingly, because clearly, neither Alice nor Mayo can be inconsistent with the Constitution or the statute. Yet, somehow many CAFC decisions are.

Of course, another alternative would be to adopt the thoughtful Step 2A and 2B analysis Director Iancu has put forth for examiners. Having a single test applied by the courts and the USPTO would go a long way to creating certainty.

Having said that, I would encourage practitioners to start arguing in every fora that judicial exceptions no longer exist, period.

Henry Schein Shines a Light

Earlier this year, on January 8, in Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, the Supreme Court considered the Circuit split over whether the “wholly groundless” exception to a Federal Arbitration Act  (FAA) provision requiring the arbitrator to decide issues the parties had agreed to arbitrate could be relied on to permit a district court to determine in the first instance whether a particular dispute was arbitrable, notwithstanding that the parties had agreed arbitrability questions should be decided by the arbitrator.

The Supreme Court unanimously held that the exception to the statute does not apply and cannot exist. The reason is simple. As Justice Kavanaugh explained, acknowledging that the FAA had been adopted by Congress and signed by the President: “The short answer is that the Act contains no [such] exception, and we may not engraft our own exceptions onto the statutory text.” Henry Schein, slip op. at 7. Hammering home this rather unambiguous principle, Justice Kavanagh noted: “Again, we may not rewrite the statute simply to accommodate [a recognized] policy concern.”  Id. at 8.

Will citing Henry Schein work? Most think not, but it would create an obvious hypocritical moment. Perhaps a capitulation that Congress would need to pay attention to. The Supreme Court constantly tells the Federal Circuit that patent law is not different. If that is true, then the judicial exceptions to the statute should not exist. If judicial exceptions do exist to 101 that, means patent law is different. This would create an obvious pivot point that members of Congress could all understand.

Creating Chaos

Regardless, it is time for the judges of the Federal Circuit to stand up and fulfill their Constitutional Oaths. They must interpret Supreme Court precedent—all of it—consistent with the statute and the Constitution. The way judges of the Federal Circuit used to do this was to understand that the Supreme Court would address patent matters only occasionally, and they would speak in broad language about very specific facts. However, the Federal Circuit has in recent years increasingly read deep into Supreme Court language, well past what was actually said, in search of some meaning that simply is not present in the language itself.

The Federal Circuit has been reversed so often by the Supreme Court it seems that at least some of the judges on the Court have simply decided the takeaway message is that the Supreme Court does not like patents. When faced with a decision about whether to find a patent valid or invalid, they simply err on the side of finding the patent invalid, which seems safer and in keeping with what the Supreme Court would do.

Such a level of subjectivity leads to chaos and needs to change.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

30 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    March 2, 2019 08:48 am

    @29 B> Intellectually lazy, stupid justices

    No. They know what they are doing. It is judicial activism.

  • [Avatar for B]
    March 2, 2019 01:46 am

    @ anon “I do reflect – and share your misery – with the fact that there IS blame at the CAFC level.”

    And yet the stupidity does start at the top. Bilski is a perfect example of judicial incompetence.

    The holding of Benson was based on the notion that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” Benson at 70.

    It took the Supreme Court nearly forty years to realize the fundamental fallacy of this statement. Bilski v. Kappos, 561 U.S. 593 (2010) (stating that “[t]he Court is unaware of any ordinary, contemporary, common meaning of “process” that would require it to be tied to a machine or the transformation of an article.”).

    While I applaud the Supreme Court’s four decades late realization on claim construction, it is worth noting that the Supreme Court wrongly blamed the Federal Circuit for following Supreme Court precedent. To wit, the Supreme court stated: “In holding to the contrary, the Federal Circuit violated two principles of statutory interpretation: Courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed[.]’” (citing Diamond v. Diehr, 450 U. S. 175, 182 (1975)).

    This fundamental principle of statutory construction is worth repeating: Courts should not read into the patent laws limitations and conditions which the legislature has not expressed.

    Why is this statement worth repeating? Because in nearly the same breath that the Supreme Court condemned the practice by the Federal Circuit, the Supreme Court violated this very principle when the Supreme Court arbitrarily declared the business method in Bilski an “abstract idea” by of all things citing Benson as authority. Think of this. The Supreme Court overruled the holding of Benson while relying on Benson to conclude “[t]he concept of hedging . . . is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.”

