Tillis, Michel, and Kappos File Amici Curiae in American Axle at Supreme Court

Editorial Note: What follows is the Summary of the Argument from the Amici Curiae Brief in Support of Petition by American Axle filed by Senator Thom Tillis, Honorable Paul Michel and Honorable David Kappos. The three amici conclude that they are “all convinced that section 101 is gravely damaging our country’s ability to succeed in the race for global innovation leadership, and all convinced that the solution to the dilemma lies with the Court taking up the American Axle case.”

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In 35 U.S.C. § 101 (“Section 101”) the exclusive statutory categories of patent-eligible, inventive (new and useful) subject matter are set forth in the specific statutory text, namely, processes (methods), machines, (articles of) manufacture, compositions of matter, and improvements thereof. These categories are constrained by three judicially created exceptions that disqualify an invention from being eligible for the granting of a patent thereon: “laws of nature”, “natural products and phenomena”, and “abstract ideas.”

These exceptions to patent eligibility have long been recognized as boundary conditions that limit the breadth of U.S. patent law. But there are significant disagreements among jurists that have resulted in harmful errors of law regarding the contours of threshold testing of claimed inventions under Section 101 against those exceptions, one of which in particular, “abstract ideas,” is undefined. With respect to Section 101 and its antecedents, this Court’s guidance has been vital to promoting its interpretation. In 2012 and 2014, in Mayo Collab. Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), this Court set forth a framework for resolution of Section 101 issues.

However, the test (collectively, “Alice/Mayo”), intended to filter out inventions deemed not eligible for patenting, has created a chaotic state of affairs that, from the standpoint of patent policy, threatens serious negative jurisprudential and real-world consequences to America’s technological leadership. The undue confusion and uncertainty in outcome-predictability in patent cases has become so ubiquitous as to render the U.S. patent system unstable and unreliable at its core across a spectrum of industries including those upon which the United States depends for the good health and well-being of the citizenry and its national security. The confusion is clearly manifested in the present case by the Federal Circuit’s deeply divided denial of American Axle’s petition for en banc re-hearing of the divided panel decision invalidating American Axle’s patent claims.

Amici herein take no position in this case on the merits of American Axle’s invention. Rather, we believe that patent policy and the public interest require us to alert this Court to the harm being done to the patent system and America’s innovation economy. American Axle is just one example of the judicial confusion causing consternation among the stakeholders throughout the innovation economy since Alice/Mayo was enunciated.

The inconsistent application of Alice/Mayo is creating an unpredictable and unstable U.S. patent system. Since Mayo and Alice imposed a framework, Alice/Mayo has been applied differently and questions of its extent, scope, and rigidity have been common, and are at issue in American Axle. Questions about whether the additional information required by Alice/Mayo is a question of law or fact have also come to the forefront.

The “real world” adverse consequences of Section 101 uncertainty impact the incentive to innovate and to invest in new technology frontiers including life-saving treatments and diagnostics, artificial intelligence, and quantum computing.

There is clear empirical evidence demonstrating the devastating effect Section 101 uncertainty has on the U.S. patent system with respect to the incentive to innovate and the willingness to invest in advancing the cutting edge technologies and science necessary for the U.S. to compete and lead in the twenty-first century.[3]

Patent applications for innovations, routinely denied issuance in the United States on Section 101 grounds are granted under the patent regimes in China and Europe.

Failure to address and clarify Section 101 patent eligibility threatens America’s ability to maintain its leadership role in innovation, defense, and economic superiority on the global stage.

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[3] See, e.g., Mark F. Schultz, The Importance of an Effective and Reliable Patent System to Investment in Critical Technologies, ALLIANCE OF U.S. STARTUPS AND INVENTORS FOR JOBS (July 2020), at pp. 1-8, available at https://static1.squarespace.com/ static/5746149f86db43995675b6bb/t/5f2829980ddf0c536e713 2a4/1596467617939/USIJ+Full+Report_Final_2020.pdf (detailed study and statistical data analysis providing extensive evidence demonstrating the detrimental impact on the incentive to innovate, and the willingness to invest in “breakthrough technologies that change the world,” due to Section 101 uncertainty); Taylor, David O., Patent Eligibility and Investment (February 24, 2019). Cardozo Law Review, Forthcoming, SMU Dedman School of Law Legal Studies Research Paper No. 414, available at SSRN: https://ssrn.com/abstract=3340937 or http://dx.doi.org/10.2139/ ssrn.3340937 (same).

