Blending subject matter doctrine with novelty and nonobviousness doctrines generates conflicting case law and undermines overall eligibility

Patentable subject matter doctrine is legally flawed in two main ways. First, the doctrine has blended with the novelty and nonobviousness doctrines. Indeed, the Supreme Court and Federal Circuit explicitly admit this.145 This doctrinal overlap is duplicative, conflates questions of law and questions of fact, and alters the standard that is statutorily required to analyze eligibility, novelty, and nonobviousness. Second, the case law is conflicting including on the issue of whether novelty and nonobviousness are permissible to consider at the subject matter stage. These conflicting assertions make it challenging for the Federal Circuit or a district court to discern the appropriate legal standard.

1. Patentable Subject Matter Has Impermissibly Become an Amalgamation of Other Doctrines

Patentable subject matter has begun to blend with some of the other doctrines of patentability namely novelty and nonobviousness such that it is no longer its own test.146 Judge Chen has said that "this mixing of novelty [*111] questions in the patent eligibility inquiry" is "one of the big challenges with American patent eligibility law."147 This doctrinal overlap is legally problematic because it allows a judge to decide factual questions that are meant to go to the jury, to decide a question earlier in the litigation process than it would otherwise be addressed, and to decide a question using impermissible evidence.

It is known that this overlap exists because the courts have explicitly recognized it, and § 101's inventive concept test implicitly requires it. In Mayo, the Supreme Court despite not overruling Diehr, which said the exact opposite thirty years prior148 stated that "the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap."149 The Federal Circuit has gone a step further and recognized that novelty and nonobviousness are not "wholly divorced from some aspects of the § 101 inquiry."150

This recognition is not surprising because the current legal standard invites this overlap. Per the MPEP guidelines, an inventive concept is when the elements of the invention, other than those directed to a judicial exception, amount to significantly more than the judicial exception.151 Inventive is defined, in lay terms, as "creative and original."152 Novelty asks whether the claimed invention is new compared to the prior art, and nonobviousness asks whether the new components are enough of an advancement over the prior art to justify a patent.153 Compared to the lay definition of inventive, novelty maps well onto "original" and nonobviousness embraces "creative."

Not only is this overlap duplicative as novelty and nonobviousness have to be considered at least twice,154 but it is also problematic for two additional reasons. First, this overlap shifts questions of novelty a factual issue and nonobviousness a legal issue which almost always contains underlying [*112] factual issues to the court to decide as a matter of law. Patentable subject matter doctrine thus blurs the distinction between questions of law and questions of fact and can cause judicial interference with a jury's fact-finding role.155

Second, the vantage point from which to analyze the doctrines also differs both temporally and substantively. Temporally, novelty and nonobviousness are "rarely issues appropriate for resolution on the pleadings"156 whereas subject matter is often handled at the motion to dismiss stage.157 This blending of doctrine can force courts to handle novelty or nonobviousness issues earlier in the judicial process than they otherwise would.

Substantively, the doctrines differ on whether the invention must be analyzed in the aggregate or broken down into its component parts. For nonobviousness, § 103 states that "the claimed invention as a whole" is to be analyzed.158 Conversely, in Step Two of Alice, the claimed elements are analyzed "both individually and 'as an ordered combination.'"159Alice's second step thus allows courts to analyze nonobviousness, at least to the extent it blends into patent eligibility determinations, in light of the individual components of the invention something that the law does not permit when analyzing nonobviousness alone.

2. Patentable Subject Matter Doctrine Is Rife with Inconsistent Case Law

The Supreme Court and the Federal Circuit cannot agree on patentable subject matter doctrine. Because the Federal Circuit is usually the final say on patent jurisprudence,160 it is beneficial if it is in unison with the Supreme Court. But currently the Supreme Court's case law is inconsistent. As a consequence, the Federal Circuit and the district courts are struggling to apply [*113] the doctrine because there is no clear way to interpret the Supreme Court's precedent.

Mayo provides one example of this inconsistency. In that case, the Supreme Court discussed how the Diehr process was patentable because it was an invention that

(1) continuously monitor[ed] the temperature on the inside of the mold, (2) fe[d] the resulting numbers into a computer, which would use the Arrhenius equation to continuously recalculate the mold-opening time, and (3) configur[ed] the computer so that at the appropriate moment it would signal "a device" to open the press.161

The Supreme Court juxtaposed this with the Flook process that was not patentable because it was an invention that was "(1) measuring the current level of the variable, e.g., the temperature; (2) using an apparently novel mathematical algorithm to calculate the current alarm limits; and (3) adjusting the system to reflect the new alarm-limit values."162

Both of these inventions utilize only a measuring step, a computation step, and then an action step. Yet one was deemed patentable and the other was not.163 There is widespread agreement that Flook and Diehr are inconsistent with each other,164 but neither case has been overturned or repealed. Courts, in turn, are struggling to determine the correct interpretation of the law. While this inconsistency is not new, as Flook and Diehr were decided over forty years ago, people had assumed Flook was effectively overturned after Diehr.165 It was not until the Supreme Court referenced Flook in its Bilski and Mayo opinions that people definitively knew that Diehr did not effectively overturn Flook.

Mayo is also inconsistent with Diehr on whether novelty is relevant in the § 101 analysis. Diehr states that novelty is not a relevant consideration and supports this assertion with both the structure of the Act166 as well as the legislative history.167 But Mayo states that novelty and patentable subject matter [*114] may overlap out of necessity, and the Court did not provide any statutory basis for why this is permissible.168 In doing so, Mayo did not overturn Diehr nor has it been read to effectively overturn Diehr. The cases are simply irreconcilable on this point.

An example of a disconnect between the Supreme Court and the Federal Circuit is how the two courts handle physical phenomenon cases. The Supreme Court did not apply the Alice Two-Step in Myriad a case dealing with a physical phenomenon even though it was sandwiched by a law of nature case, Mayo, and an abstract idea case, Alice, that were both subject to the Alice Two-Step.169 Nonetheless, the Federal Circuit applied the Alice Two-Step in a physical phenomenon case in Ariosa Diagnostics, Inc. v. Sequenom, Inc.170 a case dealing with noninvasive fetal testing in pregnant women using cell-free fetal DNA.171 The Supreme Court has never corrected this decision, so it might now be implied that there is agreement with the Federal Circuit. But absent affirmative indication, it is unclear whether applying the Alice Two-Step in physical phenomenon cases is what the Supreme Court intended.