The serious and potentially adverse impact of such decisions by the Supreme Court on U.S. innovation did not go unnoticed by the patent bar, those interested in protecting their hard-earned research and development with patents that had more than minimal value, and even some of those in Congress. Besides the anti-patent rulings by the Supreme Court (discussed in part-one of this article), the consistency of patent law jurisprudence was being challenged by forum shopping as certain circuits (most notably, the 7th Circuit) were deemed to be patent-friendly, while other circuits (most notoriously, the 8th Circuit) were considered to be patent graveyards. The chaos created by this forum shopping was exacerbated by differing views of what in these rulings by the Supreme Court was holding, and what was simply dicta. Together with the enactment of Bayh-Dole (which sought to alleviate the prior dismal record of commercialization of federally-sponsored research where the federal government retained the patent rights), Congress created the United States Court of Appeals for the Federal Circuit as the successor to the CCPA, as well as to supplant all other circuit courts as the arbiter of patent law jurisprudence, effective as of 1980. Creation of the Federal Circuit was also at least an implicit (and more likely, explicit) warning to Supreme Court to tread carefully on patent law jurisprudence and to let the Federal Circuit do the heavy lifting without significant interference or meddling from the highest court in the land.
For almost two decades, Supreme Court seemed to heed that warning, rarely interfering with Federal Circuit precedent. The 2002 case of Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co. might be the most significant exception, and likely a needed one in the area of “doctrine of equivalents,” as SCOTUS unanimously ruled (contrary to the Federal Circuit) that prosecution history estoppel was not a complete bar to any equivalents. Even so, SCOTUS also unanimously affirmed the Federal Circuit’s ruling that prosecution history estoppel can arise from any amendment that narrows the patent claims.
But beginning with the eBay case in 2006, Court started an almost relentless series of rulings which meddle with, chastise, and overturn longstanding Federal Circuit precedent, often using the rubric that the Federal Circuit’s ruling/precedent was “too rigid,” or “too inflexible.” In eBay, Court overturned longstanding Federal Circuit precedent that a permanent injunction would normally be granted if the patent was deemed to be infringed. In overturning this longstanding precedent, Justice Thomas’ opinion for Court interpreted Section 283 to require that the traditional “four-factor” equitable test for granting a permanent injunction be equally applicable to cases of patent infringement. See Guttag, “Business Method Patents and the Equitable Standard for Granting Permanent Injunctions: The eBay Case,” Cincinnati Bar Association Report, page 18 (August 2006).
The most shocking aspect of the eBay case was the concurring opinion by Justice Kennedy which said the following:
[I]njunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test.” (Emphasis added.)
Justice Kennedy’s concurring opinion was not only completely unnecessary, but completely inconsistent with the holding in the eBay case that there is nothing ‘unique’ about applying the traditional ‘four-factor test’ to patent disputes, and in particular, should not apply the four-factor test differently depending up how Supreme Court characterizes what the patent covers. Indeed, since Section 283 does not treat various types of patents differently in applying this four-factor test, why should several Justices brazenly believe they’ve got the right to usurp Congress’ express words as to how Section 283 should be interpreted/applied to different types of patents?
All nine Justices felt even more emboldened to exercise judicial activism, as well as potentially overturning many decades of CCPA/Federal Circuit precedent, in the 2006 case of KSR International Company v. Teleflex, Inc. See Guttag, “Actual ‘Rules’ or Mere ‘Guidelines’ for Determining Obviousness: The Supreme Court’s Perplexing Opinion in the KSR International Case, Cincinnati Bar Association Report, page 15 (July 2007). In KSR International, SCOTUS reversed the Federal Circuit’s application of the “teaching, suggestion and motivation” (TSM) test in determining the patentability of an adjustable automobile pedal (e.g., gas pedal) assembly under Section 103. As many of us in the patent bar recognize, the TSM test provides a very objective, rational, factually-based, and consistent framework for determining when there is proper “motivation to combine” various prior art references in determining whether or not the claimed invention is “obvious” under Section 103.
