The Normativist View of Section 101 and the Hidden Lessons in the Supreme Court's Cases

By: Robert R. Sachs

Judge Mayer's dissents in MySpace v. GraphOn and Alexsam v. IDT are passionate epistles to his fellow jurists of the Federal Circuit. Mayer argues for making patent eligibility a gateway issue in patent litigation and for adopting without scrutiny the Supreme Court's "inventive concept" framework as the received wisdom. Mayer's reading of the Supreme Court cases is essentially representative of what I call the Normativist view of the patent law, which has been expounded by the High Court itself and come to be regarded as the conventional wisdom.

In the next two posts and those that follow, I will explain why this analysis of Supreme Court precedent is incorrect and in much need of scrutiny and overhaul. The first post will summarize the Normativist stance, and the second will review the historical Supreme Court cases on patent eligibility—cases that are invariably quoted, but otherwise left unexplored. I will show not only that these cases do not stand for the propositions for which they are cited, but they actually stand against much of the conventional view of § 101 now being asserted. Moreover, I will show that the approved and thus patent-eligible claims at issue in these cases would absolutely fail as patent-eligible subject matter under the current law—a clear sign that the current framework is flawed. In future posts, I will turn to the modern Supreme Court cases—Benson, Flook, Diehr—and demonstrate both the errors in these decisions and how they have been badly misread and misapplied. I will also address some of the deeper philosophical issues that pervade § 101 and have been completely overlooked by the courts, resulting in the current swamp that is patent eligibility jurisprudence.

Read: The Normative Stance of Patent Eligibility

Read: Patent Eligibility: The Historical Cases

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.