It has been obvious for some time now to any objective observer, but recent events make it such that it is time for someone to say it openly. Judge Haldane Robert Mayer, former Chief Judge of the United States Court of Appeals for the Federal Circuit, should step down and move quietly into retirement.
For years Judge Mayer has had his own – shall we say “unique” – view of patent law. He has made a habit out of writing his own rather eccentric anti-patent views into dissents and concurring opinions and then later citing to himself in those dissents and concurring opinions as if they were somehow authoritative. If an attorney were to do something like that they would wind up being sanctioned, as ultimately happened when the Federal Circuit rebuked attorney James Hicks for mischaracterizing prior holdings and rulings in a brief submitted to the Court. But when a Federal Circuit Judge does such things we all just shake our head and sigh.
Recently, however, Judge Mayer took another step toward the absurd in a concurring opinion filed in Intellectual Ventures I LLC v. Symantec Corp. In his concurring opinion Mayer wrote:
Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents. The claims at issue in Alice were directed to a computer-implemented system for mitigating settlement risk. 134 S. Ct. at 2352–53. Although the petitioners argued that their claims were patent eligible because they were tied to a computer and a computer is a tangible object, the Supreme Court unanimously and emphatically rejected this argument. Id. at 2358–60. The Court explained that the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Accordingly, “[t]he fact that a computer necessarily exist[s] in the physical, rather than purely conceptual, realm is beside the point” in the section 101 calculus. Id. (citations and internal quotation marks omitted).
Software is a form of language—in essence, a set of instructions. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 447 (2007) (explaining that “software” is “the set of instructions, known as code, that directs a computer to perform specified functions or operations” (citations and internal quotation marks omitted)); see also 17 U.S.C. § 101 (defining a “‘computer program,’” for purposes of the Copyright Act, as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”). It is inherently abstract because it is merely “an idea without physical embodiment,” Microsoft, 550 U.S. at 449 (emphasis added). Given that an “idea” is not patentable, see, e.g., Benson, 409 U.S. at 67, and a generic computer is “beside the point” in the eligibility analysis, Alice, 134 S. Ct. at 2358, all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.
These two paragraphs may be the most disingenuous paragraphs ever written by a Judge of the Federal Circuit.
First, say what you will about the Supreme Court’s decision in Alice v. CLS Bank, but the Supreme Court did not kill software patents. Many patent examiners, administrative judges on the Patent Trial and Appeal Board, and Judge Mayer himself have done just about everything they can to misinterpret Alice, employ circular reasoning, and ignore truths in order to kill software patents. The Supreme Court did not, however, kill software patents.
The Alice/Mayo framework adopted by the United States Supreme Court requires reviewing courts to ask and answer a series of questions before determining whether a patent claim constitutes patent eligible subject matter. The first question is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no then the patent claim is patent ineligible. If the answer is yes, move on to the next inquiry.
The second question asks whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is absolutely no textual support for the creation of any judicial exceptions to patent eligibility, the Supreme Court has long legislated from the bench and ignored the clear language of the statute. The three identified judicial exceptions are: laws of nature, physical phenomena and abstract ideas. If the claim does NOT seek to protect one of those judicial exception then the claim is patent eligible. If the claim does relate to one of the three judicial exceptions then you must move on to the final inquiry.
Where the patent claim seeks to cover a judicial exception to patent eligibility, the final question asks whether the inventive concept covered in the claimed invention was “significantly more” than merely the judicial exception. For example, when dealing with an abstract idea, the question becomes whether the claim merely covers an abstract idea or whether the claim language adds significantly more so that the claim does not merely cover an abstract idea.
Whether you like Alice, or Mayo v. Prometheus, or the so-called Alice/Mayo framework, the above description of the framework is objectively correct and unassailable. Notice, if you will, that nowhere does it say that software patent claims, or claims to computer-implemented processes, cannot be patented under any and all circumstances. That is because the Supreme Court has always gone to great lengths to not adopt such a bright line rule. Despite what Judge Mayer clearly wants to believe, a ruling by any court or decision maker saying software is per se patent ineligible would be in direct opposition to the Supreme Court’s ruling in Bilski v. Kappas. While the Supreme Court did not give us any usable test in Bilski, the Court clearly said at least some business methods are patent eligible and overruled any bright-line patent eligibility test. So Judge Mayer is clearly and unambiguously wrong. Everyone knows he is wrong. If he doesn’t know he is wrong there is a much bigger problem that needs to be addressed.
But wait, there is more!
Judge Mayer also wrote that software is inherently abstract because it is just an idea without physical embodiment. For support, he cited the United States Supreme Court from Microsoft v. AT&T. Once again, however, we see that Judge Mayer is not afraid to grossly exaggerate, if not expressly misrepresent, what the Supreme Court said. If an attorney did this, based on how the Federal Circuit called out James Hicks, which lead to a disciplinary proceeding, I’d expect a disciplinary investigation forthwith.
