‘Myspace Laws in a Tik Tok World’ – Tillis asks Amy Coney Barrett about Patent Eligibility and Copyright Law

By Gene Quinn
October 14, 2020

“On the Seventh Circuit we try – and I try – to be attuned to in writing opinions whether it gives good guidance to lower courts and also to those who are trying to order their conduct in compliance with the laws. I think clarity is certainly a virtue in this context.” – Judge Amy Coney Barrett

Judge Amy Coney Barrett

This afternoon on Capitol Hill, Senator Thom Tillis (R-NC), a member of the Senate Judiciary Committee and Chair of the Senate Intellectual Property Intellectual Property Subcommittee, had the opportunity to question Judge Amy Coney Barrett, President Donald Trump’s nominee for the United States Supreme Court.

During his time, Senator Tillis spent several minutes speaking with Judge Barrett about her views on both patent and copyright law. Although Judge Barrett steadfastly has stuck to prior precedent by nominees to the High Court and refused to answer questions related to specific cases or issues that may arise or which are being currently litigated, she was willing to discuss fundamental principles, how she approaches cases and analyzes issues, the separation of powers and distinct role of the different branches of government and the importance of clarity, all of which were on display during her brief Q&A with Senator Tillis relating to patent eligibility and copyright reform.

On Patent Eligibility: ‘Clarity is a Virtue’

The exchange as it related to patent eligibility this afternoon was as follows:

SENATOR TILLIS: Moving to another area that has been addressed by the [Sub]committee on Intellectual Property is patent law eligibility… as Chairman of the Subcommittee I am really interested in protecting the intellectual property of the American innovation economy. There is no question that we are the leader in the world, but in recent years we’ve seen a lot of Supreme Court cases that have weighed into patent eligibility produce a series of opinions that have really muddled the waters and in some cases I think that I agree with the decisions, but I worry about the methodology they use to get there. So, I’m curious about your thoughts. In my Committee we’ve talked about specific cases we can abrogate if we can get bipartisan support and we are in those discussions. But what are your thoughts on the Supreme Court’s rulings on patent eligibility, and do you think the Court should go back and clarify at least the method they use to reach their opinion?

JUDGE BARRETT: So, without commenting on any particular cases, which I have to be completely honest and confess to you I cannot think of what particular cases you might be thinking of [on] patent eligibility, but without commenting on those cases in any event, I think I would say that clarity in decision-making is always something that courts should strive for and I know on the Seventh Circuit we try – and I try – to be attuned to in writing opinions, whether it gives good guidance to lower courts and also to those who are trying to order their conduct, you know, in compliance with the laws. I think clarity is certainly a virtue in this context.  

SENATOR TILLIS: And I think that we are working on a bipartisan, bicameral basis to help, or do it on our part.

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Senator Thom Tillis

While Senator Tillis did not mention the specific patent eligibility cases by name, the key cases he was referring to are Bilski, Myriad, Mayo, and Alice. This series of cases has increasingly confused patent eligibility law, beginning in 2010 with Bilski, which held that the existing “machine-or-transformation test” should not be the sole test for patent eligibility under Section 101. Things got much worse in 2012 with Mayo, when Justice Breyer, writing for a unanimous Court, said that the claims at issue in the case did not specifically cover a law of nature because there were “administering” and “determining” steps involved, yet determined that those “administering” and “determining” steps were well known and conventional, meaning that the claims lacked patent eligible subject matter, thereby conflating patent eligibility with novelty and non-obviousness. Then, in 2013, the biotech industry was delivered a blow with the Myriad decision, when Justice Thomas said that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated” although he found cDNA patent eligible because it is not naturally occurring. Finally, we reached crisis mode in 2014, when the Court in Alice – with Justice Thomas writing again – used what it called the Mayo framework to cement a now-infamous two-step test for determining eligibility: first to determine whether the claims at issue are directed to a patent-ineligible concept and then to examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.

All of this has been interpreted by the Federal Circuit in varying and unpredictable ways, to the point that today it is almost impossible to predict or advise on eligibility law.

