A Strange Evolution: The Federal Circuit Has Entered the Theater of the Absurd

By Gene Quinn
September 26, 2019

“Clearly, the Federal Circuit has as an entity abdicated its judicial responsibility. Each and every judge has taken an oath. They are finding devices to be abstract, claims that are novel and nonobvious to be non-inventive, and an invention in Athena that they all agreed should be eligible to be patent ineligible.”

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Alfred Jarry’s Ubu Roi

Something has happened at the United States Court of Appeals for the Federal Circuit over the past six months. After inching forward in a positive direction on patent eligibility, the entire court, including those judges who had been on the pro-patent eligibility wing of the court, have fallen, slipped, or just given up. The precisely correct characterization remains elusive given the traditional, characteristic and appropriate secrecy that surrounds judicial tribunals.

As constitutional officers charged with independently deciding cases, judges take few speaking engagements. Even when they do, they generally speak off the record, and never speak about specific issues or cases that may at some point come before them. In this industry, that means little discussion is had between the bench and bar relating to matters of patent eligibility outside the record, which is itself unfortunate. If the judges of the Federal Circuit would sit through a conference exploring patent eligibility as it applies to the software and biotechnology industries, they would learn much about the uncertainty their decisions are causing.

Still, something undeniably has changed.

The Beginning

Beginning in March 2019 in ChargePoint v. SemaConnect, 920 F.3d 759 (2019), the Federal Circuit determined that a vehicle charging station was not patent eligible. This was remarkable on one hand because the patent claims were drafted as apparatus claims, and for the Federal Circuit to determine that an apparatus is abstract seems logically ridiculous on its face – because it is. On the other hand, this decision, while surprising, wasn’t particularly shocking given the panel make-up. With Chief Judge Prost writing the decision for a panel further consisting of Judges Reyna and Taranto, one might be forgiven for not getting too worked up about such a decision. See “The Federal Circuit Just ‘Swallowed All of Patent Law.’

Then, on July 3, the Federal Circuit denied en banc rehearing in Athena Diagnostics v. Mayo Collaborative Services. The 86-page order from the Federal Circuit included eight separate opinions—four concurring with the en banc denial and another four dissenting from the decision. The separate opinions reflected a Federal Circuit that wasn’t divided so much on the issue of the importance of Athena’s now invalidated patent claims, because all 12 of the active Federal Circuit judges agreed that the Athena patent should be deemed eligible. The problem? Too many of the Federal Circuit judges feel helpless to do what they independently view as correct because they feel handcuffed by the U.S. Supreme Court’s Section 101 jurisprudence under Mayo Collaborative Services v. Prometheus Laboratories (2012). Athena is expected to petition the Supreme Court for review of this decision.

It’s a Choice

In Athena, we see a hopelessly fractured Federal Circuit. No single opinion gained support from more than one-third of the Court. And 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.

Then on August 21, in The Chamberlain Group v. Techtronic Industries Co., a Federal Circuit panel comprising Judges Lourie, O’Malley and Chen issued a precedential opinion finding that a “moveable barrier operator” (for example, a garage door opener) were patent ineligible. The claims were, as with ChargePoint, written to cover a device. Unlike ChargePoint, which referred to “an apparatus” in a general way in the preamble, the claims at issue in Chamberlain were specifically written to “A moveable barrier operator comprising…” How a moveable barrier can be an abstract idea is not explained in any intellectually satisfying way because there is no satisfying way to explain how something that actually exists can simultaneously exist and be abstract.

And this, although chronologically out of order, leads us to the most inexplicable of the bunch. In Solutran, Inc. v. Elavon, Inc., Nos. 2019 U.S. App. LEXIS 22516 (Fed. Cir. July 30, 2019), the Federal Circuit held that the claims at issue, which related to processing paper checks, were invalid under 35 U.S.C. § 101. Judge Chen, writing for a panel that also included Judges Hughes and Stoll, explained: “[W]e have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”

Never mind that the physicality of the elements of the claim did not save the claim from being an abstract idea, which is absurd in and of itself since even Google defines “abstract” to mean “existing in thought or as an idea but not having a physical or concrete existence.”

