It May Be Time to Abolish the Federal Circuit

By Gene Quinn
July 9, 2019

“If the Federal Circuit is going to expansively read Supreme Court precedent, ignore Supreme Court warnings not to swallow all of patent law whole, and kill 90% or more of the software patents they see, what role does the Federal Circuit really play?”

https://depositphotos.com/23485765/stock-photo-gavel-and-handcuffs.htmlI don’t really know why we need the Federal Circuit anymore. Witness the denial of en banc rehearing in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC on July 3. This denial of rehearing provoked eight separate opinions, with no single opinion achieving more than four judges in support. With 12 judges deciding whether to rehear the case en banc that means no single opinion gained support from more than one-third of the Court. And that opinion that gained the most support was a dissenting opinion, meaning those judges wanted to rehear the case and specifically said that the claims “should be held eligible”.  In fact, as Retired Chief Judge of the Federal Circuit, Paul Michel, noted yesterday, “all 12 active judges agreed that the Athena patent should be deemed eligible, even though seven judges apparently felt helpless in view of Mayo.”

The truth is the Federal Circuit is not helpless. The Federal Circuit is choosing to interpret Mayo—on the life science side—and Alice—on the software side—expansively. The Federal Circuit has one primary job, which is to bring stability and certainty to U.S. patent laws. It would be easy to distinguish both Mayo and Alice, but rather than recognize the peculiar facts of these cases as representing the most trivial of innovations, the Federal Circuit has used Mayo to destroy medical diagnostics and Alice to destroy software. More analytical prowess would be expected from a first-year law student.

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Back to the Future

The entire reason that we have the Federal Circuit is because the regional circuits brought chaos to patent law. Well, the Federal Circuit is doing a wonderful job of bringing all the same chaos, uncertainty and unpredictability to patent law that existed prior to its creation some 37 years ago.

Those old enough to remember, or who have studied the history, know that prior to the creation of the Federal Circuit there were some regional circuits that never saw valid patents—ever. And Congress knew that the United States needed to have at least some patents valid in order to have a functioning patent system worth using. This led to a concerted effort during the Carter Administration that spilled over into the Reagan Administration to create a forum for patent disputes that wouldn’t be afraid to find worthwhile innovations that were described properly in well drafted patents to be adjudicated as valid.

With the help of the newly created Federal Circuit in 1982, the patent system was going to drive the engine of innovation that would bring the U.S. economy back. And it did.

The whole purpose, the raison d’etre, for have a Federal Circuit was to remove the uncertainty created by the regional circuits and replace it with predictable, certain and stable patent laws. In the words of Howard Markey, the first Chief Judge of the Federal Circuit, the express intent of Congress for the Federal Circuit was to “contribute to increased uniformity and reliability.” Today, and for some time now, we have two problems. First, because of a hopelessly fractured Federal Circuit, U.S. patent laws suffer from all the same uncertainty that plagued the system prior to the creation of the Federal Circuit.

Second, and quite ironically, because of a profound and irreconcilable ideological split between Federal Circuit judges, U.S. patent laws also suffer from all the same problems of predictability that plagued the system prior to the creation of the Federal Circuit. Just like patent owners would know they stood no chance in certain regional circuits pre-1982, once your panel is announced the morning of oral argument patent owners and challengers instantly know whether they have a fair chance, or whether they are merely going to go through the motions arguing in front of a panel of judges that are ideologically and philosophically never going to agree.

Luck of the Draw

You know when you’re a patent owner and Judge Dyk and Judge Mayer are on the panel together that you should probably just throw in the towel and save the 30 minutes of billable time. And there are other combinations of judges on various issues that have become predictably ideological in their rulings. Of course, that predictability once you know the panel leads to tremendous uncertainty because if you draw the right panel of judges, you win. So, it is hard to feel for the case load the Federal Circuit has; they have created it for themselves by refusing time and time again to work together to bring certainty to patent laws. Panels do not follow precedent from other panels, and panels don’t even follow en banc decisions. Witness the mockery certain panels are making of secondary considerations despite an alleged binding en banc decision in Apple v. Samsung, 839 F.3d 1034 (2016) saying secondary considerations are often the single most important of the four-factor obviousness test.

The state of patent law in America is this: You might as well appeal because if you get lucky and draw the right panel you will win. And like it or not, that is precisely what our patent justice system has become under the Federal Circuit. A crapshoot. And we all know it to be true.

The current state of utter disarray at the Federal Circuit, with panels doing whatever they want, judges not agreeing on anything, and ignoring en banc decisions as if they never happened isn’t what the Federal Circuit is meant to have become. The Federal Circuit is a disaster and the collective unwillingness of the judges to come together is making a mockery of an institution that is a critical piece in the U.S. innovation system. Indeed, the fact that the Federal Circuit is absent and unwilling to provide predictability and certainty, which literally was their only job, is why so many people are turning to Congress to solve the problems of the patent system.