While some patent faithfuls will be disheartened by Judge Barrett not knowing which patent eligibility cases Senator Tillis was referring, it is important to remember that, as a member of the Seventh Circuit, patent issues would not have come before Judge Barrett. Nevertheless, her answers about the importance of clarity so that lower courts can apply the law accurately and stakeholders can knowingly organize their affairs with certainty should sound a hopeful note to the ears of innovators.

On Copyright: Is it Up to Courts or Congress?

Pivoting to copyright matters, the exchange that occurred this afternoon was as follows:

SENATOR TILLIS: Copyright law and technology is another area that we focus quite a bit on. I think I had one witness say that our current laws are “Myspace laws in a Tik Tok world.” There are a lot of changes that have occurred, and we feel like there is a need for us to move forward with some clarity and protections. The Supreme Court has spent more than a century answering questions whether copyright law covers new technologies like cameras, player pianos, moving pictures, the list goes on, several Internet enabling technologies – do you think that the Supreme Court is the best institution to answer these questions, or is that a role that Congress should play?  

JUDGE BARRETT: Most of the things you are identifying sound to me like matters of policy, so those seem like matters that are best addressed by the Legislature; the democratically elected body, not policy made by courts.

SENATOR TILLIS: I agree I think it is a complex subject and I’m glad to hear your opinion and I hope that we make progress on it. Again, I have to thank Senator Coons and Senator Blumenthal and Senator Hirono who are on that Subcommittee, who I think we’ve worked well with and I’m hopeful.

The staleness of copyright laws in America is impossible to argue, and Congress must act. Still, the answer provided by Judge Barrett probably provides more insight from an intellectual property standpoint about what a Justice Barrett might think about the so-called judicial exceptions to patent eligibility than with respect to copyright activism from the bench. Believing that matters of policy are best addressed by Congress, as is intended by the Constitution, could well signal a willingness of the Court to provide much needed insight and clarity into how lower courts, Patent Trial and Appeal Board judges and patent examiners are supposed to interpret the irreconcilably muddled patent eligibility precedent of the Supreme Court.

 

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments. Join the discussion.

  1. MaxDrei October 15, 2020 1:36 pm

    So; I read above that:

    “There is no question that we are the leader in the world….”

    and that gives me the opportunity to ask whether anybody can comment on the story the BBC is running, relying upon a Paper published in “Nature”, that a university research team within the USA has come up with a room temperature superconducting material.

    How much weight can I put on the BBC story?

  2. Curious October 15, 2020 10:00 pm

    Gene … you missed the most interesting answer to Tillis (which I found mentioned in the other IP Website. At supposedly the 58:29 mark, Barrett stated:
    Most of the things you’re identifying sound to me like matters of policy. And so, those seem like matters that are best addressed by the legislature, a democratically elected body, not policy made by courts.

    This is the most cogent thing I’ve heard from anybody associated with the Supreme Court in a very, very long time. It is a point I’ve made time and time again, which is that everything having to do with 101 involving the courts is them (improperly) making policy decisions. Although she said it in the context of copyright law, I would hope that the same logic also applies to the realm of patent law.

    Apparently, Barrett hasn’t had “the talk” in which she learns that the Supreme Court gets to put its thumb on the scale of justice to rewrite the laws whichever way they want.

  3. Anon October 16, 2020 7:06 am

    Eight more Barrett’s please.

  4. Jam October 16, 2020 10:59 am

    Part of me thinks Tillis should have asked if the desk in front of her was an abstract idea or if the swivel in her chair was a natural law, which might have forced her to state that answering either question may prejudice future cases and that she wouldn’t know until after briefing and arguments. That aside, she may help bring the Court back in line on patent law to follow the laws as written instead of advocating and pushing big tech policy by judicial decree.

  5. Curious October 16, 2020 11:09 am

    Eight more Barrett’s please.
    I always wondered what living in a theocracy would be like.