    Yet hedging is a process. The Supreme Court has never contested this fact. The Bilski claims set forth a specific set of steps for hedging.

    There is no definition of the word “process” that could possibly justify Bilski’s specific risk hedging claims from failing to qualify as patent-eligible subject matter in § 101.

    In addition, there is also no definition of the term “abstract” that allows any court to classify Bilski’s risk hedging as “abstract,” and in doing do the Supreme Court merely made the term “abstract” meaningless.

    Further, did the Bilski claims preempt risk hedging? Apparently not as the USPTO found the Bilski claims novel and nonobvious. That is, not a single risk hedging process that preexisted Bilski’s claims would have ever been affected.

    Intellectually lazy, stupid justices

  • [Avatar for Night Writer]
    Night Writer
    March 1, 2019 12:23 pm

    @26 B

    I agree. All one has to do is read the CAFC opinions and it doesn’t take long before you smell the stench of anti-patent judicial activism.

  • [Avatar for anon]
    March 1, 2019 08:15 am


    I do reflect – and share your misery – with the fact that there IS blame at the CAFC level.

    The simians in that cage have been too well trained with the Supreme firehose.

    Which is why I had amended my long-term suggestion of Congress exercising their Constitutional power of jurisdiction stripping WITH a resetting of a new lower Article III court (for others, the presence of an Article III court is necessary per the Marbury case, but note that THAT case did not dictate that the particular reviewing Article III court had to be the Supreme Court).

  • [Avatar for B]
    February 28, 2019 10:55 pm

    @ anon “I “get” that there is blame below, and I do not doubt such. But make no mistake, the blame below PALES in comparison to the officious and ultra vires scrivining at the top.”

    I get it. I get your position. The SCOTUS has a history of lying out it’s own case law from Benson to Flook to Alice. They’re freaking MORONS who cant be bothered with reading their own decisions, and rather than man-up and admit OH MY GOD WE’RE IDIOTS too stupid to read our own case law, they pass the problem to the CAFC.

    The CAFC, however, has proved to be a collection of people so dishonest and so disconnected that they cannot man-up to some of the most stupid statements in the history of law.

    ARE YOU READIMG THIS CAFC? YOU ARE DISHONEST! You all need to be replaced with individuals with more knowledge of the law and with people more honest that you. You are spineless black-robed incompetents.

    The SCOTUS misrepresents its own case law from 100+ years ago but the CAFC misrepresents its own case law from months ago.

    Judges Stoll, Taranto, Mayer, and Hughes, you have a lot to answer for. Judge Mayer, did you bother to read your own idiotic dicta in In re Guldenaar? “Eligibility questions mostly involve general historical
    observations, the sort of findings routinely made by courts
    deciding legal questions.”

    What? Do you read enough of the New York Times and People magazine while perusing enough Oprah and The View so as to provide the wisdom to decide issues of “general historical observations?”

    Resign, Judge Mayer. Leave issues of law to adults.

  • [Avatar for Anon]
    February 28, 2019 08:32 pm

    The statement “because clearly, neither Alice nor Mayo can be inconsistent with the Constitution or the statute.” could not be more wrong.

    Gentlemen, the scoreboard is broken and it is at the hands of the Supreme Court that the scoreboard was broken.

    I “get” that there is blame below, and I do not doubt such. But make no mistake, the blame below PALES in comparison to the officious and ultra vires scrivining at the top.

    You aim for symptoms of the disease rather than the cause.

  • [Avatar for Anticipat]
    February 28, 2019 01:25 pm

    The PTAB (previously BPAI) has a rich history in shaping patent-eligibility. The Supreme Court case Diamond v. Diehr moved the 101 needle in finding an algorithm claim to be patent-eligible because of its practical application to curing rubber. This decision originally stemmed from the CCPA (predecessor to the Fed circuit) reversing a Board decision that affirmed the Examiner’s 101 rejection. Another Supreme Court decision, Diamond v. Chakrabarty, paved the way for patenting man-made genetically-modified living organisms. This decision also stemmed from a Board rejection of the claims under 101, with the CCPA again reversing the Board’s affirmance of the examiner’s 101 rejection.

