Out from the ‘murky morass’ – part two

Other more clearly defined provisions of US patent law could prevent the eligibility of entire scientific and technological fields being brought into question by Section 101 jurisprudence

While Alice v CLS Bank is the latest in a crowded field of Supreme Court cases grappling with the basic question of patentable subject matter, it is not the first to provoke commentators to call into question an entire field’s eligibility for patent protection. Just as Alice did to the software industry, the one-two combination of 2012’s Mayo Collaborative Services v Prometheus Labs and 2013’s Association for Molecular Pathology v Myriad Genetics sent a wave of uncertainty through the life sciences industry – a vital innovation sector in which the United States has alarmingly already seen its share of the patents considered most valuable worldwide fall from 73% in 1981 to 59% in 2011.

Relying on Section 101, Mayo and Myriad found technologies invaluable to personalised medicine and diagnostic testing to be unpatentable laws of nature (cousin to Alice’s ‘abstract idea’). As in Alice, the Supreme Court exercised restraint by issuing opinions closely tied to the facts. However, also as in Alice, their full effect depends on the extent to which lower courts exalt a Section 101 litmus test above other provisions of the Patent Act.

In University of Utah Research v Ambry Genetics the Federal Circuit relied on a combination of Myriad and Alice to invalidate technology directed to determining cancer risk. The opinion, which described the claimed method as doing “nothing more than spell out what practitioners already knew” (a rebuke clearly sounding in novelty/obviousness), exemplifies the trend of putting the Section 101 cart before the Section 102 and 103 horses, unnecessarily casting doubt over the patentability of discoveries in the life sciences generally.

To avoid a damaging patent jurisprudence which engages in categorical discrimination, courts should make greater use of the Patent Act’s more precise provisions. Rejections under those provisions will virtually always be applicable where there is an opportunity for Section 101 rejection – a Section 101 ruling without making a ruling under Section 102, 103 or 112 is presumptively missing issues. Less emphasis on Section 101 does not necessarily mean fewer findings of invalidity – it simply means findings that provide meaningful guidance to innovators.

Let us turn first to Sections 102 and 103. Post-KSR v Teleflex, formerly confounding questions of novelty and non-obviousness are now readily soluble and deserving of rigorous application. In Planet Bingo v VKGS, for example, the Federal Circuit applied the two-part Alice test for abstractness in its Section 101 invalidity ruling. The decision depended heavily on analogical reasoning in finding abstractness, noting similarity “to the kind of ‘organizing human activity’ at issue in Alice” and linking the minimisation of security risks during Bingo ticket purchases to Bilski’s “risk hedging” and Alice’s “mitigation of settlement risk”. In finding no inventive concept, the opinion quotes Alice, stating that “the function performed by the computer at each step of the process is purely conventional”.

To the extent that Planet Bingo’s claims to a computer-implemented storage/retrieval mechanism for Bingo numbers relied on purely conventional technology, a novelty or non-obviousness analysis would have been more apt. Better to identify prior art pertinent to the declared need that, combined with existing gaming technology, would address that need and then determine the obviousness of combining such art. Invalidity likely would have been found, but without the perception this was just an arbitrary case of another software patent bites the dust.

And what of Section 112? Section 101’s exclusionary principle is driven by an aversion to granting monopolies over the “building blocks of human ingenuity” – a concern better addressed through Section 112. With Nautilus v Biosig the Supreme Court provided a meaningful tool for reining in overbroad claims which risk impeding future discovery. The Federal Circuit has already shown signs of a post-Nautilus Section 112 revitalisation. In Interval Licensing v AOL it found claims relying on displays of content in an “unobtrusive manner that does not distract a user” to lack the reasonable certainty required of terms of degree by Section 112 after Nautilus. The opinion reiterated the Supreme Court’s aversion to making artisans work from within an “innovation-discouraging zone of uncertainty”.

Section 112 is especially effective in combating risks associated with means-plus-function claiming. In Augme Technologies v Yahoo!, the Federal Circuit found “means for” claim language indefinite, emphasising that “simply disclosing a black box that performs the recited function” is not sufficient to render a means-plus-function term definite. These rulings effectively address the same concern undergirding Section 101. However, they do so with precision as opposed to broad edicts and without suggesting a disposition against particular industries.

To be sure, Section 112 jurisprudence would benefit from further refinement. One area deserving attention is the prevalence of so-called ‘nonce’ words, by which patentees can evade means-plus-function scrutiny with dubiously structural language (eg, ‘mechanism for’). Neither is Section 103 perfectly refined. This was evidenced in K/S HIMPP v Hear-Wear, where a divided Federal Circuit panel embraced a strict evidentiary approach denying patent examiners recourse to common sense. Yet compared to what Circuit Judge Plager dubbed “the murky morass that is Section 101 jurisprudence”, fine tuning these alternative provisions is light lifting.

This column is the second in a three-part series

David J Kappos is the former director of the US Patent and Trademark Office and a partner at Cravath, Swaine & Moore, New York, United States

The author would like to thank Christopher P Davis for his assistance on this column

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