  6. Anon October 16, 2020 3:42 pm

    Barrett has provided zero basis that her judging places us in a theocracy.

    Don’t drink the Kool-aid, Curious.

  7. Curious October 16, 2020 6:39 pm

    Barrett has provided zero basis that her judging places us in a theocracy.
    You didn’t give me 1 Barrett (who is bound by precedent at the Court of Appeals) … you gave me nine capable of dispensing with precedent to contemplate. I’m certain a single one would practice self-moderation. Nine … well, let’s just say that my Sundays will be booked from then on out.

  8. Anon October 16, 2020 6:47 pm

    Still drinking the Kool-Aid, Curious.

    The nine would be duplicates of the one – you readily accept one, and thus should readily accept nine.

    Now if I had indicated that at least the other eight would be AS religious (AND given allowance FOR some type of theocracy-inclination, THEN your comment might have merit.

    I did not.
    Yours does not.

  9. ipguy October 16, 2020 8:37 pm

    Barrett is yet another judge bound for the SCOTUS who has never tried a patent infringement case, never presided over a patent infringement case, and never decided an appeal of a patent infringement case. Lord Almighty save us from another SCOTUS patent decision authored by Justice Thomas!

  10. Anon October 17, 2020 8:11 am

    ipguy,

    I think that your critique is a bit shallow, and merely a lack of patent litigation case experience cannot create the similarity that you put forth.

    But aside from that, is there any judge WITH (good**) patent case experience that you would either propose for nomination or have any semblance of a chance of being nominated?

    **the qualifier should be evident, given that there are many VERY bad judges out there who would be worse than a non-patent-case-experienced Barrett.

  11. Pro Say October 17, 2020 10:55 am

    Anon @ 10: Well, my friend, hows ’bout elevating any one or more from the swamp-bound gaggle of unconstitutional PTAB “judges” to SCOTUS?

    Just imagine how many millions of Big Tech $$$ would pour into Senators’ reelection coffers to support such “judges.”

    Boy, oh, boy, talk about American innovation flourishing again!

  12. Curious October 18, 2020 6:37 pm

    The nine would be duplicates of the one – you readily accept one, and thus should readily accept nine.
    You are getting a little ahead of yourself. Who said I readily accept one? Moreover, the acceptance of one doesn’t necessitate the acceptance of nine like-minded justices.

    I think that your critique is a bit shallow
    While it is a critique that can be applied to many judges, that doesn’t make it shallow.

    Going off her wikipedia web page:
    Judge Barrett majored in English literature and minored in French. She clerked for a judge in the DC Court of appeals (2 years) and then Scalia for 2 years from 1998-1999. The only notable patent case during her time in the Supreme Court was Dickinson v. Zurko. Private practice from 1999-2002, including representing Bush in Bush v. Gore. Taught law school from 2002-2017 — focusing on constitutional law. She has been on the Seventh Circuit Court of Appeals for a little over 3 years.

    Her judicial philosophy has been described as one of textualist/originalist — consistent with that of the late Justice Scalia as well as Justice Thomas. However, neither of those two have been friends of the patent system. In total, nothing about her background leads me to believe that she’ll handle intellectual property issues differently than the rest of them.

    It is fairly easy to identify the “anti-patent” wing of the Supreme Court — just look for the justices wearing black robes. Until one (or more) of them prove me wrong, that’s the assumption I’m going with. As for the non-IP stuff, I doubt her future decisions will be a surprise to no one.

  13. Anon October 18, 2020 6:46 pm

    Curious,

    You miss the point – both of my original post and of my reply to your reply.

    The KEY difference here is an apparent ability to recognize when NOT to legislate from the Bench.

    Which current Justice can you say that about?

    Like the rest…?

    Only if you close tight your eyes to the provided point here (which is exactly what you seem intent on doing).

  14. Curious October 19, 2020 10:52 am

    Only if you close tight your eyes to the provided point here (which is exactly what you seem intent on doing).
    I’m not the only person to have made this point, but it is worth making again. You rarely say what you mean. You frequently make your points in a round-about, obtuse manner using obscure terminology and phraseology that make it difficult to identify the points you are trying to make.

