The Fantastical World of Justice Stephen Breyer

By Kevin E. Noonan --

In a recent book entitled Imbeciles: The Supreme Court, American Eugenics, and the Sterilization of Carrie Buck, author Adam Cohen examines the case of Buck v. Bell, where Justice Oliver Wendell Holmes wrote that "[t]hree generations of imbeciles are enough" to justify the forced sterilization of a woman the State of Virginia had labeled "feebleminded."  This term was used to identify immigrants, epileptics, and women of "loose morals," among others, deemed to be a blight on America's genetic heritage, and cast as a societal threat by the American eugenics movement.

The tragedy, first explored by Stephen Jay Gould in "Carrie Buck's Daughter," The Flamingo's Smile (1985), was that not only was Carrie not an imbecile but neither were her mother nor her daughter (who was less than one year old at the time).  Justice Holmes rendered his opinion based on this factual inaccuracy and, according to Mr. Cohen, his own prejudices about race and class as a Boston Brahmin of the turn of the 20th Century.  While the Justice had more than adequate help in coming to the wrong conclusion, ultimately Mr. Cohen shows that the combination of predilection and factual error informed one of the cruelest aphorisms in American jurisprudence (which remains good law today).

It is easy for this example to come to mind when reading the questions and assertions from current Associate Justice Stephen Breyer, author of the Court's unanimous decision in Mayo v. Prometheus, regarding his understanding and concerns with the patent system and its discontents.  A sampling of these quotations illustrate the point:

But there is another way to look at it.  And the other way to look at it ­­-- and that's what I would like your comment about -- ­is that there are these things, for better words, let's call them patent trolls, and that the Patent Office has been issuing billions of patents that shouldn't have been issued.  I overstate ­­ but only some.  And what happens is some person in business gets this piece of paper and ­­looks at it and says, oh, my God, I can't go ahead with my invention.

And so what we're trying to do with this process is to tell the Office, you've been doing too much, too fast.  Go back and let people who are hurt by this come in and get rid of those patents that shouldn't have been issued.  Now, we will give you, again, once the same chance we gave you before, and that is you can amend it once if you convince the judge you should have done it before.  But if, on the broadest possible interpretation, you know, reasonable interpretation, it shouldn't have been issued, we're canceling it.  And that is for the benefit of those people who were suffering from too many patents that shouldn't have been issued in the first place.  I don't know.

(Oral Argument, Cuozzo Speed Technologies v. Lee, April 25, 2016)

Today's patent world is not a steam ­engine world.  We have decided to patent tens of thousands of software products and similar things where hardly anyone knows what the patents really about.  A company that's a start­up, a small company, once it gets a letter, cannot afford to pay $10,000 to $100,000 for a letter from Counsel, and may be willing to run its chances.

You start saying, little company, you must pay $10,000 to $100,000 to get a letter, lest you get willful damages against you should your bet be wrong.

We have one more path leading us to national monopoly by Google and Yahoo or their equivalence, and the patent statute is not designed to create monopolies throughout the United States.  It's designed to help the small businessman, not to hurt him.  So leave those words for interpretation to the expert court, and in this area it may well be the Federal Circuit.

We have all kind of amicus briefs that say that's the truth.  And indeed, thousands and thousands and thousands of small businessmen are trying to break into businesses that they just can't do without software.  And when you have tens or hundreds of thousands of patents on software by other companies, that means we can't break in.

(Oral Argument, Halo Electronics v. Pulse Electronics and Stryker Corp. v. Zimmer, Inc., February 26, 2016)

Can you in fact ­­ now, this is ­­ -- look, there are 42 briefs in this case.  I actually read them and I found them very, very helpful up to the point where I have to make a decision, because they're serious.  I mean, you know ­­ now, the problem that I came away with is the one that you're beginning to discuss, that if you simply say, take an idea that's abstract and implement it on a computer, there are ­­ -- you're going to get it much faster, you're going to be able to do many, many things, and if that's good enough, there is a risk that you will take business in the United States or large segments and instead of having competition on price, service and better production methods, we'll have competition on who has the best patent lawyer.  You see where I'm going on that one?

And if you go the other way and say never, then what you do is you rule out real inventions with computers.

And so in those 42 briefs, there are a number of suggestions as to how to go between Scylla and Charybdis.  Now, I would like to know ­­ -- I don't know if you can step back from your representational model.  That's a problem.  But you're all we have now.  And ­­from my point of view, I need to know what in your opinion is the best way of sailing between these two serious harms.

