The Supreme Court can’t solve – history proves it makes things worse

While statutes should be interpreted to avoid an unconstitutional outcome as well as absurd outcomes, the Supreme Court has never stated whether its various exceptions to patent eligibility were necessary under the Constitution, and certainly never addressed the judicial exceptions based on the entirety of Title 35 of the United States Code.

In addressing § 101 and only § 101, the Supreme Court identified three specific exceptions to patent-eligibility principles including: (1) laws of nature, (2) physical phenomena, and (3) abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010).” In declaring these exceptions, the Supreme Court stated, “these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Id. at 602. The problem with this statement is that there is no language in the 36 words of § 101 to support such a notion of “statutory stare decisis.”

While Bilski did state that “[a] conclusion that business methods are not patentable . . . would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous,” ironically the Bilski holding rendered 35 U.S.C. § 102 superfluous. The Bilski claims, being supposedly well-known, routine, and conventional, necessarily fall to the plain language of § 102 even as the Bilski claims comply under § 101.

Turning to Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the Supreme Court abandoned the statutory stare decisis nonsense stating that it “has long held that [§ 101] contains an important implicit exception . . .” (emphasis added) citing, inter alia, O’Reilly v. Morse. Recently the Supreme Court realized in Amgen v. Sanofi, 598 U.S. ____ (2023) that, after 51 years of erroneous citations, Morse relates to enablement under § 112(a), not patent eligibility under § 101. An amazingly tardy realization if there ever was one. Regardless, this theory of “implicit exception” is incompatible with the idea of statutory stare decisis, as an interpretation of existing text is not the same as an exception based on nonexistent text.

The real problem, however, is that the phrase “implicit exception” is nomenclature that turns every statute into the plaything of the judiciary. To merely declare that a statute contains an “implicit exception” without an express cogent justification amiable to the Constitution is to ignore statutory language in favor of unconstitutional judicial activism. How these “implicit exceptions” fit within the 36 words of § 101 from a constitutional perspective has never been addressed by the courts.

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