It is logically impossible for the method of processing paper checks to be novel and nonobvious and still not be inventive enough to save the claim from ineligibility. No matter how many times the Federal Circuit tries to explain otherwise, that logical flaw will never be resolvable.

Clearly, the Federal Circuit has as an entity abdicated its judicial responsibility. Each and every judge on the Federal Circuit has taken an oath. They are finding devices to be abstract, claims that are novel and nonobvious to be non-inventive, and an invention in Athena that they all agreed should be eligible to be patent ineligible. The Federal Circuit has clearly jumped the shark!

Afraid of What?

Federal Circuit judges have life tenure; they have guaranteed salaries that cannot be reduced, and they will receive a pension guaranteed by the U.S. federal government. They have all the security anyone could ever want, yet they are afraid to get reversed by the Supreme Court? Afraid of what exactly? No Supreme Court police are going to show up and arrest them if they get reversed. And why not try writing an opinion that explains how these cases with different facts, different inventions and issues of great concern for entire industries require – in fact absolutely mandate – the outcome that 12 out of 12 judges seem to agree is proper?

The judges on the Federal Circuit claim they are handcuffed, but we know they are not, and playing the victim like that is getting old, tired and frankly insulting. These judges are not just interpreting Bilski, Myriad, Mayo, and Alice, they are going far beyond any honest and fair reading of what the Supreme Court required, with cases that present wholly different facts, and inventions of entirely different magnitudes compared with the non-inventions the Supreme Court said they were dealing with in Bilski, Myriad, Mayo, and Alice.

In fact, the Federal Circuit, if anything, is explicitly ignoring the Supreme Court with each new illogical, irrational decision. The Supreme Court knew the judicial exceptions to patent eligibility, which are extra-statutory and potentially wholly untethered, are an awesome power that must be treated with great care. “[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law,” the Supreme Court wrote in Alice v. CLS Bank, pointing out that at some level all inventions start out as ideas.

And yet, the Federal Circuit has effectively reached a point in 2019 where even devices—the apparatus claim of ChargePoint and the moveable barrier claim of Chamberlain—are abstract ideas, and not inventive even if they are novel and nonobvious. To refer to the current state of U.S. patent law as asinine would be a euphemism, to say the least.

Image Source: https://flashbak.com/alfred-jarrys-ubu-roi-the-most-punk-play-of-all-time-372959/ 

 

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 32 Comments comments. Join the discussion.

  1. angry dude September 26, 2019 10:57 pm

    The fate of all mankind I see is in the hands of fools

  2. Concerned September 26, 2019 11:47 pm

    We have previously explained that merely stating case law and hard facts are not enough to save a novel and non-obvious invention from ineligibility.

  3. Wake up America!! September 26, 2019 11:49 pm

    Silicon Valley money runs deep, deep into the United States Court of Appeals. Everyone loves money and the judges are no different. Silicon Valley stocks have tripled, quadrupled since they brought in the AIA Act and the PTAB. It’s been 8 years and Congress is playing aloof. Fix the patent system already pass The STRONGER Patents Act bill. And YES Silicon Valley will need to pay up the billions of dollars that they have stolen from small IP holders. Inventors are not playing the game and are building the next great thing in other countries that have patent protection and rules of law that protect inventors property rights.

  4. Ann September 27, 2019 12:05 am

    These bastards killed the patent market. What happen to the rule of law and the justice system? Are they just going to let it fall apart? Where the heck and wth is congress doing about them killing off IPs?

  5. Paul Cole September 27, 2019 3:09 am

    Excellent article. It confirms the view that I have long held (contrary to Anon) that the problem is not so much SCOTUS but is more unnecessary and destructive gold-plating by the Federal Circuit. As I have written previously, the court was not bound in Ariosa, Athena and Recognicorp – you could drive a 42 ton semi-trailer truck between the factual situations in those cases and Prometheus/Alice.

  6. Anon September 27, 2019 7:35 am

    One nit I have with the article is the timing aspect.

    This mess has been brewing well beyond the last 6 months.

  7. Anon September 27, 2019 7:36 am

    Root cause, Mr. Cole.

  8. Anon September 27, 2019 7:38 am

    …and you still have not recognized/integrated my counterpoints to you from the Alice case.