(Oral Argument, Alice Corp. v. CLS Bank Int'l., March 31, 2014)

It's highly abstract language.  I gather you, like I, have read some of these claims.  They are very hard to understand and when you get to the bottom of it, the abstract nature of the language, plus the fact that it has something to do with computer input, plus the fact that, you know, you suspect very strongly it's baseless, but you really don't like to say something that isn't true and you can say, well, I could see how somebody might think there was something to this claim, just in that tone of voice, which you can't write down that tone of voice.

(Oral Argument, Octane Fitness LLC v. Icon Health and Fitness, Inc., February 26, 2014)

Well, how ­­ what do you do with the government's argument here, which I take it as being on page 17, they make an argument which, as I understood it, which is a big qualification, ­­ that ­­ some of these things are awfully complicated.

You might have a ­­ a claim or, really, it's a set of claims that cover 48 pages with all kinds of symbols and 42 different sort of division possibilities.

And ­­then the ­­so ­called infringer, or the person who falls outside the coverage, is looking at his product, and it's one of the most complex things you've ever seen.  And he has to think to himself, well, how ­am I supposed ­­ -- how does the claim cover this?  And ­­it's -- ­­ there are many, many, many possibilities.  I take it that's what they mean when they say it makes sense to put the burden of demonstrating how the claim limitations map onto the accused product because infringement may be found only when the product falls within the scope ­­of the asserted claim or claims in every respect.

Your client, who's the patentee, knows how.  Otherwise, he wouldn't be bringing this infringement suit or the inside ­the­ coverage suit or responding to someone who says it's outside the coverage.  But ­­the person who is the alleged infringer might not know it, and therefore, it makes sense to put everything in the same place; notice of infringement, burden of production, burden of proof.  And that way, it will be easier to focus on what's at stake.

(Oral Argument, Medtronic Inc. v. Boston Scientific Corp., November 5, 2013)

Now it is certainly the case that Justice Breyer is fond of outrageous hypotheticals to probe the parties' positions and there is nothing wrong with that.  (At least we should hope that his reference to billions of patents being improvidently granted by the USPTO was an exaggeration; after all, the Office has issued only about 9,000,000 patents in its 220 year history, and the Justice should know this.)  But behind the quoted statements is a clear concern about the possibly pernicious effects of patents, and it is fair to ask whether these concerns are grounded in reality.  While there certainly are those who agree with the Justice, there are also clear disconnects between these sentiments and how patents play out in the real world.

For example, it isn't generally the case that large companies use patents to intimidate or inhibit innovation by small companies.  They don't need to:  large companies have the wherewithal to ignore small companies and on some occasions simply expropriate whatever innovation those smaller companies have disclosed in their patents.  No, the rise in patent litigation has been by "trolls," as that term has been applied to small companies, universities, and patent aggregators to whom these entities have turned when they have lost their technologies to larger companies, in an attempt to recoup through litigation what could not be obtained by the traditional route, licensing.  There is not (although some large companies will portray things this way) a drag on innovation; indeed, the term "patent troll" was invented by a Cisco employee on an anonymous blog several years ago.  This situation is illustrated by the long history of patent litigation involving Data Treasury, a small Long Island firm that invented methods for electronic check cashing.  The banking industry not only didn't license Data Treasury's patents but, after adopting these method with a license attempted to absolve themselves of infringement liability in the court of public opinion, labeling the company as a patent troll, and getting their elected representatives to do the same.  When that didn't work, a provision that would have exempted the banks from their liability was introduced at the eleventh hour as part of S.1145, a predecessor to the America Invents Act debated by the Senate in 2008.  This provision was scuttled only when the Bush Administration realized that, as an Act of Congress any such exemption would cost the American people upwards of $1 billion as a taking (see "The (Un)intended Consequence of the Law").

In actuality, the need for and reaction to "trolls" is related to the short obsolescence horizon for most non-pharma innovation, and also its interrelatedness; an advantageous, patented feature of a product can become widespread, and there does not seem to be a universal standard setting body to referee these situations (unlike patents for prior like inventions, such as connectivity protocols for modems a generation ago).  But, particularly in view of the history of Data Treasury and other small firms trying to protect their technology, the concerns voiced by Justice Breyer seem at best misplaced and yet clearly inform his thinking.

