“One must ask why the Supreme Court would ask advice from the Department of Justice for a point of law when one panel of the Federal Circuit holds for patent eligibility, yet consider the same point of law unworthy of attention when another panel holds against patent eligibility.”
To kick off the week that Alice turns five, Bud Mathis examines the Supreme Court’s 43rd denial of certiorari on a patent eligibility case. The author acted as counsel for the petitioners.
Villena v. Iancu (Supreme Court Dkt. No. 18-1223), which is the 43rd patent eligibility case to be considered for certiorari since the notorious Alice Corp. decision, was denied cert. on June 10. Villena would have been the 45th patent eligibility case to be considered for certiorari, but the Supreme Court kicked the can over to the Solicitor General for both Vanda Pharmaceuticals and Berkheimer, which happen to be Alice/Mayo cases in which the Federal Circuit held the inventions at issue to be patent eligible. That’s no coincidence. The rough probability of waiting through 43 petitions outlining the capricious decisions from the lower courts before the Supreme Court might generate a “yes” to certiorari is well-above one standard deviation and approaching two standard deviations.
It is beyond evident that the Supreme Court refuses to clean up its own mess and will continue to do so for the indefinite future.
Timing is Everything
The Villena case involved the Federal Circuit’s rejection of claims relating to “devices and methods capable of producing and quickly delivering large numbers of computer-derived estimates of residential properties known as “Automated Valuation Model” (“AVM”) estimates (or values).” Villena argued that its particular reduction to practice of these methods and systems made AVMs accessible to a larger population and more reliable and should have been considered patent eligible. The examiner initially rejected the application based on Section 102, 103 and 112 grounds, but in an answer to Villena’s appeal brief added a Section 101 rejection. “In his terse § 101 rejection, the Examiner failed to cite a single iota of evidence that providing AVM values ‘is something that is a fundamental economic practice that has long been prevalent in our system of commerce,’” Villena argued in its petition to the High Court.
Villena had the benefit of five years of capricious horror stories from the Federal Circuit thrown onto the Supreme Court’s doorstep to consider. Villena benefited from the brilliance of a lot of dedicated attorneys dealing with an increasingly bizarre string of numerous, absurd, and capricious Federal Circuit decisions. Villena benefitted from a string of brilliant law school professors writing on the subject. Villena went to conference on June 6, 2019—the 75th anniversary of D-Day. Coincidentally, the previous two days in Room 226 of the Senate Dirksen building were dedicated to discussions on patent eligibility, where the great majority of witnesses expressed substantial criticism of the Alice/Mayo doctrine, and riveting testimony by, for example, Judge Paul Michel and Sherry Knowles, who provided information on just how capricious and destructive the Alice/Mayo doctrine is. The various discussions of Alice/Mayo can be found HERE and HERE.
Burning Down the Barn
This is not to say that everyone hates the Alice Corp. decision. Certainly, Google et al. are happy. I will admit that Alex Moss of the Electronic Frontier Foundation (EFF) gave compelling testimony as to the destructive effects of bad patents on small businesses. I agree with Ms. Moss’ position that there are ruthless sharks misusing the patent system for illicit gain. My problem with Ms. Moss’ position is that Alice Corp. is like burning the barn down to address a mosquito problem.
Villena had the advantage of being an example of reductio ad absurdum jurisprudence where it was conclusively proved that both the USPTO and Federal Circuit are so out to lunch that pointing to a more bizarre decision is nearly impossible. The Villena fiasco proves the following, as laid out in Villena’s petition for cert.:
- The judiciary has de facto rewritten the statutory patent law into something unrecognizable.
- Completely unknown and nonobvious limitations as evidenced under § 102 and § 103 of the Patent Act (issues of fact) nonetheless can be well-understood, routine, and conventional under § 101.
- There really is no actual requirement to consider claim limitations as a whole, ordered combination. It is officially a fiction that may be ignored.
- Preemption has no place in the preemption concern that underlies the exceptions to patent-eligibility under § 101. What remains is a meaningless search for an “inventive concept.”
In my opinion, Villena further proves that:
- The Federal Circuit is shamelessly willing to misrepresent the evidentiary record when addressing an Alice/Mayo
- Berkheimer is already dead at the Federal Circuit.
- The requirement for “invention,” while rejected by the Supreme Court as a condition for patentability under § 103 (see Graham v. John Deere, 383 U.S. 1, 11) is nonetheless appropriate to determine patent eligibility under § 101.
The Alice/Mayo doctrine is a proven failure. The “rough filter” of Section 101 under the doctrine of invention is nothing but a capricious flame-thrower that allows examiners and judges to torch any patent claim that fails to suitably impress. Imagine a PTAB panel holding that five separate claim limitations can be unknown and nonobvious under Sections 102/103 and yet be well-known, routine, and conventional under Section 101. Imagine a PTAB panel that refused to address the claims as a whole and that routinely prejudiced an appellant. Imagine a Federal Circuit panel that refused to set aside such a Section 101 decision while proclaiming that there was sufficient evidence to support factual issues the USPTO never addressed. The problem is understandable. The Federal Circuit had painted itself into a corner with one lawless and bizarre decision after another until all that was left in Villena was to close one’s eyes and ignore the issues.
A String of Failures
Turning back to the Supreme Court, one amazing part about the Supreme Court’s denial of certiorari is that Villena shared a common issue with the Berkheimer case: the requirement that evidence be available to support the idea that claim limitations be well-understood, routine, and conventional. The only proper course of action would have been to hold the Villena case in abeyance until Berkheimer was decided. That didn’t happen, and one must ask why the Supreme Court would ask advice from the Department of Justice for a point of law when one panel of the Federal Circuit holds for patent eligibility yet consider the same point of law unworthy of attention when another Federal Circuit panel holds against patent eligibility. The Supreme Court’s Villena certiorari decision is problematic by any metric including due process, equal protection, and some de minimus level of intellectual honesty. All that said, Villena is merely the latest failure in a string of failures spanning five years of failure. However, as with the Federal Circuit, the Supreme Court doesn’t intend to be fair.
Decades ago the honorable Justice Jackson criticized the Supreme Court’s “strong passion” for striking patents down “so that the only patent that is valid is one which this Court has not been able to get its hands on.” Jungersen v. Ostby & Barton Co., 335 U. S. 560, 572 (1949). As of today, the Federal Circuit and Supreme Court have reversed exactly zero Alice/Mayo rejections from the USPTO. They’ve created the perfect killing field for patents.
It’s time for Congress clean up the mess the courts in their ineptitude and hubris created, and the recent Senate hearings are a hopeful sign. We as a society love to mock our politicians but hold our judges in high reverence. The legal community goes into the vapors when one dares to use words about judges and justices we routinely assign to congressmen and senators. However, between the politicians and their Article III counterparts, only Congress merits respect on this issue.