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Published online by Cambridge University Press: 11 May 2022
For obscure reasons, courts exclude some statutorily patentable inventions (‘judicial exceptions’) from patent protection. These exclusions have been criticized for impeding innovation, contrary to the purpose of patent law. I argue that freedom requires these exclusions even if they impede innovation. Patents, like property, can be unilaterally acquired, limiting others’ freedom without their consent. Kant explains why, to reconcile property with equal freedom, only rivalrous objects in acquirers’ first possession can be unilaterally acquired. States can rightfully authorize unilateral acquisition of only these objects. Drawing from Kant, I explain how patent protection conflicts with equal freedom unless patented inventions involve inventive uses of rivalrous objects external to human bodies. Enabled by inventive concepts, these uses would be impossible without these concepts, and are thus in the first possession of their inventors. I then show how the most recent United States Supreme Court judicial exception decisions limit patent protection to inventive uses of rivalrous external objects.
1. Ryan Davis, “Justices Should Back Off Patent Eligibility, Michel Says” (25 July 2014), online: Law360 https://www.law360.com/articles/561199/justices-should-back-off-patent-eligibility-michel-says (former Federal Circuit Chief Judge Michel commenting on recent judicial exception jurisprudence).
2. CLS Bank Int’l v Alice Corp Pty Ltd, 717 F (3d) 1269 at 1333-36 (Fed Cir 2013) (Chief Judge Rader reflecting on the finding in Mayo Collaborative Services v Prometheus Laboratories Inc, 566 US 66 (2012) [Mayo] that the patent at issue covered a law of nature) [CLS Bank].
3. See e.g. Rebecca S Eisenberg, “Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in Re Bilski” (2011) 3:1 Case W Res J L, Technology & the Internet 1 at 7 (“[judicial exception] doctrine suffers from a lack of clarity not only as to what the applicable rules are, but also as to what those rules are supposed to accomplish”).
4. The Federal Circuit has exclusive jurisdiction to hear patent appeals from all United States District Courts. Other than the USSC, it is the only United States court that hears patent appeals.
5. 134 S Ct 2347 (2014) [Alice].
6. See Davis, supra note 1.
7. Ariosa Diagnostics Inc v Sequenom Inc, 809 F (3d) 1282 at 1285 (Fed Cir 2015) [Ariosa] (concurrence of Judge Lourie joined by Judge Moore).
8. Ibid at 1287 (Judge Dyk’s concurrence). Whether patent protection promotes innovation overall is contested and beyond my scope. I argue instead that an instrumental concern with promoting innovation cannot explain the approaches taken in many judicial exception decisions.
9. According to the contract theory of patent law, patents are like contracts. In return for fully disclosing the invention, a patent provides an exclusive right to an invention for a limited term.
10. See Arthur Ripstein, Force and Freedom: Kant’s Legal and Political Philosophy (Harvard University Press, 2009).
11. See Immanuel Kant, “The Metaphysics of Morals”, translated by Mary J Gregor in Paul Guyer & Allen W Wood, eds, The Cambridge Edition of the Works of Immanuel Kant: Practical Philosophy (Cambridge University Press, 1996) 353 at 418 [Kant, “Metaphysics”].
12. For a more detailed discussion of USSC judicial exception decisions, which concludes that they are not about promoting innovation, see e.g. Tun-Jen Chiang, “Competing Visions of Patentable Subject Matter” (2014) 82:6 Geo Wash L Rev 1858.
13. See Kant, “Metaphysics”, supra note 11 at 393.
14. See Louis-Philippe Hodgson, “Kant on Property Rights and the State” (2010) 15:1 Kantian R 57 at 57-87 for a detailed discussion of why freedom requires property rights.
15. Kant explains how we can think of property as rightful (consistent with independence). It does not follow from this, and he does not assert, that as a historical matter, the chain of title of any property in land can always, or ever, be traced back to a rightful original acquisition.
16. See Ripstein, supra note 10 at 24, 150; Kant, “Metaphysics”, supra note 11 at 412, 415, who both discuss in detail why property right requires an omnilateral will.
17. See Ripstein, supra note 10 at 157.
18. The property right is particular to specific external rivalrous matter (the ingot) and general as to the use of that external rivalrous matter.
19. However, while a property right is particular to specific external rivalrous matter, covering any use of that external rivalrous matter, a patent right is particular to a specific use of a general kind of external, rivalrous matter, entitling its holder to stop others from making that specific use of that general kind of external, rivalrous matter. If, for example, you owned a specific metal ingot, you could use it to make a hammer, nails, or any other objects, provided you do not infringe another’s patent. You would be entitled to stop others from using that ingot or interfering with your use but would not be entitled to stop others from using any other metal ingot. In contrast, if you owned a patent covering a metal hammer, then you would be generally entitled to stop others from making that metal hammer, regardless of the source of the metal.