Similarly, the idea that patent claims are a complicated tangle is inconsistent with the patent statute and how it is applied by the PTO and (at least the inferior) courts.  Certainly the subject matter can be complex to a layman, no matter what the technology.  But there is no mystery (and, insofar as the Court's Nautilus decision remedies any laxity in how 35 U.S.C. §112(b) is applied, no uncertainty) about what a claim means.  Satisfying § 112 has, over the past twenty years, become a major question in patent litigation and a resource for challenging patents, and a patentee who does not "particularly point out and distinctly claim" what is her invention is at a serious disadvantage in enforcing her claims.  It can even be said that in some instances the strictures of § 112 have ensured a heightened level of clarity and disclosure:  in the genomic era at the turn of this century it was certainly possible to publish a scientific paper identifying a newly discovered gene (found in a database of human gene sequences elucidated inter alia by the Human Genome Project) distinguished merely by homology to other genes and speculation about what such a gene might do.  Not so at the Patent Office:  the Office required disclosure of the function of the protein product of such a gene, relying on the Court's decision in Brenner v. Manson that "a patent is not a hunting license."  This points to the different functions of a patent and a scientific paper, but also illustrates that the patent system requires a practically effective level of disclosure.  This is consistent with the understanding that Congress has delegated its Article I power to grant patents only to promote progress, and that progress is promoted not only by invention but disclosure thereof "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same."  Which is not how Justice Breyer apparently sees the situation, but that doesn't mean that there has been a wholesale abandonment of these requirements, by the Office, the courts, or the inventing community.

Finally, perhaps it is appropriate to close with another quote from Justice Breyer, during oral argument in Bowman v. Monsanto:

MR. WALTERS:  Mr. Bowman went to a grain elevator and he bought from the grain elevator without restriction seeds to -- and it was his purpose to plant them.  Now, the only way that he can make use –- if you assume in the first instance that there is exhaustion to the seeds that Mr. Bowman purchased from the grain elevator, you are taking away any ability for him to use that seed or use the invention . . . .

Now, if you say that there is exhaustion in the seeds that Mr. Bowman purchased from the grain elevator, but you say it doesn't apply to the progeny, you are not allowing him to actually practice the invention to grow more seeds.

JUSTICE BREYER:  No, but you are allowing him to use those seeds for anything else he wants to do.  It has nothing to do with those seeds.

There are three generations of seeds.  Maybe three generations of seeds is enough.

(Laughter.)

JUSTICE BREYER:  It is for this example.  First of -- you have the Monsanto, the first generation they sold.  They have children, which is the second generation.  And those children have children, which is the third generation, okay?  So bad joke.

Comments

[EG]

Hey Kevin,

Glad you pointed out the "fantastical" and "Alice in Patentland" views of Breyer. As far as I'm concerned, Breyer is a disingenuous philosophy "wonk" whose virulent anti-patent bias is evident and equivalent to that of William O. Douglas. In particular, Breyer's Mayo opinion is an utter disgrace, wrong on both the law (conflating several patent statutes and essentially paying lip service to Diehr's "claim as a whole" requirement) and on the facts (characterizing a drug dosage calibration method for a man-made drug as a "law of nature" is bizarre). The mess we now have in Sequenom is a direct result of this nonsense in Mayo. He may find his "hypotheticals" about how many patents are improperly issued (as witnessed in Cuozzo Speed) or his "jokes" about certain inventions (for example, his comment in Alice that suggested a computer-implemented business system could be likened to an abacus) humorous, but I and many others don't. If you sense I despise this Justice and his rhetorical nonsense, that would be correct.

[Edmund R. Pitcher]

What is more dangerous than a brilliant mind, steeped in misinformation and bias, in a position of absolute judicial power?

[ScottE]

Justices use their life experiences along with their legal acumen to make decisions. Unfortunately patent law appears to be an area of weakness for just about all of the Justices on both counts ([particularly Justice Breyer). It is too bad they do not recognize this and act more deferentially to the Federal Circuit, which is filled with judges that are strong on both of these counts.

[Night Writer]

What shocks me about someone like Bryer is that he is so obviously way out of his education and experience areas, and yet he pontificates. There is just so much wrong with Bryer says and does. Just unbelievable that a person with such a low quality to his character is on the SCOTUS.

[skeptical]

The "logic" of Breyer vis a vis "natural law" of a man made drug - if consistently and objectively applied - means ALL Pharma is "directed to" laws of nature; and since medicine is geared to returning a body to its natural state, the end result is also a natural state (there is nothing "substantially more" in the result); all that remains are the different afflictions, which of course can ALSO be characterized as "laws of nature."