The Federal Circuit is the entity within our system that the patent community has turned to for help since 1982, but they are not present currently. The Federal Circuit is so afraid of being overturned by the Supreme Court that they have lost their ability to distinguish even easily distinguishable cases. After all, Mayo dealt with an exceptionally poor claim where the Supreme Court took a shortcut using 101 instead of using 102 or 103. In Alice, they were told by the patentee’s attorney it was a trivial piece of software that could be coded over a weekend by a college student. These cases are easily distinguishable from any life sciences innovation of consequence or something like artificial intelligence or autonomous driving, for example. Yet, the Federal Circuit has expansively read these cases despite the explicit language of the Supreme Court telling them to narrowly read the cases lest all of patent law would be swallowed.

A Handcuffed Court is a Useless Court

The Federal Circuit has been absent. They have repeatedly said they are handcuffed by Supreme Court decisions, which was simply not true. They have, however, said it so many times that they have now effectively handcuffed themselves and the entire industry. So, that being the case, why do we need the Federal Circuit? If the Federal Circuit is going to expansively read Supreme Court precedent, ignore Supreme Court warnings not to swallow all of patent law whole, and kill 90% or more of the software patents they see (i.e., when you consider the Rule 36 affirmances) and virtually all of the medical diagnostics patents, what role does the Federal Circuit really play?

At a time when over 60% of all patented innovation in the U.S. is software related, we have all that same uncertainty and absolute predictability of patent hating from the regional circuits of yesteryear.

“To best serve its critical role in a free society, the law must be understandable, uniform, reliable, and consistent with the intent of the people’s representatives who enacted it,” wrote Chief Judge Markey as he reflected on the first ten years of the Federal Circuit. “To the maximum extent achievable by human beings, it can fairly be said that the law entrusted to the Court of Appeals for the Federal Circuit fully meets those criteria.”

Chief Judge Markey was correct. In the first decade, the Federal Circuit did faithfully administer and create an understandable, uniform, reliable and consistent set of patent laws as directed in the Congressional charter. Over the last decade, however, the Federal Circuit has failed miserably at delivering on Congressional intent to bring uniformity and reliability to the patent laws. That is why Congress must step in and fix the myriad problems we once looked to the Federal Circuit to address.

The Federal Circuit has become impotent due to the Court’s continued proclamations that it is unable to narrowly interpret two cases that beg for narrow interpretation. Two cases that the Supreme Court specifically cautioned against interpreting too broadly. So, here we are. The Federal Circuit is no longer performing its primary objective and isn’t even following the mandate of the Supreme Court. Instead, it is expansively applying dicta from Mayo and Alice, which dealt with non-inventions, to kill patent claims on inventions everyone agrees should be patent eligible. It is truly maddening that it has come to this.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 35 Comments comments. Join the discussion.

  1. Pro Say July 9, 2019 4:49 pm

    Since Alice/Mayo, thanks to SCOTUS and the CAFC, patent law has indeed been swallowed.

    Sadly, it is America and American innovation which are left choking on it.

  2. Curious July 9, 2019 5:34 pm

    So, it is hard to feel for the case load the Federal Circuit has; they have created it for themselves by refusing time and time again to work together to bring certainty to patent laws.
    BINGO. Predictably applied law is infrequently appealed. Once the issue has been ruled upon (properly), the parties know what the result will be at the Federal Circuit. Appealing a loser case to the Federal Circuit is a waste of money.

    On the other hand, unpredictably applied law gets appealed ALL THE TIME. As Gene stated, 35 USC 101 jurisprudence is more based upon the panel one gets than anything else. If somebody is going to go through the time, effort, and money to litigate a patent, they are going to appeal if there is a shot that the right panel will save their patent. By having such unpredictably applied law, the Federal Circuit is all but begging every 101 decision to be appealed.

    Along the same lines, when the issues of law are more clear cut, there is less litigation. Right now, there is little motivation for alleged infringers to settle. They know that even the most thread-bare allegations of an invention being directed to an “abstract idea” will get most patents invalidated. This has given rise era of “efficient infringement” whereby companies know it is more efficient to infringe technology than it is to license technology.

    Having more predictable law means less litigation. I wonder if the Supreme Court realized this when they continually criticize the Federal Circuit for their bright-line tests. I know judges want to be given the flexibility to decide one way when they feel that the current test doesn’t give the right result, but that judicial flexibility comes at a significant cost to the actual parties involved.

