By: Robert R. Sachs

Judge Mayer's dissents in MySpace v. GraphOn and Alexsam v. IDT are passionate epistles to his fellow jurists of the Federal Circuit. Mayer argues for making patent eligibility a gateway issue in patent litigation and for adopting without scrutiny the Supreme Court's "inventive concept" framework as the received wisdom. Mayer's reading of the Supreme Court cases is essentially representative of what I call the Normativist view of the patent law, which has been expounded by the High Court itself and come to be regarded as the conventional wisdom.

In the next two posts and those that follow, I will explain why this analysis of Supreme Court precedent is incorrect and in much need of scrutiny and overhaul. The first post will summarize the Normativist stance, and the second will review the historical Supreme Court cases on patent eligibility—cases that are invariably quoted, but otherwise left unexplored. I will show not only that these cases do not stand for the propositions for which they are cited, but they actually stand against much of the conventional view of § 101 now being asserted. Moreover, I will show that the approved and thus patent-eligible claims at issue in these cases would absolutely fail as patent-eligible subject matter under the current law—a clear sign that the current framework is flawed. In future posts, I will turn to the modern Supreme Court cases—Benson, Flook, Diehr—and demonstrate both the errors in these decisions and how they have been badly misread and misapplied. I will also address some of the deeper philosophical issues that pervade § 101 and have been completely overlooked by the courts, resulting in the current swamp that is patent eligibility jurisprudence. 

Read: The Normative Stance of Patent Eligibility

Read: Patent Eligibility: The Historical Cases

  • Joshua Sarnoff

    I agree that the “normativist” approach as articulated in the CLS opinions is incoherent because they don’t have a theory, and to the extent that they do have a theory is is one grounded on scope (preemption) rather than creativity (invention) concerns that are neither historically justified nor sensible. Once one understands the prior art treatment of categorically ineligible subject matter such as laws of nature, products of nature, and abstract ideas, and the need for non-analogous creativity in the application of such ineligible subject matter as the basis for “invention,” however, the coherence reappears. (I discuss this in my article Patent Eligible Inventions After Bilski: History and Theory, 63 HASTINGS L.J. 53 (2011), and explain in amicus briefs in the Mayo v. Prometheus and AMP v. Myriad cases why this was the intent of Congress when enacting Section 101 in the 1952 Act, see http://www.americanbar.org/content/dam/aba/publishing/previewbriefs/Other_Brief_Updates/10-1150_petitioneramcu9lawprofs.authcheckdam.pdf and http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs-v2/12-398_pet_amcu_lawprofs.authcheckdam.pdf). With this approach, one is not “ignoring” the limitations of computer claims when treating the abstract idea as if it were prior art and then asking whether the ubiquity of the additional claim limitations renders the claims to be insufficiently creative applications of the abstract idea. (Of course, what qualifies as an abstract idea is a much deeper problem – and Bilski both provided no theoretical help and also treated what most would have viewed as concrete applications as abstract ideas so at least doctrinally the ground has dramatically shifted.) That Congress preserved in Section 101 similar concerns to Section 103 (which derived from the “invention” case law under Section 101’s predecessor) also is no concern, and is not duplicative because (as the Supreme Cour recognized in Mayo v. Prometheus) nothing in Section 102 prior art treats ineligible discoveries as if they were prior art against the applicant. And that, as they say, makes all the difference. Congress could have written the statute better to avoid any creativity evaluation (compared to ineligible discoveries treated as prior art) in Section 101; it simply did not do so.