“The refusal to acknowledge the army of giant leporidae riding the heard of stampeding elephants into court room 203 on Madison Place is a tacit admission that the Federal Circuit knows the Alice-Mayo test is capricious….”
Editor’s Note: this article has been updated to reflect that the author is counsel for Killian.
In 1950, Jimmy Stewart starred in the iconic movie “Harvey,” which is the story of Elwood P. Dowd, an affable but eccentric man who pals around with an invisible 6’4” rabbit with an affection for martinis and that has the magical power to stop time. In the end of the movie, the viewer is left to believe that some level of insanity in people is good, and that there is some possibility that Harvey actually exists in some form.
Fast forward to May 5, 2022. While many Americans were celebrating Cinco de Mayo, the Federal Circuit was asked to address an entity far more fictitious and unbelievable than Harvey the Rabbit, known as “inventive concept,” during oral hearing in In re Killian (Appeal No. 21-2113).
In re Killian involves claims that, using computer-based technologies, enable the identification of overlooked adults who are eligible for Social Security Disability Insurance (SSDI) benefits. Such claims embody a unique approach that the United States Patent and Trademark Office (USPTO) has admitted pass all statutory requirements of the Patent Law, but somehow fail to pass Alice-Mayo’s two-part test, despite the fact that Applicant/Appellant Jeffrey Killian had filed 55 separate documents in support of the idea that no one ever solved the problem his claims solve. Unfortunately, instead of addressing this mountain of evidence at the USPTO, the Patent Trial and Appeal Board (PTAB) declared the claims were “mental steps” exactly to avoid addressing Killian’s evidence while ironically suggesting that, upon return to prosecution, Killian might want to submit more evidence. This is not a joke or an exaggeration.
Returning to the adventures of Harvey the Rabbit at the Federal Circuit, for those fans of fantasy literature but who are unfamiliar with the last decade of legal fiction, “inventive concept” is a thing that the federal courts and the USPTO pretend is real and insist has the magical power to kill perfectly valid patents and patent applications by a means no human has yet to fathom.
The ‘Leporidae’ in the Room
During oral argument at the Federal Circuit, instead of the usual melodrama that accompanies the final death throes of a patent application in the name of “inventive concept,” the USPTO Solicitor’s Office curiously avoided the issue. No amount of mockery by Killian’s counsel could force the Solicitor’s Office to even whisper the words “inventive concept.” Oddly(?) enough, the three-judge panel of Judges Taranto, Chen and Clevenger chose not to ask a single question about “inventive concept” of the Solicitor’s Office or ask specifics about Supreme Court or Federal Circuit precedent on the issue. There was something J.K. Rowling-ish about it all; the legal fiction that must not be named.
The absence of any discussion of “inventive concept” by the Federal Circuit and the USPTO is a tell. That is, the refusal to acknowledge the army of giant leporidae riding the heard of stampeding elephants into court room 203 on Madison Place is a tacit admission that the Federal Circuit knows the Alice-Mayo test is capricious, and that the Federal Circuit knows that the Patent Office knows the Alice-Mayo test is capricious.
To Judge Taranto’s great credit, he did not deny the capricious nature of Alice-Mayo but threw up his hands and lamented about how the courts are forced to live in a world of a “two-part framework where we do have to look for [this] inventive concept” created by the Supreme Court. Listen HERE at time = 7.02.
“Well, Your Honor, you’re looking for Harvey the Rabbit. Something that doesn’t exist,” explained Killian’s counsel, who continued: “Make the Supreme Court clarify its own two-part test rather than continue to let the USPTO violate the due process rights guaranteed to patent applicants under the Constitution.”
Further to Judge Taranto’s credit, he asked “whether the argument you’re making now [about inventive concept] is really an argument you should be making to the Supreme Court.” Listen HERE at time = 6.30. Counsel had raised this very issue before the Supreme Court in a petition for certiorari in Villena v. Iancu (18-1223 at p. 28). However, in all fairness, it is unlikely that the Federal Circuit would be aware of this. On the other hand, the Federal Circuit knows that the Supreme Court has avoided taking certiorari on Alice-Mayo like roaches avoid light.
Appellant Killian’s request to the Federal Circuit was clear: Acknowledge that Alice-Mayo is an unworkable and capricious test that the USPTO uses to routinely violate due process of law, and without doubt the Supreme Court will take certiorari. Kill Alice-Mayo here and now, and let the Supreme Court resurrect Alice-Mayo if it dares. Further acknowledge that, in the absence of any constitutional violation in the express language of 35 U.S.C. § 101, the courts lack the authority to rewrite the Patent Law using the test set forth in Washington v. Glucksberg, 521 U.S. 702 (1997) (Listen HERE at time = 8.15), and let the Supreme Court respond.
There are few guarantees at the Federal Circuit, but the fact that the CAFC panel did not hit the big red Rule 36 button on the way out of the door is encouraging.
A Clear Lesson
In re Killian is hardly a morality play, but the full-frontal exposure of “inventive concept” stripped of its fig leaf in open court provides a clear lesson for the courts. Specifically, it is important for jurists to: (1) listen carefully to whatever Justice Stevens ever said about patent law and then (2) do the exact opposite. It was Justice Stevens, after all, who coined the term “inventive concept” in his 1978 Flook decision while insisting that, despite the complete lack of language in 35 U.S.C. § 101, inventiveness wasn’t limited to sections 102 and 103 of the Patent Law. Unfortunately, rather than dying on the trash heap of bad legal theories, the cancer known as “inventive concept” metastasized into the law of the land.
Insanity may have worked for the fictional Elwood P. Dowd, but insane legal theories are bad for courts, and worse for the people.