By Kevin E. Noonan --
There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the recent Supreme Court precedent (Bilski/Mayo/Alice) as interpreted by the Federal Circuit has resulted in a diminution in lawsuits by so-called "patent trolls," non-practicing entities who accumulate patents to be asserted against these companies. Sitting in yet another patent conference, surrounded by some of the most erudite members of the patent community (judges and former judges, PTO officials current and past, distinguished patent lawyers and company IP counsel), discussing the current (parlous) state of affairs regarding patent subject matter eligibility and the inability (Federal Circuit, Congress) or unwillingness (Supreme Court) to find a solution, it is impossible not to think that the way the issue has been addressed is, at best, insufficient. If indeed the issue cannot be resolved politically between the high tech and biotech/pharma shareholders, then it seems evident that this issue -- the attachment to the status quo by the high tech community because it serves their interests -- must be resolved before any solution to the problem for all other technologies becomes possible.
Past experience may provide an avenue for such a resolution. In the 1990's, patent law was faced with claims directed to methods for performing eye surgery. The patent, U.S. Patent No. 5,080,111 to Dr. Pallin, was being asserted (Pallin v. Singer, 1996 WL 274407 (D. Vt., Mar. 28, 1996)) against medical doctors and eye clinics and prompted swift Congressional action. The measure that ultimately passed, introduced by Senator Bill Frist of Tennessee (himself a physician) was codified as 35 U.S.C. § 287(c):
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
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(c)(1) With respect to a medical practitioner's performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.
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(3) This subsection does not apply to the activities of any person, or employee or agent of such person (regardless of whether such person is a tax exempt organization under section 501(c) of the Internal Revenue Code), who is engaged in the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician's office), where such activities are:
(A) directly related to the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician's office), and
(B) regulated under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Clinical Laboratories Improvement Act.
The policy justification for the bill was, as eloquently expressed by Senator Frist, because "innovations in surgical and medical procedures do not require the midwifery of patent law." As enacted, the bill reflects a carefully crafted ("narrowly tailored") balance between the concerns of the medical community and the patent community at large, particularly the biotechnology community. For example, "biotechnology patents" are expressly excluded from the exemption; such patents are defined (under 35 U.S.C. § 103(b)) as "a process of genetically altering of inducing a single or multi-celled organism" or "cell fusion procedures yielding a cell line that expresses a specific protein" or "methods of using a product produced" by the above processes. Also not exempt are individuals involved in the commercialization of "a machine, manufacture, or composition of matter" related to a medical activity.
If indeed one of the major impediments to patent subject matter eligibility reform today is the concerns of the high tech community that the current state of the law is what has reduced the plague of patent troll litigation against them (regardless of the justification for these concerns), perhaps Congress should consider amending the patent statute to contain a similar exclusion for such alleged troll activity:
It shall not be an act of infringement under section 271(a) or (b) of this title, and the provisions of sections 281, 283, 284, and 285 of this title shall not apply, to practice of a method claim wherein any limitation of said claim is recited and defined solely by its function, unless the method is practiced using a structural component corresponding to that function that is expressly disclosed in the patent specification, or equivalents thereof.
While not providing a blanket license to infringe such a statutory provision would go far along the path of immunizing the targets of "troll"-asserted patent litigation. It would limit the scope of infringement for claims reciting functional limitations to the express contribution disclosed in the specification, or equivalents thereof (analytics for which are available for assessing the scope of claims reciting limitations falling within the scope of 35 U.S.C. § 112(f)). It would provide an avenue for such claims to be practiced without infringement liability merely by exercising the marginal creativity needed to employ a step in the method using structural components not recited in the specification and different enough in structure not to be an equivalent to what the specification expressly discloses. It would also provide statutory protection from infringement that would bring a measure of certainty to companies who purportedly find themselves as deep-pocket targets of non-practicing patentees or patent assertion entities.
Of course, nothing involving patent subject matter eligibility law is certain or easy. But eliminating the complaints of one set of shareholders in such a way might clear the path for Congress to address the concerns of other members of the patenting community, where additional creative stratagems might be productively employed. Like Rome, patent subject matter eligibility will not be built in a day, but by taking a step-by-step approach perhaps it may be possible in our lifetimes.