    All of this makes the business of invention nearly impossible to be financially viable — particularly for smaller companies that cannot afforded protracted legal battles that can run into the 8 figure mark. If it isn’t financially viable for inventors to protect their invention, what kind of motivation are they going to have to continue to invent (and as part of the grand bargain described in the Constitution, disclose their inventions to the public)?

    How is the continual attacks on the patent system by the judiciary helping our society, as a whole? Are we going to going to getting better (and more) diagnostic testing? Absolutely not. Are we going to allow small software companies to gain a foothold against the established giants? Absolutely not.

    All this results in the short-term gains for those companies that get to infringe with impunity and the long-term losses for this country, whose courts are disincentivizing inventors at every turn.

    The Federal Circuit has become impotent due to the Court’s continued proclamations that it is unable to narrowly interpret two cases that beg for narrow interpretation.
    The Federal Circuit needs to clean up the mess they created. The Supreme Court, in Alice, specifically warned about “applying the judicial exceptions too aggressively.” However, the Federal Circuit decided to open up Pandora’s box and have now realized that they screwed up in applying Mayo/Alice that they are essentially begging the Supreme Court to fix the mess that they themselves created.

    If the Federal Circuit cannot fix their own mess, what confidence do we have in the Federal Circuit not screwing up the next big decision that the Supreme Court issues on patent law? What is the purpose of the Federal Circuit if they only make things worse?

  3. David Stein July 9, 2019 5:53 pm

    I understand and agree with the general complaint of this article. It’s even worse than this article portrays if you take into account the fondness of the Federal Circuit for no-opinion decisions – creating a body of outcomes that is not only irreconcilable but *not even expected to be* reconcilable.

    But abolishing the Federal Circuit would mean that (a) appeals from district court decisions would be directed to federal appellate courts across the nation (creating serious forum-shopping issues that don’t exist now) and (b) the point of unification of these disparate appeals would be the Supreme Court, which has demonstrated its unfitness for that role time and time again.

    And looking in the opposite direction – this same aspect of extreme uncertainty is evident at the district court, PTAB, and examiner levels as well.

    The whole system has become a crapshoot thanks to 40 years of judicial mangling of the very simple, broad language of 101 to address *perceived* deficiencies of the patent system. The only plausible solution is a legislative one, much as the disastrous “spark of creative genius” jurisprudential construct was squelched in the 1950s.

  4. Paul Cole July 10, 2019 1:39 am

    “More analytical prowess would be expected from a first-year law student.”

    It is in one sense gratifying and another sense concerning to have a position that I gave been advocating for the past 7 years supported so plainly, The problem is not SCOTUS, although taking a 101 case is overdue. The problem is consistent over-expansive interpretation by the Federal Circuit.

    So far as diagnostic methods are concerned, the blanket prohibition now clearly in force brings the US unequivocally into conflict with the TRIPS agreement since such methods are patent-eligible in Europe and in most other IP offices worldwide. Any lingering doubt that a more reasonable position might be adopted has been dispelled by the panel opinion in Athena. Such interpretation is unacceptable and contrary to US law under the Charming Betsy principle which has stood since Chief Justice Marshall handed down his opinion in 1804. Only Judge Newman in her dissenting panel opinion in Athena noted the TRIPS point and acknowledged the CIPA amicus brief.

  5. Night Writer July 10, 2019 6:06 am

    I have been saying this since Obama stacked the CAFC with judges selected by Silicon Valley. People like Taranto simply have a terrible character. They do not care about the law or ethics. Their goal of weakening the patent system is all that they care about.

    In my opinion, the thing that Trump should do is dissolve the CAFC and then remake it the same day where a science degree is required and actually 10 years of practice as a patent professional is required.

  6. concerned July 10, 2019 6:45 am

    I am not even a first year law student (no legal training) and I could tell Alice was expanded way beyond the SCOTUS’ decision.

    Alice talked about putting a generic computer on everyday functions as not patentable. For example, scheduling a doctor’s appointment which was successfully done for years without a computer. The generic computer added no more functionality to the “scheduling an appointment” process.

    Now everything that uses a generic computer is rejected. Even a generic computer process that somehow magically told the doctor’s office 6 months in advance that a patient would not show up for the appointment, reschedule a different patient in the same time slot. I do not know how such a process could be invented that foretold the future 6 months in advance. But if it was invented with a generic computer, it would be rejected for patent. Yet every doctor’s office in the country would be wanting it.

    I also suspect that many of these rejected/invalidated patents will be used by the judges, or their family members. I would laugh my butt off if one of those judges got nailed with 100 water balloons by a grandson at a family reunion, priceless. (Congrats Mr. Malone!)

