Thomas Kuhn wrote about paradigm shifts in his seminal work, The Structure of Scientific Revolutions (1962). There comes a time when a way of thinking becomes so bogged down with adjustments, corrections and exceptions, that it takes an immense societal effort to keep it robust enough to adapt to new facts. A paradigm shift happens when the old viewpoints are ejected, and new ones adopted. The new ones are better because they are more elegant. They explain more things, do so with fewer assumptions, and show greater robustness by consistently incorporating newly discovered facts. Thus did the Copernican view of the solar system finally overtake the geocentric one of the ancients. Gone was the need for epicycles and other fanciful (albeit, plausible) compensations and compromises to keep the old system working to incorporate new observations.
Why does it feel like it’s time for a Section 101 paradigm shift? Is it because of the shocking candor with which one Federal Circuit panel called patent subject matter eligibility jurisprudence a “murky morass?” Is it because some panels believe in their right and power to make Section 101 a last-resort analysis, while others just as earnestly believe they are bound to reach it first among defenses whenever it is raised? Or is it the current unpredictability over whether a given patent claim limitation will now (or ever) avoid recharacterization as a “token post-solution activity.”
How, for example, can anyone know ten years from now whether today¹s state-of-the-art electronics (when embodied as a limitation) will pass muster as a “meaningful” limitation the current “test” for avoiding invalidity in a computer-implemented abstract idea context under several panel decisions of the Federal Circuit. No one can be satisfied with the harm to innovation that such unpredictability creates. Richard Epstein and F. Scott Kieff wrote a lucid critique of the damage to society created by such uncertainty in their 2009 amicus brief written for Dr. Ananda Chakrabarty in the Supreme Court Bilski case perhaps one of the best pieces of legal/policy writing ever penned in a patent case.
To assist the Court of Appeals now, two of my clients (TeleCommunication Systems, Inc. and Dr. Bakul Banerjee) filed a friend of the court (amicus) brief in CLS v. Alice on January 17, 2013. The amicus brief develops an argument made earlier in a district court proceeding for a different client. Eric Guttag wrote for this blog a report on the earlier filing, using such labels as “bold,” “audacious,” “heresy,” “plausible” and “straightforward.”
It comes down to this: patents are a creature of statute, and only one part of the statute authorizes defenses in litigation. That is Section 282. For its part, Section 282 includes all the familiar ones: invalidity, noninfringement, unenforceability. But it is silent about subject matter eligibility, and never mentions Section 101.
The first five of six post-1952 Supreme Court cases on Section 101 involved appellate review of U.S. Patent and Trademark Office application decisions (Benson, Flook, Diehr, Chakrabarty, Bilski). The sixth Supreme Court case does differ – it is the Prometheus case, and it was a litigation appeal. Prometheus is ostensibly a counterexample to the argument. But that should end up being no bar to consideration of the threshold Section 101 / Section 282 question. The Supreme Court has cautioned for two centuries, back even to Justice Marshall’s term, not to read into Supreme Court decisions any preordained view about matters antecedent to what they actually decided. The Federal Circuit also applies this caution. Stare decisis requires an actual decision on an actual issue that is actually litigated.
A 2008 Federal Circuit decision (Aristocrat Technologies Australia Pty Limited v. International Game Technology) brought renewed attention to the statutory nature of Patent Act defenses. It reminds both bench and bar that the list is closed. New ones don’t just pop up. Only Congress can create them. In Aristocrat, the Federal Circuit rejected the existence of an “improper revival” defense because it was not listed within Section 282. Nor was it incorporated by reference as an “other fact or act made a defense by this Title.” The present amicus brief considers, and rejects, all hypothetical ways one might argue that Section 282 incorporates within it Section 101, and patent eligible subject matter in general.
Today’s en banc consideration of CLS v. Alice thus presents a rare occasion for the Federal Circuit to reject the old ways. Patent defenses no longer earn full dignity and recognition only because long ago there were rulings and litigation waivers now lost to us in the fog of time. They do not earn that status by the ipse dixit of the defense bar. The Court of Appeals should review the Section 101 litigation-defense paradigm. Let’s have a decision over whether it is time for the paradigm to shift.