Reflections Upon Disagreeing with Judge Paul Michel

“I largely do agree with Judge Michel, who says that it is up to Congress to provide a fix to the patent eligibility chaos created by the Supreme Court. Where I disagree is when he says he thinks the Supreme Court has tied the hands of the Federal Circuit. At this point, it seems the Federal Circuit has tied its own hands.”, I’ve written several articles laying the blame for the patent eligibility crisis squarely on the Federal Circuit. Yes, we all know the Supreme Court is obviously to blame. They are the court with primary national jurisdiction, and there can be no doubt that the Mayo v. Prometheus decision is the root of the patent eligibility problem because it intentionally conflates novelty and obviousness with patent eligibility. In my recent writings, and in a variety or presentations and speeches I have been giving across the country—from Utah to Orlando to Charlotte—I’ve criticized the Federal Circuit for not distinguishing Mayo and Alice on the facts. If we listen to the Supreme Court at least, at issue in both Mayo and Alice were unusually simple “inventions” that are really not innovations at all.

As I filed my latest article, Eileen said that she thought it was good because it would provoke discussion, since I disagreed with Judge Michel’s view in the interview with him she had just published.

There was a long pause in our conversation. “Am I really disagreeing with Judge Michel?” I asked.

Whenever I disagree with Judge Michel, I pause. It isn’t that I am unwilling to disagree with him, but, over the years, I have come to learn that, when one is going to disagree with Judge Michel, prudence dictates reevaluating your position.

I believe that I largely do agree with Judge Michel, who says that it is up to Congress to provide a fix to the patent eligibility chaos created by the Supreme Court. Where I disagree is when he says he thinks the Supreme Court has tied the hands of the Federal Circuit.

At this point, with the Federal Circuit having said so often that they are compelled to invalidate patent claims on real innovation because of either Mayo or Alice, it seems the Federal Circuit by and large has tied its own hands.

For example, I don’t understand how or why a case (i.e., Mayo) where the claims were determined to essentially claim a natural law can or should result in all—or practically all—discoveries being held patent ineligible. I also don’t understand how a case dealing with software that could be coded over a weekend (as admitted by the attorney representing the inventor, i.e., Alice) can or should result in any real computer related innovations being patent ineligible. Why is it difficult to distinguish these cases?

USPTO Director Andrei Iancu has been able to parse the Mayo and Alice decisions and distinguish them, explaining in speeches, to examiners, and in Revised Guidelines that strict adherence to exactly what the Supreme Court actually ruled in Bilski, Mayo, Myriad and Alice does not result in taking a hatchet indiscriminately to the software and life sciences industries.

So, Judge Michel is right. Congress must step up and do something because there is no evidence that the Supreme Court will suddenly come to their collective senses, and there is no reason to believe the Federal Circuit will fill in the interstitial gaps left by the Supreme Court. Instead, with notable exceptions, and when certain judges are on the panel, the Federal Circuit seems to be largely ineffective in providing a coherent and responsible vision for U.S. patent law.

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15 comments so far.

  • [Avatar for concerned]
    April 11, 2019 04:33 am

    James Whittle: “A technical point that Mayo seems to have overlooked: The inventive concept of the patent (US 6,355,623) was the precise threshold “wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug,” not the general concept of adjusting the dose up or down … yet the Supreme Court failed to address that threshold limitation in its analysis. Would the outcome have been different if the Court had acknowledged that limitation?”

    I do not know. However, in my patent prosecution, the examiner said no “inventive step” even though we proved that my solution has escaped literally hundreds of thousands, if not millions, of working professionals and experts for 61 years. We produced one university study from an expert with 25 years experience and also another study from an expert with 35 years, in addition to many other documents from each state in the nation (every possible end user).

    The current patent environment seems if the invention is not “techie” enough or “wow” enough on the surface, the person doing the rejecting simply “rejects.” This type of rejection from someone overrides the experience and knowledge of experts.

    So Mr. Whittle to answer question, I do not understand all that mumble jumble medical stuff you said, however, I do understand that those doctors across the nation are intelligent, something had to be invented to solve a problem that experts could not (common sense).

    In addition, some patent attorneys on this website read my claims and said “abstract”, others said inventive step. Mr. Quinn responded to one poster and implied “How can that be not inventive?”

    That is the million dollar question: “How can any solution that escapes experts not be inventive?” Nobody answers that question as there is no logical answer that fits their view. People in authority just “reject” like the Mayo court.

    Its human nature dictating our patent system with a strong reject bias, not a sound approach where truth, logic and facts prevail in a legal setting.

  • [Avatar for Miffed]
    April 10, 2019 05:22 pm

    that would imply that the cafc would admit to incompetence or error, which aint gonna happen. it would also make their cocktail parties with VIPs a little more awkward.

  • [Avatar for Anon]
    April 10, 2019 08:23 am

    Well said Ron.

    Let us all also remember that retired Chief Judge Michel has first hand knowledge of the behind the scenes work at the CAFC.