20. Kant, “Metaphysics”, supra note 11 at 412.
21. See New Railhead Manufacturing LLC v Vermeer Manufacturing Co, 298 F (3d) 1290 (Fed Cir 2002). The angled relationship of drill components, claimed to distinguish the patented invention from the prior art, was not disclosed in the priority application. New Railhead argued that if the tool was made using the priority application’s drawings, then the claimed relationship would be present as the drawings were accurate scale drawings. However, the Court found that the disclosure’s adequacy is measured from the application itself, and that the disclosure requirement is not satisfied if one of ordinary skill in the art must first make the patented invention before the claimed features can be ascertained. Thus, the patent could not claim priority from the filing date of the priority application and was invalidated as anticipated.
22. Mayo, supra note 2 at 71; see also Alice, supra note 5 at 2354.
23. See Mayo, supra note 2 at 72-73.
24. Alice, supra note 5 at 2359.
25. I am grateful to Arthur Ripstein for suggesting this rope variant of the jumping invention.
26. See e.g. Boulton & Watt v Bull (1795), 126 ER 651.
27. The original Alice test, applying to improvements to computer technologies enabled by abstract ideas, can be extended to apply to non-computer technologies as well.
28. (1841), 151 ER 1266 [Nielson].
29. See H Jared Doster, “The English Origins of the Judicial Exceptions to 35 U.S.C. § 101” (2019) 11:4 Landslide 23 (discussing how the USSC has relied on Nielson while sometimes misunderstanding its technological context).
30. Nielson, supra note 28 at para 823.
31. Ibid.
32. 437 US 584 (1978) [Flook].
33. 450 US 175 (1981) [Diehr].
34. 561 US 593 (2010) [Bilski].
35. A hedging scheme is non-rivalrous. It may become ineffective if too many people hedge in this way, but this is irrelevant: to think about freedom, we must abstract from the purposes of hedging to focus only on whether the freedom of all to hedge can coexist.
36. Alice, supra note 5 at 2359.
37. Whether an invention improves the operation of a computer itself can be unclear. See e.g. DDR Holdings LLC v Hotels.com LP, 773 F (3d) 1245 (Fed Cir 2014) (upholding a patent for a method for reducing the risk of a host website’s visitors being lured to third-party merchants’ websites when the visitors clicked on the third-party merchants’ advertisements on the host site).
38. See e.g. Ariosa, supra note 7 at 1285, 1287. Criticism of USSC patent decisions is not new. See also Peter Lee, “Patent Law and the Two Cultures” (2010) 120 Yale LJ 2 at 75: “To a large degree, observers have proposed a limited role for the Supreme Court. For some, this view arises from the Court’s perceived incompetence in patent affairs.”
39. CLS Bank, supra note 2 at 1336.
40. See e.g. Bilski, supra note 34 at 649; Mayo, supra note 2 at 86; Alice, supra note 5 at 2354.
41. Mayo, supra note 2 at 91.
42. Ibid .
43. Ibid at 92.
44. See Mark A Lemley et al, “Life After Bilski” (2011) 63 Stan L Rev 1315, cited in Mayo, supra note 2 at 86. The authors propose an approach for understanding and applying the judicial exceptions that, in their view, would better promote innovation.
45. Ibid at 1326.
46. Ibid at 1344. See also Ted Sichelman, “Funk Forward”, in Rochelle Cooper Dreyfuss & Jane C Ginsburg, eds, Intellectual Property at the Edge: The Contested Contours of IP (Cambridge University Press, 2014) at 363, 376 (arguing that the USSC appears to have misunderstood the argument in Lemley et al.).
47. Mayo, supra note 2 at 88-89.
48. See e.g. Chiang, supra note 12. See also Katherine J Strandburg, “Much Ado About Preemption” (2012) 50 Hous L Rev 563, arguing that the USSC’s frequent references to preemption, in Mayo and elsewhere, are confused and incoherent.
49. 569 US 576 (2013) [Myriad].
50. Ibid at 580.
51. Newly discovered and isolated genes had previously been patentable in the United States and continue to be patentable in other countries.
52. Apropos Justice Breyer’s concerns in Mayo about patents interfering with doctors providing sound medical care, if medical invention is reduced or kept secret, doctors may be less likely to learn new ways of estimating disease risk, adversely affecting how they treat or advise patients.
53. Corporeal natural phenomena internal to human bodies raise additional issues not considered in Mayo and Myriad. Especially during or just after their removal from patients, metabolites or genes may be more like my body that must be mine, and your body that must be yours, than like land or apples, which could belong to anyone. How and when objects removed from a human body can become external such that using them constitutes an external rivalrous and possibly patentable use, is a question for public institutions of the state to decide. There may be different rightful answers but, on the Kantian view, all must protect innate rights to bodily integrity against overbroad patent rights.
54. Short sequences of natural DNA may lack introns and thus be indistinguishable from their corresponding cDNA.