  7. EG July 10, 2019 8:32 am

    Hey Gene,

    The problem isn’t the Federal Circuit itself, but the current composition of the court, and especially the current Chief Judge (Prost) who is weak and ineffective in pushing back on SCOTUS. Earlier compositions of the Federal Circuit wouldn’t hesitate in a situation like Athena Diagnostics to distinguish Mayo,

  8. Paul F. Morgan July 10, 2019 8:42 am

    If any of you eager to get rid of the Federal Circuit were old enough to have been in a patent litigation firm before the establishment of the Federal Circuit you would have a much more realistic view of what patent litigation and patent law was like when patent litigation was being handled differently by all the different circuit courts.
    Other circuit courts even less likely to defy Sup. Ct. patent law decisions.

  9. Jack July 10, 2019 11:17 am

    Gene,

    I appreciate these thoughts very much, thanks for venting on behalf of the entire practitioning community. At the very least you’ve called attention to where the debate should go and have framed the arguments on behalf of the innovator — the “forgotten man”, at least, forgotten by CAFC. We keep thinking things will get so bad that “something *has* to change”, yet things just keep getting worse. Yet innovation is the engine of the American economy, and patents are at the core of that engine. It is no coincidence our failure to protect our patent system is directly tied to our relative fall in the world of innovation.

    As to specifics, I agree with ‘Night Writer’ to the extent I think CAFC judges should be qualified for their special role, though I think those qualifications should be set by Congress, which alone has the power to alter the federal courts’ structure (Art III, Sec 1, U.S. Constitution) and is in the best position to make those changes according to the public’s will and best interests.

    As to the current makeup of CAFC, twelve members seems like an excellent number to drive a 6-6 ideologically-driven deadlock. I think 9 is plenty to make “the tough call”, just as it is with SCOTUS. That makeup would also drive better accountability: If you’re the “5” in a 5-4 split, are you *sure* this is the hill you’re ready to die on?

    Finally, were I king-for-a-day (Congress, in this case), I’d establish a term limit of some number of years divisible by 3 — 6, 9, 12, 15… whatever Congress ultimately decides, weighing the need for stability against the need for periodic refreshment — and stagger the terms so that every three years three “old” members retire and a new freshman “class” of three enters. That way a static, slow-death patent-system slaying like the one we’re in now wouldn’t be nearly as likely, especially over the long term.

  10. `Paul Cole July 10, 2019 11:49 am

    @ Paul F. Morgan and many others

    The point is NOT to DEFY the SUPREME COURT but instead to respectfully IDENTIFY THE RULE(S) OF LAW in its recent decisions and then CORRECTLY apply them. If that was done, then the problems that have concerned us all would disappear.

    What the judges need to do is to hire some law clerks with science degrees and fresh out of law school and set them to review the Supreme Court cases while they still have the skill of case law analysis that they acquired in law school.

  11. Curious July 10, 2019 11:58 am

    People like Taranto simply have a terrible character. They do not care about the law or ethics. Their goal of weakening the patent system is all that they care about.
    Taranto was on Berkheimer, Aatrix, and Cellspin. Perhaps you need to back off a bit.

  12. JTS July 10, 2019 12:18 pm

    Yes, this has been true for some time. One possible reason for the lack of quality from the CAFC is no competition. Other circuits can be called out by their peer circuits for poor reasoning, bad policy, inconsistency, etc. The CAFC has no competition. No other court can point to its decisions and say, “we disagree, for these reasons …”. There is no inter-circuit consensus building. And the Supreme Court never has inter-circuit conflict as a reason to grant cert for CAFC decisions, since there can be no such conflicts (never mind the inconsistency between CAFC opinions). And Gene, you are right that the CAFC is failing in their responsibility. The problematic Supreme Court precedents give wide latitude, but the CAFC is _choosing_ to apply those precedents more liberally than necessary.

  13. Greg DeLassus July 10, 2019 12:24 pm

    @4 “The problem is not SCOTUS, although taking a 101 case is overdue. The problem is consistent over-expansive interpretation by the Federal Circuit.”

    I wish that I could believe this, but the cossacks work for the Czar. If the SCotUS thought that the CAFC were over-reading and over-extending SCotUS’s Mayo and Alice precedents, the SCotUS has had ample opportunity to make a correction. The fact that the SCotUS passed on a case so obviously wrong as Ariosa v. Sequenom—one so clearly deleterious to public policy—tells us something. Such a case would have been the perfect vehicle to set the record straight and clarify what Mayo/Alice were “really” supposed to mean.

    The fact that SCotUS did not take that case tells us that SCotUS does not think that CAFC is over-reading or over-extending. The SCotUS likes what it sees.

