True Respect for Textualism Requires Patent Eligibility Reform

I recently had the opportunity to speak on patent eligibility during a webinar hosted by the Federalist Society. The discussion was spirited. I joined Sherry Knowles, Matt Dowd and Professor Josh Sarnoff, with Professor Sarnoff advocating largely in favor of the current patent eligibility regime, or at least taking the position that things are not as bad as I and others with similar views make it out to be.

As I said during the webinar, I consider Professor Sarnoff a friend. He is always someone willing to have a substantive conversation regardless of whether he agrees with you or thinks you are mistaken. Not enough of that type of discussion occurs, so kudos to him and the Federalist Society for having a conversation where opposing views are discussed. Having said that, I not surprisingly think Professor Sarnoff is terribly wrong.

You Can’t Be a Textualist by Ignoring the Text

Throughout his presentation Professor Sarnoff proclaimed his respect for textualism. I am similarly all in favor of textualism, but such an approach to interpreting a statute actually requires the literal, explicit and unambiguous terms of the text to be honored and respected. Exalting textualism and then ignoring the text is not textualism, it is judicial activism, which is precisely what has been occurring every time patent eligibility is discussed and decided.

Professor Sarnoff started off the webinar by tracing the development of the law relating to patent eligibility back to England several hundred years ago. While I am a history buff, and his history lesson was interesting, there is no need to journey so far back in time. Anything prior to 1952 is entirely irrelevant, since the 1952 Patent Act codified all of patent law in the United States, accepting much of the case law, but also deviating in significant ways. And we know thanks to the legislative history from the 1952 Patent Act that anything created by man is supposed to be patent eligible.

Upon arriving at modern case law and interpretation of 35 U.S.C. 101, Professor Sarnoff claimed that it is incorrect to refer to the judicial exceptions to patentability as exceptions because they are merely judicial interpretations of the statute, not exceptions. This is, of course, incorrect—and there really isn’t any room to even seriously debate this particular point.

First, the Supreme Court’s prohibitions against patenting claims directed to abstract ideas, laws of nature or natural phenomena are literal deviations from the plain, ordinary and obvious meaning of the language of the statute and Constitution. And nothing in the statute or Constitution envisions or authorizes courts to layer on requirements not found in the statute or Constitution.

Second, the prohibitions against patenting abstract ideas, laws of nature and natural phenomena have always been understood to be judicial exceptions to patentability because that is precisely how the cases themselves characterize them. Indeed, even the Supreme Court has repeatedly referred to “the §101 exception” and even pointed out in Alice v. CLS Bank that the Court has “interpreted §101 and its predecessors in light of this exception for more than 150 years.”

Surviving Henry Schein

So why would Professor Sarnoff fight such an obviously losing semantic battle over whether the prohibitions against patentability created by the Supreme Court and not found in the statute are exceptions or merely interpretations? Because in Henry Schein, Inc. v. Archer & White Sales, Inc. the Supreme Court ruled that courts—including the Supreme Court itself—are prohibited from engrafting their own exceptions on statutory text.

In Henry Schein, the Supreme Court addressed a matter relating to the Federal Arbitration Act. It has long been the law that parties in a contract dispute can elect to have the dispute resolved by an arbitrator instead of a court. Likewise, it has long been the law that the contract can delegate the threshold question of arbitrability to the arbitrator. Some federal courts, however, had created what was known as the “wholly groundless” exception, which would allow them to decide the question of arbitrability regardless of whether that decision was agreed by the parties to be decided by an arbitrator. To this the Supreme Court said: “The short answer is that the Act contains no ‘wholly groundless’ exception, and we may not engraft our own exceptions onto the statutory text.”

So, in light of Henry Schein, it is understandable why one would mischaracterize what have universally been defined to be exceptions to the statute for more than 150 years; because if they are exceptions as the Supreme Court and Federal Circuit keep saying over and over again, they simply cannot survive Henry Schein.

Discoveries Are Eligible—Period

Another point raised by Professor Sarnoff related to the fact that not all discoveries are patent eligible, which is unfortunately a correct legal statement if one freezes consideration of the question based on the Supreme Court’s ruling in AMP v. Myriad, which stated: “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.” The problem is the statute says otherwise—in fact, the statute says literally and explicitly that discoveries are patent eligible.

Significantly, 35 U.S.C. 101 specifically uses the word “discovery”, and says in relevant part: “Whoever invents or discovers… may obtain a patent therefor…” Similarly, the Constitution uses the word “Discoveries” in Article I, Section 8, Clause 8, to define what Congress has the authority to protect. So, discoveries are unequivocally supposed to be patent eligible, period.

Professor Sarnoff tries to modify the term “discovery” to mean that which would otherwise be an invention and not merely a pure scientific discovery. But again, that characterization finds no support in the statute—indeed, the exact opposite meaning becomes clear if you literally read the explicit terms of the statute.

The term discovery cannot possibly be synonymous with the term invention as Professor Sarnoff suggested because the statute says, “whoever invents OR discovers” (emphasis added) is entitled to a patent if the invention is new and useful. Based on this explicit language of the statute the word “invent” cannot be synonymous with the word “discover,” otherwise the use of the alternative word “or” becomes read to mean “and”, which is the exact opposite and hardly an acceptable way to construe a statute. You simply cannot read statutory terms to mean the exact opposite of the plain and ordinary meaning of those terms.

Furthermore, 35 USC 100(a) specifically defines the term “invention” as meaning both “invention or discovery.” The importance of this cannot be overstated. Obviously, the word “invention” must mean “invention”, but Congress specifically intended that whenever the word “invention” is used that also includes “discovery”. Once again, the use of the alternative term—“or”—demonstrates the explicit and unambiguous intent for the statute to include recognized discoveries to be inventions capable of being patented.

If I Can Throw it at You, It’s Not Abstract

Patent eligibility has become untenable, and regardless of your opinion with respect to what is or should be patent eligible, that untenability is undeniable. And we are largely in this nonsensical position because both the Supreme Court and Federal Circuit have explicitly refused to define what is an abstract idea, which is nothing short of a willful attempt to leave the industry in the dark in favor of an “I’ll know it when I see it” approach to the most basic threshold question of patentability. Not defining what constitutes an abstract idea is how a camera has been found to be patent ineligible by the Federal Circuit in Yu v. Apple, and how the Patent Trial and Appeal Board was able to convince itself that an MRI machine is also abstract. Obviously, neither a camera nor an MRI machine is abstract. In fact, the law would do well to incorporate what should be universal common sense; namely, if the invention when thrown at your head would leave a mark upon impact, it cannot under any reasonable definition be considered to be abstract.

Image Source: Deposit Photos
Author: Irina_drozd
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