The Author

Senator Thom Tillis

Senator Thom Tillis was elected to represent North Carolina in 2014. Senator Tillis is a member of the Judiciary Committee and Chairman of the reinstituted Subcommittee on Intellectual Property. As Chairman, his vision is to tackle the major issues facing America’s IP system and conduct rigorous oversight of the agencies tasked with protecting our nation’s intellectual property system.

Senator Thom Tillis

Judge Paul Michel (Ret.) became a private citizen on June 1, 2010 for the first time since he graduated from law school at the University of Virginia in 1966. Upon graduating from law school he became an Assistant District Attorney in Philadelphia, thus embarking upon the career of a public servant from 1966 to his retirement from the United States Court of Appeals for the Federal Circuit in 2010. Michel served on the Federal Circuit, which is the main patent appeals court in the United States, from 1988 to 2010, serving as Chief Judge from 2004 to 2010.

Senator Thom Tillis

David Kappos is a Partner at Cravath, Swaine & Moore LLP in New York, NY. He was Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office from August 2009 to January 2013. Prior to leading the USPTO, Mr. Kappos served as Vice President and Assistant General Counsel for Intellectual Property at IBM. For more information and to contact Mr. Kappos please visit his 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 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 25 Comments comments. Join the discussion.

  1. Pro Say March 1, 2021 7:58 pm

    “Since Mayo and Alice unconstitutionally imposed a framework …”

    There; fixed.

    What is needed is the RESTORATION of patent eligibility to ALL areas of innovation.

    No mere “clarification” of Alice; or some such.

    RESTORATION.

    SCOTUS usurped the Congressional prerogative.

    Only Congress can take it back.

  2. Anon March 1, 2021 10:01 pm

    A member (or former member) of each branch of the government coming together to point out the grave danger of what the Supreme Court has wrought.

    Think back to the shears of my Kavanaugh Scissors.

    One of those blades had to do with showing the damage of the Court’s own past knot-tieing.

    But the biggest question is will the Court develop the humility to correct itself?

    Chances are simply NOT good for that to happen.

  3. David Foster March 2, 2021 9:26 am

    “Section 101 grounds are granted under the patent regimes in China and Europe.”

    With a corrupt EPO that does whatever it wants, and grants software patents despite their exclusion in ECPart52.2.

    There is a good reason why software patents should not be granted, they are an insult to the profession of software developers.

  4. Anon March 2, 2021 12:00 pm

    Mr. Foster,

    You are welcome to the dredge of the slashdot/TechDirt anti-patent Kool-aid view of software not deserving innovation protection for all that such is worth.

    After all opinions are ‘easy,’ and everyone gets their own.

    Now if you want to actually engage with some informed opinions, I would be happy to hear why you feel that the innovation provided by way of software should somehow be excluded from overall innovation protection that is afforded items of utility.

    But be forewarned – I have a low tolerance for those merely parroting the lemming lines of anti-patentists.

  5. Curious March 2, 2021 9:52 pm

    There is a good reason why software patents should not be granted, they are an insult to the profession of software developers.
    LOL … are you saying software developers are insulted by having their work product described as being technological in nature? That is an interesting take.

  6. David Foster March 3, 2021 7:57 am

    @Anon @Curious software developers deverse unlimited freedom of programming, as guaranteed by the First Amendment. Asking software developers to look at a patent database before writing any single line of code is an insult to the profession.

  7. Curious March 3, 2021 9:00 am

    developers deverse unlimited freedom of programming, as guaranteed by the First Amendment
    Developing programming for some app to run on iOS or Android is not the exercise of one’s First Amendment rights. For being probably the most famous Amendments to the US Constitution, it is also the most misrepresented Amendments by laypeople.

