Moderating Mayo

Bernard Chao*

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Introduction

Patent law has long held that laws of nature, natural phenomena, and abstract ideas are not patentable. At the same time, many patents cover applications that grow out of these fundamental concepts. Courts have recognized that such applications are patentable. Observers had hoped that the Supreme Court’s decision in Mayo v. Prometheus would illuminate the line between unpatentable concepts and patentable applications of those concepts. Unfortunately, the recent decision issued by the Supreme Court raises more questions than it answers.[1] Although the Court gave a variety of reasons to explain why Prometheus Laboratories’ (Prometheus) patents were not patent-eligible, the Court’s primary rationale involved dissecting Prometheus’ claim. The Court found that the limitations did not add “enough” to the law of nature that lies at the heart of Prometheus’ invention.

Because the Court never explained what “enough” is, critics have been quick to deride Mayo.[2] One commentator went so far as to say that the decision “creates a framework for patent eligibility in which almost any method claim can be invalidated.”[3] Although I agree with the Supreme Court’s ultimate decision, I am also concerned that its reasoning unnecessarily jeopardizes many deserving patents that have not previously been thought to have any vulnerability under 35 U.S.C. § 101—the federal patent statute that defines what types of subject matter may be patented.[4] By failing to provide a framework for determining when additional limitations can change an unpatentable concept into a patentable application, the Supreme Court has cast doubt on a host of less controversial patents. But the decision does not have to wreak the havoc that many fear it will. There is room for a more restrained understanding of Mayo.

 

An Empirical Study of the Role of the Written Description Requirement in Patent Examination

Dennis Crouch[*]

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Introduction

An en banc Federal Circuit recently confirmed that § 112 of the Patent Act,[1] as properly interpreted, includes a written description requirement that is separate and distinct from the enablement requirement.[2]  The written description and enablement doctrines both encourage applicants to fully disclose their inventions, but the doctrines respectively focus on proof that the patentee (1) has possession of the invention;[3] and (2) has enabled others to make and use the invention.[4]  The en banc-challenger argued instead that the patent statute spells out a unified requirement of a written description that enables and that the separate written description requirement should be eliminated.[5]

The U.S. Patent & Trademark Office (USPTO) is the executive branch agency tasked with the responsibility of examining patent applications to determine whether patent rights should issue.[6]  Once a patent issues, the constitutionally guaranteed exclusive rights[7] can be enforced in federal courts.[8]  Although the USPTO has no direct role in the infringement dispute between the patentee Ariad[9] and the accused infringer Eli Lilly,[10] the government submitted an amicus curiae brief indicating its continued support for the written description requirement as a tool that the USPTO uses to eliminate claims during the patent examination process.[11]  The government argued in its brief that a separate written description requirement is “necessary to permit USPTO to perform its basic examination function.”[12]  However, when pressed during oral arguments, the government could not point to any direct evidence supporting its contention.[13]

This Essay presents the results of a retrospective empirical study of the role of the written description requirement in patent office examination practice.  It is narrowly focused on rebutting the USPTO’s claim that the separate written description requirement serves an important role in the patent prosecution process.  To the contrary, my results support the conclusion that it is indeed “exceedingly rare that the patent office hangs its case on written description.”[14]

What Tool Works Tells Us About Tailoring Patent Misuse Remedies

By David McGowan[*]

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Abstract 

This essay argues that the reasoning of the Supreme Court’s opinion in Illinois Tool Works, Inc. v. Independent Ink, Inc. undercuts the reasoning behind the default remedy for patent misuse, which is that the patent in question may not be enforced against any party, not merely against the victim of the alleged misuse, until the misuse ceases and its effects are dissipated. Because the remedy is not tailored to any probable harm from misuse, courts should take advantage of the Tool Works reasoning to pare back misuse remedies. 

Circuit courts now have authority to tailor misuse remedies to actual harm in cases where the misuse involves a tying arrangement that meters the use of a patented good. In cases involving other forms of misuse, reform must await further Supreme Court action. Hopefully, that action will come soon.