What to Do about Section 101? IPO Provides Its Answer

By Kevin E. Noonan --

In the aftermath of the Supreme Court's decision not to grant certiorari in Sequenom v. Ariosa (and in some quarters, considerably before that), many have voiced the opinion that only Congress can resolve the acknowledged uncertainty that recent Supreme Court decisions have created in the law of patent subject matter eligibility.  While many groups (such as the AIPLA and ABA-IP law section) have been said to be working on their own legislative proposals, the Intellectual Property Owners this week released theirs (see "Proposed Amendments to Patent Eligible Subject Matter under 35 U.S.C. § 101").  It proposes the following amendments to the statute (with strikethrough indicating text to be deleted and underlining identifying new language):

101 Inventions patentable.

101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto, shall be entitled to thereof, may obtain a patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Title of this title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention's inventive concept.

This effort avoids any attempt at outright abrogation of Supreme Court precedent (likely a fool's errand in any case) in favor of codifying the IPO's understanding of the Court's intentions (which clearly could not have been to hamstring if not abolish vast swaths of American industry).  The IPO's approach is similar to the approach Giles Sutherland Rich and PJ Federico took almost two generations ago in codifying the Court's inchoate "inventiveness" standard into the modern concept of obviousness.  Thus, in proposed Section 101(b), the proposed revised statute expressly defines what have been judicially created exceptions based on Supreme Court law.  This section posits that claims must be considered as a whole (as required under Diamond v. Diehr) and that their interpretation be bounded by the understanding of one having ordinary skill in the art (echoing Section 103 in this regard).  Rather than merely then reciting the judicial exceptions ("abstract ideas, laws of nature and natural phenomena"), IPO's suggested language binds these concepts up into one:  that "the invention existed independent of and prior to any human activity, or exists solely in the human mind."  This phrasing keeps some of the novelty aspects in the revised statute that may have otherwise been banished by removing "new" from the preamble and is reminiscent of (but neither as elegant nor nuanced) as the language from Diamond v. Chakrabarty, that the invention be the product of human ingenuity.  It also risks some degree of misinterpretation should all natural products be considered to have existed "independent of and prior to" human activity; it is possible that the drafters believed this risk to be mitigated by proper claim drafting, wherein an "isolated" natural product would pass statutory muster provided that the claim is construed as a whole.  In like manner the proscription that the invention not exists "solely in the human mind" might cabin ineligibility of computer and like inventions to those capable of existing in the human mind.

The proposal comes closest to a Congressional "we really mean it this time" in proposed Section 101(c), where the drafters have tried to restore the doctrinal distinctions between Section 101 and the other statutory requirements of patentability.  It also owes inspiration from Section 103 ("Patentability shall not be negatived by the manner in which the invention was made.") and contains the only direct rebuke of Supreme Court language by excluding considerations of "inventive concept" from the eligibility calculus.

The election of Donald Trump as the 45th President has thrown into a cocked hat any expectations regarding what Congress may be willing to consider.  Amending the patent statute, particularly on fundamental matters like eligibility, could be a Pandora's box of goodies every species of political interest will want to exploit for their own purposes.  But IPO (and the other groups) should be applauded for not just throwing up their hands in despair.  In the current political climate perhaps anything is possible.

Comments

[GrzeszDeL]

I really like this proposed statutory amendment. Revising the statutory language is the best way to fix this problem, given that the SCotUS showed in Sequenom that is has no interest in fixing the mess itself. I only hope that this effort has legs. I just do not know how many congress members and senators care enough about patent law to give this amendment a hearing.

[Scooby Don't]

Nobody could have predicted that Kevin Noonan's analysis of this absurd proposal is shallower than a wading pool in a flea circus.

Hey Kevin: can you remind your readers of the essential facts before the court in Prometheus v. Mayo that led to their 9-0 holding or would you like me to hold your hand and walk you through it?

[skeptical]

There is a direct, powerful, and Constitutional way of saying "we really mean it this time:"

Jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court.