    Expect the PTAB to continue to reverse improper Section 101 rejections as it has a tail wind at its back. This could benefit the entire patent bar at least for predictability sake. Just by virtue of the Board deciding a more diverse set of applications than courts, there are more shades of gray to work with. And some of these gray cases can be good candidates for testing the proper boundaries of what is patent-eligible. Even if the Board affirms the rejections as patent-ineligible, appeals that go higher up could help give the Federal Circuit (like its CCPA predecessor) a chance of redeeming itself as the 101 conundrum culprit.

  • [Avatar for B]
    February 28, 2019 12:04 am

    @ Gene “So, the Federal Circuit should be working backwards from any conclusion that is inconsistent with the statute. Figure out where the analysis goes awry, and adjust accordingly, because clearly, neither Alice nor Mayo can be inconsistent with the Constitution or the statute. Yet, somehow many CAFC decisions are.”

    I wrote pretty much this same thing, i.e., that the CAFC needs to make their holdings consistent with 101 and construe Alice narrowly to the extent possible . . .

    Their response was *crickets*

    I’ve lost all respect for the CAFC. “Invention” is nothing but a capricious judicial veto by a black-robed technically-ignorant person in defiance of the national policy Congress set in the language of 101

  • [Avatar for Mike]
    February 27, 2019 06:16 pm

    Anon: In that sense, I kind of wish in a way that the Supreme Court does nothing, encouraging all the more for the Congressional sword to slice the Knot. Because if the Supreme Court backtracks, the incentive for Congress to set things straight might be lost. And because Congress’ settings things straight would be akin to a re-emphasis of “ok, do what we said this time” (because this whole issue rests on the Court not doing what Congress said), the settings things straight would have more of an incentive to include jurisdiction stripping to go along with the “do what we said this time”, as you’ve mentioned (and maybe dreamed of) before.

    I will add that things said here in these comments indeed do have an influence beyond this blog and just may very well end up in the hands of DC particulars (wink wink), so thanks again for taking the time to provide your detailed explanation.

  • [Avatar for Anon]
    February 27, 2019 06:11 pm


    I certainly agree – it remains to be seen whether the Bench as a whole are willing to admit their own mistakes (which is a prerequisite for any use of the Kavanaugh Scissors).

    To me, the best path forward remains the dual work for Congress to explicitly repudiate what the Supreme Court has done AND to apply their Constitutional power of jurisdiction stripping and remove the Supreme Court from the non-original jurisdiction of hearing patent law appeals (keeping in mind that the fire-hosed simians in the current CAFC would need to be reset as well).

  • [Avatar for Curious]
    February 27, 2019 03:34 pm

    Anon @15. Just a reminder (and to paraphrase something expressed here before) … 1 is not 5. While I think Gorsuch would be on the right side (no pun intended), Thomas has written some bad opinions, and Scalito was on the wrong side in Oil States.

  • [Avatar for BP]
    February 27, 2019 12:17 pm

    @16 Anon, ha 🙂 I worked a bit on Knight, so it’s not the immunity issue. U Florida v GE is right up there with EPG, to be molded, melted, reshaped, repurposed, . . . to reject anything under the sun. The panel should be subjected to manual processing of their vitals with pen and paper where the vitals are taken by hand (ear against the chest, manual palpations and the like). My childhood dentist used a polished spoon to see and tap teeth to discern health. The Luddite panel deserves the same treatment as a way to contain healthcare costs and promote ancient science.

  • [Avatar for Anon]
    February 27, 2019 10:50 am

    I agree that for the Supreme Court to actually use the Scissors, that they would have to mightily walk back from their prior positions (and some on the Bench may simply be incapable of such an action); that being said, their IS a building consensus (as I noted) across all three branches that the intrusion of the Supreme Court and their mucking up of 35 USC 101 is a serious problem, that if the Court does not backtrack now, that THEY will be pegged as the scape goat for the fruits of their works. ALL of the woes of a degraded innovation environment will be placed at their (meddling and officious) feet, and you can rest assured that the “out” NOT taken will be brought front and center to any later waffling that they may attempt to engage in.

    From the likes of yours truly (and certainly others), the Court’s own actions will be in the spotlight.