The problem the Court had with the TSM test was that it was deemed by them to be “too rigidly” applied by the Federal Circuit. But the lengthy discourse in applying its ‘standards’ in KSR International is no more illuminating or helpful as to what these ‘standards’ are than what the Court did forty years earlier in Graham in applying these ‘standards’ in finding a patented agricultural drill obvious under Section 103. The Court in KSR International also made the perplexing and potentially troublesome statement that “[n]either the enactment of [Section] 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art.” In other words, the Supreme Court, as it had previously done in Anderson’s-Black Rock and Sakraida, would once more brazenly interject what was reasonably believed by us in the patent bar to be the discredited concept of “synergy” back into Section 103.
Even more shocking, the Supreme Court suggested that the “person of ordinary skilled in the art” specified by Section 103 could be replaced by the unspecified “person of common sense.”
Following the Bilski decision in 2010, SCOTUS became involved in series of cases where it “dinned to opine” on the meaning of Section 101 as it relates to medical diagnostic methods and computer technology which eventually resulted in the infamous “Mayo/Alice framework.” The first was the 2012 case of Mayo Collaborative Services v. Prometheus Laboratories which involved (and what many of us in the patent bar, including me, believe was inartfully recited in its patent claims) to be essentially a drug dosage calibration method. At the end the main claim which describes measuring the level of certain metabolites expressed after administration of a specific man-made thiopurine drug, are several “wherein clauses” to specify when too little or too much of this drug had been administered. In a unanimous opinion by SCOTUS which overturned the Federal Circuit ruling that this claimed method satisfied Section 101, Justice Breyer would engage in a “frolic and detour” which committed numerous blatant patent law faux pas that included: (1) mischaracterizing the recited “wherein clauses” as process/method steps; (2) mischaracterizing the claimed method as merely encompassing or applying a “law of nature,” even though the drug for which the metabolites were being measured didn’t exist in “nature”; (3) improperly relying upon that part of the opinion in Flook (i.e., treating previously unknown “laws” (or relationships) as if they’re part of the “prior art”) which had been effectively overturned or at least cabined subsequently by Diehr; (4) improperly conflating Section 101 with Sections 102 and 103 by referring to the “inventive concept”; and (5) improperly dissecting the claim language to try to separate out the supposed “law of nature” from the rest of the claim, in direct contravention of the holding in Diehr and especially what is implicit from Section 103 that the claim language must be consistently judged “as a whole,” no matter what patent statute was being considered. That Breyer felt free to commit these numerous errors of fact and law in his opinion to get to the result he wanted in Mayo reflects greatly his unhappiness that SCOTUS refused to get to the question of whether “comparative methods” were patent-eligible under Section 101 in the earlier 2006 case of Laboratory Corp. v. Metabolite Laboratories (where Breyer vociferously dissented from the dismissal of cert by SCOTUS as being “improvidently granted”) It also reflects the virulent anti-patent bias that Breyer has exhibited, both before and after Mayo, as well as the distasteful judicial philosophy that the “end justifies the means,” no matter how illogical, or how much the law has to be “twisted like a nose of wax.”
The next step by Supreme Court on its way to creating this Section 101 patent-eligibility “monster” was the 2013 case of AMP v. Myriad. What is truly unfortunate about this case is how much it was dominated by the media fueled hysteria and “pseudoscientific” myth that the patentee was attempting to claim (patent) and even “own” the BRCA1/BRCA2 genes, which it most certainly was not. Even worse, the ACLU/PubPat manipulated and fabricated what this case was about in terms of the applicable “science,” as well as the applicable “patent law.” In fact, in distorting what this case was really about (i.e., the patent-eligibility of Myriad’s claimed “isolated” DNA sequences under Section 101), the ACLU/PubPat also tried to hide the fact that the real plaintiffs in the Myriad case were none other than the ACLU/PubPat themselves. That fact became readily apparent when all but one of the “alleged” plaintiffs were knocked out of this case on “lack of standing” grounds.
