McDonnell Boehnen Hulbert & Berghoff LLP

There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the recent Supreme Court precedent (Bilski/Mayo/Alice) as interpreted by the Federal Circuit has resulted in a diminution in lawsuits by so-called "patent trolls," non-practicing entities who accumulate patents to be asserted against these companies.  Sitting in yet another patent conference, surrounded by some of the most erudite members of the patent community (judges and former judges, PTO officials current and past, distinguished patent lawyers and company IP counsel), discussing the current (parlous) state of affairs regarding patent subject matter eligibility and the inability (Federal Circuit, Congress) or unwillingness (Supreme Court) to find a solution, it is impossible not to think that the way the issue has been addressed is, at best, insufficient.  If indeed the issue cannot be resolved politically between the high tech and biotech/pharma shareholders, then it seems evident that this issue -- the attachment to the status quo by the high tech community because it serves their interests -- must be resolved before any solution to the problem for all other technologies becomes possible.

Past experience may provide an avenue for such a resolution.  In the 1990's, patent law was faced with claims directed to methods for performing eye surgery.  The patent, U.S. Patent No. 5,080,111 to Dr. Pallin, was being asserted (Pallin v. Singer, 1996 WL 274407 (D. Vt., Mar. 28, 1996)) against medical doctors and eye clinics and prompted swift Congressional action.  The measure that ultimately passed, introduced by Senator Bill Frist of Tennessee (himself a physician) was codified as 35 U.S.C. § 287(c):

35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.

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(c)(1) With respect to a medical practitioner's performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

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    (3) This subsection does not apply to the activities of any person, or employee or agent of such person (regardless of whether such person is a tax exempt organization under section 501(c) of the Internal Revenue Code), who is engaged in the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician's office), where such activities are:
        (A) directly related to the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician's office), and
        (B) regulated under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Clinical Laboratories Improvement Act.

The policy justification for the bill was, as eloquently expressed by Senator Frist, because "innovations in surgical and medical procedures do not require the midwifery of patent law."  As enacted, the bill reflects a carefully crafted ("narrowly tailored") balance between the concerns of the medical community and the patent community at large, particularly the biotechnology community.  For example, "biotechnology patents" are expressly excluded from the exemption; such patents are defined (under 35 U.S.C. § 103(b)) as "a process of genetically altering of inducing a single or multi-celled organism" or "cell fusion procedures yielding a cell line that expresses a specific protein" or "methods of using a product produced" by the above processes.  Also not exempt are individuals involved in the commercialization of "a machine, manufacture, or composition of matter" related to a medical activity.

If indeed one of the major impediments to patent subject matter eligibility reform today is the concerns of the high tech community that the current state of the law is what has reduced the plague of patent troll litigation against them (regardless of the justification for these concerns), perhaps Congress should consider amending the patent statute to contain a similar exclusion for such alleged troll activity:

It shall not be an act of infringement under section 271(a) or (b) of this title, and the provisions of sections 281, 283, 284, and 285 of this title shall not apply, to practice of a method claim wherein any limitation of said claim is recited and defined solely by its function, unless the method is practiced using a structural component corresponding to that function that is expressly disclosed in the patent specification, or equivalents thereof.

While not providing a blanket license to infringe such a statutory provision would go far along the path of immunizing the targets of "troll"-asserted patent litigation.  It would limit the scope of infringement for claims reciting functional limitations to the express contribution disclosed in the specification, or equivalents thereof (analytics for which are available for assessing the scope of claims reciting limitations falling within the scope of 35 U.S.C. § 112(f)).  It would provide an avenue for such claims to be practiced without infringement liability merely by exercising the marginal creativity needed to employ a step in the method using structural components not recited in the specification and different enough in structure not to be an equivalent to what the specification expressly discloses.  It would also provide statutory protection from infringement that would bring a measure of certainty to companies who purportedly find themselves as deep-pocket targets of non-practicing patentees or patent assertion entities.

Of course, nothing involving patent subject matter eligibility law is certain or easy.  But eliminating the complaints of one set of shareholders in such a way might clear the path for Congress to address the concerns of other members of the patenting community, where additional creative stratagems might be productively employed.  Like Rome, patent subject matter eligibility will not be built in a day, but by taking a step-by-step approach perhaps it may be possible in our lifetimes.

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