Congress should amend 101 to nullify Alice-Mayo

This invalidation contagion is spreading, too, and is not limited to cutting-edge inventions in the 21st-century innovation economy. Patents covering classic technologies from the Industrial Revolution are now being invalidated as ineligible subject matter under the Alice-Mayo framework. One recent example was a patent on operating an oil drilling rig that was invalidated by a court under the Alice-Mayo framework for allegedly claiming an abstract idea.28 In another case, the Court of Appeals for the Federal Circuit affirmed a district court’s invalidation of a patent on a method of building an axle in an automobile engine because the judges deemed it an unpatentable application of the laws of thermodynamics.29

As every engineer knows, all machines are applications of the laws of thermodynamics. What this means is that patent owners are now left to the vagaries of whether a judge chooses to disintegrate their patented innovations down to unpatentable laws of nature—or not. In her stinging dissent, Judge Kimberly Moore complained that the “majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about results-oriented [patent] claiming; I am worried about results-oriented judicial action.”30

Despite numerous requests seeking both clarification of the AliceMayo framework and development of limiting principles to cabin in the discretionary decision making and excessive invalidations of patents on breakthrough inventions and discoveries, the Supreme Court has denied every certiorari petition since its 2014 decision in Alice: Over 45 petitions have been filed and rejected. The Supreme Court appears to be uninterested, unwilling, or unable to fix the problem it has created with the Alice-Mayo framework, and thus it rightly falls on Congress. The Alice-Mayo framework represents only a judicial gloss on a statute that was first enacted by Congress in 1790 and subsequently re-enacted in varying forms up through 1952.31 Thus, Congress can and should act to amend § 101 to abrogate the Alice-Mayo framework to staunch the excessive invalidation of patents and rejection of patent applications since 2014.