    And a growing sense of disrepute – from each of the various angles – is certainly one motivator for fixing the underlying problem of the score board being broken.

  • [Avatar for Mike]
    February 27, 2019 08:17 am

    Anon, thanks for the writeup. Yes I am familiar with Gordian Knot. I wanted to understand exactly your application and solution proposition in this context. This is very clear now.

    I’m not sure if SCOTUS will grasp those scissors, but perhaps Congress can bring out the sword.

  • [Avatar for Anon]
    February 26, 2019 06:00 pm


    I have to wonder what precisely about U Florida v GE has you upset?

    Is it the Sovereign Immunity question? the “101 does not contradict 282” question, or the 101 wax of nose treatment?

    (Mike – I would note that this immediate case ALSO plays ping pong with other cases and itself shows the contradictions in the Common Law law written by the judicial branch that has superseded the actual words of Congress)

  • [Avatar for Anon]
    February 26, 2019 05:53 pm


    The “two” that I reference are:
    1) the Schein holding, and
    2) all three elements of the statement of Kavanaugh during the oral argument exchange (and not two particulars of those three items).

    The Gordian Knot I refer to is the hopeless mess of jurisprudence about 101 that the scrivining (Common Law law writing) of the Supreme Court. The entire bolus of their decisions cannot be made into a cohesive whole, seeing as they have contradicted themselves in the back and forth of decisions on 101, from the p00r starting points of Benson and Flook to the approaching reasonableness of Diehr and Chakrabarty, back to the asinine of Bilski, Mayo and ending in Alice.

    To attempt to summarize all of the mess of these decisions in but a single paragraph cannot do justice to the level of harm and contradictions that the Supreme Court has rendered (and each of these cases has seen much more of my detailed comments).

    Are you familiar with what the term Gordian Knot means? From Wiki: The Gordian Knot is a legend of Phrygian Gordium associated with Alexander the Great. It is often used as a metaphor for an intractable problem (untying an impossibly-tangled knot) solved easily by finding an approach to the problem that renders the perceived constraints of the problem moot (“cutting the Gordian knot”).

    Here, the Kavanaugh Scissors would be the application of the holding of Schein coupled with an objective view of the problems that the Supreme Court themselves have created with the mockery in 101, in order to “reset” the perceived constraints that there MUST BE the Supreme Court rewriting of the words of Congress with the imposition of their exceptions.

    You apply the three item test of California Franchise Tax Board v Hyatt:
    1) the imposition BY the Court is egregiously wrong (and you can buttress that with my recent multiple plank Constitutional arguments against what the Supreme Court has done);
    2) the severe practical consequences are being sounded IN ALL THREE BRANCHES of the government, from Iancu point blank saying that the common law evolution results in direct contradictions, to members of the CAFC saying things are unfixable, to renewed calls even in a deeply partisan-divided (and Big Corp money as voice captured) Congress; and
    3) there IS no possible reliance on any one new case law — as has been noted — the “ping pong” effect simply means that ANY case can be called one way or the other based on the whims of the Judicial members calling that particular case (and this has been summarized in at least one of my many-plank Constitutional infirmity arguments)
    … in order to provide one “arm” of the scissors (given that each and every of the three elements of the California Franchise Tax Board v Hyatt conditions can be met), and

    then applying the thrust of the Schein case (the Court MAY NOT ADD ITS OWN conditions/caveats/”implied exceptions”) as the second arm of the scissors;

    the cutting of the knot would entail the Court merely pronouncing that its exceptions have no force of law in regards to the actual words of 101 as used by the Congress. <=== Schein coupled with Hyatt eliminates the Gordian Knot of Common Law law writing surrounding the inserted exceptions to the words of Congress in 35 USC 101.

  • [Avatar for BP]
    February 26, 2019 03:58 pm

    Excellent post. The precedential turd (U Florida v. GE) delivered by the Fed Cir today shows why you are correct. Why is 101 being used rather than 102, 103 or 112? Because the Fed Cir judges don’t want to delve into facts (i.e., technology); they know an “abstract idea” when they see one – as a matter of law.

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

    @IPDude. Thanks for the link.

