Authored by David K. Mroz and Umber Aggarwal
The Honorable Giles S. Rich was a titan of patent law. He commonly is referred to as the "father" of the 1952 Patent Act, and he served as a judge at the U.S. Court of Customs and Patent Appeals (CCPA) and Federal Circuit for decades, where he interpreted the statutory provisions he wrote.1 Yet the Supreme Court has ignored Judge Rich’s views in recent years by narrowing the subject matter eligibility requirements of 35 U.S.C. § 101 in a way that Judge Rich did not intend.2 In doing so, the Supreme Court has upset the careful balance crafted in 1952 between Section 101 and the obviousness provisions of Section 103, and the patent system is now weaker and more uncertain because of it. The patent system needs another Judge Rich to fix these problems.
The need for the Patent Act of 1952 originated because the patent laws of the time were confusing, weak, and difficult to apply, in part because of the Supreme Court precedent that had developed up to that point.3 For example, in Cuno Engineering Corp., which issued in 1941, the Supreme Court held that patentability required a "flash of creative genius" without further defining what that meant.4 The patent system had become so weak that the Patent Office became fearful it would be strong-armed by the Justice Department or Federal Trade Commission, both of which were "antipatent."5
The Patent Act of 1952 strengthened the patent system. The drafters broadened the application of Section 101 by adding "process" as a subject matter eligibility requirement.6 The drafters also included Section 103, which replaced the subjective and heightened "flash of creative genius" patentability standard with a more objective standard based on how a person of ordinary skill in the art would analyze the claimed subject matter in view of the prior art.7 Through these provisions, the Patent Act of 1952 carefully crafted a balance between Section 101 and Section 103. Section 101 provided a coarse filter that was satisfied as long as the claimed invention was not "frivolous" or "worthless,"8 and Section 103 provided a more stringent test for patentability.
The Patent Act of 1952 was the product of much thought and consideration, primarily by its two drafters, Judge Rich and P.J. Federico.9 As one Congressman stated, when seeking to ascertain the intent of Congress regarding the Patent Act of 1952, one "would do well to look to the writings" of the lawyers who influenced the statute because those lawyers, "far more than any member of the House or Senate[,] knew and understood what was intended by the language used."10 Judge Rich’s writings about the statute became especially impactful because many of them issued as binding authority while he was serving on the federal bench.
As a judge, Judge Rich often explained what the provisions of the Patent Act of 1952 meant and the impact they were supposed to have. In In re Bergy, he wrote that "[t]erms like 'inventive application' and 'inventive concept' no longer have any useful place" in patent law.11 He believed that the law had to "get away from the troublesome term ['invention']" because that term allowed examiners and judges to impute their subjectivity into the patentability analysis.12 Judge Rich warned that "looking for the presence of 'invention' in addition to unobviousness of 103 leads to weird and confused thinking" that "defeats the legislative purpose" of the Patent Act of 1952.13
Judge Rich also opined on the subject matter eligibility requirements in Section 101. He explained that "the terms [of Section 101] are broad" and that this provision extended to "[a]nything under the sun that is made by man."14 In In re Bergy, Judge Rich expressly rejected the argument that Section 101 "must be strictly construed."15 Perhaps most notably, Judge Rich held in State Street that business method patents should not be precluded and should be governed by the same legal requirements as other subject matter areas.16
In the 1980s, the Supreme Court applied Section 101 broadly. It issued two opinions, Diamond v. Diehr and Diamond v. Chakrabarty, explaining that Section 101 extended to all subject matter "under the sun that is made by man."17 This "under the sun" concept came from Committee Reports that accompanied the Patent Act of 1952.18
The version of Section 101 currently in effect is the same as the version in the Patent Act of 1952. Yet, in recent years, the Supreme Court has narrowed Section 101 in a way that Judge Rich did not intend. In Mayo19 and Alice,20 the Supreme Court applied the strict and much publicized two-part test for patent-eligible subject matter. Even worse, in both cases, the Supreme Court relied heavily on the "inventive concept" term that Judge Rich had worked so hard to eliminate from the patentability analysis.21
In focusing on the "inventive concept" standard, the Supreme Court has blurred the carefully crafted line between Section 101 and Section 103 described above. In many ways, the Supreme Court has returned the patent system to its pre-1952 state of uncertainty (i.e., when the "flash of creative genius" standard applied), and the patent system has suffered because of it, as patent prosecutors are unsure how to write claims, and litigants are unsure if asserted claims will survive Section 101 challenges in litigation.
Judge Rich prophetically warned that something like this could happen if the Patent Act of 1952 was construed out of context with what the drafters intended:
The doctrine of literalness has the weakness of leading to the misinterpretation, if the interpreter assumes a meaning different from that given to a term by the legislative drafter. True interpretation,therefore, requires that words in a statute be taken in the sense which the writers attached to them, unless the intent of someone other than the writer is sought.22
The current instability in patent law parallels the period before 1952. The same types of solutions Judge Rich employed back then to add strength and certainty to the patent system would apply with equal force today. Patent law just needs another Judge Rich to come along and put those changes into effect.
1 James F. Davis, "Judge Giles S. Rich, His Life and Legacy Revisited," 2:1 Landslide, A Publication of the ABA Section of the Intellectual Property Law 8, 9 (2009).
2 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
3 Davis, supra n.1.
4 Cuno Eng’g Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).
5 Davis, supra n.1.
6 35 U.S.C. § 101 (Revision Notes and Legislative Notes).
7 Davis, supra n.1; Section 101 Legislation Task Force, Proposed Amendments to Patent Eligible Subject Matter Under 35 U.S.C. § 101 3 (2017).
8 Application of Nelson, 280 F.2d 172, 179 (C.C.P.A. 1960) ("Anything is useful which is not entirely frivolous or worthless, and not detrimental to the well-being, or injurious to the morality of the public, or of a character to mislead the public to its disadvantage.").
9 Hon. Giles S. Rich, Congressional Intent—Or, Who Wrote the Patent Act of 1952? in Patent Procurement And Exploitation 61 (1963) reprinted in In Nonobviousness—The Ultimate Condition of Patentability 1:11 (John F. Witherspoon ed., 1980).
10 Id. at 1:14 (quoting Congressman Crumpacker of the patent subcommittee).
11 In re Bergy, 596 F.2d 952, 961 (C.C.P.A. 1979).
12 Hon. Giles S. Rich, Why and How Section 103 Came to Be, in In Nonobviousness—The Ultimate Condition of Patentability 1:201, 1:209 (John F. Witherspoon ed., 1980).
13 Hon. Giles S. Rich, "The Vague Concept of 'Invention' as Replaced by Section 103 of the 1952 Patent Act," 46:12 Journal of the Patent Office Soc’y 855 (1964) reprinted in In Nonobviousness—The Ultimate Condition of Patentability 1:401, 1:415-416 (John F. Witherspoon ed., 1980).
14 Bergy, 596 F.2d at 987; State Street Bank v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir.1998).
15 Bergy, 596 F.2d at 987.
16 State Street, 149 F.3d at 1375.
17 Diamond v. Diehr, 450 U.S. 175, 182 (1981); Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
18 S.Rep.No.1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep.No.1923, 82d Cong., 2d Sess., 6 (1952); Section 101 Legislation Task Force, supra n.7 at 4.
19 Mayo, 566 U.S. at 66.
20 Alice, 134 S. Ct. at 2347.
21 Mayo, 566 U.S. at 72-73; Alice, 134 S. Ct. at 2357.
22 Rich, supra n.9 at 1:1, 1:2.
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