“With Mayo, the Supreme Court has usurped Congressional authority over patentability…. If this were happening in a more mainstream, high-profile area that touched the daily lives of Americans, this would undoubtedly be viewed as a Constitutional crisis.”

The state of patent eligibility in America is shocking. Between the passage of the 1952 Patent Act and 2012, when the U.S. Supreme Court decided Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the patent eligibility threshold was an exceptionally low hurdle. The law and policy supporting a low patent eligibility threshold was simple: You cannot know where innovation will go and having a high or even intermediate threshold could cut new fields of innovation off before they are able to flourish simply because they were new and did not conveniently fit into preconceived categories. Of course, that is precisely what innovation is supposed to be: new.

The extremely high patent eligibility threshold mandated by the U.S. Supreme Court in Mayo is antithetical to the very purpose of the patent eligibility requirement enacted by Congress, and anathema to any common sense understanding of innovation and how innovation occurs, is funded and evolves. The fact that innovation defies characterization should not make it patent ineligible.

Congress Contemplates a Fix

A group of Senators and Representatives are currently considering a legislative fix to this patent eligibility debacle created by the Supreme Court and perpetuated by a Federal Circuit unwilling to define the contours of a sensible patent eligibility test. These talks, which are being held in closed-door roundtable format, will seek legislative language to introduce soon. It is anticipated that bills will be introduced in both the House and Senate sometime this summer. What those bills will look like seems to be genuinely up in the air—or perhaps it’s better to say open for discussion.

If the discussion should turn to the one thing Congress could do that would have the most impact, the answer would be clear. In order to have the most immediate, positive impact Congress must expressly overrule Mayo. The root of all the patent eligibility evil lies with that single Supreme Court decision.

Mayo Mischief

The real mischief of Mayo is found in the fact that the Supreme Court intentionally chose not to apply 35 U.S.C. 102 (novelty), 35 U.S.C. 103 (obviousness) and 35 U.S.C. 112 (description) to evaluate the patent claims at issue. The Solicitor General of the United States specifically argued that the Supreme Court should look to those other sections of the statute as the Court itself commanded be done in Diamond v. Diehr , 450 U.S. 175 (1981). For example. Justice Breyer, writing for a unanimous Supreme Court, refused what he called “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under §101.”

Simply put, Justice Breyer and the entire Supreme Court were wrong, period. Section 101 is not the “better established inquiry,” as then Associate Justice William Rehnquist explained in Diehr, writing for the Supreme Court in that decision that considering novelty under Section 101 was wholly inappropriate. “It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis,” Rehnquist wrote. “This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Despite this admonition about dissecting claims into old and new elements, the Supreme Court’s ruling in Mayo requires precisely that from decision makers.

On the issue of novelty being considered under the rubric of a Section 101 analysis, Rehnquist wrote:

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty.

Considering what is new has been shoehorned into Section101 by the Supreme Court in Mayo because the Court in Mayo requires consideration of whether the claim being analyzed contains routine, well-established and/or conventional steps, for example. There is simply no other way to interpret this additional layer of consideration—hunting for something that is more than routine, well-established and/or conventional is precisely the domain of the novelty requirement embodied in Section102. That was one of the key holdings in Diehr, which the Supreme Court obviously overruled in Mayo even if they did not acknowledge or understand the consequence of their new test.

Today, thanks to Mayo, decision makers consider whether claims are new, nonobvious and even properly described all under a Section101 patent eligibility analysis, which makes the remainder of the patentability sections of the statute superfluous. Indeed, with Mayo, the Supreme Court has usurped Congressional authority over patentability; an authority that is explicitly granted to Congress in the Constitution itself. This usurpation of power is not only wreaking havoc on American innovation, but it has wrought havoc on the delicate balance of power between the Supreme Court and Congress. If this were happening in a more mainstream, high-profile area that touched the daily lives of Americans, this would undoubtedly be viewed as having created a Constitutional crisis.

Stuck at the Threshold

Worse, the decisions required by the Supreme Court as the result of Mayo are made without information or thoughtful consideration. Because the issue of patent eligibility is a threshold matter, determination about whether an innovation is patent eligible are made without applying a single piece of prior art, without considering priority dates or availability of references or when teachings were made public. It is a true mystery as to how an innovation could be considered to be patent ineligible because it contains only that which is conventional, well-established or routine, but yet no patent examiner or defendant is able to find prior art to question the validity of the claim under Sections102 or 103. If it is conventional, well-established or routine, surely there must be prior art? And if there is no prior art how could something be considered conventional, well-established or routine?

Worse still, Mayo also allows these decisions to be made without a claim interpretation. Black letter patent law—from the Supreme Court itself—requires the language of the patent claims, the entire written specification, and the prosecution history to be consulted prior to determining the meaning of a claim. Additionally, in litigation a district court judge may consider extrinsic evidence, including expert testimony. Yet, when it comes to patent eligibility determinations under Mayo, decision makers somehow know what a claim covers without a proper and complete claim interpretation.

At some point, whether Congress overrules Mayo expressly, the Supreme Court comes to its senses, or the Federal Circuit grows up and appropriately narrows the decision to its facts, Mayo will be no longer. The question is whether it will be a quick and clean death blow from Congress that sets the industry free and allows innovators to flourish, or whether it is a slow and languishing death over time that occurs only after America has completely forfeited new innovation industries. Whatever the case may be, we will eventually look back and shake our head at the tragedy of Mayo and wonder why it took so long for our leaders to do the right thing.

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