Eagle Forum Event Participants Delve into Patent Eligibility ‘Goulash’

By James Edwards
October 10, 2021

Andrei Iancu

The extreme uncertainty that U.S. patent eligibility “validity goulash” jurisprudence has caused is wreaking havoc on inventors, especially those working on emerging technologies. It is also hindering patent owners’ ability to enforce their property rights, investment and licensing deal-making, and giving China advantages in global competitiveness. And it’s likely to get worse before it gets better.

Those were takeaways from the Eagle Forum Education & Legal Defense Fund’s (EFELDF) “The Sorry State of Patentability: ‘Anything Under the Sun Made by Man’ No More” program in Washington, D.C. The September 29 event’s panelists considered patent eligibility from the Chakrabarty decision, which ruled a manmade living microorganism was patent-eligible, to dubious, damaging, judicially-created exceptions in such cases as Bilski, Mayo, Alice, Myriad and American Axle. The participants made painfully clear that the Alice-Mayo Framework doesn’t work and course correction is long overdue.

Former U.S. Patent & Trademark Office (USPTO) director Andrei Iancu made the case, in his dinner speech, of the harm Section 101’s confusion inflicts across the board in America’s patent system. He highlighted the damage to America’s competitiveness and security. He hammered how courts continue post facto to invalidate U.S. patents on critical innovations that China and other countries deem patent-eligible subject matter.

Iancu told a story in his forthright remarks about inventor Philo Farnsworth. He said young Farnsworth came up with a vacuum tube and, as a teenager, broadcast electronic photographs. His inventions were critical to the development and proliferation of television. Years later, Farnsworth was gratified watching the Apollo 11 moon landing live on TV.

David Kappos

Eagle Forum ELDF president Ed Martin presented the “Phyllis Schlafly Friend of American Invention Award” to four leaders of efforts to restore Section 101’s threshold character and to improve certainty regarding patent eligibility. Awardees were Senator Chris Coons, Senator Thom Tillis, former USPTO director David Kappos, and former Federal Circuit Chief Judge Paul Michel. Watts received the award on behalf of Senator Tillis, and Matthew Dowd, founding partner of Dowd Scheffel, was presented the award on behalf of Judge Michel.

Senators Coons and Tillis held extensive hearings on Section 101 and continue to facilitate stakeholder negotiations on a legislative fix. They included an independent inventor as a witness. Kappos and Judge Michel tirelessly foster stakeholder dialogue and educate the public on the dire state of patent eligibility law. Senator Tillis, Judge Michel and Kappos jointly filed an amicus brief with the Supreme Court on behalf of American Axle’s certiorari petition. Senators Coons, Tillis, Tom Cotton and Mazie Hirono urged the USPTO to seek public input on the state of patent eligibility jurisprudence, which led to a request for information.

From left: Andy Baluch, Laurie Self and Manus Cooney.

Panelists included Smith Baluch partner and former USPTO advisor Andy Baluch, InterDigital vice president of licensing Kimberly Chotkowski, American Continental Group partner and former Senate Judiciary staff director Manus Cooney, Cravath, Swaine & Moore partner and former USPTO director David Kappos, Biotechnology Innovation Organization federal affairs senior director David Lachmann, Dinsmore & Shohl partner Brian O’Shaughnessy, Innovation Alliance executive director Brian Pomper, Qualcomm senior vice president Laurie Self and Senate IP Subcommittee minority chief counsel Brad Watts. EFELDF patent policy advisor James Edwards conducted the panel session, and Mr. Martin emceed both panel and dinner programs.

The event was sponsored by Acacia Research Group, the Biotechnology Innovation Organization, Dinsmore & Shohl, the Innovation Alliance and InterDigital.

The theme for the program conjured the Supreme Court reference in Chakrabarty to “anything under the sun that is made by man” as being eligible for a patent under Section 101. The panel discussion dwelt mostly on the patent “validity goulash” — a phrase coined by Federal Circuit Judge Kimberly Moore in her American Axle & Manufacturing v. Neapco Holdings dissent — that courts and the Patent Trial and Appeal Board continue to cook in patent eligibility jurisprudence.

To learn more about EFELDF, visit the website here .

