Iancu Calls on Federal Circuit to Fix Section 101 Problem

By James Nurton
May 2, 2019

“The Federal Circuit could take a few cases en banc and devote a day, get amicus input, and hear from the government. Let’s have a broad-based discussion on some specific cases in an en banc situation. To a large extent, they could fix it.” – Andrei Iancu

https://depositphotos.com/129315224/stock-photo-beginner-courses-number-101.htmlUSPTO Director and Under Secretary of Commerce for Intellectual Property Andrei Iancu believes that “to a large extent … if they want to, the Federal Circuit can fix the problem” with patentable subject matter under Section 101.

Speaking at the 27th Intellectual Property Law & Policy Conference at Fordham Law School on April 25, Mr. Iancu said the interpretation of Section 101 is “the most important issue of substantive patent law currently.” He added: “This issue must be addressed now in the United States.”

The USPTO Director said there is consensus that the state of the law is unworkable: “Recent case law has created significant confusion in this regard.” But he added: “If you look at the Supreme Court cases by themselves, those cases are not the ones necessarily that have caused the problem. In the way those cases have been interpreted in the lower courts or at the USPTO itself, we have deviated from the core message of the Supreme Court to some extent.”

Mr. Iancu said that the language of Section 101 is designed to exclude types of matter that are “per se not for patenting”, such as pure unapplied mathematics, compositions of matter or natural/scientific principles, human interactions like economic principles, and mental processes. But he said mistakes have been made and some court decisions are now treating technological matter as coming within the scope of the exclusions: “We have deviated in the way we think about it and the way we apply it. The application of these exclusions to all types of matter, all types of technology, even if not per se problematic … goes beyond what the Supreme Court has said and is nowhere to be found in the statute itself.”

Vague claims should be dealt with under Section 112 rather than Section 101, he said, and questions of inventiveness should be addressed under Section 103.

Mr. Iancu argued that the recent USPTO guidance for examiners has “created more consistency,” saying: “I’m quite optimistic. I think we have created a framework that works.” He also encouraged patent applicants to push examiners to follow the guidelines.

But he said further guidance was needed from the courts: “The Federal Circuit could take a few cases en banc and devote a day, get amicus input, and hear from the government. Let’s have a broad-based discussion on some specific cases in an en banc situation. To a large extent, they could fix it.”

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Other speakers at the Conference, however, were skeptical that the Federal Circuit can solve the problem. Former Chief Judge Paul Michel said en banc hearings could only solve one-third or at most one-half of the problem: “The rest requires legislation.”

Moreover, he added that “going en banc is never easy.” Rule 35 of the Federal Rules of Appellate Procedure requires a majority of the Court’s active judges to agree to an en banc hearing, and says that such a hearing or rehearing will not be ordered unless (1) en banc consideration is necessary to secure or maintain uniformity of the court’s decisions; or (2) the proceeding involves a question of exceptional importance.

“Legislation is the only solution. The Supreme Court has turned down every cert petition; they’ve no intention of straightening out the problem,” said Mr. Michel.

Don Dunner of Finnegan also favored a legislative fix. Speaking at the Conference, he said the framework proposed by Senators Tillis and Coons was a “good approach” and that most judges “would like to see a more liberal interpretation of Section 101.”

But, responding to Mr. Michel’s comments, Mr. Iancu warned: “Legislation is unpredictable too. Those words will have to be interpreted by the courts.”

Google Weighs In

The Fordham IP Conference was held over two days in New York City and included a line-up of international speakers across sectors. During another session on April 26, titled “Patent Potpourri,” which was moderated by Adam Mossoff and included speakers from Germany, the United Kingdom and United States, Google counsel Suzanne Michel told attendees that Section 101 panic is overblown. Michel acknowledged that her perspective was strictly a tech industry one but said that the Alice decision’s effect on the way courts apply 101 “supports innovation in the software industry and aligns the U.S. with the rest of the world.” She added that it seems like many want the solution to perceived unpredictability to be “no lines”, which she said “would be a very bad idea,” and warned against coming up with legislation only to spend the next 10 years litigating it in the courts.

“101 has to provide some kind of filter,” Michel said. “The technical solution to a technical problem test works well…. I propose less complaining about the Supreme Court is one solution. The situation always looks worse than it is.”

The Author

James Nurton

James Nurton is a freelance journalist and editor, based in London, United Kingdom. He was previously editor of Managing Intellectual Property magazine and has worked on publications and events for AIPPI, AIPLA, INTA, WIPO, the EPO and EUIPO. He is editorial consultant to MARQUES and a partner of Lextel, which provides editorial and thought leadership services to law firms.