  • [Avatar for James Whittle]
    James Whittle
    April 9, 2019 10:39 pm

    A technical point that Mayo seems to have overlooked: The inventive concept of the patent (US 6,355,623) was the precise threshold “wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug,” not the general concept of adjusting the dose up or down … yet the Supreme Court failed to address that threshold limitation in its analysis. Would the outcome have been different if the Court had acknowledged that limitation?

    Have others made this point before? If so, I’d appreciate being pointed to articles mentioning how the Court overlooked this limitation of the claims in question.

  • [Avatar for Ron Katznelson]
    Ron Katznelson
    April 9, 2019 09:58 pm

    Gene, thank you for this thoughtful essay.
    However, I disagree with your disagreement with Hon. Judge Paul Michel regarding which court bears the main responsibility for the Section 101 train wreck. You criticized the Federal Circuit “for not distinguishing Mayo and Alice on the facts.” But this (correct) tactical argument misses the strategic threshold point. Judge Michel addressed this elsewhere as follow:

    “How do you define an abstract idea? … What limitations add significantly more to a claim that has in it one of these implied exceptions that the Supreme Court has pulled out of nowhere. It’s not in the Patent Act, the four categories. Nothing in [the statute exists] by way of exceptions. Certainly nothing in there about abstract ideas, laws of nature, natural phenomena, etc. They just made it up.”

    Hon. Paul R. Michel, 14 Northwestern Journal of Technology and Intellectual Property, 131,136-137 (2016) (emphasis added).

    The point is that, given SCOTUS’ made-up law, the CAFC has very little leeway, and can only flutter at the margins. Judge Michel likely recognized this. Having to divine plausible escape valves and maneuver around the facts of Mayo and Alice cannot salvage the fundamentally flawed 101 hand the CAFC was dealt. Instead, such efforts inevitably add fuel to the destructive fire and result in bad CAFC judge-made law to boot. A few cases may be salvaged at the margin with very little certainty that the CAFC’s own made-up “fixes of distinction” would survive. It is all SCOTUS’ doing and the CAFC cannot save the day. Congress should.

  • [Avatar for BP]
    April 9, 2019 08:27 pm

    @9 Night Writer – exactly, akin to arbitration, trade secret cases will be handled “in camera” with no document but the perfunctory one being for the public eye. “[F]ree to all men and reserved exclusively to none.” What a joke!

  • [Avatar for Night Writer]
    Night Writer
    April 9, 2019 08:06 pm

    @7 Ternary

    I agree. And I am sure that trade secrets are going to become huge and they play right into what SV wants right now.

  • [Avatar for Anon]
    April 9, 2019 07:44 pm


    To feed off of your point: “The only part that is “free” is the use of these discoveries once they are published.” — patent law has always had an exception to infringement for those who want to engage in purely intellectual pursuits of patented items (reference the experimental exception).

    What that exception never provided for was for those who wanted to experiment and then usurp the natural gains that would be due to the person making the advance in the first place.

    Somehow**, our Supreme Court missed the point of that longstanding patent law notion.

    ** – that “somehow” is not a mystery, given the immense propaganda spent by those who are anti-patent, and anti-patent comes in more than one flavor! You have those opposed to patents from a Left perspective (simply anti-personal property and anti-making money from personal property) as well as what I have called from a Right perspective (probably more apt to be called the Efficient Infringer perspective, who may not be against property rights per se – just those property rights that get in the way of their making as much money as possible).

    There is little doubt that the Court, as a whole, has swallowed enough Kool-Aid from the various anti-patent propagandists to choke out any truly reasonable and innovation-promoting viewpoints.

    Your thoughts on the history of science resonate with me (and my own academic background, as I minored in the history of science and technology while obtaining my first engineering degree).

    What we have with the Supreme Court’s intrusion is simply legislating from the Bench. Their meddling is NOT “interpretation.” Their meddling is outright law writing.

    And they have done so in an extremely poor manner (which gives extra pause to their “warning” against scriviners ‘getting around‘ the actual law written by Congress.

  • [Avatar for Ternary]
    April 9, 2019 05:49 pm

    The case mentioned by BP, recites part of Alice “Laws of nature, natural phenomena, and abstract ideas are not patentable.” in Alice. These three categories of subject matter are excepted from patent-eligibility because “they are the basic tools of scientific and technological work,” which are “free to all men and reserved exclusively to none.” in Mayo. These elements always have struck me as being divorced from reality.

    Knowledge is not free and what the Courts say has nothing to do with reality (except the part that you won’t get a patent.) Discoveries, laws of nature and abstract ideas are produced by people who divulge them, usually after doing a significant amount of intellectual effort. There is nothing “free” in it. The only part that is “free” is the use of these discoveries once they are published.

    Abstract ideas (in mathematical formulas) how to release energy form a nuclear fusion reaction were absolutely not “free”. Early mathematicians carefully kept their discoveries a secret. They understood that the “free” availability of those discoveries would negatively affect their standing. Magicians keep their tricks (which probably would be considered abstract ideas under Alice) a carefully protected secret.