    I think that it is a vain hope to expect SCotUS to clean up its own mess here. The problem will be solved by Congress or else it will not be solved in our lifetimes. If Congress does step in to clean up the mess, however, I expect that the CAFC will be very quick to use the opportunity presented by such a statutory revision to “right the ship” (so to speak).

  14. Gene Quinn July 10, 2019 1:16 pm

    Paul @8…

    You say: “Other circuit courts even less likely to defy Sup. Ct. patent law decisions.”

    I’m not asking the Federal Circuit to defy the Supreme Court, I’m asking the Federal Circuit to actually follow the Supreme Court. It is the Federal Circuit that is defying the Supreme Court. The Supreme Court cautioned the Federal Circuit not to read these cases broadly otherwise they would swallow all of patent law. Yet, the Federal Circuit has read cases expansively. In Athena they all admit this innovation should be patent eligible but voted otherwise. That is allowing the broad strokes of the Supreme Court to swallow all of patent law when the Federal Circuit knows it should be otherwise. So, we don’t need a Federal Circuit that will ignore the Supreme Court and kill patents.

    You say… “If any of you eager to get rid of the Federal Circuit were old enough …”

    And if you were smart enough to understand what is really going on you would agree with me. So, I guess I’m too young and you are too stupid.

  15. Anon July 10, 2019 2:10 pm

    Mr. Cole,

    As you are not a US Attorney, kindly refrain from getting US Attorney ethical requirements completely wrong with your comment of:

    The point is NOT to DEFY the SUPREME COURT but instead to respectfully IDENTIFY THE RULE(S) OF LAW in its recent decisions and then CORRECTLY apply them. If that was done, then the problems that have concerned us all would disappear.

    The point IS very much to defy the Supreme Court — WHEN that Court needs to be defied.

    Very much part of the problem is the unholy notion that the Supreme Court can do no wrong.

  16. Jam July 10, 2019 2:51 pm

    A satirical translation of Circuit Judge Dyk’s opinion in the Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC Order from 2019-07-03 for appeal 2017-2508:

    I: Thanks for Alice and Mayo. We use them to kill every patent on our docket and pretend its because the patent is “overly broad”. We also throw a bone every once in a while (e.g., McRO, BASCOM, Enfish) to keep up the facade that some inventions actually can be patented.

    II: Please don’t take away our 101 toy because … because if you do … then 102, 103, and 112 won’t be able to kill all the patents on our docket.

    III: We are happy with 101 killing off all software patents as abstract ideas, but we may want to reconsider killing off all medical diagnostics patents as natural laws.

    IV: Mayo and Myriad conflict. Mayo is so much better because it can kill off so many more patents than Myriad.

    V: We aren’t going to use Myriad (Mayo let’s us kill more patents).

    VI: We’re going to keep killing patents with Mayo, at least until you kill Mayo.

  17. Greg DeLassus July 10, 2019 4:07 pm

    @9 “Congress… [shoul]d establish a term limit of some number of years divisible by 3 — 6, 9, 12, 15… whatever Congress ultimately decides, weighing the need for stability against the need for periodic refreshment…”

    I like this suggestion, but I am not sure that it is constitutionally supportable. Art. III, §1 provides that “[t]he Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behaviour… .” I think that an amendment to Art III would be necessary to institute term limits.

  18. TFCFM July 10, 2019 4:32 pm

    GQ: It would be easy to distinguish both Mayo and Alice, but rather than recognize the peculiar facts of these cases as representing the most trivial of innovations, the Federal Circuit has used Mayo to destroy medical diagnostics and Alice to destroy software. More analytical prowess would be expected from a first-year law student.

    To my mind, merely claiming that every case one doesn’t like is limited to its peculiar facts is PRECISELY the “analytical prowess [that] would be expected from a first-year law student.”

    Whether one likes it or not (and, clearly, at least seven judges of the FC did not like it), Mayo required the outcome here. In Mayo, the Supreme Court held that the claims were directed to a natural phenomenon (the correlation between blood concentration of a metabolite following administration of a dose of a drug and the effectiveness of the dose) and added only processing steps that were undeniably conventional and well known in the art. Here, the Federal Circuit (correctly) recognized that:

    Athena’s claims recite observing a natural law using a radioimmunoassay that the specification describes as “standard” and “known per se in the art”… The only unconventional aspect is the inventors’ discovery of what the Supreme Court would call the natural law—the correlation between MuSK autoantibodies and the neurological disorder myasthenia gravis

    However much its judges disliked the outcome, that outcome was utterly dictated by the result in Mayo. Thus, any fault lies with the Supreme Court’s decision in Mayo, not in the Federal Circuit’s duty to follow not-honestly-distinguishable precedent. Faulting the Federal Circuit for failing to ignore Mayo because they (and others, including many of us) is, in my opinion, way off base. If precedent is not binding on any court that dislikes the precedent, then we can (and should) do away with all appellate courts, because they do nothing more than give the loser of a litigation another opportunity to find a court that will pick from an amorphous, indeterminable, and ever-changing body of law an outcome that the loser prefers.