For more information or to contact James, visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments. Join the discussion.

  1. Anon May 2, 2019 3:14 pm

    “If you look at the Supreme Court cases by themselves, those cases are not the ones necessarily that have caused the problem.

    Nice “hedge” with the “necessarily” word, but otherwise COMPLETELY disagree.

  2. B May 3, 2019 12:46 pm

    “USPTO Director and Under Secretary of Commerce for Intellectual Property Andrei Iancu believes that ‘to a large extent … if they want to, the Federal Circuit can fix the problem’ with patentable subject matter under Section 101.”

    No, they cannot. The CAFC is literally too dense as a group to undertake the task of reading the statutory language of s101 and harmonizing the holdings of Alice and Mayo with the statutory patent law.

    I directly challenged them to do this on en banc rehearing.

    Not a single judge accepted such a profound challenge. Read the statute? Statutory construction? Totally beyond them. I know this for a fact. One CAFC judge totally gets the problem, two whine about how helpless they are, a fourth goes hot and cold, and the rest of the CAFC spend their weekends navel-qazing while pondering the mysteries of “invention.”

  3. B May 3, 2019 12:51 pm

    ‘Michel said. “The technical solution to a technical problem test works well…. I propose less complaining about the Supreme Court is one solution. The situation always looks worse than it is.”’

    OR YOU CAN BOTHER TO READ THE DARN STATUTORY LANGUAGE TO S101.

    Michel, name one s101 opinion that you or the CAFC declared a claim patent eligible based on your “technical solution” language??

  4. B May 3, 2019 2:44 pm

    ‘Michel said. “The technical solution to a technical problem test works well…. I propose less complaining about the Supreme Court is one solution. The situation always looks worse than it is.”’

    OR YOU CAN BOTHER TO READ THE DARN STATUTORY LANGUAGE OF S101.

    Michel, name one s101 opinion that you or the CAFC declared a claim patent eligible based on your “technical solution” language? Where is “technical solution” written in s101? The Supreme Court slammed the CAFC’s “machine or transformation” test for being extra-statutory in Bilski. Does the CAFC ever learn?

  5. Anon May 3, 2019 3:54 pm

    Just to be clear, the “Michel” at focus with B’s comments is:
    Google counsel Suzanne Michel

    and not to be confused with another Michel referenced in this article: Former Chief Judge Paul Michel

    It is of NO surprise that Google wants to turn a blind eye to problems that they have had a hand in causing.

  6. Justice May 3, 2019 6:28 pm

    The key problem is Google, Amazon and Apple have final say and are more powerful then the American Government and the SCOTUS, and they are the ones that have created this mess so they do not have to pay for using someones patents, now they can just take someones patents and kill them off in court through 101 PTAB Alice Ebay TC Heartland. When you have the money you buy everyone out. This is the key reason there is no more justice for inventors and patent holders in America. The game is rigged Iancu knows it Former Chief Judge Paul Michel knows it and there is nothing anyone can do about it. What you have in America is a plutocracy and the SCOTUS and the US Government sold their souls to corporatocracy. GAME OVER!

  7. B May 3, 2019 8:23 pm

    “Just to be clear, the “Michel” at focus with B’s comments is: Google counsel Suzanne Michel”

    Full disclosure: I’ve barely slept in three days b/t getting work done and filing another amicus. I’m going to procure a six of my favorite IPA and some quality brie, then watch the GoT episode everyone has been raving about that I haven’t had time to watch.

    That said, Suzanne Michel sounds like Paul Michel. Lots of pro-patent rah-rah but no real solutions

  8. Night Writer May 6, 2019 10:58 pm

    There is no doubt that the CAFC could fix 101 if they wanted to. There are plenty of smart judges on the CAFC, but the problem is that almost a majority of them were selected by Silicon Valley to burn the patent system down (“get it under control.”). They are loving the destruction of the patent system.

    But–I am absolutely agree that with a little cleverness it would be almost impossible for the Scotus to maintain control over 101. The weakest point is “abstract idea” and something that is well-known. Newman has made stabs at this, but doesn’t seem to have much support.

    Anyway–this would be easy for judges like Taranto if he had the will to do it. Rich could have easily have done it.

    Newman said in one case this is new so it is not an abstract idea. The thing the CAFC can do is just define abstract idea so it covers pretty much nothing. The more the Scotus tries to define abstract idea the more absurd their constructs become.

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