ACLU/PubPat’s slanting of this case was further aided and abetted by the octogenarian district judge, Robert W. Sweet, who, in denying Myriad’s motion on “lack of standing,” as well as granting both ACLU/PubPat’s motion for summary judgment, and the USPTO’s motion for judgment on the pleadings of invalidity under Section 101, evidenced a fairly obvious politically motivated bias in favor of ACLU/PubPat and against Myriad. In the subsequent appeal to the Federal Circuit, the ACLU/PubPat even had the gall to file a motion to have then current Chief Judge of the Federal Circuit, Randal Rader, recuse himself on the alleged basis that Rader had “attended events at which the case was discussed,” “on one occasion” had “expressed his views on the correctness of the district court’s decision in this case” (rightly so in my view and others), and “on another occasion when the case was being discussed when he insinuated disagreement with Plaintiffs/Appellees’ view of the law.”
The first Federal Circuit panel decision (opinion by Judge Lourie, concurred in part by Judge Moore, and concurred/dissented in part by Judge Bryson) reversed the grant of summary judgment of invalidity of Myriad’s claimed “isolated” DNA sequences under Section 101. On ACLU/PubPat’s petition for cert, SCOTUS granted the petition, vacated the Federal Circuit’s panel decision, and then remanded (commonly referred to as a “GVR” ruling) for reconsideration in view of SCOTUS’ decision in Mayo. But on remand, nothing substantively changed in the second Federal Circuit panel decision, other than Judge Lourie stating “what this appeal is not about.” See Guttag, AMP v. Myriad: What the Supreme Court Needs to Understand this Case Is Not About posted on IPWatchdog December 9, 2012, where I exposed the PR smokescreen of “politics, policy and philosophy” that the ACLU/PubPat used to manipulate the applicable “patent” and “standing” law, as well as to explain what SCOTUS needed to understand, to use Judge Lourie’s words, what this case “[wa]s not about”: (1) patenting human genes; (2) patenting “products of nature”; (3) preempting “laws of nature”; (4) hindering research on human genes; (5) the “informational content” of the claimed “isolated DNA sequences; and (6) the judiciary making “policy” decisions that the legislature has already made, explicitly or implicitly.
Once more, SCOTUS granted the ACLU/PubPat’s new petition for cert. Surprisingly, my fear that SCOTUS might fail to heed any of these six “what this case was not about” warnings at least initially appeared to be unfounded. See Guttag, AMP v. Myriad: Getting Beyond the Hype and Hyperbole posted on IPWatchdog June 16, 2013. The unanimous opinion written by Justice Thomas ruled the claims to the isolated DNA sequences to be patent-ineligible, but not those to the cDNA.
For all of its questionable scientific logic for deeming the isolated DNA sequences to be patent-ineligible (I still wince at the characterization by some that what Myriad did was equivalent to honing a baseball bat out of a block of wood), Thomas appeared to cabin the patent-ineligible part of the holding, more so than some might think. I actually took some solace from two sentences at pages 14-15 of the slip opinion which appeared to say that Myriad’s claimed “isolated” DNA sequences didn’t look enough like an altered chemical molecule to be divorced from the native DNA, i.e., the claimed “isolated” DNA sequences were not a “difference in kind rather than degree.” (As I and others in the patent bar have observed, the word “isolated” in the Myriad’s claims to the DNA sequences relating to the BRCA1/BRCA2 genes may not have been the best choice of words for establishing that the chemical molecule claimed was not the one present in “mother nature.”) By holding that Myriad’s claimed cDNA was patent-eligible, Thomas’ opinion reaffirmed the majority holding in Chakrabarty that claimed subject matter which truly only the “hand of man” can make (not simply snipped out of “mother nature”) should make it to the patent-eligibility zone.