    If I didn’t get the point you were making, it wasn’t because my eyes were tightly shut — it was because my anon-to-English translator wasn’t working well at the moment. To be honest, I suspect that I have one of the best working anon-to-English translators around, but even then, it has significant limitations.

    You and I infrequently disagree on point of view, but I wish your writings were clearer. And when I mean clearer, I mean clearer to the rest of us.

    To use a little anon-like phraseology, perhaps you should contemplate the difference between stating your opinion versus conveying your opinion.

    The KEY difference here is an apparent ability to recognize when NOT to legislate from the Bench.
    Which is why is I earlier referenced the “talk.” To introduce another anon-like obscure reference, let’s see if Barrett can refuse the One ring. Few have resisted its temptation.

    “And now at last it comes. You will give me the Ring freely! In place of the Dark Lord you will set up a Queen. And I shall not be dark, but beautiful and terrible as the Morning and the Night! Fair as the Sea and the Sun and the Snow upon the Mountain! Dreadful as the Storm and the Lightning! Stronger than the foundations of the earth. All shall love me and despair!”

  15. Anon October 20, 2020 11:45 am

    Sorry Curious but no – how in the world did you miss the point? There was no “obtuseness.” YOU missed the point by introducing an unfounded “theocracy” ideology that is nowhere present in any actual understanding of Judge Barrett’s position.

    YOU are the one off here, not I.

    The KEY difference here is an apparent ability to recognize when NOT to legislate from the Bench.
    Which is why is I earlier referenced the “talk.” To introduce another anon-like obscure reference, let’s see if Barrett can refuse the One ring. Few have resisted its temptation.

    The point about not legislating from the Bench is in the story above. There is NO “theocracy” in the story above.

    Maybe you should have that ‘talk’ with yourself….

  16. Curious October 21, 2020 11:49 am

    YOU missed the point by introducing an unfounded “theocracy” ideology that is nowhere present in any actual understanding of Judge Barrett’s position.
    You see, this is what happens when you write more clearly. I can understand the point you are trying to make. My “theocracy” comment wasn’t based upon the specific positions presented by Barrett that were reproduced above. My “theocracy” comment was based upon my viewpoint of Barrett’s legal philosophy, as a whole — and intended as part commentary and part joke.

    The point about not legislating from the Bench is in the story above. There is NO “theocracy” in the story above.
    Again, my comment wasn’t based solely on Barrett’s comments from the story above.

    Maybe you should have that ‘talk’ with yourself….
    When I become a judge, I’ll have the talk. However, I don’t see the relevance here.

  17. Anon October 21, 2020 1:22 pm

    your commentary – and your joke – fell flat, and feeds the rampant Misinformation and the general poor political climate.

    That you want to lecture me after my taking you to task is a bit over the top.

    You not seeing the relevance…

    Way to double down.

  18. Curious October 21, 2020 5:13 pm

    your commentary – and your joke – fell flat, and feeds the rampant Misinformation and the general poor political climate.
    That’s your opinion. Many others disagree.

    That you want to lecture me after my taking you to task is a bit over the top.
    LOL … taking me to task? For what? Not understanding anon-speak? If that’s it, then I plead guilty.

    You not seeing the relevance… Way to double down.
    Way to double down with unexplained commentary — you be you.

  19. Anon October 22, 2020 6:49 am

    Not (merely) an opinion – for the reasons provided (are you still closing your eyes?)

    Taking you to task – not for anything directed to ME – but rather to the points presented. And yes, you are guilty.

    As to unexplained commentary, your doubling down NEEDS NO explaining. That you fail to understand this is a YOU problem.

    Supposedly, you are an attorney, and SHOULD BE capable of reading something with a critical eye and understanding things without having your hand held and each tiny breadcrumb proclaimed from the mountain tops.

    Or is it my mistake to give you too much credit in that department?

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