Patent bill should focus on stabilizing law, not wiping out precedent

On June 4-5, the Senate Judiciary Committee's Subcommittee on Intellectual Property held hearings to explore the potential effect of draft changes to 35 U.S.C. Sections 100, 101 and 112 proposed by Sens. Thom Tillis (R-N.C.) and Chris Coons (D-Del.) -- the respective chair and ranking member of the subcommittee -- and supported by Reps. Doug Collins (R-Ga.), Hank Johnson (D-Ga.) and Steve Stivers (R-Ohio). A third hearing on the draft changes recently took place on Tuesday.

The need to reform the legal framework that presently controls patent eligibility is widely known. Indeed, the table for these hearings was well-set by the Hon. Paul Michel, former chief judge of the U.S. Court of Appeals for the Federal Circuit, during the opening panel of the June 4 hearing: "I've spent 22 years on the Federal Circuit and nine years since dealing with patent cases and I cannot predict in a given case whether eligibility will be found or not found. If I can't do it, how can bankers, venture capitalists, business executives and all of the other players in the system make reliable predictions and sensible decisions?"

The sponsors of the draft changes have made it clear that their efforts are driven by a desire to iron out these uncertainties in the law. As stated by Sen. Coons: "Today, U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine." Rep. Johnson has commented similarly: "Section 101 of the Patent Act is foundational to the patent system, but recent court cases have upset what should be solid ground."

Fair enough. As patent attorneys, we can readily (and colorfully) attest to the vagaries of divining patent eligibility under the test set out by the U.S. Supreme Court in Alice v. CLS Bank, 573 U.S. 208 (2014). Unpredictable applications of the Alice test often leave our clients in a quandary as they attempt to prioritize and justify their research and development budgets, to leverage their existing patent assets, and to defend themselves against enforcement actions filed by competitors and non-practicing entities. Carefully and thoughtfully unwinding these conundrums is how we attorneys earn our keep.

Ironically, however, our experience with the post-Alice hydra leads us to challenge the central premise that is driving the current bicameral draft changes to the law on patent eligibility, and to express concern over the current legislative initiative's prospects to remedy jurisprudential unpredictability on this issue.

At the heart of the draft changes proposed by Sens. Tillis and Coons is the belief that Congress can and should wipe away the troublesome and often contradictory judicial precedent that has attempted to clarify the requirements and limits of Section 101. In fact, the draft changes proposed by Sens. Tillis and Coon explicitly state their intent to include the following language as an "Additional Legislative Provision": "No implicit or other judicially created exceptions to subject matter eligibility, including 'abstract ideas,' 'laws of nature,' or 'natural phenomena,' shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated."

Setting aside the tricky logistics of codifying such an intent, the belief that Congress can or should legislate away a century of case law interpreting and applying the law of patent eligibility is a fallacy that should be addressed. In our collective years of practice, we struggle to recall a legislative provision that is so facially clear that it is immune from judicial interpretation -- so bulletproof that any attempt to interpret its plain language would categorically be reversed on appeal. The current proposal is no exception. The incremental changes to Sections 100, 101 and 112 proposed by Sens. Tillis and Coons in their draft changes will not only require judicial clarification (e.g., the proposed addition to Section 100(k) of a definition for "useful" employs broad and vague language that will need to be examined for its meaning and effect), but will also require comparison to existing case law to imbue those changes with contextual meaning.

To illustrate this point, debate has already taken place over the effect of the draft changes' stated intent to abrogate the present judicial precedent regarding the ineligibility of natural phenomena under Section 101. Within days of the publication of the draft changes, the ACLU held an "urgent phone briefing" warning that the draft changes would abrogate the Supreme Court's ruling in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), and permit corporations and individuals to patent and own the exclusive rights to human genes. The Washington Post published a well-trafficked op-ed on this issue on June 3. These rumblings were significant enough that Sen. Coons pushed back on them in his opening statement in the June 4 hearing, calling the Washington Post article "significantly misleading" and stating his intent not to overrule Myriad, despite the fact that the draft changes portend Myriad's demise.

Legislative clarification of Section 101 is warranted. Such efforts are not inherently doomed by an intransient, renegade judiciary. However, to be successful, Congress must appreciate and accommodate the reality of our constitutional system. As scattered as the current case law may be with respect to patent eligibility, it is carefully crafted and borne of mostly defensible articulations of public policy. Above all, it is a good faith -- albeit incremental, disparate and sometimes unclear -- attempt to fill the gaps in the law that Congress has provided to date.

Patent law is as dynamic as the inventions and inventors that it protects. If the current legislative effort is to improve the status quo, Congress should focus its efforts on stabilizing the current law by providing the judicial branch with as many guideposts of patentability as possible -- trimming back, refining and strengthening judicial precedent, not abrogating it wholesale. Wiping the judicial slate clean would demonstrate a failure to understand the interdependence and constitutional workings of the legislative and judicial branches, and will only deepen the quagmire of uncertainty that currently infects the law on patent eligibility -- harming the very patentholders and would-be inventors that Congress means to protect through reform. 