    To the extent that you refuse to accept the actual driver of the problem, you become a part of the problem.

  9. angry dude September 27, 2019 9:32 am

    Please bring us more nonsense like this

    The more the better..

    Who needs a JD anyway?

    The guillotine is coming

  10. Someone September 27, 2019 11:51 am

    Gene, thanks for noting this problem that is hidden in plain sight. The recent Supreme Court decisions gave wide leeway for interpretation. While those decisions have problems, instead of applying their patent expertise to shape the intentionally malleable Supreme Court precedent for the public good, they have tortured and mangled those decisions to the point of jurisprudential sociopathy (to complain about the body of law that they themselves created and that they themselves could fix is insane). Congress should remove the CAFC’s exclusive jurisdiction and let other courts weigh in. Courts where judges were not selected specifically for their anti-IP bias. Time to end the monopoly of the CAFC.

  11. concerned September 27, 2019 12:04 pm

    angry dude@ The guillotine is coming

    Now that is patentable. A self serve (imposed) guillotine void of an attendant. Just do not attach a generic computer as the start button.

  12. Pro Say September 27, 2019 2:02 pm

    The CAFC has indeed swallowed all of patent law.

    Leaving American innovation choking as a result.

    Enough already.

    Enough.

    Congress, where are you?

    Where? Are? You?

  13. B September 27, 2019 2:17 pm

    “the entire court, including those judges who had been on the pro-patent eligibility wing of the court, have fallen, slipped, or just given up”

    Judge Newman, is that you?

  14. B September 27, 2019 2:19 pm

    “We have previously explained that merely stating case law and hard facts are not enough to save a novel and non-obvious invention from ineligibility.”

    When the judges are comfortable with lying about the record and their fellow judges are too craven to call them out, things are bleak

  15. B September 27, 2019 3:10 pm

    @ Paul Cole “It confirms the view that I have long held (contrary to Anon) that the problem is not so much SCOTUS but is more unnecessary and destructive gold-plating by the Federal Circuit.”

    Without doubt the Federal Circuit is the festering boil giving pain to the world through their dishonesty and pathology, but the Supreme Court hasn’t lifted a finger to correct this. In this respect, I’ll blame the SCOTUS as the primary problem.

    Wait for the American Axle decision to come out. It’s already three months-plus overdue. Unlike Villena (which had a similar delay) the CAFC is less likely to outright lie given the large number of amici filed, which shows the case is already high-profile. Also, unlike Villena, Judge Moore sits on that panel.

    My point being that the CAFC is struggling mightily with its conflicting insanity. “Abstract” spread from software to wireless (Chamberlain) easily, but to automobile drive shafts? Based on oral argument I suspect Hughes and Dyk will vote against patent eligibility, and Judge Moore to vote for patent eligibility. The question is: what insane theory will Judges Hughes and Dyk promote? That the patent claims preempt Hook’s Law? That the claims are too broad? Some theory that is really a 112(a) issue and/or a 112(f) issue?

    I suspect the last theory based on oral argument, which for very special reasons known to anyone familiar with Investic is giving a bunch of CAFC clerks late-night fits.

  16. Gene Quinn September 27, 2019 3:36 pm

    Anon @ 6

    The mess has been brewing for more than 6 months for certain, but something unusual seems to have happened in response to the USPTO 2019 guidance. It is almost like there has been a backlash by the CAFC. Things were getting more certain, even if we didn’t like it. Now, over the last 6 months starting with ChargePoint, things have gone back off the rails. Why? I’m not sure, although I do have some theories.

  17. Gene Quinn September 27, 2019 3:39 pm

    B at 13

    Judge Newman, in my opinion, is rock solid on the pro patent side. To the extent I have ever disagreed with her decisions it has come in the realm of obviousness. Having said that, her recent views on secondary considerations are spot on. I personally find myself in agreement with Judge Newman most often. Judge Linn also. I find Judge Moore also steadfast in her view of patents.

  18. B September 27, 2019 4:33 pm

    @ Gene at 17

    I would respectfully point to In re Bhagat, where Judge Newman violated the claims as a whole requirement and the evidentiary requirement, which she signed onto in the Berkheimer en banc denial decision a mere 24 hours earlier. I would also point to the last Trading Technologies decision, which I assert cannot be reconciled with her earlier TT decision.

