The Athena Amici Weigh In: Knowles/Addy Brief Dissects Five Critical Inconsistencies in Eligibility Law

By Sherry Knowles
November 4, 2019

“What do we do as U.S. citizens when two branches of our government give us inconsistent laws on the same subject matter? The tie-breaker vote goes to the U.S. Constitution, which tells us that Congress has the sole right to create patent law.”

Athena amici - https://depositphotos.com/42035183/stock-photo-supreme-court-of-the-united.htmlOn November 1, Meredith Addy of AddyHart P.C. and I submitted an Amici Curiae brief to the U.S. Supreme Court on behalf of Freenome Holdings and New Cures for Cancers in support of the Petition for Certiorari in Athena Diagnostics v. Mayo Collaborative Services. If the Supreme Court does not take this case, it is unlikely to reconsider its decisions on Section 101 of the U.S. patent law. This may be our last gasp judicial effort.

The Amici Curiae

Freenome combines two of the thorniest IP issues— personal diagnostics and artificial intelligence. We should all hope they maintain motivation in their goal to recognize disease-associated patterns among billions of circulating, cell-free markers for very early cancer detection. One of their investors is Verily, an Alphabet company.

New Cures for Cancers is a nonprofit corporation I created for judicial and legislative advocacy to urge laws that motivate new diagnostics and drugs to cure cancer. In 2019, 1.7 million people in the United States will be diagnosed with cancer and 609,000 will die. NCC is intended to be the voice of all of us personally who have been touched by cancer as patients, family members or friends and want to say, we are done with bad law. Change the laws which have caused the invalidation of every challenged patent on personalized diagnostics since 2012. Please visit our website and tell us your story, which can be submitted anonymously given the sensitivity to medical confidentiality.

The Supreme Court takes cases raising inconsistencies in the law or a circuit split. We knew parties/amici would focus on the Federal Circuit’s “internal circuit split,” so we took a different approach and urged the Court to resolve five critical inconsistencies in the law, summarized below.

First Inconsistency

The Rubric of Mayo and Alice are Inconsistent with the Wording of Section 101, in at least the following respects.

35 U.S.C. § 101 Mayo/Alice Rubric
Section 101 does not contain any exceptions to patent eligible subject matter. The Mayo/Alice rubric begins with a determination of whether the judicial exceptions preclude patent eligibility.
Section 101 refers to “invents or discovers” in the disjunctive, indicating that inventions and applied discoveries may be different and that either may be patent eligible. The MayoAlice test does not refer to discoveries at all; instead Mayo teaches that applied discoveries without more are not patent eligible.
Section 101 presents an objective test (whoever “invents or discovers”). The Mayo/Alice test is a subjective test (“significantly more” and “inventive concept”).
Section 101 excludes consideration of the other “conditions and requirements of this title” (Sections 102, 103 and 112), recognizing that they are applied later. The Mayo/Alice test incorporates the other “conditions and requirements of this title” into the “inventive concept” analysis.
Section 101 provides a presumption that the process, machine, manufacture or composition of matter is patent eligible (subject to complying with the remaining terms of the title). The Mayo/Alice test does not include this presumption.

 

Last week, I spoke at the AIPLA Conference on patent eligibility. I had one slide, which showed the language of the 101 statute and the Mayo/Alice test, and I offered $1 million to anyone who could go from the 101 statutory language to the Mayo/Alice test using normal statutory construction principles. The bet was safe because it is impossible.

As U.S. citizens, we have the situation that two branches of our government have presented two irreconcilable tests for patent eligibility, the cornerstone of our innovation system. What do we do as U.S. citizens when two branches of our government give us inconsistent laws on the same subject matter? Well, the tie-breaker vote goes to the U.S. Constitution, which tells us that Congress has the sole right to create patent law. Therefore, the literal wording of the statute is the true law of our country, not Alice/Mayo.

