Sherry Knowles (Knowles Intellectual Strategies, LLC) and Anthony Prosser, one of Knowles’ agents have written an engrossing article (18 J. Marshall Rev; Intell. Prop. L. 144 (2018) arguing that the Supreme Court has meandered so far from the statutory language of 35 USC s. 101 and its application in Le Roy v. Taitam (1832) that the Court’s reliance on its own questionable precedent, beginning with Funk Brothers, has led the Court to effectively delete the patent-eligibility of “discoveries” from s. 101. Because diagnostic methods are only rationally characterized as “discoveries”, I read their paper with interest. Ms. Knowles has been in the thick of the s. 101 debate since 2014, when the first PTO Guidelines on patent eligibility were issued. Dr. Prosser has a PhD in chemistry.
The once oft-quoted dictum from the Court in Le Roy – which reversed on novelty grounds – was: “A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable….” The authors argue that Funk Bros. would have been decided differently if the Court had followed Le Roy’s instructions, or even its own logic:
“He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” Funk Bros., 333 US at 129.
The authors quote the prescient concurrence by Justice Frankfurter that foreshadowed recent negative evaluations of claims to kits and controlled release dosage forms comprising multiple actives:
“Multi-purpose tools, multivalent vaccines, vitamin complex composites are examples of complexes whose sole new property is the conjunction of the properties of their components. Surely, the Court did not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may be prejudged. In finding [the Funk Bros.] patent invalid I have tried to avoid a formulation which…would lay the basis for denying patentability to a large area within existing legislation.”
The authors, using lengthy quotes from the major decisions, essential posit that the famous dictum in Chakrabarty that “laws of nature, physical phenomena, and abstract ideas have been held not patentable” is “the Court [needlessly] defining judicial exceptions to a federal statute.” (The decision turned on whether or not living beings were compositions or manufactures.) The authors also urge the Court to stop basing decisions on economic factors like preemption, which the Court is ill-equipped to carry out, and conclude that in Mayo, the Supreme Court “ultimately refused to apply the literal terms of s. 101 in light of its ‘better established’ deviating common law analysis….The Court’s ‘better established’ inquiry is its own case law. [As urged by the Solicitor’s Office] compliance with the Constitution and the associated federal statute, however, is not [a mere] invitation.”
The authors move on to a discussion of Myriad where “[T]he Supreme Court reached its apex in the 2013 case of [Myriad] where it eliminated any shadows of ‘consistency’ with the statutory language and instead head-on disobeyed it….In a strike of extraordinary judicial activism, the Supreme Court stated:
“ground-breaking, innovative, or even brilliant discovery does not by itself satisfy the s. 101 inquiry [citing Funk Bros.]”.
The authors continue:
“It is hard to imagine a more unconstitutional statement than the Supreme Court ruling that discoveries cannot be patented when the statute it is applying states that any invention or discovery can be patented. In other words, the Court says ‘A not B’ while the statute says ‘A or B.’…How should the Supreme Court handle patent eligibility issues? Literally apply the statue and legislative history! It works quite well. Review the proposed claimed patent subject matter on the basis of whether it describes anything made by man and whether it is an invention or applied discovery. If so, proceed to the [102,103,112] analysis….”
I could keep on summarizing this well-written well-researched paper for pages, but this blog is intended to aim you at novel and compelling arguments like the ones presented here, so that you can add them to your arsenal of s. 101 rebuttals. Unfortunately, the authors see little hope for a rescue by Congress and point out some of the failings of the amendments proposed by AIPLA, IPO and the ABA. In the end, this paper is a diagram of a failing family tree of patent rights. Sad.