Mayo-Alice uncertainty (abstract idea + law of nature) threatens $3 trillion in economic activity

Is a camera an abstract idea? Does a camera merely “exist[] in thought or as an idea [while] not having a physical or concrete existence?”1 That would seem an odd way to define an object with a defined shape that can be held in your hand and can give you a concussion if it is thrown at your head. Abstract ideas, on the whole, are concussion-proof.

A separate but related inquiry: is a process for manufacturing automobile driveshafts a law of nature? A few examples of laws of nature include Newton’s law of gravity, the ideal gas law, and the law of supply and demand.2 These are laws of nature because they describe “an observable law relating to natural phenomena.”3 Essentially, they are laws of nature because they are “statements of the uniformities or regularities of the world” and because “the natural world ‘obeys’” them.4 So, is a purportedly better way to manufacture a car part really a statement of the uniformity in the world? Or rather, does the process merely observe and provide a practical application of a law of nature?

Though these questions may seem silly and nonsensical, their answers have taken on new importance. These questions are part of a larger inquiry as to what inventions should be considered patent eligible. Because United States patents are worth $3 trillion, determining what is eligible for a patent has a major effect on the United States economy.5 However, patent eligibility is mired in a state of uncertainty, as this Note will explore in detail. Many of those who follow patent jurisprudence closely hoped that the Supreme Court would resolve the lingering uncertainty by ruling on American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 6 but the Court denied certiorari in June 2022,7 thus ending the Court’s entrance into the patent-eligibility waters for the foreseeable future.8

Therefore, as detailed below, cameras and automobile driveshaft manufacturing processes are now in danger of being excluded from the domain of the United States patent system. Until recently, any company or inventor would have thought that a camera or a manufacturing process was a slam dunk case for patent eligibility because each fall within one of the four statutory categories of inventions for patents; a camera is a machine, while a manufacturing process qualifies, unsurprisingly, as a process.9 Now, however, innovators cannot be so certain that any physical product or process they invent, create, or discover will be eligible for a patent.

This state of limbo affects both practicing litigators and major corporations. For practicing litigators, the course of patent litigation can, and has, become venue dependent. With no clear guidance as to what constitutes eligible subject matter, different district courts are adjudicating the patent-eligibility analysis in quite different ways. For instance, a study found that some districts are more willing to grant a Rule 12(b)(6) motion to dismiss for lack of patent eligibility: courts in California are more receptive to deciding patent eligibility at the 12(b)(6) stage, while courts in the Eastern District of Texas show a great reluctance to grant such motions.10 However, with no clarity or certainty as to what constitutes patent-eligible subject matter, parties cannot be certain that judges are properly deciding a case so early in litigation. The difference in 35 U.S.C. § 10111 adjudication may be part of what drives patentees to favor certain venues over others.

Even before litigation, companies face uncertainty over whether they will be able to patent the results of their research and development efforts. As one commentator argues, “investors [are driven] away from companies developing new technologies, like artificial intelligence[,] . . . [and] companies and universities are turning from U.S. patents to other forms of protection, including trade secrets and copyright.”12 Other commentators are concerned that this will depress “the rate of innovation because there’s not going to be the building upon other people’s inventions.”13 For example, Ericsson, a Sweden-based company, received a patent for a media coding invention in more than ninety countries, but “wrangle[d]” with the United States Patent and Trademark Office (USPTO) through many patent-eligibility rejections before finally receiving a patent.14 Even so, a patent examiner told Ericsson that “it was a coin flip whether the patent would survive an eligibility challenge in court.”15 Technology powerhouse IBM, which has routinely led companies in the number of United States patents received, recently stated that without change, it would “rely more on trade secret and copyright protection,” meaning that “new breakthrough ideas will be withheld from public view and other entities will be unable to learn from or improve upon them.”16

With so much uncertainty in patent-eligibility jurisprudence, this Note seeks to examine whether the current patent-eligibility framework was faulty from the beginning, and also argues for a test that will bring predictability to patent eligibility. Part I outlines the current patent-eligibility test and two recent decisions that highlight concern with the current framework. Part II examines recent Federal Circuit cases dealing with 35 U.S.C. § 101 and shows that the current patent-eligibility framework no longer works. Part III returns to the Supreme Court’s decisions in Mayo and Alice and shows that the latter’s extension of the former’s framework was a misstep that marked the beginning of the end for patent-eligibility clarity. Finally, Part IV offers the technological arts test as a possible solution to current § 101 jurisprudence.