    It is entirely appropriate for the Federal Circuit to follow binding precedent, even as it complains about how that precedent is perceived as being wrong and/or poor policy. Defining the boundaries of patent-eligible subject matter is a job for Congress.

    Congress did that job poorly in the past. Technology(ies) have now advanced to the point at which Congress must – with input from all relevant parties – better define the boundaries between what can be patented and what cannot.

    Part of drawing that line(s) should be careful consideration of what “science and useful arts” will be more quickly/likely/fully developed by granting decade-plus-long monopolies and what “science and useful arts” will be equally (or more) quickly/likely/fully developed if not monopolized by the first to develop it (or some small part of it).

  19. TFCFM July 10, 2019 4:43 pm

    @Paul Cole: So far as diagnostic methods are concerned, the blanket prohibition now clearly in force brings the US unequivocally into conflict with the TRIPS agreement … Any lingering doubt that a more reasonable position might be adopted has been dispelled by the panel opinion in Athena.

    That assertion seems inconsistent with reality. As J. Lourie stated in his opinion here:

    We concluded that using [ ] routine assays to detect new natural phenomena did not transform the claims into patent eligible applications. Cleveland Clinic… In contrast, new method of treatment patents do not fall prey to Mayo’s prohibition. E.g., Vanda Pharm. Inc. v. West-Ward Pharm. Int’l Ltd… Nor have unconventional arrangements of known laboratory techniques, even if directed to a natural law. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc…. But this case involves neither scenario

    To my reading, both the Supreme Court and the Federal Circuit are attempting to “draw the line” for patent eligibility of medical diagnostics at subject matter that involves inventive ways of detecting natural conditions (such as the correlation of a marker with a disease state), and excluding mere discovery of the (pre-existing, natural) correlation.

    While I disagree that the Mayo ruling alone accomplishes this line-drawing, I believe the line should nonetheless be drawn (whether quickly by Congress or over a longer period of time by further court decisions).

    In my opinion, Athena v. Mayo didn’t offer the Federal Circuit (and doesn’t offer the Supreme Court) a favorable opportunity to better define this line. Athena appears to have discovered merely the natural correlation and seems (by their own admission) to have provided no novel or non-obvious way to use the now-discovered correlation.

  20. Paul Cole July 10, 2019 5:15 pm

    @ Anon 15

    Much better to avoid having to defy the Supreme Court and simply to find a moderate and acceptable interpretation of its opinions, if that is possible. You may remember my quote from Sir Thomas More in A Man for All Seasons.

  21. Jianqing Wu July 10, 2019 6:17 pm

    The problem is not strange at all. Among nine Justices, none knows patent law practices and none know science practices and invention business. When the CAFC judges are of similar kinds, their best skills are rejection, denial, use of technicalities, screwing up inventors, or just doing nothing.

    If those judges live long enough, and see a day that the U.S. loses technological dominance in the world, they may even do not know their actions would be responsible for the lost technological dominance. They perhaps even do not have the sense to see how each of their actions might have driven future inventors out of business. They might think that all inventions could come from corporate houses. I recall a joke that all inventions that would be invented had been intended a long time ago (I forget who said it). Perhaps, some of them might think that nothing will affect the U.S technology and prosperity.

    The patent system is not the worst at all. Looking at the medicine, chronic diseases are still incurable, the chances of getting cancer is like getting cold, and national health condition is rapidly degrading. So often I heard people suddenly died from incurable diseases without warnings, again incurable diseases such as cancer, heart attacks and stroke. I found the problems in failure to find cures can be traced to the same root problem in the failure of the patent system.

  22. Anon July 10, 2019 6:35 pm

    Mr. Cole, with all due respect, there is NO quote from Sir Thomas More that aligns with your direction for a US Attorney to abdicate his ethical responsibility to NOT place the Supreme Court (as a mere entity of the judicial branch – no matter how high in that branch) above the Constitution itself.

    Put simply: the Supreme Court is NOT right no matter what it does.

  23. Bemused July 10, 2019 8:10 pm

    Gene@14: LOL. Now THAT was funny!

  24. Paul Cole July 11, 2019 1:35 am

    @ Anon

    Your last statement is too absolutist.

    The Supreme Court issues opinions which we have to interpret and apply. We may find interpretations that enable us to do right, or we may find interpretations that compel us to do wrong. The former is infinitely preferable to the latter.