Couple that with the establishment of a new and non-brow beaten Article III Court (to preserve the judicial review aspects of the Marbury case), and you are good to go.

As to the putative Malcolm infection, Patent Docs, get well soon.

[Kevin E Noonan]

Ah, Scooby - only you could take a simple explication of a proposed statute and make it sound like advocacy. Remember, the Court is not final because it is infallible, it is infallible because it is final. In another age would you be telling me the Dred Scott decision was right because the Court said it was?

[Kevin E Noonan]

Skeptical: wherein would Congress get that authority (presumably without Supreme Court acquiescence)?

[skeptical]

Dr. Noonan,

In matters of non-original jurisdiction, the Constitution gives Congress the right to shape the path of the courts - including the Supreme Court (again - for items outside of the original jurisdiction of the Supreme Court).

The mechanics of jurisdiction stripping, albeit not particularly so often used, are straight forward.

By making a new Article III body, Congress would also satisfy the limitations of Article III review set by Marbury (which, if you check, did NOT indicate that Article III review must be by the Supreme Court - something far too many people merely read into the decision).

[skeptical]

..and I would add that the thought that the Court is infallible is (obviously) incorrect. Your own reference to Dred Scott should indicate that.

[Kevin E Noonan]

While Congress could do so, the Court could take the position that granting patents to subject matter falling within the province of the judicial exceptions was outside the power to grant patents under Article I and thus reviewable. Which i think they would do

[skeptical]

I am not following you - it is up to Congress - not the Court to set the law - the judicial exceptions cannot broach that.

That's rather the point here of what the IPO is writing, after all.

[Kevin E. Noonan]

But the Court can restrict Congressional overreach if that's what they deem it to be

[skeptical]

Setting the patent laws is what the Constitutional power is all about.

The Supreme Court in their "implicit" views have tied the exceptions to the statute - NOT the Constitution.

Jurisdiction stripping removes the item (the Court's own implicit scrivining) from the Supreme Court, and from it happening again (no matter what the changes like the IPO changes suggested).

The Court in wanting to "reach" a Constitutional "overreach" issue would have to drastically change the past - this itself would be a clear Constitutional overreach and violation of the separation of powers principle.

By changing the past, I mean that every single eligibility decision is grounded in the STATUTE, and not the Constitution. To get where you imply, the Court would have to directly state that the past rulings are Constitutional rather that statutory.

[skeptical]

...and the Court cannot eliminate the Constitutional power of jurisdiction stripping.

That would be well beyond the Court's own Constitutional powers.

[skeptical]

Let me put it this way, Dr. Noonan:

The Supreme Court cannot be stripped of any jurisdiction that is within their ORIGINAL JURISDICTION.

Congress can strip ANY court (including the Supreme Court) of any jurisdiction that is NOT within that court's ORIGINAL JURISDICTION.

This is a Constitutional power given directly to Congress.

Patent Appeals are not within the Supreme Court's original jurisdiction.

Congress has the Constitutional power to strip patent appeal jurisdiction away from the Supreme Court.

For any other scenario, you basically would have to have the Supreme Court rewriting the Constitution to provide itself an "untouchable" power.

That type of power is not within the ambit of the Supreme Court.

[Kevin E Noonan]

I understand. But whether your reading of the Constitution is correct or not, the Court often speaks on whether Congress is properly exercising its Article I power. Read the Sebelius case on Obamacare - the Court held that Congress had the power to enact the law under the Taxation clause and not the Commerce clause. So if the Court felt that by abrogating its judicial exceptions Congress would be exceeding its authority (which they likely would), then the could hold any law doing so to be unconstitutional. And I think that's exactly what they would do.

And insofar are earlier cases didn't say it directly, the Court would just say that Congress had not challenged its judicial exceptions case law before and so the Court could (and should) have merely interpreted the statute. But if Congress enacted the law you propose the Constitutional issue would be broached and thus they would base their decision on the principles I discuss

[skeptical]

I do not understand your second paragraph in view of my comments.