Second Inconsistency

SCOTUS’ application of Section 101 is not reconcilable with its Legislative History and Intent

Anthony Prosser and I took on the task of reviewing every patent eligibility statute between 1790 and 2011, and found that Congress consistently defined the scope of patent eligibility in the broad disjunctive “invented or discovered” initially and through dozens of recodifications, and is maintained today. See Knowles and Prosser, Unconstitutional Application of 35 U.S.C. § 101 by the U.S. Supreme Court, 18 J. Marshall Rev. Intell. Prop. L. 144 (2018).

During Congressional Hearings on the 1952 Act, the Department of Justice (DOJ) asked Congress to remove the word “discovers” from Section 101. As the codified law shows, the DOJ’s suggestion was rejected, even after DOJ testimony that it would be inconsistent with Supreme Court cases. On the contrary, Congress did the opposite; it added Section 100(a) in the 1952 Act to emphasize that inventions, at a minimum, specifically include applied discoveries.

SCOTUS has never carried out a proper statutory construction of the first four words of 101, nor referred to the legislative history or intent of that clause in its cases. This is disturbing.

Third Inconsistency

SCOTUS’ application of statutory construction principles on 101conflicts with its application of statutory construction principles to other federal laws.

U.S. patent eligibility code should be applied in the same precise, non-emotional manner that other U.S. statutes are applied, without judicial exceptions that change the meaning of the statute. In the brief, we compare SCOTUS’ opinions on tax law, the Federal Arbitration Act (FAA) and America Invents Act (AIA) law on Inter Partes Review with SCOTUS’ cases on patent eligibility.

In National Federation of Independent Business v. Sebelius, Chief Justice Roberts concluded that the Affordable Care Act’s requirement of a financial penalty for not obtaining insurance may be characterized as a tax, and falls within Congress’ broad Constitutional power to do so. According to the Court, “[b]ecause the Constitution permits such a tax, it is not our role to forbid it, or pass upon its wisdom or fairness.” The same treatment should be given to the language of Section 101.

In United States v. Zacks, SCOTUS held that if the taxpayer’s argument prevailed, it would lead to an automatic waiver of the statute of limitations, and whether that should be done is a matter for Congress to decide. “Where Congress has decided otherwise, this Court has but one course.”

In Henry Schein v. Archer & White Sales,  SCOTUS held that the FAA does not contain a “wholly groundless” exception and “we are not at liberty to rewrite the statute passed by Congress and signed by the President.” SCOTUS confirmed that “we may not rewrite the statute simply to accommodate that policy concern.” Likewise, judicially created exceptions to the law cannot be the hallmark of patent eligibility.

In SAS Institute v. Iancu, SCOTUS ruled that 35 U.S.C. § 318(a) requires the Patent Trial and Appeal Board (PTAB) to rule on every challenged claim. The SAS Court instructs: “Start where the statute does,” and “just as Congress’ choice of words is presumed to be deliberate” and deserving of judicial respect, so too are structural choices.” Section 101 starts with “whoever invents or discovers…”. In response to a policy argument from the USPTO, the SAS Court replied that “Policy arguments are properly addressed to Congress, not this Court. It is Congress’ job to enact policy and it is this Court’s job to follow the policy Congress has prescribed.”

Fourth Inconsistency

Mayo and Alice are irreconcilable with the 1980 SCOTUS Dawson Chemical Decision

Dawson Chemical Company v. Rohm & Haas Company bears striking similarity in fact pattern to Mayo/Alice, yet the Court’s analysis and conclusions are strikingly different. Dawson is a model for courts of how to carefully review legislative history and intent and apply the literal wording of statutes as promulgated. SCOTUS reviewed the historic court- created doctrines of contributory infringement and patent misuse in light of limitations on that doctrine by the codification of 35 U.S.C. § 271(c) and (d) in the 1952 Patent Act.

SCOTUS concluded that Congress intended to rebalance the judicial trend toward finding patent misuse by codifying Section 271(d), and the Court must comply. Importantly, the Court emphasized that “our present task is one of statutory construction, questions of public policy cannot be determinative of the outcome unless specific policy choices can be attributed to Congress itself.”