    It appears from a recent posting that there may be a helpful bill before Congress. But we cannot rely entirely on Congress because the legislative process is uncertain and we cannot rely on SCOTUS because they take very few cases and have not taken any recent case on Section 101. So the best we can do for our clients in the situation that we find is to put forward the most favorable combination of facts and the most favorable interpretation of precedent that we can find.

    Unfortunately the recent Athena opinion makes this approach less hopeful, but we cannot and should not entirely abandon it.

  25. Disillusioned July 11, 2019 8:34 am

    The Federal Circuit has failed because it has not tried to define the ‘building blocks’ of innovation which the Supreme Court did not want monopolised in its Mayo, Alice, Myriad decisions. That is a failure to use its technical knowledge and skills to develop specific guidance based on the Supreme Court decisions. It has become lazy, by taking the action of simply deciding for or against parties in litigation, when in fact its role is also to develop case law through its own intellectual efforts.

  26. Night Writer July 11, 2019 8:46 am

    @11 Curious Taranto was on Berkheimer, Aatrix, and Cellspin. Perhaps you need to back off a bit.

    It is odd that Taranto and a few of the others have been onboard for a few of the positive decisions. But—and this is a big but–Taranto has also been part of the decisions where he has intentionally made up laws and personal findings of fact to wipe out huge numbers of patents and areas of patentability. Taranto is a stain on our country. I think anyone that knows patent law well, can see the games he plays. He is perhaps the most intelligent on the CAFC and the most devious.

    He is very much like R. Stern (Benson) and M. Lemley.

  27. Night Writer July 11, 2019 8:48 am

    @21 Jianqing Wu

    Really great comments again. Thanks for sharing your opinions!

  28. TFCFM July 11, 2019 9:57 am

    @Disillusioned: It [i.e., the Fed. Circ.] has become lazy, by taking the action of simply deciding for or against parties in litigation, when in fact its role is also to develop case law through its own intellectual efforts.

    This comment puzzles me. The PURPOSE of Article III courts is to decide “Cases… arising under the laws of the United States.”

    Our Constitution seems to quite clearly designate all LEGISLATIVE functions to Congress in Article II. Thus, it is Congress’ role to make (or “develop”) laws, and the courts’ role is to interpret that law, as best, as honestly, and as faithfully to congressional intent, as it can.

    No portion of the Constitution grants to courts the power to make law (nor could any enacted law grant that power to courts).

    I think that what we are witnessing with regard to the boundaries of subject matter eligibility for patents is that existing statutory law was written at a time when extant technology was not really “pushing the boundaries” (Morse and Funk Bros. Seed Co. were among the “extreme” eligibility cases in 1952), and so the statute didn’t bother with clearly defining the then-extremely-hypothetical matter of which boundary might be “pushed” by not-by-then-developed technologies.

    As technologies (software, ‘business methods’ broadly, diagnostic techniques, others) have advanced — with clever patent attorneys on retainer — the issue of where the boundary(ies) lie has arisen in patent-related controversies more frequently and more expansively.

    Courts having a duty to resolve the controversies arising under the patent laws have had no choice but to do the best they can with the law they have — the statutes enacted by Congress, including a presumption that Congress would have explicitly overruled cases like Morse and Funk Bros. Seed Co. if that had been Congress’ intent to do so. The result has been the progression we’ve seen: Benson, Diehr, Flook, Nuitjen, Bilski, Mayo, Alice…

    An option the courts HAVE NOT had was to assume Article II legislative powers and “make new law” to replace the statute Congress has enacted, or to substitute, in place of Congress’ enacted statutes, ones which a court believes Congress should enact or should have enacted. That option belongs to the Congress alone (which is why, I believe, it’s a good thing that Congress is beginning to poke around the issue — even if, IMO, efforts to date demonstrate mostly that Congress continues to fail to appreciate the significance and complexity of the eligibility issue)

  29. David Stein July 11, 2019 9:09 pm

    @21 Jianqing Wu:

    You’re going to love this. The quote you referred to is: “Everything that can be invented has been invented” – and it was spoken by a gentleman named Charles Duell… who, at the time, was the Commissioner of the USPTO!

    The real clincher is that the quote dates back to 1889, and was followed by a golden age of invention including:

    * The diesel engine (1892)

    * Projected motion pictures (1895)

    * The powered airplane (1903)

    * Radar (1904)

    * Plastic (1905)

    * Radio broadcast (1906)

    * The Model T (1908)

    (Charles Duell lived until 1920, so I wonder if he came to appreciate the magnitude of his error.)

