“By virtue of being deemed to fall within a judicially created exception, whole classes of inventions are now considered patent ineligible regardless of their patentability. As a result, I believe worthy inventions have been denied patent protection, and confidence in the fairness and rationality of the U.S. patent system has taken a hit.” – Scott Elmer
Since the Supreme Court issued its decision in Alice v. CLS Bank five years ago today, patent eligibility jurisprudence and practice have become increasingly chaotic—at least in the opinion of many IP stakeholders and the members of Congress who are spearheading the effort to rectify the situation. As one of the commenters below—Dan Hanson—pointed out to us recently, it seems that the exchange during oral arguments in one of Alice’s precursors—Bilski v. Kappos—between Deputy Solicitor General Malcom Stewart and Justice Kennedy has proven quite prophetic. During that exchange, Stewart attempted to explain to the Court why his office didn’t originally want the justices deciding the patent eligibility issue:
STEWART: [W]e opposed cert in this case because we recognized that there are difficult problems out there in terms of patentability of software innovations and medical diagnostic –
JUSTICE KENNEDY: You thought we – you thought we’d mess it up.
Five years later, Alice was decided; today, to commemorate Alice’s five-year anniversary/ birthday, IPWatchdog posed the following—admittedly somewhat leading—statement to a cross-section of the IP community, and gave them a chance to agree or disagree with it. Many did not respond—including the Electronic Frontier Foundation and Google—perhaps because of the sensitive political moment in the history of patent eligibility law in which we find ourselves right now. However, the responses below do reflect a range of views on the impact of the case so far.
Let us know your own thoughts in the comments.
Question: “Alice has dramatically and negatively impacted my industry/practice over the last five years.”
Do you Strongly Agree, Agree, Disagree, or Strongly Disagree with this statement?
Scott Elmer, St. Jude Children’s Research Hospital
Strongly Agree: A great strength of U.S. patent law is that the basic rules of patentability (novelty, nonobviousness and utility) can be applied equally to inventions of all types to identify those that are worthy of patent protection. With Alice, as well as other decisions using similar reasoning (e.g. Mayo v. Prometheus, Myriad), the Supreme Court created an ill-defined set of exceptions that trump these basic rules. By virtue of being deemed to fall within a judicially created exception, whole classes of inventions are now considered patent ineligible regardless of their patentability. As a result, I believe worthy inventions have been denied patent protection, and confidence in the fairness and rationality of the U.S. patent system has taken a hit.
This is my personal view and not that of my employer.
Agree: But my view tends toward the neutral rather than toward the extreme.
Alice Corp. v. CLS Bank Int’l reached the correct result, in my view. Even so, Alice has had, in my experience and judgment, an undesirable impact, particularly as pertaining to inventions involving computation, signal analysis, and methods of use of devices.
This undesirable effect comes not as much from the Alice decision itself as from how the decision has been applied beyond the scope of its holding. Alice has been used (or in some cases, mis-used) as a shortcut in place of a careful patentability analysis. Some examiners (and some courts!) that apply Alice tend to be conclusory rather than analytical.
Current patent eligibility analysis is obsessed with a claim’s “inventive concept” and what a claim is “directed to.” Accordingly, a claim tends to be evaluated piecemeal, with certain parts being deemed conventional, for example, and other parts being deemed abstract. This sort of approach departs from what ought to be a fundamental principle of patent law: a claim ought to be evaluated as a whole.
Sherry Knowles, Knowles Intellectual Property Strategies
Strongly Agree: Without doubt, Alice has dramatically and negatively impacted the pharma/biotech industry over the last five years. However, I think it is more important to focus on the dramatic and negative impact on the American public itself and medical solutions to serious diseases. Our country and our citizens have been damaged. And the timeclock for the Supreme Court/Federal Circuit frontal assault on the motivations for medical solutions began before Alice, with the 2012 Mayo decision and then the 2013 Myriad decision (seeded by the 2006 dissent by Justice Breyer in Labcore v. Metabolite). Some may even say it started with the Funk Brothers decision in 1948, followed by the Court’s total disregard for the legislative history and amendments to the 1952 Patent Act while it was busy creating patent law to its own liking. The most recent examples of contorted illogical (and unconstitutional) decisions are the Federal Circuit cases of Ariosa v. Sequenom and Athena Diagnostics. As I testified in the Senate IP Subcommittee Hearing, the highest public interest is life itself. We should all collectively applaud the excellent work of Chairman Tillis and Ranking Member Coons for being examples of what we want and need from Congress—representatives who are engaged, passionate, listen to all sides and then have the strength and commitment to fix problems to improve our competitiveness and restore the full motivation to fight disease and save lives.
