One Way to Make America Great Again? Protect Patented Innovation!

I have a hard time listening to Washington politicians these days. All I hear is obfuscation and finger-pointing. Nothing seems to get done. And while the finger-pointing seems worse than ever, the inability to get anything done is par for the course.

If neither Congress nor the President can provide results, how can we get this country back on track?

One suggestion: Start protecting inventors, as envisioned by our forefathers. No new laws need be passed. No executive orders need to be issued. Instead, our courts must focus on the proper consideration of innovation under the U.S. Constitution and under subsequent law and precedent.

By protecting patented innovation, we will infuse the economy, provide jobs to support new technologies, and support a vibrant network of small companies and startups that provide these innovations.

The idea of patent protection is simple on its face: in return for public disclosure of the innovation, grant to the innovator a limited right to exclude others from doing the same thing he invented. However, the complexity of today’s important innovations—in software, biotechnology, and pharmaceuticals—makes understanding and ruling in patent cases difficult. There are no shortcuts. Yet, these days, shortcuts abound.

The Supreme Court’s Alice Corp. v. CLS Bank Int’l. decision is being widely used by federal district courts alongside motions to dismiss on the pleadings to shirk complex patent cases by tarring them all with the same simplistic brush: the inventions can’t be patent-eligible under section 101 if they’re abstract. Therefore, case dismissed and patent invalid! Even before claim construction or any discovery, much less any expert testimony.

So district court judges have mastered a new tool to control their docket. That might not be so bad on its own. However, by determining in a vacuum that the patent-in-suit does not cover “patent-eligible subject matter,” courts are shunting aside often tough and even troublesome patent cases. Then they’re invalidating the patent also—on the pleadings!

Is this even proper under Federal Rule of Civil Procedure 12? I think not. It’s a shortcut. Since Alice, most cases falling prey to this resolution are cases involving software. And—oh wait!—isn’t software found in most inventions these days? Yes, it is.

Did the court learn to make these quite efficient decisions all on its own, you ask? Of course not. Savvy defense counsel have mastered the technique of making analogies of an invention to something else quite basic; because of that, the patented invention must be invalid as not patent-eligible under section 101. Because it’s so simple, there are no “facts,” and the court can invalidate the patent right there on the pleadings as a matter of law.

Indeed, since Alice, courts have been ruling on what they perceive to be patent-ineligible subject matter—not after analyzing the claimed invention, but by referring broadly to a patent’s field of invention, the problems a patent sets out to solve, even generalizations about what the patent means to the court.

A motion to dismiss under Rule 12 is like a shiny penny. Once it appears, it’s all the court sees. “Wow, this analogy reveals to us a quick way out of this complicated and time consuming case at the get-go.”

Here are just a few analogies that I have seen in court hearings and decisions:

  • The invention is like a barista remembering how a customer likes his coffee.
  • The invention is like a dinosaur toy in the toy box, but with a red sticker to identify it.
  • The invention is like the age-old activity of shelving books in a library.
  • The invention is like sorting socks in a drawer.

Why not simply argue that a mechanical reaper is really just a pair of human hands? What happened to analyzing the actual claims and claim terms of the patent? What happened to the doctrine that all claim limitations must be considered individually and in combination? And what happened to the statutory presumption of validity that’s been enshrined in patent law since 1952?

All of these are still valid doctrines, right? Oh, and surprise: These doctrines all require more in-depth analysis than a simple analogy.

Is this technique too good to be true? Of course it is. It’s a marked departure from the historical analysis of patent claims. Disturbingly, this technique can be used to invalidate any patent, because it’s based on broad generalities and assumptions rather than precisely defined and examined patent claims. While some applaud the courts’ actions as helping to extinguish so called “bad patents,” valid and enforceable patents are being destroyed as well.

The resulting destruction of valuable intellectual property damages America’s innovating community.

The current arbitrary application of Rule 12 dismissals to invalidate patents is breaking the Constitutional promise the Federal government made with inventors—precisely to encourage the disclosure of those inventions and discoveries in the first place.

Without the promise of protection, what will motivate inventors to share their greatest discoveries? If those discoveries are kept secret, then others cannot build upon them.

Without patent protection, we are losing our competitive edge. If patentees cannot protect their inventions, why should they invent? Why stay? Innovators will move to other countries that are bolstering protection of innovation. Further, some countries do not even have an “eligibility” restriction: the European Union has no equivalent to section 101, and China has recently proposed guidelines to promote software patents. See, e.g., Feng, et al., China may lift curbs on software patents: SIPO proposed revisions to Examination Guidelines.

So, what tools do we have to combat this trend to denigrate our greatest discoveries? As lawyers, we can raise the usual oppositions to such superficial analysis. We can, as I am here, argue for upholding the traditional doctrines that work under the presumption of validity. But, if courts are too blinded by the shiny penny, or find it more convenient to reach for it, we must be more creative.

Does denying a patentee his or her rights, for example, qualify as a taking of property without compensation? Is it a failure of due process when patents are invalidated as a matter of law, based upon no more than broad analogies extrinsic to the pleadings and the patent and unrelated to the claim terms, rather than on the claims themselves?

Case in point? A recent Federal Circuit panel upheld the district court in Evolutionary Intelligence v. Sprint et al., a case in which I will be filing petition on behalf of the patentee requesting rehearing and rehearing en banc.

It’s a case where a district court took a shortcut, obeying a facile analogy made by defendants, and the Federal Circuit punted—accepting the lower court’s ruling while conveniently overlooking the earlier PTAB decision upholding the claims over the prior art.

In short, the district court beat a path through the sometimes tangled garden, overlooking valid claims and a valuable pair of U.S. Patents. And the Federal Circuit trod the same easy path.

If you are as fed up as I am about the sorry state of patent protection, or have experienced Rule 12 invalidation as well, please consider drafting an amicus brief to tell your story and support our petition. Something has to be done to direct the courts’ attention to the harm these rulings are causing.

For more information, see my previous post.



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