    Who are we going to believe: Judge Newman or Judge Newman?

    That said I agree regarding her obviousness decisions – ESPECIALLY her stance on secondary considerations. Nothing like fifty years of consistency since Graham was decided. The real issue is exactly when and why Reyna lost his mind on the issue.

    We need to exhume Judge Learned Hand and clone him ASAP. I’ll contribute the first thousands dollars.

  19. B September 27, 2019 5:27 pm

    @ Gene at 16 “Now, over the last 6 months starting with ChargePoint, things have gone back off the rails. Why? I’m not sure, although I do have some theories.”

    My own theories are less kind than yours I assure you. Ask yourself: Why would judges deliberately misrepresent a factual record? Why would said judges deliberately misrepresent their own case law – not just CAFC case law but cases where they were panel? Why don’t fellow judges call such b.s.?

    Not getting an en banc decision is one thing, but this outright judicial malfeasance attributable to individuals is another.

    “The judges on the Federal Circuit claim they are handcuffed, but we know they are not, and playing the victim like that is getting old, tired and frankly insulting.”

    Just remember it was Judge Linn who first opened that bottle of whine in his Ariosa concurrence.

  20. Josh Malone September 27, 2019 6:22 pm

    I think we are in a sweet spot for the economy. Investors and inventors have more certainly than ever. Filing for a U.S. patent is financially on par with playing the lottery. The market signal is clear, don’t waste your time and money on U.S. patents. Not ideal, but better than randomness.

  21. Anon September 27, 2019 6:51 pm

    Gene,

    Cleveland Clinic (for one) is a prime example of the courts saying “we don’t care what the USPTO says.”

    And this was to eligibility guidance LONG before this past January’s Guidance.

  22. angry dude September 28, 2019 11:05 am

    Those “judges” are destroying the future of this country

    The Judgement of Cambyses:

    https://en.wikipedia.org/wiki/The_Judgement_of_Cambyses

    A guillotine is much more humane btw…

  23. Jason Lee September 29, 2019 9:35 am

    @Someone. I would like to know how many of the CAFS judges own shares in FAANG and I would also like to know the back history, if they worked for Silicon Valley?

    The whole system stinks of corruption and patent holders has no rights and can not get a company like Apple or Google to pay for a license they are using, Silicon Valley are worth Trillions because of their theft of IPs from patent holders.

    If the PTAB does not kill off your patents then the CAFS will. When you have Silicon Valley donating multi millions lobbying government to keep patents weak, small patent holders and Universities have no chance in getting paid for their hard earned invention. Filling for patent protection is pointless in today’s Corporatocracy.

  24. Jianqing Wu September 29, 2019 9:41 am

    “In this industry, that means little discussion is had between the bench and bar relating to matters of patent eligibility outside the record, which is itself unfortunate.”

    Old thinking plus old/stupid rules are ruining the nation. The biggest impacts of such thinking and rules is on medicine. Such rules are deemed to ruin medicine because must judges do not understand complex matters AND are not given chances to learn. They decide matters by “feeling” or guesses. See an article on https://www.researchgate.net/publication/336026313.

  25. TFCFM September 30, 2019 10:13 am

    GQToo many of the Federal Circuit judges feel helpless to do what they independently view as correct because they feel handcuffed by the U.S. Supreme Court’s Section 101 jurisprudence…

    It seems to me odd to fault the Federal Circuit for performing its sworn and unquestioned duty to adhere to the precedential decisions of the Supreme Court, even though I, like Gene, do not like those precedential decisions.

    Asserting that subordinate courts can simply ignore precedent whenever we, our clients, or the subordinate court doesn’t like it is simply a recipe for anarchy and the death of Rule of Law.

    Right or wrong (and I think we’re all fairly well agreed on “wrong” – or at least off base), Alice and Mayo are the Law of the Land until the Supreme Court and/or Congress say otherwise.