    Asking software developers to look at a patent database before writing any single line of code is an insult to the profession.
    What, you think you are special? Mechanical engineers, chemical engineers, electrical engineers, biotech engineers … all types of technical innovators … face the same problem. Why should programmers get special dispensation and not these other technical innovators?

    BTW — oligopolies of the likes of Google and Facebook love your call for “unlimited freedom of programming.” Why pay the original developer for code when they can simply copy it or have one of their in-house groups reproduce it? Oh wait, my mistake.
    Google and Facebook have N E V E R been accused of anti-competitive behavior or copying other people’s work.

    You think you are protecting the little guy, but what you are really doing is advocating for positions that made it easy for the big guy to maintain their domination.

  8. Anon March 3, 2021 10:57 am

    Mr. Foster,

    As I mentioned, I do not take kindly to mere mouthings of Lemmings.

    You mouth “First Amendment,” and it is beyond clear that you have no actual understanding of what that means.

    As Curious points out, your “freedom” is actually nothing more than you marching up and over the cliff provided to you by those who would greatly benefit from NO restrictions that necessarily come with the protection of innovation.

    You have an opinion.

    It is not an informed opinion.

  9. MaxDrei March 3, 2021 4:18 pm

    I really have to protest at David Foster’s labelling of the EPO as “corrupt”. I don’t know how he comes to that idea. Just because the EPO recognises the patentability of a slew of computer-implemented inventions is not enough to establish corruption, even while it might well arouse the ire of Mr Foster. That one or other EPO’s shareholders (the 38 Member States of the European Patent Organisation) might have a whiff of corruption about them is also not enough so to legitimate such a foul insult to the integrity of the public servants working ever harder at the EPO to deliver a fair scope of protection to inventors but also a reasonable degree of legal certainty to the public (which has to live with the patents the EPO grants).

  10. B March 3, 2021 4:44 pm

    Insanity is trying the same thing over and over and expecting a different result.

    I’d say that the Supreme Court KNOWS it screwed the pooch, but maybe I’m investing too much into the idea that the SCOTUS is more competent than Judges Taranto, Hughes, and Reyna.

    The SCOTUS has seen every argument under the sun, and American Axle really adds nothing to the mix as far as new arguments.

    Maybe the immediate corporate interest will make the difference, or the fact that a computer isn’t involved. Maybe all that muscle in one amici.

  11. B March 3, 2021 4:52 pm

    @ Anon “But the biggest question is will the Court develop the humility to correct itself?”

    Unfortunately, there are no Vegas odds on this. I’d gamble big.

    Me, I say no. The Supreme Court has a long history of usurping the Patent Law without apology, and outright lying in their opinions (esp. Justice Stevens) to justify their unconstitutional behavior.

    Something about patents makes justices go insane, and odds are (based on past performance) that the Supreme Court will make things worse if they touch 101 yet again.

  12. B March 3, 2021 5:15 pm

    @ MaxDrei “. . . a foul insult to the integrity of the public servants working ever harder at the EPO to deliver a fair scope of protection to inventors but also a reasonable degree of legal certainty to the public (which has to live with the patents the EPO grants).”

    My personal opinion is that, outside the examination corp, the EPO is excellent. Perhaps the number of shareholders has made the upper EPO admin responsive and thoughtful. Here in the US (where there is one shareholder) there is absolutely no downside to the PTAB issuing an insanely stupid opinion, or the PTO Solicitor’s office spewing nonsense that would get me sanctioned. Further, top USPTO admins are politically appointed with no regard to their integrity or competence. Sometimes we get winners like Iancu; sometimes we get slugs like Lee.

