Where are You, Congress? Alice v. CLS Bank and “The Case Against Patents”

By: Stuart P. Meyer

A recent episode of NPR’s “Planet Money” was entitled “The Case Against Patents.”  Several notable commentators in that episode questioned whether patents help or hinder innovation, whether history supports the benefits of a patent system, and whether patent terms should be tinkered with to determine the amount of protection that is optimal from various socio-economic perspectives.  I am delighted every time this issue is brought up, since the appropriate balance of rights between innovators and society is anything but static.  As reasonable royalty rates fluctuate under case law, as infringement and validity standards shift, and as patents become commodities traded outside of traditional M&A situations, the fulcrum is certain to shift in one direction or the other. 

The Supreme Court gave more than a little consideration to such issues in Alice v. CLS Bank.  In fact, the very focus of this unanimous opinion was on this balance:

We have described the concern that drives [the judicially-created exclusion for laws of nature, natural phenomena and abstract ideas] as one of pre-emption.  … Laws of nature, natural phenomena, and abstract ideas are “‘”the basic tools of scientific and technological work.”’” (slip op. at 5-6)  

As the three sets of quotation marks here suggest, the Court was reciting language from not only one of its opinions (Myriad), but  also a second (Mayo) and a third (Benson). 

All four of these opinions explicitly state the policy concerns driving the exclusion.  

• Alice: [I]n applying the § 101 exception, we must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more. (slip op. at 6)
• Myriad: [W]ithout this exception, there would be considerable danger that the grant of patents would tie up the use of such tools and thereby inhibit future innovation premised upon them.  This would be at odds with the very point of patents, which exist to promote creation. (slip op. at 11)
• Mayo: [M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would to promote it. (slip op. at 2)
• Benson: Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. (409 U.S. 63, 65)

(in all cases, excluding internal quotation marks, brackets, and citations). 

And all four of these opinions also expressly worry about over-application of the exclusion: 

• Alice: [W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law. (slip op. at 6)
• Myriad: The rule against patents on naturally occurring things is not without limits. (slip op. at 11)
• Mayo: The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. (slip op. at 2)
• Benson: It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology.  Such is not our purpose.  (409 U.S. at 71) 

Sounds like the Court is thinking about the right things, doesn’t it? The problem, though, is that the policy considerations should not be—indeed are not—the province of any Article III court to decide.  The Court is discussing these issues as justification for its own judicial “implicit exception” to the explicit language chosen by Congress.

It is healthy for commentators to propose methods for finding the right balance in patent law.  It is healthy precisely because it is not self-implementing, but instead serves as a preliminary vehicle for presenting and vetting ideas.  Those ideas are then available for refinement and debate in the forum our Constitution provides: Congress. Even where courts include their observations on possible policy matters, as long as it is in obiter dicta, that too can serve as helpful input to Congress.  

However, when the Court steps in and decides that the very language Congress chose to define as patentable subject matter needs some tweaking because taking it at face value “might tend to impede innovation more than it would tend to promote it,” a real question about separation of powers arises.  Astonishingly, all four of the opinions addressed above speak to this concern as well:  

• Alice: Congress “shall have Power … To promote the Progress of Science and Useful Arts.” (slip op. at 6, quoting constitutional mandate, emphasis added)
• Myriad: Concerns about reliance interests … are better directed to Congress. (slip op. at 16, n.7)
• Mayo: [W]e must recognize the role of Congress in crafting more finely tailored rules where necessary. (slip op. at 2)
• Benson: The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed. (409 U.S. at 73)

How is it that all four of these cases recognize Congress’s role in making the policy choices involved here, yet perpetuate the judicial “implicit exception” to the words Congress used?  Benson goes so far as to recognize the issue, but in a cart-before-the-horse manner.  “It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak.”  409 U.S. at 72.  The “extension” of the patent law addressed in Benson would actually be more a repudiation of the judicially created exception to the statutory language.  Would it not be better to admit that perhaps it was out of place for the Court to impose this exception in the first place?

No matter how popular it might be to complain about the dysfunction of Congress, all of the indicators—from NPR podcasts to Supreme Court opinions—point to Congress as the only appropriate place where the balance should once again be struck.  Even if they hear a number of closely related cases over the span of a few years, the courts cannot possibly have the same range of perspective and cannot possibly consider the same range of views as can hundreds of representatives and senators, along with the numerous constituencies influencing them.  Like Gotham’s use of the Bat-Signal to beckon Batman, we call upon Congress in the hope that someday the judicially created exception can be properly adopted, rejected, or modified.