Retired Justices of the Supreme Court have sat by designation with the US Courts of Appeal from time to time. Justice O’Connor, for example, has sat with all but two of the US Courts of Appeal — one of those being the Federal Circuit [link]. Perhaps the Federal Circuit should invite recently retired Justice Kennedy to sit with the Federal Circuit.
There would be pros and cons to such a move.
The pros that jump out at me are:
- It would be a good opportunity for a person of influence to see the docket demands of the Federal Circuit.
- It would provide the judges on the Federal Circuit with better insight into the thinking of the Supreme Court.
- It would allow the judges of the Federal Circuit an opportunity to show a person of influence just how messed up the law of patent eligibility has become.
- It would also allow the judges of the Federal Circuit to explain why they have to issue so many Rule 36 decisions each month.
The main con of such a move would be that the Federal Circuit might have to explain why some of its cases have marginalized the role of preemption in the patent eligibility analysis.
In the Supreme Court’s opinion in Alice v. CLS, the Court wrote:
“We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).
We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra,at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).
At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U.S., at ___, 132 S.Ct., at 1293-1294. At some level, “all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___, 132 S.Ct., at 1293. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). “[A]pplication[s]” of such concepts “`to a new and useful end,'” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).
Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “`buildin[g] block[s]'” of human ingenuity and those that integrate the building blocks into something more, Mayo, 566 U.S., at ___, 132 S.Ct., at 1303,thereby “transform[ing]” them into a patent-eligible invention, id., at ___, 132 S.Ct., at 1294. The former “would risk disproportionately tying up the use of the underlying” ideas, 2355*2355 id., at ___, 132 S.Ct., at 1294, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2354-55 (2014).
In 2015 in Ariosa v. Sequenom, the Federal Circuit had this to say about preemption:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S.Ct. at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)(emphasis added).
In 2017, the Federal Circuit made these comments about preemption:
But we have consistently held that claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption. See, e.g., Synopsys, 839 F.3d at 1150 (holding that an argument about the absence of complete preemption “misses the mark”); FairWarning, 839 F.3d at 1098 (“But even assuming that the . . . patent does not preempt the field, its lack of preemption does not save these claims.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1320-31 (Fed. Cir. 2016) (same); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 701, 193 L.Ed.2d 522 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to [a particular] setting do not make them any less abstract.”). As we have explained, “questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 2511, 195 L.Ed.2d 841 (2016). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to patent-ineligible subject matter.
Return Mail, Inc. v. US Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017).
And, in 2018, it is interesting that one of the judges who formed the Ariosa panel referred to a preemption argument as “irrelevant” during an oral argument. Namely, in the oral argument of EVERYMD. COM LLC v. FACEBOOK INC., No. 2017-2105 (Fed. Cir. Mar. 9, 2018) back in March, Judge Wallach made this comment:
So, on the list of cons, it might be a little awkward for the Federal Circuit to explain to Justice Kennedy how the concern that forms the basis for excluding abstract ideas, namely preemption, can be deemed “irrelevant” and moot, and has effectively been marginalized in multiple court decisions.
I don’t know how far-fetched of an idea it is that Justice Kennedy might sit by designation with the Federal Circuit. For those writing briefs for future appeals, they might not want to discount the preemption argument — when oral argument rolls around they might just be looking up at a retired Supreme Court Justice.
By the way, whether a claim preempts an abstract idea sounds an awful lot like a factual inquiry.