 

The Author

James Edwards

James Edwards consults on intellectual property, health care innovation, and regulatory and policy issues. Edwards advises companies, trade associations, and conservative organizations on patent policy and is Co-Director of the Inventor's Project. He participates in the Medical Device Manufacturers Association's Patent Working Group. Edwards mentors start-ups and early-stage companies, largely in the med tech space, and is involved in several IP-centric projects.

Edwards served as Legislative Director to Rep. Ed Bryant, R-Tenn., then a member of the U.S. House Judiciary Committee, and handled IP legislative matters. Edwards also worked on the staffs of Rep. John Duncan, R-Tenn., the U.S. Senate Judiciary Committee, and Sen. Strom Thurmond, R-S.C. In addition, he was an association executive at the Healthcare Leadership Council. Edwards earned a Ph.D. at the University of Tennessee, and bachelor's and master's degrees at the University of Georgia.

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 14 Comments comments. Join the discussion.

  1. concerned October 10, 2021 1:14 pm

    Every person, to include inventors, are entitled to due process under law.

    It is not due process when other cases are used to judge an application, whereas the subject matter is completely different and so are the claims, facts and evidence. In addition, the applicant was not even a party to said cases.

    It is not due process when substantial evidence is entered into the official record and 55 completely different documents are not even acknowledged or addressed by the USPTO, yet the rejection contains no evidence, no 102, no 103 or 112 rejections.

    It is not due process when exceptions are engrafted onto the statute by judges and those exceptions have never been defined by any judge, any court, any case or any MPEP section.

    It is not due process when the applicant is told he has misunderstood the holding of a case, but is not told why or how the misunderstanding is such.

    Where else is there such a lack of due process in law? Even a person charged with a horrible crime is only judged on his facts and evidence, not his other prior bad acts or evidence from other cases.

    My subject matter has never been a part of any Alice/Mayo doctrine or rulings. I would appreciate due process on my application.

  2. Greg DeLassus October 10, 2021 3:22 pm

    The extreme uncertainty that U.S. patent eligibility “validity goulash” jurisprudence has caused is… giving China advantages in global competitiveness.

    This makes no sense. How does this uncertainty advantage China? Chinese inventors face all the same uncertainty as American inventors when they seek U.S. patent protection. American inventors experience the same lack of confusion when seeking PRC patents as do Chinese inventors. Nothing about subject matter eligibility law in either the U.S. or China benefits one nation over the other.

    I agree that the “goulash” is undesirable for myriad reasons. Putative lack of competitiveness vs. China, however, is nonsense. The patent laws do not discriminate between U.S. and non-U.S. inventors, and therefore it is impossible for the patent laws to benefit one over the other

  3. Pro Say October 10, 2021 7:41 pm

    fyi, the referenced dinner speech has apparently been removed by the uploader.

    Would someone please re-post and re-link?

    Thanks.

  4. Anon October 11, 2021 7:43 am

    Bottom line: there are those that benefit from the current morass.

    Until we (the Royal We) are direct and upfront about this — and legislatively decide that certain “interests” simply do not have the best interests of a strong US innovation system as their interests, we will be stuck in a “gridlock” of competing views (a condition that the established Big Tech benefit from).

    We (again, the Royal We), need to do the following:
    – De-emphasize and limit the power of juristic persons.
    – Eliminate the capture of Congress by those same juristic persons.
    – Directly and forcibly abrogate patent law written by the judicial branch (notably the driver of that branch being the Supreme Court).
    – Remove (through the power of Congress to employ jurisdiction stripping) the non-original jurisdiction of patent law from that same Supreme Court.
    – reset and restock the CAFC with innovation minded judges who have not been whipped by the Supreme Court.

    Measures less than these are doomed to failure.

  5. Eileen McDermott October 11, 2021 9:18 am

    Should work now, Pro Say, thanks.

  6. Model 101 October 11, 2021 10:23 am

    Thank you authorities for continuing to fight the Supreme Court 101 mistake.

    They are megalomaniacs who refuse to admit they made a mistake..

  7. Model 101 October 11, 2021 10:26 am

    Concerned…so true!

  8. Pro Say October 11, 2021 11:10 am

    Greg: “How does this uncertainty advantage China?”

    Easy. It does so because the most important, most valuable, and largest market and economy in the world is that of the U.S.

    The inability to protect so many (and — thanks to the off-the-rails CAFC — ever-expanding) areas of innovation enables the Communist Chinese (and all of our other many IP-voracious competitors around the world) to steal and use with impunity American innovations . . . within this most important, most valuable, and largest market and economy.

