With Amy Coney Barrett confirmed, Donald Trump’s outgoing administration has succeeded in installing one-third of the justices on the US Supreme Court, each one an avowed “textualist”.
But could Barrett’s confirmation affect the court’s approach to issues of patentable subject matter under 35 USC section 101?
When the court last visited section 101 in Alice v CLS Bank International (2014), the court was undivided on the construction of the statute and its implicit mandate that “laws of nature, natural phenomena, and abstract ideas are not patentable”.
Yet the test put forth in Alice has been criticised as being vague and unpredictable, and despite calls for the Supreme Court to clarify the Alice standard, including from the US Court of Appeals for the Federal Circuit, the Supreme Court in January 2020 denied five petitions for certiorari directed to section 101 issues.
This year, in American Axle & Mfg v Neapco Holdings (2020), the Federal Circuit held that a drive shaft with a liner tuned to attenuate vibrations was directed to a patent-ineligible law of nature because tuning the liner is an implementation of Hooke’s Law—a method for calculating a vibrational frequency.
Historical cases
With a certiorari petition likely to be filed in the closely-watched American Axle case, the Supreme Court may soon decide whether to revisit section 101. If it does, the presence of yet another textualist has the potential to impact the status quo of patent eligibility, in particular, by emboldening Justice Neil Gorsuch who has already proved to be an active voice in patent matters since he took his seat in April 2017.
Examining how the court has historically split on patent issues over the last half-century is helpful in understanding which direction the court might take on patent eligibility.
In the 1970s and 1980s, as computers were becoming more mainstream, the Supreme Court ruled on a number of notable—and divisive—patentability cases.
In 1978, the court decided Parker v Flook by a vote of 6–3, holding that computer implementations of formulas or algorithms were not patentable. In the early 1980s, the court twice resolved section 101 cases by an even narrower vote (5–4) but, this time, in favour of patentees. In Diamond v Chakrabarty, (1980), the court held that an artificially engineered living organism is patentable.
In Diamond v Diehr (1981), the court held that computer-controlled machines that alter physical materials are patentable. Notably, liberal and conservative justices both joined in the majority decisions to restrict patent rights in the 1970s decisions and to expand patent rights in the 1980s decisions.
”Examining how the court has historically split on patent issues over the last half-century is helpful in understanding which direction the court might take on patent eligibility.”
Joshua Reisberg
Aaron Savit
The Supreme Court did not revisit section 101 patentability until almost 20 years later. In a series of four cases starting with Bilski v Kappos (2010) and culminating in Alice in 2014, the court voted unanimously against patentees, a marked contrast to the divided decisions of the 1970s and 1980s. In fact, during the period spanning these decisions—from 1999 to 2018—the court ruled unanimously in 28 of 39 patent cases (72% of the cases).
A change in direction?
Division has once again emerged in the court, which coincides with Gorsuch’s addition to the bench in 2017. Writing for a narrow and conservative 5–4 majority in SAS Institute v Iancu, Gorsuch held that when the US Patent and Trademark Office (USPTO) institutes an inter partes review (IPR) to reconsider an issued patent claim, the USPTO must decide all of the claims that the petitioner has challenged.
Justice Clarence Thomas, writing for the majority, held in Oil States Energy Servs v Greene’s Energy (2018) that IPRs do not violate the US Constitution by depriving patent holders of their property rights. Although the court decided the issue by a 7–2 vote, three liberal justices filed their own concurring opinion while Gorsuch and Justice John Roberts dissented.
In 2019, Justice Sonia Sotomayor, writing for the 6–3 majority in Return Mail v US Postal Service (2019), held that under the 2011 America invents Act, the US government was not a “person” who could institute an IPR. Sotomayor was joined by all five conservative justices, while the remaining three liberal justices (Ruth Bader Ginsburg, Stephen Breyer, and Elena Kagan) dissented.
A textualist approach
Gorsuch has played a notably active role in patent cases compared to other justices in recent years, especially in terms of dissent. He has heard a total of eight patent cases and has written one majority opinion and three dissenting opinions. Through his dissents, Gorsuch has challenged aspects of the patent system which he views as unconstitutional.
In two of his dissents, Thryv v Click-To-Call Techs (2020) and Oil States (2018), Gorsuch strongly signalled his belief that the provision for administrative patent judges with life tenure violates the Appointments Clause of the US Constitution and is unconstitutional.
On October 13, the court granted certiorari in Arthrex, which deals with precisely this issue. In Arthrex v Smith & Nephew (2019), the Federal Circuit held that judges of the Patent Trial and Appeal Board (PTAB) were principal officers appointed in violation of the US Constitution and that the proper remedy was to judicially eliminate their “for-cause removal protections”.
Although Thomas and Sotomayor have written more majority opinions, no sitting justice has authored dissenting opinions in patent cases at the rate of Gorsuch. Moreover, as part of his dissents, Gorsuch has managed to garner support from liberal justices. In Thryv, Sotomayor joined with Gorsuch, who believed that time-bar determinations by the USPTO should be appealable.
In WesternGeco v ION Geophysical Corp (2018), Breyer joined with Gorsuch, who argued that a patentee should not be entitled to damages based on lost profits abroad.
Fact File
- 72%: percentage of patent cases in which the Supreme Court ruled unanimously during 1999-2018.
- 3: the number of Supreme Court justices appointed by President Trump.
Other than Roberts, none of the other conservative or textualist justices has joined in a Gorsuch patent dissent. This is not surprising. Indeed, the dynamics of patent cases are often quite complex. And unlike more divisive issues such as voting and reproductive rights, views on patent rights cannot readily be divided into conservative or liberal ideologies. Barrett’s presence on the court bench is unlikely to move the needle in any material way given that her prior decisions have shown no ideological allegiances in connection with IP.
A sympathetic ear
The presence of another textualist on the bench may, however, have an entirely different effect; Barrett’s presence may embolden Gorsuch. Although the Supreme Court has held for well over 150 years that the US Patent Act implicitly prohibits certain subject matter from becoming patented, nothing prevents the Supreme Court from overruling this body of precedent.
An “uncompromising textualist” jurist such as Gorsuch might take issue with the modern, judicially-imposed restrictions on patent eligibility, given that the US Constitution generally empowers Congress to regulate such matters. And Barrett, during her confirmation hearing, stated that it is not the role of the courts to make policy.
Consequently—although it is unlikely—section 101 issues of patentable subject matter might find a sympathetic ear among the textualists on the Supreme Court, if properly framed as an unconstitutional, judicial abrogation of congressional power.
How the court’s approach to section 101 issues will change ultimately depends on the nascent dynamic between the liberal, conservative, and textualist justices on the court. The next several patent cases will be closely watched for signs of emergent coalitions.
If the court grants certiorari in American Axle, which addresses section 101 directly, the resulting opinion may address the intersection of section 101 and the Constitution from a textualist perspective.
Whether that issue is addressed in the majority opinion or in a dissent is still anybody’s guess.
Joshua S. Reisberg is a partner at law firm Axinn. He can be contacted at: jreisberg@axinn.com
Aaron Z. Savit is an associate at law firm Axinn. He can be contacted at: asavit@axinn.com
Image: Shutterstock.com / Phil Pasquini