This proposal seems a fine idea and a fair compromise. I will note, however, that the actual substantive effect of this language is the same as the Coon/Tillis draft's amendment to §112(f). As between redefining infringement in §271 and altering claim construction in §112 to achieve this outcome, I have a slight preference for the §112 approach. Still and all, if it were to prove possible to achieve consensus behind the §271 approach and not the §112 approach, I would hate to make the good to be the enemy of the better.
Posted by: Greg DeLassus | February 18, 2020 at 11:09 AM
A true "Step by Step" approach would be to fix 101 WITHOUT taking within the city walls the Trojan horse fabricated by those who really DO NOT WANT to fix 101.
Posted by: skeptical | February 18, 2020 at 11:36 AM
Thanks, Greg. The basis of the suggestion is to avoid ambiguity. While the 112(f) proposal may get us to the same place, this is a limitation on liability. Seems more straightforward.
Posted by: Kevin E Noonan | February 18, 2020 at 06:41 PM
skeptical: politics is the art of the possible. It isn’t a Trojan horse; it’s calling their bluff and take away their rhetoric
Posted by: Kevin E Noonan | February 18, 2020 at 08:35 PM
Dr. Noonan, respectfully, there IS a Trojan horse that has been presented.
So while I certainly espouse a path of bluff calling and taking away rhetoric, I do not espouse a path of ignoring that certain parties have come to the table of reform with the sole purpose of BLOCKING reform.
An adage from my Uncle Ben (granted, not his most famous adage): It is good to have an open mind, but it is not good to have such an open mind that your brain falls out.
Posted by: skeptical | February 19, 2020 at 09:07 AM
skeptical: we will never change their minds, but neither can we ignore them and their political clout. All we can do is present them with everything their hearts desire, and then let them explain why it isn't good enough. In addition to losing all credibility they put legislators in a bad position if they try to accommodate their unreasonableness.
Posted by: Kevin E Noonan | February 19, 2020 at 03:05 PM
"politics is the art of the possible. It isn’t a Trojan horse"
Exactly. Complaining of "Trojan horses" is a great way to ensure that the status quo persists indefinitely. Compromise is necessary to achieve reform, and it is hard to think of another compromise that will move the ball forward beside the limitation-on-functional-claiming compromise.
Anyone who purports to support legislative reform but considers the limitation-on-functional-claiming compromise to be unacceptable should be offering an alternative trade that s/he thinks would be plausibly enticing to the opponents of reform. If you do not have a plausible alternative to this compromise, then you are really an opponent of legislative reform, even if you want to think of yourself as a proponent of reform.
Posted by: Greg DeLassus | February 19, 2020 at 04:04 PM
Mr. DeLassus,
Respectfully, yours is the very worst of advice.
It is NOT merely "complaining of" -- but the full force and weight of realization that such ARE present that you (the Royal you, since the personal you really would rather turn blinders on) need to take into account.
Here is the alternative:
Fix one thing at a time, and STOP trying to allow those who would fix NOTHING to demand that EVERYTHING need be fixed at the same time.
Posted by: skeptical | February 20, 2020 at 08:52 AM
Another perspective shared on another forum is that this amounts to betraying small startups in the high tech space in favor of Big Tech. There is some validity to that position, which I agree is unfortunate. But to me (my bias is showing, or perhaps my age and the prospective increased need for inventions in the biotech/pharma space) I am less interested in the protecting the next gadget and more concerned about diagnostic methods and personalized medicine.
My proposal is hardly perfect, and perhaps there could be a carve-out for small or micro-entities, or some other accommodation much like Section 287(c) had for biotechnology methods. But the post intended to get conversation around the issue, which is stalemated where it is now.
Posted by: Kevin E Noonan | February 20, 2020 at 11:11 AM
"Another perspective shared on another forum is that this amounts to betraying small startups in the high tech space in favor of Big Tech."
How so? The position of small software startups would be no worse under your proposal than currently. One can draft around the "structural component corresponding to that function that is expressly disclosed in the patent specification" by simply larding the specification with every known structure. It is unwieldy, but not actually all that difficult. Moreover, after one has drafted a few of these apps, there will be a chunk of text that can just be copied and pasted going forward, so it will not even run up the billable hour costs all that much in the long run. The problems engendered by "structural component corresponding to that function that is expressly disclosed in the patent specification" will be much easier to overcome than the problems engendered by Mayo/Alice.