  13. David Foster March 4, 2021 3:26 am

    @MaxDrei

    But corruption, I meant:

    1. The EPO finance itself over the patent it grants. This is a corrupt incentive to grant as many patents as possible.

    2. The EPO has a “performance” notation for examiners, to push them to grant as many patents as possible.

  14. Paul Cole March 4, 2021 3:28 am

    I have seen Michelle Lee speak at AIPLA on a number of occasions at AIPLA meetings. She is a dignified, well-educated and in my opinion well-meaning person, NOT a slug.

  15. B March 4, 2021 5:18 am

    @ Paul Cole “She is a dignified, well-educated and in my opinion well-meaning person, NOT a slug.”

    Respectfully, we will have to agree to disagree. Whatever her speaking abilities and education, Lee’s stewardship of the USPTO was definitely slug-like and heinously tilted to big business. Call me provincial, but imho innovation and patent protection should be made available to everyone, and the USPTO should not be managed so as to profit big business at the expense of smaller businesses and individual inventors.

    Admittedly, as much as Lee was disliked by the average patent attorney, I’m sure she’s more than adequately loved by Google, Amazon, and a few other fortune 50 companies of note.

    https://www.ipwatchdog.com/2017/06/08/industry-reaction-resignation-uspto-director-michelle-lee/id=84195/

  16. Anon March 4, 2021 9:15 am

    B,

    You nailed it.

    I would add that Lee as director had more undocumented private meetings with Big Tech than any other director. Ever.

    As to any possible link or indication of Biden direction, all opinions should be informed by the fact that Biden was the VP under Obama and — parallel to Lee — Obama set the record for most declined requests under our Freedom of Information Act.

    And that, after running twice with a platform plank of “transparency.”

    Let’s put some “think” into this folks.

  17. anonymous March 4, 2021 11:21 am

    The amicus brief is excellent. But if fixing the 101 mess represents a national security risk, then how can Congress do nothing to fix it? A national security risk must be addressed immediately, and Congress knows it has the constitutional authority and duty to act.

    Enough stalling. Act now, Congress. Do your job. You need not beg SCOTUS to do what needs to be done, and national security demands that you do it NOW.

    And if Big Tech stands in the way of acting to preserve national security, then who, exactly, is the threat to national security? It is no longer the law itself that is the risk.

  18. B March 4, 2021 3:31 pm

    @ anonymous “The amicus brief is excellent.”

    And I agree 200%. Nothing with Judge Michel’s name on it would be anything less than excellent. Further, Tillis has always been motivated to address the Alice/Mayo atrocity. However, there’s nothing new in the amicus brief I haven’t seen before several times.

    “But if fixing the 101 mess represents a national security risk, then how can Congress do nothing to fix it?”

    Two words: Senator Coons.

    @ Anon “As to any possible link or indication of Biden direction,. . . . And that, after running twice with a platform plank of ‘transparency.’”

    It’s far less Obama / Biden (and less about Democrat / Republican) than it is about establishment / populist. Then again, it would be naïve to believe that the billion+ dollars invested in the Biden campaign (directly and indirectly) by our tech overlords and Wallstreet would not have a substantial effect on patent policy.

  19. Anon March 4, 2021 4:21 pm

    B,

    To purposefully co-opt the phrase, the tech overload issue and the Obama/Biden angle are two sides of the same coin.

  20. B March 4, 2021 4:32 pm

    @ Anon “To purposefully co-opt the phrase, the tech overload issue and the Obama/Biden angle are two sides of the same coin.”

    Oh, I don’t disagree. I merely state that the disease of entrenched establishment politicians exceeds any two particular politicians

  21. 101 victim March 7, 2021 12:31 pm

    This article is timely. Alice 101 is “killing” the American innovation spirit and incentive. 1) set an age limit for court judges. 2) Make US PTO and PTAB rulings final, not subject to re-litigation in district courts.
    Examples:
    Uniloc Patent Claims Vindicated Under Alice at Federal Circuit
    https://www.ipwatchdog.com/2020/05/01/uniloc-patent-claims-vindicated-alice-federal-circuit/id=121253/

    MYMAIL, LTD. v. OOVOO, LLC – Justice Reyna, U. S. Court of Appeals, Federal Circuit. Decided: August 16, 2019.
    https://www.leagle.com/decision/infco20190816152