Fifth Inconsistency

The Court’s application of statutory construction principles to patent eligibility law is inconsistent with the Rule Against Surplusage.

Finally, we rely on The Rule against Surplusage, which is a statutory construction principle requiring that every word of a statute be given effect. If Congress repeatedly uses two words in the disjunctive, the Court cannot infer redundancy.

In conclusion, after 220 years of Congressional legislative history and intent, it must be concluded that applied discoveries are patent eligible without further analysis of the non-statutory doctrines of “significantly more” or an “inventive concept”.


Eleven amicus briefs have now been filed in the Athena case. IPWatchdog will provide analysis of some others in upcoming articles.

 

The Author

Sherry Knowles

Sherry Knowles is Founder of Knowles Intellectual Property Strategies and an intellectual property attorney with 30 years of experience in global corporate and private practice. From 2006-2010, Ms. Knowles was the Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters, and managed a global department of over 200 people in 12 offices. At GSK, Ms. Knowles was a member of the Scientific Advisory Board, the Technology Investment Board, the Product Management Board, the Legal Management Team and she led the Global Patents Executive Team.

For more information or to contact Sherry, please visit her 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 29 Comments comments. Join the discussion.

  1. Pro Say November 4, 2019 4:09 pm

    Sherry and Meredith, American — and indeed World — innovation leaders thank you for your tireless efforts to restore the American patent system to it former World-leading status.

    The merits of your above arguments as of course unassailable.

    And again I ask: Congress, where are you? What are you doing? What are you waiting for?

    Where’s that eligibility restoration act that our Country desperately needs?

    Take a look at the calendar: We’re now less than 60 days to a new decade.

    Less than 60 days.

  2. Concerned November 4, 2019 5:07 pm

    I have one of those s101 rejections in my patent prosecution that does not contain a s101, s103 or s112 rejection.

    I also have 2 examiners who dropped key words that exist in the claim language to further their rejections and paint a different invention in addition to making statements that are illogical on the surface. For example, the word “overlooked” is made bold in our arguments to emphasize the nature of ours claims, yet the examiners drop that word and imply or insert “routine” in their rebuttals. It looks intentional that our claims are being misrepresented. Other written arguments from the examiners are extremely concerning such as an alleged abstract idea cannot have a practical application if it is allegedly abstract. That insults the intelligence and dodges s101, Benson and 2019 guidance.

    It seems all this Mayo/Alice garbage is just code for invalidating patents by any means.

    Good luck in your efforts, however, logic and law do not seem to win the day. Sad day for rule of law.

  3. Concerned November 4, 2019 8:07 pm

    That is no s102, s103, and no s112 in above post.

  4. Anon November 4, 2019 8:21 pm

    I do wonder if TFCFM will come out and play here (that is, engage).

  5. anonymous November 4, 2019 9:41 pm

    Great article. But Congress can fix all this immediately.

    Congress, please give us a clean bill innovators can support. Don’t be seduced by the efficient infringer lobby.

    Senator Tillis said that legislation would be released shortly after the July recess. My worry is that there are closed-door meetings leaving inventors sidelined. I hope I’m wrong, and I remain optimistic Congress will end this 101 mess once and for all.

  6. Night Writer November 5, 2019 5:18 am

    In fairness to the Scotus, they try to tie the exceptions to the Constitutional language of “to promote” and state that the exceptions are there to prevent patents on subject matter that would not tend “to promote.”

    This is remarkable for many reasons one of which is that it means the Scotus is making fact finding that the claims in Alice/Mayo do not tend “to promote.”

    I think that this aspect of the Scotus’s arguments/position need to be exposed because the Scotus has no defensible position for this position.

  7. Kirk Hartung November 5, 2019 9:15 am

    It is now or never for SCOTUS to accept and consider the issues, particularly in view of the 12 Federal Circuit judges in Athena who are asking that something be done to clarify patent eligibility. Otherwise, it is up to Congress, which has no end in sight.

