Concurring opinion on ruling underscores disingenuous anti-patent views.

It has been obvious for some time, but recent events indicate it is time for someone to say it openly. Judge Haldane Robert Mayer, senior United States circuit judge of the U.S. Court of Appeals for the Federal Circuit, should step down and move quietly into retirement.

For years, Judge Mayer has had his own, shall we say, “unique” view of patent law. He has made a habit of writing his rather eccentric anti-patent views into dissents and concurring opinions, later citing himself in those dissents and concurring opinions as if they were somehow authoritative. If an attorney were to do something like that, he or she would be sanctioned, as ultimately happened when the federal circuit rebuked attorney James Hicks for mischaracterizing prior holdings and rulings in a brief submitted to the court.

Recently, however, Judge Mayer took another step toward the absurd in a concurring opinion filed in Intellectual Ventures I LLC v. Symantec Corp. (Editor’s Note: In September, the federal circuit affirmed a lower court’s opinion that two patents held by IV were invalid, as directed to invalid subject matter. The panel also found a third patent to be invalid as abstract, reversing the lower court’s ruling and an $8 million damage award to IV.)

In his concurring opinion, Mayer wrote: “Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents. The claims at issue in Alice were directed to a computer-implemented system for mitigating settlement risk. … Although the petitioners argued that their claims were patent eligible because they were tied to a computer and a computer is a tangible object, the Supreme Court unanimously and emphatically rejected this argument. … The Court explained that the ‘mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.’ …

“Software is a form of language—in essence, a set of instructions. See Microsoft Corp. v. AT&T Corp., (explaining that software is ‘the set of instructions, known as code, that directs a computer to perform specified functions or operations’ (citations and internal quotation marks omitted); see also Title 17 of United States Code, Section 101 (defining a ‘‘computer program,’ for purposes of the Copyright Act, as ‘a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result’). It is inherently abstract because it is merely ‘an idea without physical embodiment.’ … Given that an ‘idea’ is not patentable (Editor’s Note: Gottschalk v. Benson), and a generic computer is ‘beside the point’ in the eligibility analysis.”

Court Didn’t Kill Software Patents

These two paragraphs may be the most disingenuous ever written by a judge of the federal circuit.

First, say what you will about the Supreme Court’s 2014 decision in Alice v. CLS Bank, but the court did not kill software patents. Many patent examiners, administrative judges on the Patent Trial and Appeal Board, and Judge Mayer himself have done just about everything they can to misinterpret Alice, employ circular reasoning, and ignore truths in order to kill software patents.

Nowhere in Alice, Mayo v. Prometheus or the so-called Alice/ Mayo framework does it say that software patent claims, or claims to computer-implemented processes, cannot be patented under any circumstances. The Supreme Court has always gone to great lengths to not adopt such a bright-line rule.

A ruling by any court or decision maker saying software is per se patent ineligible would be in direct opposition to the Supreme Court’s ruling in Bilski v. Kappos. Although the Supreme Court did not give us any usable test in Bilski, the court clearly said at least some business methods are patent eligible and overruled any bright-line patent eligibility test. If Judge Mayer doesn’t know he is wrong, there is a much bigger problem that needs to be addressed.

But wait, there is more!

Ignoring Full Context

Judge Mayer also wrote that software is inherently abstract because it is just an idea without physical embodiment. For support, he cited the Supreme Court in Microsoft v. AT&T. Once again, however, we see that Judge Mayer is not afraid to grossly exaggerate, if not expressly misrepresent, what the Supreme Court said.

So what did the Supreme Court really say? The court, per Justice Ruth Bader Ginsburg, wrote:

“Until it is expressed as a computer-readable ‘copy,’ e.g., on a CD-ROM, Windows software—indeed any software detached from an activating medium—remains uncombinable. It cannot be inserted into a CD-ROM drive or downloaded from the Internet; it cannot be installed or executed on a computer. Abstract software code is an idea without physical embodiment, and as such, it does not match Section 271(f)’s categorization: ‘components’ amenable to ‘combination.’”

So that is the larger context. Judge Mayer left out that the Supreme Court was talking about software code. This is critically important because software code is not patentable now and has never been patentable. Software code is copyrightable.

Yet Judge Mayer twists what the Supreme Court says about software code not yet expressed as computer readable into being somehow relevant when talking about patent eligibility of a computer-implemented invention.

But wait, there is even more!

Stretching a Meaning

Judge Mayer said in his concurring opinion that the Supreme Court, in Alice, said the presence of a generic computer is “beside the point.” But again, if you look at the full statement made by the Supreme Court, you realize Judge Mayer is exaggerating to the point of misrepresentation.

In Alice, Supreme Court Justice Clarence Thomas wrote: “The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system … or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the (Section) 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility ‘depend simply on the draftsman’s art.’”

Again, when you read the fuller quote and its context it does not mean what Judge Mayer attempts to stretch it to mean. Judge Mayer used the quote—“beside the point”—to support his preferred brightline rule that “all software implemented on a standard computer should be deemed categorically outside the bounds of Section 101.” But that is not what the Supreme Court said, or even suggested. The Supreme Court merely said that the presence of a computer is not enough.

The Supreme Court did not say that software that runs on a computer is, per se, patent ineligible. The court has never said that software or computer-implemented innovations are patent ineligible; to the contrary, it has specifically recognized that these inventions can be patent eligible. This—together with everything we know about how the Supreme Court has complete disdain for bright-line rules mandated by the federal circuit—means we can say with great certainty that the Supreme Court would hold a very dim view of Mayer’s blanket patent ineligibility approach.

Conclusion

The industry and the public deserve better than Judge Mayer. His anti-patent views so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into law. If he chooses not to step down, it would seem appropriate for the court to do what it would with an attorney who grossly exaggerates and mischaracterizes cases and rulings to the point of misrepresentation.