If one connects these dots (and does not attempt to change the "logic" for convenience's sake), we have the CLASSIC exception swallowing the rule.

That says something about the exception.

Are the Supremes listening?

Sadly, I remain...

[John Allison]

This column has a few of its own factual inaccuracies, the worst being the inclusion of universities among the group of abusive litigators. Research, including my own, shows that universities rarely engage in the kind of litigation tactics for which the archetypical patent assertion entities are known.

[Kevin E Noonan]

Dear Professor Allison: let me clarify.

If you have read this blog you will understand that we don't have much use for pejoratives or invective, and the term "patent troll" is precisely that. My point was that big companies have applied the term to universities as well as other entities with just as little justification.

But you would be living in a fantasy land if you thought that the facts as you have recounted them will be dispositive to those politically inclined to besmirch and vilify anyone having the temerity to actually assert a patent, regardless of its merit and particularly if they are in a class that can be categorized as a "troll."

Which was, in some ways, my point.

Thanks for the comment

[Kevin E Noonan]

All: let's be clear. Justice Breyer is not stupid or benighted or evil. He is trying to make the questions before him abstract so as to test the limits of the doctrines he is working to apply.

However, the problem is that when you think in hypotheticals on a subject matter so grounded in science and technology (i.e., reality) the quality of your conclusions becomes bounded by the aptness of your hypotheticals. Bad hypotheticals make bad law - as we saw in Myriad. DNA is not a baseball bat inherently present in a tree, or a chocolate chip cookie or lithium ore or any of the other analogies used by the parties, the government and the Justices in the oral argument. And the result (at least as originally interpreted by the USPTO) posed a threat to natural product patenting (and technology) that extended far beyond the simplistic question presented of whether human DNA should be patent eligible.

Thanks for the comments.

[Night Writer]

You should do a column on J. Stevens. I think if you read his dissent in Bilski carefully what you get is the following. That human thought occurs outside the brain in a spirit world.

[GrzeszDeL]

I think that the opening comparison between Justice Breyer and Justice Holmes' Buck opinion is in poor taste. Other than that, however, this post is well constructed and right on target.

I admire and respect Justice Breyer immensely. He has done some excellent work in many areas of law. But his *patent* jurisprudence is atrocious.

Regrettably, he is not unique, in this respect. Justice Kennedy's patent work is just as bad, and Justice Thomas' only slightly better.

Justice Sotomayor has not written enough IP cases for me to have much an opinion of her work one way or the other. Her i4i opinion seemed pretty good to me. While I liked the holding of her Octane opinion, the test she enunciated to reach it was a bit mushy and uninformative for my taste.

In fact, the only two justices still serving whose IP jurisprudence is mostly good (in my humble opinion) are Justices Ginsburg and Kagan.

The SCotUS is clearly in over their heads in most patent cases. As ScottE said above, they would do well to realize this and decline to take cert so often as they are lately wont to do.

[A Rational Person]

"All: let's be clear. Justice Breyer is not stupid or benighted or evil. He is trying to make the questions before him abstract so as to test the limits of the doctrines he is working to apply."

However, Justice Breyer is also not as "smart" as he thinks he is either. In my experience, really smart people know when they are in an area in which they are not as competent and are willing to admit it. Justice Breyer has also chosen not to learn more about science and technology, patent law, etc. to make himself more competent in making decisions regarding patent law.

Justice Breyer, as well as the other 7 current justices have also chosen to totally ignore the operation of Sections 102, 103 and 112 in justifying their rewriting of Section 101. Can you imagine the outcry if something like this was done in another area of law? Where is the court's deference to the actually statute?

Weren't those of us who attended law school taught that in interpreting any statute, a judge (or justice) must look at all of the related parts of a statute in combination in interpreting any part of the statute?

Sorry, I cut Breyer and the other seven justices no slack in their willfully choosing to be ignorant and arrogant with respect to patent law.

[Simon Elliott]

If Breyer wants a policy change, why does (a) the SCOTUS think it should be the one making policy and (b) should come through a change in the standards for claim construction. Claim construction standards are a VERY blunt instrument.

To use a Breyeresque standard: would he favor a change in the presumption of innocence or probable cause because of a concern that there are too many criminals?