    Medieval guilds usually kept their techniques secret to maintain a competitive advantage. Alchemists kept many of their discoveries a secret. Nobody (except in academia) voluntarily discloses their discoveries if some competitive advantage is involved. Why? Because it takes an investment in effort, time, money, to unearth a discovery or natural law. Read any book on the history of science.

    To maintain that fruits of intellectual labor in any form are or should be “free” is a bunch of horse manure. The Founders recognized the old world limitations of secrecy on technology and knew that an incentive was required to promote the disclosure of discoveries that can be used in an economic useful way.

    Discoveries and natural laws are not like air to be consumed generally naturally without payment or effort. Discoveries and natural laws are like diamonds, hidden in the ground to be found, unearthed, cut and polished for use at significant cost and efforts.

    Developing knowledge has never been free. Secret knowledge may provide you with leverage over others who do not have that knowledge. It seems that we are getting to a point where keeping knowledge as a private secret has more benefits or less negative effects than publishing ideas and losing control over an invention.

    There may be a reason why discoveries, natural laws and abstract ideas are not patent eligible. That they are a naturally “free” product is not one of them.

  • [Avatar for BP]
    April 9, 2019 03:03 pm

    How would you like a patent judged to be invalid when it is not even asserted? J. Koh signed off on both an Order and a Judgment invalidating the wrong patent.

    On April 5, 2019, the Court granted Defendant’s motion to dismiss. ECF No. 107. The Court ruled that the claims of U.S. Patent No. 6,933,049 are invalid under 35 U.S.C. § 101.

    Accordingly, the Clerk shall enter judgment in favor of Defendant. The Clerk shall close the file.


    Dated: April 5, 2019
    United States District Judge


    Title of US 6,993,049: “Communication system”.

    Yes, an abrasive tool is an “abstract idea”.

  • [Avatar for BP]
    April 9, 2019 02:12 pm

    The problem is systemic in our lazy and arrogant federal judicial system – from bottom to top. I see too much incompetence and laziness. Like what I saw today, Judge Koh of the ND Cal, with two degrees from Harvard and an inability to get facts correct in her 101 orders (Uniloc v. LG, April 5, 2019, Case No. 18-CV-06738-LHK). That’s lazy, really lazy, especially when she has clerks at her disposal. Typographical errors, no big deal for Judge Koh, who cares, it’s only an order on a motion to invalidate a patent. How lazy. I have to spend my time to (i) look for the patent referenced in the order that I accessed on Leagle, (ii) realize that the order on Leagle had the incorrect patent number (because the patent I pulled US 6,933,049 had nothing to do with the technology), (iii) log in to PACER to see the order directly from ND Cal to be sure that Leagle did not make the error, (iv) realize that lazy J. Koh made the error at p. 1, line 21 of her signed order, she didn’t even care to get the patent number correct, and (v) search in the case docket on PACER to get the correct patent number (US 6,993,049). That’s the best we can expect from a federal judge. Lazy, a waste of taxpayer dollars. We cannot expect such lazy people to care about justice, fairness, the public, . . . . Why work hard when $$$ can buy your way into top universities, buy politicians, and even buy judicial positions?

  • [Avatar for Pro Say]
    Pro Say
    April 9, 2019 01:49 pm

    One thing’s for sure: There’s more than enough hand-tying responsibility and liability to go around.

    The best and most sure way to untie everyone’s hands … and thereby untie American innovation in the process … is to abolish 101.

    Kill the cancer that is 35 U.S.C. §101.

  • [Avatar for Anon]
    April 9, 2019 10:15 am

    Interesting how this seems to mirror our own recent exchange, Gene.

  • [Avatar for Paul Morinville]
    Paul Morinville
    April 9, 2019 09:55 am

    The Federal Circuit is way out of line and abdicating their duty. They have the same oath to uphold the constitution and follow the law as SCOTUS. SCOTUS has thrown an unintelligible and destructive stink bomb into patent law.

    No decision the Federal Circuit makes could possible conflict with the Alice/Mayo stink bomb because nobody, not even SCOTUS, knows what the hell it means.

    So the Federal Circuit should make their decisions based on facts and black letter law ignoring Alice/Mayo. If (when) a decision gets appealed to SCOTUS, SCOTUS has the opportunity to define the public policy position in the retroactive legislation that they made law without public input or consent and without Congress that they call Alice/Mayo so the rest of us can understand it.

    The sooner the better because right now, today, investment is leaving the US and flooding China for any new tech caught in the stink bomb.

  • [Avatar for Kevin R.]
    Kevin R.
    April 9, 2019 09:31 am

    What would the CAFC “fixing this” entail at this point? Reversal of ChargePoint En Banc? A handful of distinguishable fact-patterns falling to the right panels? SCOTUS deferring to Dir. Iancu?
    I think it’s more plausible (and more worthy of support) to get behind Sen. Coons and friends…