The *startups* themselves might actually welcome the change that you propose. Anything that removes the §101 obstacle is good for them.
The *lawyers* who draft patents for these startups probably dislike the idea of having to think hard and draft well. Functional language covers a multitude of sins. It is harder to see which lawyers know their stuff and which are mere poseurs when one is allowed to omit description of structure. The statutory change that you propose would quickly highlight the distinctions between the talented and the talentless, and the talentless will not like that.
Nevertheless, the *lawyers* are not the *startups*. The proposal is good for startups, whether or not it suits the lawyers.
Posted by: Greg DeLassus | February 20, 2020 at 12:45 PM
Dr. Noonan,
Thank you for your last post, with your candor about a possible bias that you have.
It is somewhat rare for that type of admission to be made, and I appreciate that frankness.
As for me, my view is NOT segregated along any one particular line of innovation, and my views run at a different level of protecting innovation in and of itself - no matter the current form of that innovation.
Perhaps THIS is 'my bias,' having in my much younger days a minor in the history of science and technology....
(Another of Uncle Ben's adages come to mind: Divide and Conquer)
Posted by: skeptical | February 20, 2020 at 12:54 PM
Thanks, Greg. My statement was as close to a quote as I could get (without the false calumny that my position was based on client interests, amusingly implied to be Big Tech companies).
Posted by: Kevin E Noonan | February 20, 2020 at 02:13 PM
Kevin-
Interesting idea, but let's recall the actual outcome of Dr. Pallin's '111 patent: The district court held it invalid as obvious. Thus, Senator Frist might have been correct, but for the wrong reason: "Innovations" that would have been obvious, such as Dr. Pallin's, in any technical area, "do not require the midwifery of patent law." That's the functional role of obviousness (so often noted by the Supreme Court): advances that an ordinary artisan would have made in absence of the patent incentive are unpatentable. The new tests-upon-tests under Section 101, and the now decades-long trend of industry-specific carve-outs (such as Section 287) might help, but they certainly look awkward when compared to the elegance of Section 103.
Posted by: Joe | February 20, 2020 at 06:19 PM
It should be self evident that such a suggestion as:
“ One can draft around the "structural component corresponding to that function that is expressly disclosed in the patent specification" by simply larding the specification with every known structure. “
is clearly NOT any type of meaningful attempt at “compromise” — if only “larding up” is precisely NOT what patent specifications are meant to do, and you immediately fall into the DOUBLE trap of having to repeat any AND EVERY thing already known (and heaven forbid if you happen to miss one) AND the “larding” and ensuing “bloat” will — without a doubt — bring about charges that the applicant is trying to hide the ‘real’ invention.
This is nothing more than the very BAD idea that “is ok” in Mr. DeLassus’s view, as he has been known to throw computing art innovations under the bus in exchange for his known proclivity for Pharma protection.
Of course, the other trap (ignored by Mr. DeLassus) is that it will NOT be just the computing arts subjected to the massive bloat effects, but will be MOST ALL non-Pharma innovations that happen to tend to use words sounding in function in their claim elements.
If this be “compromise,” then “compromise” be DAMMED.
This would not be “the perfect” getting in the way of “the good;” this would be “the truly awful” getting in the way of the “good for Pharma.”
Posted by: skeptical | February 20, 2020 at 06:40 PM
Joe: it is rare that the law gets someone as erudite, elegant, and clever as Giles Sutherland Rich. Yes, the current foolishness just burnishes his legacy even more than it already has been, but while I think the strategies that he employed (not directly challenging the Supreme Court's "invention" jurisprudence but crafting a statute that convinced the Court (against all reason except face-saving) that Congress had just codified what they had been saying all along) are sadly not as available to us on the Section 101 question. But unless the dam breaks we will be continuing this almost Blackstonian explication of eligibility law for the foreseeable future, to all of our detriment.
Thanks for the comment.
Posted by: Kevin E Noonan | February 21, 2020 at 03:41 PM