Steve Kunin, Maier & Maier
Strongly Agree: The main problem has been that it has taken too long for the Federal Circuit and the USPTO to issue progressive and meaningful guidance on how to apply the Alice two-part test for patent subject matter eligibility. The problem with the two-part test is the lack of definitions for the key factors in applying the test. Although the USPTO has sought to define and limit what constitutes an “abstract idea” and explain what “directed to an abstract idea” means, the Federal Circuit has dismissed their analysis as not binding on federal courts. Moreover, no guidance has been provided as to what constitutes an inventive concept and what is significantly more than excluded subject matter in a claim. Additionally, no definition has been provided as to what constitutes a practical application of excluded subject matter. We have seen subtests arise from the case law, such as providing a technical solution to a technical problem suffices, but the federal courts have never defined what “technical” means. Also, improving the operation of a computer suffices, but only recently has this principle been expanded to improvements that arise via software, graphical user interfaces and computer program product claims if written in code plus function format.
Fortunately, we are seeing more cases found patent eligible at the first step in analysis, but this has taken too long. At least the Bascom and Berkheimer line of cases has taken the pressure off the difficulty in proving patent subject matter eligibility at step two. Since 2014, I have given webinars for Strafford on patent subject matter eligibility multiple times each year. Practitioners crave guidance on how to prepare and prosecute patent applications with robust specifications and claims tailored to demonstrate how practical applications are achieved through specific technical elements to survive section 101 challenges, but the envelope continues to expand as new Federal Circuit decisions issue. But even this approach is a struggle because of the unpredictability of further Supreme Court review. Many recent Federal Circuit decisions providing hope for movement of the pendulum back to a more pro-patent perspective have petitions for certiorari filed, which may result in back sliding should the Supreme Court disagree with the Federal Circuit’s enlightened approach. It appears that Congress is now poised to address the adverse impacts of Alice through at least one new bill that seeks to correct section 101 to be more in line with approaches taken by countries and regions that have more relaxed criteria for patent subject matter eligibility. The time to act is now.
Mark A. Lemley, Stanford Law School/Durie Tangri LLP/ Lex Machina Inc.
Strongly Disagree: Alice has weeded out the worst of the nuisance-value patent troll suits while allowing most real patent litigation to continue apace. Outside the medical diagnostics field, the people who suffered from Alice are mostly those who were gaming the system.
Christopher E. Loh, Venable LLP
Agree: While the policy considerations animating Alice may have reflected good intentions (e.g., deterring NPE litigation), in practice, Alice and the 101 decisions that have followed in its wake have generated considerable uncertainty over the fundamental question of what subject matter can and cannot be patented in the United States. This uncertainty in turn has fed the perception that the United States is losing ground to other jurisdictions as a reliable champion of patent protections. Moreover, because the issue of what is patentable under Alice has been characterized as a threshold question of law (albeit accompanied by certain factual underpinnings), courts have been forced to address that question under less than optimal circumstances: typically during the early stages of litigation, without the benefit of a complete evidentiary record or a good grasp of the relevant technology. These circumstances have led to a body of rulings that even their authors have sometimes criticized as inconsistent, confusing and lacking in rigor.
Stephanie Martz, National Retail Federation (NRF)/ United for Patent Reform
Strongly Disagree: Speaking on behalf of both NRF and United for Patent Reform, I strongly disagree with this statement. Alice provided clarity around an issue that should have been obvious: That you can’t patent an abstract idea just because you propose doing it “on a computer” or “through a network.” Main Street businesses across the country, representing 2/3 of American jobs, have been subject to vexatious lawsuits on patents indistinguishable from the patent that the Alice court found to be ineligible under Section 101. For our members, the Federal Circuit’s continued refinement of the Alice court’s unanimous interpretation of abstraction has been far from disruptive. More important are the numerous trial court decisions that have invalidated patent claims that never should have been granted in the first place, such as those for transmitting menus from a server to a mobile device (in other words, ordering pizza). Time will provide increased clarity, but Alice was a very positive development for Main Street business.
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