Court must return to first principles to determine subject-matter eligibility

Somewhere along the way, the federal circuit has forgotten what we all learned as first-year law students.


The following remarks, edited for clarity and brevity, were delivered by Gene Quinn at the Utah IP Summit on February 22, 2019. 

When the Supreme Court believes that the United States Court of Appeals for the Federal Circuit has made an error, they will reverse and remand with broad guidance but often are not able to determine what the proper test should be.

The Supreme Court wants, and expects, the federal circuit to determine the proper test because, after all, it is the Federal Circuit that is charged with being America’s chief patent court. But the federal circuit has become myopic.

It is getting tiring to read in case after case—where real innovation is involved—the Federal Circuit saying that they are constrained, even forced by either the (landmark) Alice or Mayo decisions, to find the very real innovation to be declared patent ineligible. This madness has to stop!

A Bilski moment

“I would urge the court to reassess Supreme Court precedent and see if it is really that restraining,” United States Patent and Trademark Office Director Andrei Iancu said at “Inventing America” on February 12 in Washington, D.C. He is, of course, correct.

It is time for the CAFC (the federal circuit) to have what I will refer to as a “Bilski moment.” You will recall in Bilski v. Kappos, the Supreme Court explained that at least some business method patents must be patentable for a variety of reasons, including the fact that the statute actually refers to business method patents.

It is time for the federal circuit to return to first principles. At least some discoveries, for example, must be patentable.

We learn in our first semester of law school the importance of distinguishing cases based on the facts and applying the law and statutes to those facts. Somewhere along the way, the federal circuit has forgotten what we all learned as first-year law students.

Study the statute

Let’s actually look at the statute. The statute, which is all of one sentence long, specifically lists discoveries as patent eligible.

So why are discoveries being declared patent ineligible? We are repeatedly told by the federal circuit that they are mandated by Supreme Court precedent to find patent claims invalid. But why? Is that true?

Simply put, NO. To the extent decisions by the federal circuit find discoveries patent ineligible, they directly contradict both the statute and the Constitution. The federal circuit is wrong, period.

The statute says: “Whoever invents or discovers … may obtain a patent…” Clearly, Congress wants discoveries to be patented.

And in our system of governance, Congress has supremacy over the Supreme Court with respect to setting the law unless the law is unconstitutional. 35 U.S.C. 101 (Title 35, U.S. Patent Code Section 101, which determines patent eligibility) has never been declared unconstitutional, so discoveries must be patent eligible, period.

Creating chaos

Regardless, it is time for the judges of the federal circuit to stand up and fulfill their constitutional oaths. They must interpret Supreme Court precedent—all of it—consistent with the statute and the Constitution.
The way judges of the federal circuit used to do this was to understand that the Supreme Court would address patent matters only occasionally, and they would speak in broad language about very specific facts. However, the federal circuit has in recent years increasingly read deep into Supreme Court language, well past what was actually said, in search of some meaning that simply is not present in the language itself.
The federal circuit has been reversed so often by the Supreme Court, it seems that at least some of the judges on the court have simply decided the takeaway message is that the Supreme Court does not like patents. When faced with a decision about whether to find a patent valid or invalid, they simply err on the side of finding the patent invalid.

Such a level of subjectivity leads to chaos and needs to change.