    Given the Supreme Court’s reluctance (understandable given the difficulty of resolving the many policy questions that are implicated) to try to make up a better law to fit modern technologies, the energies of critics of the current state of the law seem to me better directed to Congress to urge a full consideration of the issues involved and crafting of an eligibility standard that both

    – appropriately balances the incentives provided to inventors with the commerce-inhibiting effects of monopolies and

    – is readily applied to technological fields which essentially did not exist when the last standard was drawn up.

  26. angry dude September 30, 2019 2:17 pm

    @TFCFM

    Dude,

    Trying to muddy and misrepresent real issues will not save you from guillotine

  27. B September 30, 2019 2:41 pm

    @ TFCFM “It seems to me odd to fault the Federal Circuit for performing its sworn and unquestioned duty to adhere to the precedential decisions of the Supreme Court, even though I, like Gene, do not like those precedential decisions.”

    First of all the oath of office is to the Constitution, not to the Supreme Court.

    Second, we wish the CAFC was performing “sworn and unquestioned duty to adhere to the precedential decisions.” They are not. The Alice/Mayo test violates the Constitution, and if you don’t believe me you need only believe other Supreme Court decisions.

    “Given the Supreme Court’s reluctance (understandable given the difficulty of resolving the many policy questions that are implicated) to try to make up a better law to fit modern technologies”

    It’s not for the Supreme Court to make a “better law” based on a policy they believe is better. I can cite a half-dozen Supreme Court cases that agree with this position that address patent law. As to “modern technologies,” computers and medical therapies aren’t exactly new.

    No one believes the SCOTUS is acting within its Constitutional boundaries and only the efficient infringement crowd likes the Alice/Mayo test. Every single time you post you prove yourself ignorant.

  28. Anon September 30, 2019 5:17 pm

    at 3

    “Silicon Valley money runs deep, deep into the United States Court of Appeals. Everyone loves money and the judges are no different.”

    Are you suggesting the CAFC judges are taking bribes? What evidence do you have of this? This is an inappropriate accusation to make toward honest judges that carefully avoid conflicts. They may not make decisions you agree with, and they may even make mistakes, but money has nothing to do with that. Unless you have evidence, I suggest you refrain from advertising such hearsay.

  29. Anon October 1, 2019 8:23 am

    Sister Anon directly above,

    Most times I do not point out when another Anon uses the Anon moniker, but here – to avoid confusion – I do so.

    While it is certainly true that an actual charge of bribery is serious and should not be entertained lightly, there can be NO DOUBT of influence peddling across the board from Big Tech. Just look at the unprecedented number of closed door meetings during the Lee reign, or the level of political contributions from the likes of Google.

    To say that money has nothing to do with it is to discount everything else that you have to say.

  30. Anon October 1, 2019 8:27 am

    B:

    First of all the oath of office is to the Constitution, not to the Supreme Court.

    Thank you.

    This is a point that I have been stressing for quite some time now, as this reflects the proper attitude to take to the Supreme Court, not only from inferior judges, but also from most ALL attorneys.

    We have an ethical responsibility to NOT blindly kowtow to the Supreme Court.

  31. angry dude October 1, 2019 8:50 am

    Anon @28

    Corrupt OR incompetent (most likely both)

    Take your pick, dude

    P.S. If hard evidence of corruption were easy to uncover most of US (and not just US, of course) politicians would be in jail

  32. Anon October 1, 2019 4:46 pm

    B (and TFCFM):

    TFCFM: “Given the Supreme Court’s reluctance (understandable given the difficulty of resolving the many policy questions that are implicated) to try to make up a better law to fit modern technologies”

    B: It’s not for the Supreme Court to make a “better law” based on a policy they believe is better. I can cite a half-dozen Supreme Court cases that agree with this position that address patent law.

    THIS.

    This is exactly a substantive point put to TFCFM on a much earlier thread – and one that he refused to engage on.

    Further B: As to “modern technologies,” computers and medical therapies aren’t exactly new.

    I would add a caveat here that such does not matter. Patent law is not — and cannot be — written a priori as to whatever new (next) types of innovation may appear. This is precisely WHY 35 USC 101 was always meant to be a wide open welcoming gate (as opposed to having been turned into the policy lever of the Royal Nine). Anyone with an appreciation of Samuel Clemens may well recognize the fit of his patent quote for this point.

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