“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.”
Recently, 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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