It appears that you think that the Supreme Court has unlimited power (which we both know cannot be true).

Are you saying that the Supreme Court has the power to nullify the part of the Constitution that grants the power to Congress to employ jurisdiction stripping?

[Kevin E Noonan]

I think the Court has asserted plenary power to check acts of Congress contrary to the boundaries of Article I. I think that is how it is, and has been for 200 + years. I know Congress has power to move the chess pieces of the judiciary around, but I think if it ever tried to abrogate the judicial exceptions (as opposed to incorporating them into the statute as it did with obviousness) the Court would say it had exceeded its power.

[skeptical]

I think that you keep on missing the move of the chess piece of taking the Supreme Court out of the equation.

Once again, let me ask:

Are you saying that the Supreme Court has the power to nullify the part of the Constitution that grants the power to Congress to employ jurisdiction stripping?

Once again, let me point out:

The Supreme Court in their "implicit" views have tied the exceptions to the statute - NOT the Constitution.

The Court in wanting to "reach" a Constitutional "overreach" issue would have to drastically change the past - this itself would be a clear Constitutional overreach and violation of the separation of powers principle.

By changing the past, I mean that every single eligibility decision is grounded in the STATUTE, and not the Constitution. To get where you imply, the Court would have to directly state that the past rulings are Constitutional rather that statutory.

[skeptical]

One more (in direct counter to your "I think the Court has asserted plenary power to check acts of Congress contrary to the boundaries of Article I."):

By making a new Article III body, Congress would also satisfy the limitations of Article III review set by Marbury (which, if you check, did NOT indicate that Article III review must be by the Supreme Court - something far too many people merely read into the decision).

That "plenary power" is judicial review, and per Marbury, is an Article III function - NOT something that MUST BE within the Supreme Court itself.

[Kevin E Noonan]

I remind you that the Federal Circuit was a "new" Article III body (in 1982) and while Congress did not specially take judicial review of patent decisions away from the Supreme Court in establishing the CAFC I don't think they would, based on Article III: "The judicial Power of the United States, shall be vested in one supreme Court . . . "

Your suggestion is one that Congress may adopt, and then we shall see which one of us is right (and even if it is you, then I predict the Court will act the way I contend, and then we are back to a constitutional amendment to overturn the Court's action)

[skeptical]

Once upon a time - and well before the current court has been brow beaten....

Sorry, but that position is not only rather not compelling, it does not comport with the piece of jurisdictional stripping that I supplied.

Likewise, the reference to "vested in one supreme court" is out of context.

Clearly, the case of Marbury needs to be properly understood (as I have indicated above - judicial review is not a matter that MUST involve the Supreme Court).

And just as clearly, as I have also indicated above, you cannot have the Court insulate itself - concerning a non-original jurisdiction matter - from the Constitutionally granted power of jurisdiction stripping.

I keep on returning to this, because the alternative makes that Constitutional power into an absolute nullity.

You are not addressing these points, Dr. Noonan. You appear to be hedging around the edges.

[Kevin E. Noonan]

Skeptical: only experience will resolve our disagreement. If Congress were to take this tack, and the Supreme Court no longer have jurisdiction over patenting matters, I would be the first to buy you a beer and say I was wrong.

All I am saying is that no matter how well you articulate your position, I don't see the Court giving up the power to decide when the other branches act outside the scope of their Constitutional authority. That may not be what the framers had in mind, but that is certainly what the Court thinks its role in our system of government is.

But this discussion does raise the interesting point: what if the Court acted as I suggest, and you are right that this would be outside the boundaries of what the Court could do under the Constitution. What would be the remedy? All I can think of is a Constitutional amendment, and this gets us back precisely to where we started - the only way to force the Court to abandon its position would be by amendment. I think it's better to persuade, as Giles Rich and PJ Federico did.

Thanks for the discussion.

[skeptical]

The idea that a Constitutional amendment would be needed to correct the Court when the Court acts unconstitutional....

Circular turtles all the way down (and most definitely will not work).