  30. Greg Aharonian July 11, 2019 10:47 pm

    There is no language that can be added to 35 USC 101 to prevent these abuses by SCOTUS and CAFC. Remember when Congress added language to 35 USC 103 to nullify Cuno, and in KSR, SCOTUS nullified Congress – unConstitutionally – by using “predictable” to avoid using “mere”. Give words to these judges, they will abuse them, because they are completely unaccountable. The current 101 reform bill will be as useless as the 1952 Act. Heck, one judge in Athena/Mayo, violating judicial ethics big time, bragged about ignoring Legislative intent.

    The only solution to the 101 problem is to move “useful” to 102, and delete the rest of 101. As many of the Bilski briefs rightly argued, as some of the judges in Athena/Mayo argued, 102/103/112 are sufficient to filter out the invalid. In 25 years of busting software and business method patents, the lawyers I worked with never needed to rely on 101 – the art that I provided them allowed powerful 102/103/112 attacks. We don’t need 101 – it should be deleted as soon as possible. It is a “stain” of statutoriness.

    And would some of you lawyers start raising the Due Process Public Notice issue? Athena/Mayo makes it clear that not even the CAFC can make sense of SCOTUS 101 caselaw. Making 101 caselaw fatally vague, and thus unconstitutional. Every 101 rejection your clients get should include, in the response, a request to retract the rejection because the USPTO’s use of 101 caselaw is an abuse under the APA. And if they don’t, file an APA lawsuit.

    And if the USPTO can immediately eliminate the 101 problem for 98% of patents (that don’t get litigated) by having Director Iancu issue a Kappos-like memo to all examiners and PTAB judges ordering them to not issue 101 rejections or invalidations because the public – inventors and claim drafters – have been denied reasonable public notice of what satisfies 101 (because the caselaw is fatally vague).

    Geesh – show some initiative and moxy for your clients.

  31. Disillusioned July 12, 2019 7:02 am

    Thank you TFCFM July 11, 2019 9:57 am, and I completely agree on the role of Congress in writing laws, but the Courts have the duty of ‘developing case law’. That is a huge responsibility, and I have heard judges talk about the burden of responsibility they feel in doing justice, but also providing certainty, in each decision they take part in. Congress cannot do what the development of case law does, i.e. filling in all the gaps and showing how the law is applied in relevant situations. The Courts must do this, and they must consciously understand their role and function in doing this. They need to lead the way in developing the law and in doing so provide certainty to all parties, as well as maintaining the principle and philosophy which Congress intended. I feel saddened that the Federal Circuit has been unable to understand this, and has descended into childish bickering on important principles laid down in the Myriad, Alice and Mayo Supreme Court decisions. This was a historical moment when we could have created new eligibility principles which were suited to today’s technologies. Instead it has become a mess.

  32. Night Writer July 12, 2019 8:57 am

    @30 Greg Aharonian >Geesh – show some initiative and moxy for your clients.

    The reality is that there is so much money behind burning down the patent system that it is very hard to do anything. This blog is one of the few places anywhere where patents outside of pharma are supported. There is a constant stream of propaganda generated to weaken patents. And there is plenty of evidence to start an investigation into how the CAFC judges under Obama were selected. Obama clearly allowed anti-patent large corporations to select the judges. The people selected were an unbelievably bad group of people.

  33. TFCFM July 12, 2019 11:06 am

    @Disillusioned: …the Courts have the duty of ‘developing case law’

    I’m curious as to the source of this supposed “duty.” Would you mind identifying that source, especially as it might relate to patent law?

    There is, to my understanding, no common law basis to US patent law, but rather a purely statutory basis, with judicial application of that statutory law limited to interpreting the statutes to the best of courts’ ability. It may be that I don’t fully understand what you’re saying. (If this is so, please accept my apologies and this invitation to more clearly say what it is you’re asserting.)

  34. Inventor July 13, 2019 2:09 pm

    I am an independent inventor for 30 years and pro-se applicant for 15 years, with my 70th US patent to issue in a few weeks. Here are some thoughts.

    Eligibility and non-obviousness requirements come to beat nonsense inventions. How do you recognize a nonsense invention? You know it when you see it. There is no better answer, and there will never be a better answer, simply because quality in all forms of art is decided by subjective taste rather than objective criteria, and invention is a form of art.

    A court see a nonsense invention – they know it when they see it. They argue why it’s nonsense by defining concrete elements of the nonsense invention as objective criteria, which turn into case law. Later, a defendant uses that case law to argue that another invention is nonsense. The court look at the case and are highly impressed by a fantastic invention – they know it when they see it. This is what, to my humble opinion, causes the conflicts and inconsistencies discussed in this thread.

    Academy awards are decided by subjective panels. Maybe it’s time to involve subjective panels that include competent inventors, entrepreneurs, technologists and patent practitioners, in deciding 101/103 appeals.

  35. Jianqing Wu July 17, 2019 5:26 pm

    @29 David Stein:

    Thank you for the details!

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