  • [Avatar for Mike]
    February 26, 2019 02:42 pm


    In California Franchise Tax Board v. Hyatt, Chemerinsky said, “Of course, this Court should overrule precedent at times. … Precedent should be overruled only where there is a compelling reason for doing so.”

    Kavanaugh, responded: “But then the question is how we figure out what the compelling reason is… Is it enough, for example, if we think it’s egregiously wrong and the prior decision has severe practical consequences and there’s no real reliance interest at stake? Is that enough? How to apply that to a particular case is hard, but what I just said in terms of egregiously wrong, severe practical consequences, no real reliance, is that enough in your view to overrule?”

    Are these the three critical items for the Court to reverse itself to which you reference?
    a- the Court finds a decision egregiously wrong
    b- the Court finds that a prior decision has severe practical consequences
    c- the Court finds that there is no real reliance interest at stake

    If so, which two are the scissors?

    Further, can you add specificity to “Gordian Knot” and and how “Kavanaugh Scissors” might cut through it?

    I want to gain a better understanding of your position.


  • [Avatar for Paul Cole]
    Paul Cole
    February 26, 2019 02:19 pm

    This article encapsulate the view that I have long expressed that many Federal Circuit decisions on eligibility are based on fake fact and would deserve a failing grade in any law school where the Common Law is taught.

    The Ariosa and Athena decisions, in particular, show a remarkable inattention to detail in the relevant factual background

  • [Avatar for Mike]
    February 25, 2019 07:46 pm

    @anon and @IPDude:
    Can either of you provide a link to the law360 article? It’s not listed in these comments, and I searched law360 and couldn’t find it. Thanks.

  • [Avatar for Anon]
    February 25, 2019 06:01 pm

    From the middle of the LAW360 article that IPDude references (paraphrased):

    “Sen. Coons is a driver, and banks on the fact that the CAFC judges are stating that they themselves “cannot figure this out” and that they are bound by the Supreme Court (emphasis added).

    In particular, the Athena case was “the first thing Sen. Coons brought up” and that “he left me with the impression that he thought that decision was wrong.” (as recounted by certain member of the New York Intellectual Property Law Association).

    Interestingly enough, there is also a reference to a NEW Justice on the bench of the Royal Nine not named Kavanaugh.

    Gorsuch: “It’s not my job to do your job.

    The article goes on to paint the obvious that some Big Corp companies do not want strong patents.

    And a further interesting point: “groups like IPO, which recently drafted proposed legislation to change Section 101, want to ensure that deserving intentions are not found patent-ineligible and that any changes should make the law more predictable and not be subject to distortion by the courts.

    Let me share my own age original old hint for that: Congress, WAKE UP and use your Constitutional power of jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court.

  • [Avatar for Anon]
    February 25, 2019 03:21 pm

    Along with Schein (as previous discussions have noted its possible limitations), I would hasten to add here a continued note to ALSO look at another Kavanaugh pronouncement:

    In the oral arguments of California Franchise Tax Board v. Hyatt, Kavanaugh elucidated three critical items for the Court to reverse itself on its recognizance.

    The two of these pronouncements — taken together — is what I have coined as the “Kavanaugh Scissors,” as it is BOTH of these items that together that may – just may – cut through the Gordian Knot that the Court has created with its own (Constitutionally challenged) scrivining and legislating from the bench.

  • [Avatar for Mike]
    February 25, 2019 02:18 pm

    “I would encourage practitioners to start arguing in every fora that judicial exceptions no longer exist, period.”
    Amen to that Gene.

    And even despite that judicial exceptions no longer exist, in the event one does look towards Alice with respect to 101 patent eligiblity, just as important to what SCOTUS does say is what SCOTUS does NOT say. Even SCOTUS states that idea throughout Alice, in both the opinion and also in the oral arguments, “lest it swallow all of patent law”.

    The Federal Circuit takes an Oath to support and defend the CONSTITUTION, to enemies foreign AND DOMESTIC. They do NOT take an oath to SCOTUS. The Federal Circuit needs to grow a pair and follow the Constitution and the Statute. Full stop. And stop trying to read into something that isn’t there.

    This article is pristine.