Unfortunately, my thought that Myriad might signal some sanity by SCOTUS in interpreting and applying Section 101 would prove to be a misguided and forlorn hope in the 2014 case of CLS Bank International v. Alice Corp. Pty. Ltd. See Guttag, Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International. Indeed, as I dejectedly stated in my IPWatchdog article the following:
I once had respect for Justice Thomas’ view on patent law jurisprudence, having considered his substandard opinion in Myriad on the patent-eligibility of certain “isolated” DNA claims to be an “isolated” aberration. But having now read his mind-boggling Opinion for the Court in [Alice] I’ve now thrown my previously “cheery” view of Thomas’ understanding of patent law jurisprudence completely into the toilet. I have even less kind words to say about the three Justices that signed onto Justice Sotomayor’s disingenuous concurring opinion that accepts retired Justice Steven’s equally disingenuous suggestion in Bilski that [Section] 273 (in which Congress acknowledged implicitly, if not explicitly the patent-eligibility of “business methods” under 35 U.S.C. § 101) is a mere “red herring.”
Thomas’ opinion first describes what has now become the infamous Mayo/Alice framework: (1) “determine whether the claims at issue are directed to one of those patent-ineligible concepts”; and (2) “search for the ‘inventive concept’ —i.e., “an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” This second part of the analysis (i.e., search for the “inventive concept”) again improperly conflates patent-eligibility under Section 101 with novelty under Section 102, as well as obviousness under Section 103. The feared comingling of patent-eligibility with patentability when Justice Breyer announced the term ‘inventive concept’ in Mayo in judging claimed methods under [Section] 101 is now (regrettably) fully bloomed.
But what is even worse, near the end of part A of the Opinion of the Court, Thomas makes the following statement: “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case. Put differently, what Thomas essentially does in Alice (as Justice Kennedy did before in Bilski) is “punt” on providing any meaningful definition of what is (and more importantly is not) an “abstract idea.” So much for providing us “mere mortals” with any “framework” of how to distinguish “abstract” from “non-abstract” ideas other than “we know it when we see it, but we in the Ivory Tower are not going to tell you ‘mere mortals’ what our ‘secret’ is for so determining.
Following Alice which brazenly refuses to provide any usable definition of what SCOTUS means by “abstract idea,” trying to logically apply the broken and nonsensical Mayo/Alice framework is and has been an exercise in futility. See Guttag, The Broken Patent-Eligibility Test of Alice and Mayo: Why We Urgently Need to Return to the Principles of Diehr and Chakrabarty. One need only look at the multitude of subsequent Federal Circuit panel decisions that fumble through in trying to apply this unworkable framework to reach different results on similar facts to understand why my characterization of this framework as “nonsensical and broken” is correct. I’ve often commented that I could do better with an Ouija board to determine patent-eligibility under Section 101 than to use this unworkable framework.
That SCOTUS repeatedly refuses to fix this mess of its own making in my opinion also reflects very poorly on its responsibility to assure understanding and consistency in U.S. legal jurisprudence. It further reflects an astonishing conceit unbecoming of the highest judicial body in the U.S. that simply grasps at the judicial power, but is unwilling to also assume the responsibility that judicial power entails. Indeed, the most egregious travesty in this regard was the recent petition for certiorari in the Sequenom case where many members of the Federal Circuit (as well as almost two dozen amicus briefs) literally begged SCOTUS to clarify its ruling in Myriad, that ruling itself also being based largely upon a chemical and microbiologically problematical view that isolated fragments of DNA created by man are exactly equivalent to what exists in nature.
But instead of accepting Sequenom’s petition as it should have, SCOTUS once more took the arrogant and frankly cowardly path of denying cert, leaving in its wake a ruling in the Myriad case, as apparently understood by the Federal Circuit, that threatens to drive any research on medical diagnostic methods underground (to be protected as “trade secrets” if possible) or abroad, or to simply halt any time or investment in such research because patents cannot be obtained on it (as is especially true of university research). See the recent October 29, 2018 article by David Kappos and Paul Michel, Supreme Court Patent Decisions Are Stifling Health Care Innovation.
