Other doctrines of patentability will exclude bad patents. But a broad standard for subject matter eligibility prevents preempting entire fields of technology

D. Applying this Article's Proposal to Recent Supreme Court Cases to Demonstrate Its Practicality

One of the goals of this Article's proposal is to shift the work currently being done by the subject matter doctrine to the other doctrines of patentability. This shift requires that the other doctrines can perform that exclusionary work. In Mayo, the Supreme Court said:

We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.231

[*126] But the Supreme Court is wrong. The other doctrines are adequately equipped to prevent undesirable patents. To prove this theory, this section will analyze recent Supreme Court decisions and demonstrate how the same result could have been reached through rulings based on other doctrines of patentability besides § 101.

In reaching the same result as the Court did, the emphasis is not on whether the Court made the correct decision if such a thing could even be proven.232 The purpose of this exercise is to show that patent law can be effectuated in the same way without relying on § 101 as heavily as the Court currently does. This overuse is significant because § 101 acts as a coarse filter; when decisions are rendered on a § 101 basis, there is a larger preemptive effect than for rejections based on the other doctrines of patentability.233 Thus, invalidating a patent under the novelty, nonobviousness, written description, or enablement doctrines means that the specific claim was not patentable, but rejecting a patent on subject matter grounds means that inventions of this general kind are not eligible for patent protection.

Professor Michael Risch previously conducted this exercise in 2008 and discussed how the pre-2008 patentable subject matter case law could have been decided on different grounds.234 To avoid being duplicative, the current analysis will focus on the post-2008 Supreme Court cases Bilski, Mayo, Myriad, and Alice.

In Bilski, the patent dealt with the business method of hedging.235Bilski is a rare case because though the patent had been pending for eleven years, the USPTO had never examined the patent for any element of patentability except for subject matter.236 Because § 101 is a threshold inquiry, the USPTO, the parties litigating the issue, and each of the courts never even reached the [*127] other doctrines nor presented arguments on these other doctrines.237 Despite this dearth of argumentation on the other aspects of patentability, both Judge Newman's dissent at the Federal Circuit and Justice Stevens's concurrence at the Supreme Court mentioned § 112 for the proposition that the claim language was too broad to be supported by the invention itself.238 Both Newman's dissent and Stevens's concurrence seem to suggest that the majority opinions' reasonings were wrongly conflating preemption with claim breadth. So Bilski most likely could have been decided as a § 112 case because the invention did not support the breadth of the patent's claims and thus the patent still would have been denied.

Mayo, a case about using thiopurines to treat autoimmune disease, was more straightforward than Bilski because the government argued in an amicus brief that the invention met the patentable subject matter bar, but that the patent is likely invalid under novelty or nonobviousness.239 The government argued this point because the only element that was distinct from the prior art was the last step of the process, the doctor's mental inference.240 Because of the similarity between the prior art and the invention, either novelty or nonobviousness could have been used to decide Mayo. It is also worth noting that the Supreme Court's only reasons for rejecting the government's position, besides their misguided belief that the other sections are not capable of performing this function, were because it was inconsistent with prior doctrine and because the Court did not wish to risk "creating significantly greater legal uncertainty."241 A legislative change would nullify the first concern because the prior doctrine would no longer be relevant. As to the second concern, [*128] the Supreme Court has it backwards the prior inconsistent case law has created legal uncertainty.242

Myriad, a case about the patentability of isolated DNA and cDNA,243 can also be resolved based on novelty and nonobviousness grounds. First, the cDNA was deemed to be patentable, so a lower subject matter bar would not change that result.244 The isolated DNA segments, however, were deemed not patentable because the DNA segment was a product of nature and isolating it did not make it patent eligible.245 Both of these arguments are similar to the arguments that would be made for novelty and nonobviousness, respectively. The isolated DNA segments have occurred before and are anticipated. And the act of isolating the DNA is obvious because it is not distinct enough from the prior art. Thus, Myriad also could have been decided based on novelty or nonobviousness grounds.

Last, Alice was a case about a computer-implemented scheme for mitigating settlement risk.246 The patent was ruled ineligible on subject matter grounds because it did nothing more than "instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer."247 At the Federal Circuit, then Judge Moore's dissenting opinion specifically argued, "Section 102's novelty or § 103's nonobviousness requirements are the means to challenge a system claim that does no more than take a familiar, well known concept and put it on a computer."248 Thus, these doctrines could also have been used to rule this patent invalid.

Conclusion

Patent law's current § 101 jurisprudence is broken. The Federal Circuit and district courts cannot effectively apply it, its case law is inconsistent, and, most importantly, it is harming innovation. By harming innovation, § 101 is acting contrary to the goals of patent law. Accordingly, change is needed. Congress is best situated to right the doctrine because of the Supreme Court's reluctance to touch upon the topic, the innate difficulty of correcting the doctrine judicially, and the need for complex technical knowledge.

[*129] This Article proposes a legislative change to patentable subject matter that turns the inquiry into solely whether the invention fits within one of the inclusion categories, with no weight to be given to the current carve-outs. In doing so, more of the exclusionary work will be shifted to the other doctrines of patentability. This shift is preferred because of the smaller preemptive effect that a rejection under one of these doctrines has compared to the preemptive effect of a subject matter rejection. Thus, even if the rejection rates remain the same, fewer industries will think they are foreclosed from the patent system while the same "bad inventions" that patent policy would aim to exclude can still be rejected.