So what did the Supreme Court really say? The Court, per Justice Ginsburg, wrote:
Until it is expressed as a computer-readable “copy,” e.g., on a CD-ROM, Windows software—indeed any software detached from an activating medium—remains uncombinable. It cannot be inserted into a CD-ROM drive or downloaded from the Internet; it cannot be installed or executed on a computer. Abstract software code is an idea without physical embodiment, and as such, it does not match §271(f)’s categorization: “components” amenable to “combination.” Windows abstracted from a tangible copy no doubt is information—a detailed set of instructions— and thus might be compared to a blueprint (or anything containing design information, e.g., a schematic, template, or prototype). A blueprint may contain precise instructions for the construction and combination of the components of a patented device, but it is not itself a combinable component of that device.
So that is the full context and the complete quote, of which Mayer had to intentionally only use part, is: “Abstract software code is an idea without physical embodiment…”
Judge Mayer deceptively, and almost certainly with intent, purposefully left out that the Supreme Court was talking about software code. This is critically important because software code is NOT patentable now, and software code has never been patentable, period. You simply do not patent software code. Software code is copyrightable. Yet in an enormously disingenuous manner Judge Mayer twists what the Supreme Court says about software code not yet expressed as computer-readable, into being somehow relevant when talking about patent eligibility of a computer-implemented invention. Either Judge Mayer doesn’t understand the issues or he is intentionally attempting to mislead while incorrectly wrapping himself with the authority of the Supreme Court. Whatever the case, this is egregious, and beneath the dignity of any intellectual discussion of the topic. It is also beneath the dignity of the Federal Circuit and downright embarrassing.
But wait, there is even more!
Judge Mayer said in his concurring opinion that the Supreme Court in Alice said that the presence of a generic computer is “beside the point.” But, once again, if you actually take the time to look at the full statement made by the Supreme Court you realize Judge Mayer is exaggerating to the point of misrepresentation.
In Alice, writing for the Supreme Court, Justice Thomas wrote:
The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm,” Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system (in §101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad, 569 U. S., at ___ (slip op., at 11).
Clearly, once again, when you read the entire quote and its context it does not mean what Judge Mayer attempts to stretch it to mean. Remember, Judge Mayer used the quote – “beside the point” – to support his preferred per se bright line rule that “all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.” The problem is that is not what the Supreme Court said, or even suggested. The Supreme Court merely said that the presence of a computer is not enough. In other words, you cannot merely recite “a computer system configured to implement the relevant concept.” You need more than just a naked statement that the method runs on a computer otherwise you are just allowing draftsmen to add meaningless language that is not tethered to any concrete, tangible or technical manifestation. Of course, there is also the problem with anything being “categorically” patent ineligible being one of those pesky bright line rules that clearly and unambiguously violate the direct rulings of the Supreme Court.
The Supreme Court did NOT say that software that runs on a computer is per se patent ineligible. In fact, the Supreme Court has NEVER said that software or computer implemented innovations are patent ineligible. To the contrary, the Supreme Court has specifically recognized that these inventions can be patent eligible. This together with everything we know about how the Supreme Court has complete disdain for bright line rules mandated by the Federal Circuit means that we can say with great certainty that the Supreme Court would hold a very dim view of Mayer’s blanket patent ineligibility approach.
Judge Mayer desperately wants claims to computer-implemented inventions to be patent ineligible per se and he seems willing to go to whatever lengths necessary in an attempt to force his views into the mainstream. The problem is the Supreme Court has repeatedly chastised the Federal Circuit for adopting such bright line rules. So it is ironic, if not downright pathetic, that Judge Mayer would pontificate in favor of a bright line rule that says Alice killed software patents, period. Likewise, a rule that says software that runs on a computer is categorically ineligible is a bridge too far for the same reason. But Judge Mayer knows this, or should.
It is also interesting to note that Judge Mayer, who seems to love citing himself and claiming the Supreme Court agrees with him, ignores that the Supreme Court has not overruled Bilski, and they also haven’t overruled Diamond v. Diehr. In Diehr the Supreme Court first recognized that a computer program may deserve patent protection. In Diehr the patent claimed a method of operating a molding press during the production of rubber articles. In Diehr, the Supreme Court explained: “[A] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.” In fact, the Diehr decision opened the door for the possibility that some computer programs, even programs that relied on mathematical equations for core calculations, were entitled to patent protection. Importantly, the Supreme Court continues to say that Diehr remains good law, including in Alice. This must absolutely and undeniably mean that at least some computer-implemented methods are patent eligible in the eyes of the Supreme Court, despite what Judge Mayer says (and hopes) to the contrary.
Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views seem to have matured into an irrational hatred that so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to step down it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings to the point of misrepresentation.