By Brandon Merrill, L’24
“[N]ary a week passes without another decision that highlights the confusion and uncertainty in patent-eligibility law,” writes Judge Paul R. Michel (Ret.), the former Chief Judge of the Federal Circuit, in support of petitioner Universal Secure Registry’s (USR’s) appeal from the Court of Appeals for the Federal Circuit (CAFC) to the Supreme Court.
Since retiring from the Court in 2010, Judge Michel has remained active in discussing important matters of patent policy. In this amicus brief, Judge Michel contends that 35 U.S.C. § 101 has become the “de facto, critical barrier to reliable patent protection.” In essence, Judge Michel believes that since the adoption of the Mayo/Alice framework in the last decade, § 101 rulings have created a patent eligibility barrier that is “confusing, complex, unclear, inconsistent, and unpredictable.”
Specifically, Judge Michel believes that lower courts have overinterpreted the “inventive concept” principle supposed to exist within the Mayo/Alice framework. Judge Michel discusses the case precedent to Mayo/Alice––namely, Gottschalk v. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), and Diamond v. Diehr, 450 U.S. 175 (1981)––to argue the relatively non-existent presence of an “inventive concept” or “inventiveness” requirement in eligibility analysis. Thus, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the “inventive concept” requirement for patent eligibility was “resurrected from Flook after its burial in Diehr.” However, Judge Michel doesn’t compel the current Supreme Court to overrule the Mayo/Alice framework, but rather he asks the CAFC to provide lower courts “a more faithful application” of the § 101 judicial exception test.
In Mayo–Judge Michel argues–Justice Breyer conflated the idea of “conventional” as synonymous with a lack of “inventive concept”, leading to the alarming concern that § 101 analysis has become an “amorphous blob” consuming other requirements for patentability––§ 102 (novelty), § 103 (non-obviousness), and § 112 (specificity). In beginner’s terms, rather than asking the questions regarding whether or not an invention can receive patent protection, courts are fast-forwarding the analysis to whether an invention should be granted patent rights.
Judge Michel relies on recent Federal Circuit cases to elucidate the confusion among Circuit judges. Is an inventive concept “something more than the application of an abstract idea”? Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019). Is it “sufficient specificity”? USR, Inc. v. Apple, Inc., 10 F.4th 1342, 1346 (Fed. Cir. 2021). Is it “specific asserted improvements”? Mentone Solutions LLC v. Digi International Inc., 2021 WL 5291802 at *3 (Fed. Cir. 2021). Even to a patent law novice, it’s not hard to see how the Federal Circuit is contorting § 101 analysis to cover novelty, obviousness, and specification requirements.
But neither is Judge Michel alone in his concern that the Mayo/Alice framework has overstepped its responsibility as an initial screener to patent eligibility. Former USPTO director, David Kappos, has conveyed his belief that patent-eligibility law is “a mess.” Judge Alan Albright, a prominent patent jurist in W.D. Tex., has recently expressed that § 101 law is a “confusing abyss” that is “deeply challenging” to argue and adjudicate. Judge Richard Linn of the Federal Circuit believes that Mayo/Alice is “almost impossible to apply consistently and coherently” in cases concerning abstract ideas. Smart Sys. Innovations, LLC v. Chi. Transit Auth. 873 F.3d 1364, 1377 (Fed. Cir. 2017).
Judge Michel counters that the distinction between § 101 analysis and other statutory factors is much more than an “academic issue.” This conflation serves as a “barrier to patent eligibility” and that disserves both the big corporation and the little guy. Not only does confusion in patent-eligibility expectations deter independent inventors from pursuing IP protection––Judge Michel asks “how are innovators to have any clue as to what ‘something more’ means?––but even large corporations are concerned by the lack of patent-eligibility reform. Ericsson fears that even after being granted a patent after all of the USPTO hoops and proofs, they “may still face a significant likelihood of being declared ineligible”with insecure, yet strict § 101 barriers in litigation.
Further, Judge Michel discusses the broader implications of having a dis-unified patent-eligibility standard on the US’s innovation ecosystem. Because of Supreme Court and Congressional inaction, Judge Michel fears that the consequences are “extremely worrisome” given differing eligibility standards in the Europe and Asia.
Another tangential development in the existing confusion of § 101 jurisprudence is the recent confirmation of Judge Leonard Stark to the Federal Circuit from the District of Delaware. With a pedigree consisting of over 2,400 patent cases as the district court level, Judge Stark’s most notorious legacy has been his over-reaching decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 309 F.Supp.3d 218 (D. Del. 2018), aff’d, 939 F.3d 1355 (Fed. Cir. 2019). Here, Judge Stark characterized an otherwise patentable manufacturing method as a “mere application of Hooke’s law.” By expanding the “directed to a law of nature” inquiry in Mayo/Alice step 1, we’re left asking whether any patent can ever pass the test. To say the least, it will be interesting to watch the developments of the Federal Circuit’s “validity goulash” now that Judge Stark holds a seat at the table too. Id. at 1375 (Moore, J. dissenting).
Though Judges Michel, Albright, and a whole host of other patent law scholars remain fixed on seeing what the Supreme Court will do, we finish by turning to the Biden administration, who has currently delayed their response to the Supreme Court’s cert inquiry on American Axle. After all, the Federal Circuit is “unanimous in [their] unprecedented plea for guidance. Am. Axle & Mfg. v. Neapco Holdings LLC, 977 F.3d 1379, 1382 (Moore, J. concurring). For the Biden administration, it isn’t a matter of deciding if patent-eligibility needs reform, but how to do it, and how to do it well.
For many, it appears that the best answer is found by having the Supreme Court grant cert in American Axle and USR, allowing the newest iteration of the Supreme Court constrict the Mayo/Alice framework in order to promote clarity, uniformity, and reliability among lower courts. As Judge Michel concludes, constricting the § 101 analysis will ensure that US patent law keeps the questions of eligibility separate from the other requirements for patent protection. For this 1L, I just hope it will make my course outline a little clearer too.