  8. E. November 5, 2019 9:18 am

    The one response to Sherry’s $1 million dollar challenge that immediately comes to mind is: “It is emphatically the province and duty of the judicial department to say what the law is,” Marbury v. Madison, 5 U.S. 137,177 (1803). On the other hand, even the Court doesn’t seem to follow it’s own guidance in this respect, as seems to be the case at least with respect to the current state of judicial deference, which is another thorny mess that is of the Court’s own making.

  9. TFCFM November 5, 2019 9:44 am

    SK: “If the Supreme Court does not take this case, it is unlikely to reconsider its decisions on Section 101 of the U.S. patent law. This may be our last gasp judicial effort.

    This seems more than a little hysterical. This is hardly the last case in which section 101 issues will ever arise, and the Supreme Court is well known for by-passing “messy” cases in order to review issues in an appropriate case.

    Even assuming that Athena is an “appropriate” case, it’s all-but-impossible that it will be the last “appropriate” case ever.

    Frankly, I think the whole “alleged-inconsistencies” approach to be unconvincing and amounting to nothing more than a comparison between the current state of the law and “the-law-as-I-would-have-it.” It simply defies common sense and reality to pretend that Congress, once upon a time,

    i) knew precisely every contour of every technology that would ever be developed and carefully selected every word of section 101 to have the utterly-rigid, technology-be-damned meaning the authors contend for all time, and

    ii) nonetheless wrote a loosey-goosey statute that would have overturned numerous Supreme Court holdings if it had the authors’ asserted meaning, had that been Congress’ intent, and yet

    neglected to mention either i) or ii).

  10. Sherry November 5, 2019 10:32 am

    Hi E.

    Marbury v Madison is an example of the Supreme Court giving itself power. That isn’t how our government works. The power of each of the three branches is provided by the Constitution alone, which is the supreme law of our land. If the power is not listed in the Constitution, then the branch doesn’t have that power. The Supreme Court has bootstrapped itself to a level of power it was not given, and has used it broadly ever since.

    Sherry

  11. E. November 5, 2019 10:58 am

    Hi Sherry,

    You may be right, but I have not come across anything that would suggest the above quote taken from Marbury is not a “normal statutory construction principle,” but that may be just me. It seems, however, that once the Supreme Court pronounces on a statute or the constitution, that is the end of the story, always has been, unless Congress intervenes to rewrite the statute or amend the Constitution, at least that’s my understanding. At any rate, I commend your contribution to discussions like this, since I think problems with separation of powers have always been difficult, but are becoming more prevalent and consequential of late. Thanks for the article and the food for thought.

  12. B November 5, 2019 12:56 pm

    @ TFConfusedFM “This seems more than a little hysterical. This is hardly the last case in which section 101 issues will ever arise, and the Supreme Court is well known for by-passing “messy” cases in order to review issues in an appropriate case.”

    Do you think Mayo was anything less than messy? Mayo was a horrible case to use as an example, and on the simple issues the SCOTUS screwed it up.

  13. B November 5, 2019 1:03 pm

    @ TFCFM “ii) nonetheless wrote a loosey-goosey statute that would have overturned numerous Supreme Court holdings if it had the authors’ asserted meaning, had that been Congress’ intent, and yet . . . ”

    Please tell us what is “loosey-goosey” about the patent law as written.

    Also, you realize that computer programming and medicine were known technologies by 1952. Oh, no, you don’t. You have half an econ degree before you dropped out of community college.

  14. B November 5, 2019 1:06 pm

    Dear Ms. Knowles,

    As always you provide a great read,

    “In conclusion, after 220 years of Congressional legislative history and intent, it must be concluded that applied discoveries are patent eligible without further analysis of the non-statutory doctrines of ‘significantly more’ or an ‘inventive concept'”

    The judiciary doesn’t know what an “inventive concept” is.