Even worse, as was not so subtly hinted at in at least one amicus brief from Europe, the Federal Circuit’s ruling in Sequenom (based upon what many in the Federal Circuit reasonably believe is compelled by SCOTUS’ holding in Myriad) puts the U.S. in serious jeopardy of being held in violation of its international treaty obligations under TRIPS (those treaty obligations under TRIPS being also the “law of the land” in the U.S.), given that at least 4 other jurisdictions (Australia, Canada, Europe, and Japan) found Sequenom’s claimed medical diagnostic method to create no patent-eligibility issue. It would be truly ironic if someone in a different case chose the “nuclear option,” and filed a complaint with the WTO or filed suit through the international court in The Hague, with the U.S. being deemed to be in violation of its TRIPS obligations because of the ruling in Sequenom that SCOTUS refused to clarify when asked to do so.
The most recent “nail in the coffin” in derogation of the Patent Clause is SCOTUS’ apparent willingness, as well as audacity to permit an executive tribunal, namely, the Patent Trial and Appeal (PTAB) to: (1) in the 2015 case of Cuozzo Speed Technologies v. Lee, invalidate patents in post-grant proceedings (i.e., IPRs and CBMs) using a claim construction standard totally different from that used by an Article III court; and (2) even worse, in the 2018 case of Oil States Energy Services v. Greene’s Energy Group, to treat granted patent rights as a “public franchise” (i.e., the equivalent of “permit[ting] a company to erect a toll bridge”), and therefore not subject to the “due process” protections of the 5th Amendment as a “taking.” See Guttag, “Some Reflections Oil States: Are There ‘Silver Linings’ Amidst the ‘Doom and Gloom’?” posted April 18, 2018 on IPWatchdog. The majority opinion in Cuozzo Speed was written by the same dreadful author of Mayo, namely Justice Breyer, while the majority opinion in Oil States was written by the same dreadful author of Myriad and Alice, namely Justice Thomas.
What I and others in the patent bar find galling is that a majority of SCOTUS in both Cuozzo Speed and Oil States appear to be content to allow PTAB to operate in IPRs (and presumably in CBMs) in a manner contrary to any form of due process, as well as contrary to the APA, including engaging in “panel stacking,” as well as failing to ensure that APJs sitting on PTAB panels are free from potential conflict of interests or abide by any code of ethics similar to those of judges to insure objectivity of and lack of bias by them. See here, here, here and here.
What is particularly irksome about Thomas’ majority opinion in Oil States is how it treats the holding in McCormick Harvesting as a mere issue of lack of statutory authority of the Commissioner of Patents to annul or correct the granted patent. But dissenting Justice Gorsuch correctly sees McCormick Harvesting quite differently, as being based upon a more fundamental constitutional Article III question of separation of powers, and especially the independence of the judiciary, versus the potential lack thereof in an administrative tribunal such as PTAB (such lack of independence being well-documented through, for example, “panel stacking,” and APJs sitting on IPRs involving former clients). That fundamental Article III question comes directly out of the language used by SCOTUS in McCormick Harvesting, as quoted by Gorsuch in his dissenting opinion:
“It has been settled by repeated decisions of [SCOTUS] that when a patent has [been issued by] the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President, or any other officer of the Government. It has become the property of the patentee, and as such is entitled to the same legal protection as other property.”
But what is absolutely infuriating about Thomas’ majority opinion in Oil States is the egregious statement that a patent grant is merely a “public franchise.” Those in the patent bar, and may be even Justice Gorsuch, wince at such a gross mischaracterization of a patent grant. And never mind that this gross mischaracterization of patent rights by Thomas’ majority opinion overlooks and overturns more than 200 years of case law, including that of the Supreme Court, some of which is referred to in McCormick Harvesting, as well as the express language in Section 261 which characterizes patent rights as “having the attributes of personal property.”
TO BE CONTINUED… Up next is a discussion of how repeated reversals by the Supreme Court created a compliant Federal Circuit.