In ILLINOIS v. WARDLOW Breyer dissented from a per se rule regarding probable cause, favoring a case by case analysis "considerations have led us to avoid categorical rules". Yet in patent cases he does not seem to mind categorical rules.

In a death penalty case HUMBERTO LEAL v. TEXAS, Breyer noted that courts should consider international rulings by the ICJ. Yet in patent cases, I am not aware of Breyer considering how the SCOTUS holdings cause US patent law to deviate from international practice.

These are imperfect analogies, but it always amazes me that the SCOTUS seems fine to make broad sweeping pronouncements where they would be more circumspect in other cases.

[Martin Snyder]

Whatever could these justices be responding to?

Why, there are no problems. There are just ginned up propaganda arguments made by skillful factions to feather their own nests.

No small business ever suffers disastrous costs due to untoward patent litigation. It. Just. Never. Happens.

Everyone knows that.

[skeptical]

Mr. SNyder,

Maybe you missed the point here that the Supreme Court is not the correct branch of the government to be writing patent law.

Your obviously sarcastic "no one is hurt" tone only rings to a claimed end that you want to see rectified.

In law, how one gets to an end - ANY end - is critically important. Elsewise, you may suffer the devil after blowing down all law (see Thomas More).

Will this advice, offered to you many times now, finally sink in?

Sadly, I remain....

[The Texan]

The problem with software patents is a byproduct of Supreme Court rulings: when Diamond v. Diehr was decided, all of a sudden the PTO had to examine hundreds upon thousands of software patent applications with a) no patent prior art and b) very little other prior art.

Secondly, quite a bit of the distasteful behavior of "trolls" was fueled by tort reform. Put a bunch of bright, entrepreneurial attorneys out of business in medical malpractice and related fields, they find another fertile field.

It would appear that the courts have basically caught up with this business model, with a minor assist from Congress (venue changes).

The 101 jurisprudence is throwing the baby out with the bathwater.

[MaxDrei]

Looking in from outside, I have what might be a silly question about eligibility.

I think it depends on what is the ambit of "useful arts". As I understand it, to extend the reach of patent exclusivity beyond the "useful arts" would be un-Constitutional.

So it seems to me that it is the job of the Supreme Court to assist the lower courts to decide what new, non-obvious and useful innovation is within the ambit of the useful arts, and which are not.

And it seems to be that, up till now, for whatever reason, SCOTUS has ducked out of doing that.

Which I think is poor form. Could it not at least remind the CAFC that it needs to confine patent exclusivity to the useful arts, and task it with finding a workable test or definition? You don't need a PhD in cell biology or computer science to make that contribution to promoting the orderly progress of patent law, do you?

[skeptical]

MaxDrei,

The definition of the Useful Arts (the non Fine Arts), is not something for the branch of the government that SCOTUS or the lower courts make up. Neither is it for the Patent Office, an administrative agency located within the executive branch.

Our Constitution dictates which branch of the government sets the law for patents.

That being said, I am puzzled as to why you seem mystified about what belongs to the Fine Arts and what belongs to the Useful Arts.

[Kevin E. Noonan]

Dear Mr. Snyder:

In the ‘50’s television show "I Love Lucy," in one episode Lucy and her friend Ethel hired a language coach to help them sound more sophisticated. The coach told them there were two words they should avoid; one of them was “swell” and the other one was “lousy.” (Leading predictably to the ladies asking which one of the words was swell and which one was lousy.)

In legal parlance, I think the equivalent two words to be avoided are “always” and “never.” Of course there are instances where a small company will run up against a blocking patent. But usually the small company, being small, is sued by another small company as direct competitors rather than having generating profits by expropriating technology.

So the point of the piece is not that the scenario that concerns Justice Breyer never exists but that he is mistaken in that it is a major problem inhibiting innovation. The fact that it occasionally happens does not mean we should turn patenting in the US upside down to fix it.

[The Memory Motel]

Kevin: "All: let's be clear. Justice Breyer is not stupid or benighted or evil"

Just a billion times smarter than Kevin Noonan.

But we knew that already.

[Kevin E. Noonan]

Getting close to "Jane, you ignorant slut" territory, MM. Try to keep it substantive, OK?

[skeptical]

Getting close....?

Squint my eyes as tight as I may, I cannot see how that post was not clearly in that territory, Dr. Noonan.

[Atari Man]

"Getting close to "Jane, you ignorant slut" territory, MM. Try to keep it substantive, OK?"