  15. Non Sequitur II November 5, 2019 1:19 pm

    Sherry, in your view, how should Marbury v. Madison have been resolved? By the US Constitution, the Supreme Court is vested with “The judicial power of the United States”. Of course, one must still define “judicial power,” and, despite the obvious conflict, I don’t see how any branch other than the Supreme Court can define “judicial power” (within reason). If left to the President or Congress to define “judicial power,” the Supreme Court could not serve as a check or balance on the other branches.

    All of the above being said, I’m not expressing an opinion on Alice or its progeny, but I don’t think accusing the Supreme Court of a power grab make sense.

  16. Anon November 5, 2019 3:19 pm

    but I don’t think accusing the Supreme Court of a power grab make sense.

    Why in the world not?

    What does NOT make sense is pretending that the Emperor’s raiments are splendid as he strolls through the crown in the buff.

  17. Jam November 5, 2019 4:51 pm

    B@14 “The judiciary doesn’t know what an “inventive concept” is.”

    Practically speaking, the judiciary knows exactly what an ‘inventive concept’ is. It is a nonce phrase that the courts use to play hide the ball. It can be anything needed to reject a claim under 101. It does not even need to be recited in the claims or the application (see the latest guidance pointing out that “intermediated settlement” does not appear in the claims of Alice). It is a fiction invented by the court, which might have some faint tangential correlation to one of the words or phrases in the application, but such is not required. The more abstract the inventive concept becomes, the stronger the rejection becomes, because it is so much easier to reject claims based on abstract ideas that might be related to something like the claims than it is to reject the claims based on the language actually found within the claim.

  18. B November 5, 2019 5:09 pm

    @ Jam “Practically speaking, the judiciary knows exactly what an
    ‘inventive concept’ is. It is a nonce phrase that the courts use to
    play hide the ball.”

    I stand corrected

  19. Concerned November 5, 2019 5:30 pm

    I have an examiner that admits in writing a problem of 63 years has been solved, a problem that has escaped hundreds of thousands of working professionals and experts, yet no practical application exists.

    He also quotes our claims after halfway thru the sentence to give a different meaning to our claim.

    I think my situation is beyond hiding the ball.

  20. Anon November 6, 2019 9:14 am

    Who could of predicted that the engagement by TFCFM is nothing more than a dismissal of the opposing view (under the ruse of “that’s just how you would want the law to be”)…?

  21. EG November 6, 2019 10:50 am

    “Practically speaking, the judiciary knows exactly what an ‘inventive concept’ is. It is a nonce phrase that the courts use to play hide the ball.”

    LOL, a great definition of SCOTUS’ Ouija board for patent eligibility!

  22. Ternary November 6, 2019 2:11 pm

    From the Framers going forward, humans did absolutely NOT know how gaining knowledge/technology would develop and were very much aware of that limitation. The subjects of physics and chemistry and the relationship of physics/rational mechanics with mathematics (especially analysis) were just developing in the 1700s. The Framers/Founders were very much aware of that and so were many Congress Members and some SCOTUS Justices. This implies to people who are in favor of patents, that one should take extraordinary care in especially eligibility criteria, lest one kills the goose that lays the golden eggs. Even Justice Thomas was aware of that, he just couldn’t help himself.

    Every time we write down how we believe “science and technology” will develop we turn out to be wrong. That is why we should give the broadest possible interpretation to what was written in the Constitution and in Statutes.

    It is the hubris of SCOTUS who believe that they know what the state of the art in technology is that we end up with these bizarre and reactionary decisions. Almost all of their decisions related to patents are based on outdated interpretations of science provided and pushed by interest groups with status quo interests.

    From Justices with such great powers, one would expect a bit more modesty, an understanding of their limits in knowledge and hesitancy to interfere with what they don’t understand or at least know little about. And it is intellectually unconscionable that SCOTUS has grabbed this power to decide what is patent eligible.

    From that perspective, Sherry’s analysis is outstanding and right on the mark. I also enjoyed the “claim chart”-like comparison. Excellent post. It is telling and somewhat predictable (as Anon says) that TFC… draws the exact opposite conclusion.