    Just as our eligibility-crippled U.S. patent system has so greatly benefited and advantaged Big Tech, so too has it done so for one of our (and indeed the world’s) biggest threats, and yes, greatest enemies (see, e.g., the widespread hacking of government and private company databases, their threats to Taiwan, and what they’re doing and have done to the Uyghurs and other minorities) — Communist China.

    These IP interlopers silently and behind closed doors rejoice over what SCOTUS and the CAFC have done to American innovation — rendering our current — and critically-important future — IP crown jewels free for the taking.

    All while Congress sits idly by . . . doing nothing.

  9. Greg DeLassus October 11, 2021 11:52 am

    The inability to protect so many… areas of innovation enables the Communist Chinese… to steal and use with impunity American innovations…

    Can you cite a concrete example of this putative phenomenon that has been verified to have actually happened? Usually, around these parts I read a lot of allegations that Google and Apple and Facebook are infringing the IP of American inventors. I confess that yours is the first instance I have seen alleging that it is actually Chinese actors who are infringing. Which Chinese infringers, and which American patentees had you in mind when you wrote the above?

  10. Greg DeLassus October 11, 2021 12:07 pm

    Dir. Iancu compares our current (alleged) deficits in quantum computing relative to the Chinese to America’s “Sputnik moment” back in the 1960s, when we saw tangible evidence that the U.S.S.R. had overtaken us in the space race, thus spurring us to redouble our efforts and retake the lead. I wonder if this analogy really proves what he means it to prove. Did anyone in the 1960s conclude that the Soviet’s success in getting Yuri Gagarin into orbit proved that the Soviet patent system was better than ours? Did we solve our space tech problems and retake the lead in the space race by making adjustments to our patent system?

    There is more going on in a nation’s technology infrastructure than just the patent system. The tax laws and the immigration laws both have much more immediate effect on the pace of technology than the patent laws. If we are really concerned about competition with China (and I definitely am), then we should be plowing much more effort into reforming our immigration laws than into our patent laws.

    I happen to favor reforms to restore §101 law to its pre-Mayo status quo ante. We are kidding ourselves, however, if we think that such adjustments will make more than a trivial difference to the pace of U.S. innovation in quantum computing. For that, we need serious budget allocations to R&D, serious tax reforms to fund those budget allocations, and serious immigration law reforms to make it easier for us to poach China’s best talent away from them.

  11. Josh Malone October 11, 2021 2:41 pm

    Greg, we need to be “securing to inventors the exclusive right to their discoveries”. That will create a culture of innovation and global advantage for the USA. It is necessary. Add equal rights under the law, and it will be sufficient.

  12. Greg DeLassus October 11, 2021 3:25 pm

    [S]ecuring to inventors the exclusive right to their discoveries… will create a culture of innovation and global advantage for the USA.

    How “for the USA”? An Indian inventor working in South Africa can have just as secure an exclusive right under our laws as an American inventor working in New Jersey. No matter how secure we make this exclusive right, the effects of such a policy will not be experienced exclusively (or even principally) in our borders. I agree that it is a good thing to secure exclusive rights to inventors, but how is this supposed to improve our relative competitiveness compared to China?

    Patent laws just do not work like that. I feel silly even having to explain as much, because surely everyone around here already knows this. We have all assisted our U.S. clients in obtaining Chinese patents and we have all assisted our Chinese clients in obtaining U.S. patents. We surely all realize—from personal experience—that the incentive effects of the U.S. patent system do not stop at the U.S. border. Therefore, the strengths and weaknesses of the U.S. patent system can never uniquely advantage or disadvantage U.S. innovators relative to foreign innovators.

  13. Josh Malone October 11, 2021 8:21 pm

    You are silly, at least we agree on that.

    1. I propose no restriction on the inventor’s residence or nationality. Neither did Madison.

    2. A jurisdiction of sufficient size economy – probably 30 million people or so in today’s world – can benefit by securing exclusive rights within their borders. It attracts talent, capital, accelerates innovation, and creates industry.

    I feel silly having to explain this.

  14. Anon October 12, 2021 9:07 am

    Josh,

    You have to remember that Greg’s bias is Big Pharma which by its nature disregards ANY sovereign-centric effect.

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