Touche!

[GrzeszDeL]

"[I]t seems to me that it is the job of the Supreme Court to assist the lower courts to decide what... is within the ambit of the useful arts, and which are not... [U]p till now, for whatever reason, SCOTUS has ducked out of doing that."

I would submit that the reason that the SCotUS has not spent a lot of time on that issue is that it really is not in need of further refinement. The "printed matter" doctrine is not a creation of the SCotUS, but it is a fixture of the law nonetheless, and it does a fine job of preventing the patent laws from bleeding over onto the fine arts.

Please note that the constitution says "useful arts," not "technological arts." I would be hard pressed to think of an actual example that has arisen of someone applying for a patent on an idea that cannot be plausibly considered to be part of the "useful arts," which was not excluded either by the plain text of 35 USC 101 or else by the printed matter doctrine. How much further guidance is necessary for the lower courts to apply these rather staid and basic principles of patent law?

[MaxDrei]

Thanks for answering my question Grz..... I had in mind that there is some as yet undistributed ground in the gap between the fine arts and the useful arts. The arts of the deal, for example, negotiation skills, those sorts of processes. Auctioning off telecoms bandwidth, perhaps in the process zone where game theorists hold sway. Useful yes. Useful arts, I'm not sure about that and would like SCOTUS to tell me.

Or the arts of selling. Always room for better processes, cleverer, to sell dodgy stuff (like some GS financial products) to muppets (like the Landesbanken of Germany).

And should there not be a choice between patent and trade secret protection for such valuable process innovation?

How about that?

[GrzeszDeL]

To my mind, if it is concededly useful, then there is no good reason to exclude it from the category "useful arts." That said, I will freely concede that this is my opinion, and not a settled matter of constitutional law.

If the SCotUS were to try to decide a case on the basis that (1) the constitution only permits patents on technologies that "promote the Progress of.. useful Arts" and (2) this patent involves something that is not, properly speaking, part of the "useful Arts" would be to decide it on constitutional grounds. Under the doctrine of constitutional avoidance, the SCotUS should only do so if it cannot settle the case on other grounds.

It would be difficult to imagine an actual claim making it up to the SCotUS where the *only* possible defect is a section 101 "useful Arts" defect. Think, for example, of In re Merat, 519 F.2d 1390, 1394 (C.C.P.A. 1975). As such, I think that one is going to be waiting a long time for a case to be decided on this basis.

Incidentally, I am not sure *how* they would arrive at such a decision. The only *law*, as such, to apply would be the plain words of the constitutional text. Statutory considerations cannot really come into it (that is to say, the Congress does not get to write statutes to tell the SCotUS what the Constitution means), and there is *no* jurisprudence on this point (at least none of which I am aware). So the whole case would come down to the issue of "what did 'useful Arts' mean to the ordinary English speaker in 1798?" Is there *any* scholarship on this point?

[GrzeszDeL]

Arthur Seidel contends (who knows if this is correct, because much more historical study has surely been done since 1966) that it "may be surprising... to find that there is no historical basis for a definition of... "useful arts", as appearing in Art. I, Sec. 8, Clause 8... The subject is one for Congress to deliberate."

Arthur Seidel "The Constitution and a Standard of Patentability," 48 JPTOS 5, 32 (1966).

[Marc Hubbard]

Thanks for the article. It's good to be reminded why the Court needs to refrain from making law.

These quotes confirm what leaps off the page when I read the opinion in Mayo, which is which is that Justice Breyer is rewriting the law on eligibility without considering a lick of evidence or testimony on the issue, using his own biases and information he has gleaned from only God knows where or who. In comparison the legislative process looks transparent and open.

Please read the brilliantly written amicus brief filed by Professors Lefstin and Menell in support of Sequenom's petition for certiorari. You can find a summary of it here: http://patentlyo.com/patent/2016/04/protection-scientific-discoveries.html.

They argue that the Court has "shoehorned" into the law, through the "implicit exceptions," an additional requirement that contradicts the Patent Act's carefully constructed regime reflecting Congress' judgment on the requirements for receiving patents on discoveries. This additional requirement, which is inventiveness in the application of the underlying judicial exception, is ironically based on a profound misreading of case law.

I find the argument compelling. I hope that at least the conservatives on the Court do as well.

[Simon Elliott]

Perhaps they will look to originalists remaining on the court, and only grant patents to threshing machines and horse bridals.