  23. TFCFM November 6, 2019 3:37 pm

    B @ #12:

    TFCFM: “ the Supreme Court is well known for by-passing ‘messy’ cases in order to review issues in an appropriate case.

    B: “Do you think Mayo was anything less than messy? Mayo was a horrible case to use as an example, and on the simple issues the SCOTUS screwed it up.

    Even assuming that it was a mistake for the Supremes to review Mayo, two wrongs nonetheless do not make a right and would not justify reviewing a messy case at this point.

    Indeed, the very reason why they tend not to avoid messy fact situations is the well known maxim that “hard cases make bad law.” If you are correct that Mayo was a hard/messy case, then that would go a long way toward explaining why Alice/Mayo has turned out to be such a mess. Whether or not Athena is such a case, a case with clear facts will served to facilitate formulation of a clearer and better rule for patent eligibility.

    It seems to me that, if anything, Athena is a good case for maintaining the current state of the law (i.e., because the patentee in Athena ***didn’t*** invent/discover anything more than a pre-existing natural law, to which it applied well-known and obvious techniques). To that end, if you’re hoping for a change in current law, you may be well advised to hope that cert is denied for Athena.

  24. Anon November 6, 2019 5:06 pm

    Ternary,

    Your first paragraph is exquisite – and is exactly why (well, at least one of the reasons why) TFCFM is so in the weeds when it comes to patent law.

    In posting past of his, he laments that Congress did not more constrain patent eligibility.

    As I have noted, TFCFM shows absolutely zero understanding of having actually been involved with innovation (and his continued laments against strong innovation protection — with the accompanying dismissal of any view that does not align with his – show the very opposite of his past statements as to his own willingness to engage).

    By this time, it is more than clear the game that TFCFM is playing.

    I do suspect that one reason why TFCFM does not actually engage on the merits is that he would be either outright decimated in any discussion, or he would find himself on the “banned” list for pursuing “opinions” contradictory to facts and law presented (i.e., elevating his own opinion over any informed opinion). That certainly flies on other blogs, but on this blog, there is a short leash for those who would disregard facts and law — and good reason for having that short leash.

  25. Anon November 6, 2019 6:55 pm

    maintaining the current state of the law (i.e., because the patentee in Athena ***didn’t*** invent/discover anything more than a pre-existing natural law, to which it applied well-known and obvious techniques)

    Yet again, TFCFM perseveres in misusing a patent term — specifically, dismissing the word “discovers.”

    Hence, his view/recommendation is 180 degrees off.

  26. TFCFM November 7, 2019 10:14 am

    Anon @#25: “ TFCFM perseveres in misusing a patent term — specifically, dismissing the word ‘discovers.’

    Please explain how you believe that I am “misusing” the term. It makes no difference to me or to my opinion how Athena came to knowledge of the natural law — whether it be an “invention,” a “discovery,” or something else.

  27. Anon November 7, 2019 12:04 pm

    You misuse the term as you attempt to make the two words meanly only one thing.

    That you ALSO simply decide to dismiss that “one thing” instead of actually engaging on the merits is a separate problem for you.

  28. TFCFM November 11, 2019 10:27 am

    Anon: “You misuse the term as you attempt to make the two words meanly only one thing.

    I think you mis-read. My comment (presumably the one at #23) says:

    TFCFM: “the patentee in Athena ***didn’t*** invent/discover anything more than a pre-existing natural law

    I don’t either say or imply that “invent” and “discover” have the same meaning. Instead, what I meant (and, I think, the only fair reading) is that it doesn’t matter which of the two words (or any other) one uses. The patentee’s ‘new information’ was limited to the pre-existing natural law.

  29. Anon November 11, 2019 4:37 pm

    Hmm,

    I grant that I may have misread your intent — however, given that this very point was an item that you would not correct just a few short days ago, your use here is simply too easy to “misconstrue.”

    (I would suggest using an “or” instead of a “/” though) – but bygones.

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