“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
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.
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.