  • [Avatar for Anon]
    February 25, 2019 01:08 pm

    While certainly the lower Article III courts can be blamed — and certainly, can the Executive and Legislative branches, as my past comments have provided — the TOP blame for the Judicial Branch does (and must) lie with the Supreme Court itself that most definitely is the entity holding the firehose on the cage of simians at the CAFC.

    The blame the simians as if NO firehose exists is to miss the elephant in the room – to mix metaphors in my Yogi Berra manner….

  • [Avatar for IPdude]
    February 25, 2019 12:05 pm

    Gene, how much confidence do you have in the report today that there was a “second in a series of closed-door meetings held by members of Congress to discuss a possible overhaul of patent eligibility law, the lawmakers cited recent Federal Circuit decisions.” Seems like there in the Senate.

  • [Avatar for Night Writer]
    Night Writer
    February 25, 2019 12:01 pm

    CJ Rader’s opinion in Bilski was that the abstract exception could be used. He probably is the one that started all these problems.

    Plus, I agree with you that the CAFC could easily rein in any of the SCOTUS’s cases. Why they haven’t is the question.

  • [Avatar for anony]
    February 25, 2019 12:00 pm

    Great article Gene. The last paragraph about the Federal Circuit erring on the side of being biased against patents really resonates. However, there is a concern that rolling back or “fixing” 101 by either the Supreme Court or Congress will do little to truly fix the issues at play.

    First, modern 101 jurisprudence is prima facie incorrect and violates first principles. The courts and patent office should get back towards giving the benefit of the doubt to the applicant/patentee that anything under the sun made by man should be patentable (including software for financial systems and medical diagnostic tests). But if this is “fixed” and we simply swing back to the pre-Alice/pre-AIA days, nothing will be solved. Infringers will gang up and look to burn down the patent system again. The issue is related to the cost issue mentioned in previous articles [1]. The cost to inventors for enforcing a patent is a 7 figure check for an exceedingly low chance to successfully validate a patent. This puts an incredible burden on small inventors who will likely give up.

    This is in contrast to the pre-Alice/pre-AIA days. Looking at the cell phone industry as an example, a modern cell phone can infringe hundreds if not thousands of patents. Pre-Alice and pre-AIA each patent enforced could require a 7 figure check to defend in attorney fees and then there could be another 8 or 9 figure check for damages. Each asserted patent would cost the same amount to defend regardless of whether there was infringement. Thus, a cell phone that infringes 100 patents could have 200 (or more) patents asserted against it at 7 figures each, which could translate to 200 million dollars in legal fees before damages are assessed.

    The true issue is not whether small inventors should have access to the patent system or whether large companies should have a blanket license to infringe. Both sides should agree that small inventors should have access to the patent system and that large companies should pay up when there is infringement. The true issue driving these wild swings in policy is the administrative cost associated with enforcement of the patent system, which has no standard licensing or royalty system. The prior system was too burdensome on producers, which led to lobbying that got us the AIA, Alice, and a burn the patent system mentality. The current system is too burdensome on small inventors leading to a why bother patenting malaise.

    This is why new administrative procedures should be explored and bipolar extremes should be avoided. For example, a patent royalty board could cap the amount of licensing fees on a product to an arguably reasonable amount and offer mandatory licensing, which producers should favor (little if any attorney fees, known royalty amounts/percentages). Inventors wouldn’t like the cap or mandatory license per se, but if it is counter balanced with going back towards giving the applicant/patentee the benefit of the doubt for validity, then it may be worth it since small inventors would again have access to the patent system and also have a streamlined way to collect royalties (instead of relying on patent assertion entities).

    [1] https://ipwatchdog.com/2016/02/15/y-patent-on-presidents-day-jeffersons-revenge/id=66138/

  • [Avatar for Curious]
    February 25, 2019 11:03 am

    The problem with the Federal Circuit is that there is a certain cadre of judges that like legislating from the bench. Moreover, this cadre of judges has an unmistakable anti-patent bent. Not only can you can see it in their 101 decisions, you can see it in their other decisions as well and those long pre-date either Bilski or Alice.

    I would like to say that things will get better when these judges decide to leave the bench. However, by then they will have littered the 101 jurisprudence with so many land mines that it will take either an act of Congress or a clarification from SCOTUS to defuse them all.

    While I continue to hope for the best, I know the odds are long in us existing this quagmire anytime soon.