“if we are going to impose a standard on the courts, it has to be something that’s manageable and it has to be something that’s sufficiently concrete…”.
by: Ben Brownlow, SVP Licensing Dominion Harbor | March 31, 2018
Last Tuesday the U.S. Supreme Court (SCOTUS) heard oral arguments in Gill v. Whitford, a case which challenges the constitutionality of gerrymandering – the state legislative strategy employed by both political parties to define the contours of state electoral maps for political advantage. What does political gerrymandering have to do with patent law, you might ask? Well, nothing on its face.
Admittedly, the legal questions and affected rights in Alice and those presented in Gill are very different. Further, SCOTUS typically disfavors intervening in matters that are primarily political, such as gerrymandering. However, SCOTUS’s reluctance to impose an unworkable and confusing standard on lower courts in the present case would have been helpful during its consideration of the issues presented in Alice.
After admitting during oral argument that gerrymandering, writ large, is a distasteful practice, Alito went on to say that “if we are going to impose a standard on the courts, it has to be something that’s manageable and it has to be something that’s sufficiently concrete…”.[i] That certainly would have been a helpful sentiment when SCOTUS was considering its decision in Alice, which has resulted in a demonstrably unworkable standard for district courts in determining the patentability of software patents.
Counsel representing the original plaintiffs challenging the constitutionality of gerrymandering in Gill v. Whitford implored SCOTUS to take up the issue since elected state and federal legislators are unlikely to do so since they not only favor the practice, they created it. This stands in opposition to Alice, where SCOTUS was certainly not the last hope for defining the contours of patentable subject matter defined by Congress in 35 U.S.C. Sec. 101.
In its 2014 Alice decision, SCOTUS applied the two-part test for determining patent eligibility from an earlier decision (Mayo v. Prometheus) to hold that the software patents claims at issue in the case were not patent eligible because they were (1) directed to patent ineligible concept (e.g., abstract idea); and (2) do not add a sufficiently inventive concept to transform the patent ineligible concept into a patent-eligible invention. The fallout from the Alice decision and its test for software patent eligibility has been an inconsistent application of this confusing and unworkable standard in federal circuit courts. This has led to software patents claims being upheld as patentable before one Article III court where the same or similar claims would have been found unpatentable in another jurisdiction, or even in the same jurisdiction before a different judge.
Justice Alito is correct that SCOTUS should carefully consider whether the standards it imposes on lower courts are sufficiently concrete and workable to ensure some level of consistency in the application of the law. Perhaps some of the Justices regret some of the unworkable and abstract legal tests they have established in other areas, such as patent law?
Maybe Justice Alito should have expressed similar concerns when considering the facts presented in the Alice case. Luckily for patent owners, 2018 CAFC decisions in Berkheimer and Aatrix established that the second prong of the Mayo inquiry, as applied to software patent claims, may require factual findings regarding the question of whether or not the claims perform well-understood, routine, and conventional activities prior to issuing summary judgment or a dismissal on the pleadings. But don’t be surprised if these cases end up before SCOTUS for additional consideration and confusion.