    Voip-Pal.Com, Inc. v. Apple Inc. – LUCY H. KOH, U. S. District Judge, Case No. 18-CV-06216-LHK Case No. 18-CV-07020-LHK
    https://casetext.com/case/voip-palcom-inc-v-apple-inc-1

    Fed Circuit rejects Apple’s Voip-Pal patent appeals
    https://www.worldipreview.com/news/fed-circuit-rejects-apple-s-voip-pal-patent-appeals-20224

    Appeals court ruling is big trouble for Apple and Judge Lucy Koh
    By Joe Wilcox
    https://betanews.com/2012/10/11/appeals-court-ruling-is-big-trouble-for-apple-and-judge-lucy-koh/

    Senate Judiciary Committee Acts on Judge Lucy Koh’s 9th Cir. Nomination
    https://blogs.findlaw.com/ninth_circuit/2016/09/senate-judiciary-committee-acts-on-judge-lucy-kohs-9th-cir-nomination.html

    Ericsson v. TCL Lays Bare the Federal Circuit’s Fundamental Hostility to Patents
    “The Federal Circuit refuses to define the term “abstract idea,” so there is no way to know how Chief Judge Prost and Judge Chen are defining the term, or even if their definition of the term is the same when compared to each other, let alone to the rest of the Federal Circuit.”
    https://www.ipwatchdog.com/2020/05/12/ericsson-v-tcl-lays-bare-federal-circuits-fundamental-hostility-patents/id=121554/

    A non-practicing entity went to trial in the patent-unfriendly Northern District of California—and came away with millions.
    By Scott Graham | February 26, 2019
    https://www.law.com/2019/02/26/skilled-in-the-art-another-runaway-verdict-from-the-patent-hugging-northern-district-of-california/?slreturn=20210207123911

  22. Night Writer March 8, 2021 8:53 am

    @10 B “Insanity is trying the same thing over and over and expecting a different result. I’d say that the Supreme Court KNOWS it screwed the pooch, but maybe I’m investing too much into the idea that the SCOTUS is more competent than Judges Taranto, Hughes, and Reyna.”

    Top comment.

  23. Anon March 8, 2021 1:50 pm

    Night Writer,

    The number of cases of denied cert clearly shows that the Supreme Court does not know that it screwed the pooch.

    Once (if ever) that thought IS obtained, then the path that I have presented (the Kavanaugh Scissors) can be used to cut the Gordian Knot.

  24. B March 8, 2021 5:22 pm

    @ Anon “The number of cases of denied cert clearly shows that the Supreme Court does not know that it screwed the pooch.”

    Unless the SOTUS has not read a single cert. petition on 101 in the last decade, I’m sure they know

  25. Anon March 8, 2021 7:21 pm

    B,

    I disagree.

    They THINK that they know how things SHOULD be, and have forgotten that the Constitution designates a different branch to make the value judgements and policy decisions.

    They do not CARE that they are not following the actual words of Congress, and thus do not comprehend that it is they themselves that have broken the scoreboard.

    To admit that they do know is to admit to understanding that the carnage being wrought is due to them.

    They refuse to see this.

    That is why they don’t take any of the 50 plus certs. They don’t care. They don’t see. They have scrivened the law as they would want it (rather than how it is), and they have taken the first word of their body as somehow being above the actual Constitution, instead of recognizing not only that all three bodies are below the level of the Constitution, with checks and balances, but that THAT very document gave the power they WANT to have to another branch. They also do not seem to recognize that the intent of the Constitution was to have an entire government of limited powers. Instead, they have anointed themselves as above any — and all — law, including above the Constitution, regardless of the mere scrivining in that document.

    They are beyond elitists and really do believe that there is no limit to the power that they can wield.

    It would be immensely enjoyable if the correct branch of the Legislature exercised their Constitutionally granted power of jurisdiction stripping and removed patent matters (as a matter of non-original jurisdiction) from the Supreme Court.

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