GUEST POST BY: WESLEY D. MARKHAM

On March 31, the Supreme Court will hear oral argument in Alice Corporation Pty. Ltd. v. CLS Bank International, Docket No. 13-298, where the question is whether computer-related inventions are eligible for patenting under 35 U.S.C. § 101. If Justice Breyer’s recent musings are any indication, things look bleak for the pro-patent contingent.  During oral argument in Octane Fitness, LLC v. Icon Health & Fitness, Inc., Docket No. 12-1184, a case concerning fee-shifting in patent cases, Justice Breyer offered [PDF] the following:

I patent the following: For a computer, enter somebody’s name.  Ask phone number.  And they’ll give you the phone number if you put in the right city.  That puts a list in the computer.  They can patent that?  Well, you add a couple of things and they apparently you can have an argument that they can patent it. Okay? Because it’ll be very abstract language.  It will be able to patent almost anything.  No, you can’t finally, but objectively baseless?

If the Court decides to kill or disable computer-related patents, the Court’s weapon of choice will likely be the so-called “abstract idea” statutory exception. In an article just published in JETLaw, I argue that the Court has never provided a satisfactory explanation for discovering or creating the “implicit exceptions” to patent-eligible subject matter.  I posit that an aggressive form of constitutional avoidance most likely explains the Court’s unanimous acceptance of these unusual statutory exceptions: broad patents on things too close to “abstract ideas” or “laws of nature” might impede innovation, which might violate the “Progress” requirement in the preamble of the Intellectual Property Clause.

But the Court has not tackled the tough antecedent questions: How can Section 101’s broad statutory language bear the ever-broadening exceptions?  How do we, or can we, measure “Progress”?  Why is the Court the proper institution to determine whether “Progress” is being advanced?  And what limits does the Intellectual Property Clause actually place on Congress’s power to act?

CLS Bank’s merits brief [PDF] follows the Court’s model. The brief opens majestically: “Allowing patent claims like these would effectively foreclose the productive use of economic concepts and other fundamental principles in our increasingly computerized Information Age, in contravention of the Constitution and the Patent Act.” Later in the brief, CLS declares that the abstract idea exception “enforces the constitutional limit on governmental actions” that “enlarge the patent monopoly.” But for all its rhetoric, CLS also fails to answer the antecedent questions.  Why would it, if the Court has not seen fit to do so?

As I note in my article, and repeat here, I express no view on the wisdom of the implicit exceptions as a matter of policy.  But I do worry that the Court’s present formulation—interpreted by many to require invalidation of any patent that does not add “enough” to the “abstract idea” on which it is based—is not amenable to any limiting principle.  This will lead, I fear, to ad hoc decision making at its worst.

And so I come to the title of this post: “What Does Antiwar Protesting Have To Do With Patent-Eligible Subject Matter?”  Maybe more than you think.  In United States v. Apel, decided by the Supreme Court last month, the Court held that Mr. John Dennis Apel, an antiwar activist, violated a federal statute by protesting on a military base after having previously been barred.  Apel had pressed a constitutional avoidance argument grounded in the First Amendment: “the statute should be interpreted . . . not to apply to peaceful protests on a public road outside of a closed military base . . .” Chief Justice Roberts, writing for a unanimous Court, rejected Mr. Apel’s position, stating:

But we do not ‘interpret’ statutes by gerrymandering them with a list of exceptions that happen to describe a party’s case.

We shall see.

–Wesley D. Markham


About the Author

Wesley D. Markham is a member of Akin Gump’s intellectual property practice, and his work encompasses all aspects of intellectual property litigation.

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