By Michael Borella and George Lyons III —

Decided September 30th, this Federal Circuit case is already making waves.  The majority opinion seems to be at tension with the Court's outcome in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, but the real attention-grabber is Judge Mayer's concurrence.  Therein, he argued that claims such as those under review were at odds with the First Amendment, and then reiterated his position that software is not patent eligible.  Here, we discuss his position on the intersection of patents and the First Amendment.

Three patents owned by Intellectual Ventures (IV) were the subject of this dispute.  As an example, claim 1 of U.S. Patent No. 5,987,610 recites:

1.  A virus screening method comprising the steps of:
    routing a call between a calling party and a called party of a telephone network;
    receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;
    detecting, within the telephone network, a virus in the computer data; and
    in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party.

In short, the claim is directed to detecting a computer virus in communications between two parties, and inhibiting the communication containing the virus.

Putting eligibility issues aside for a moment, Judge Mayer wrote that "patents constricting the essential channels of online communication run afoul of the First Amendment."  In his view, "[p]atents, which function as government-sanctioned monopolies, invade core First Amendment rights when they are allowed to obstruct the essential channels of scientific, economic, and political discourse."

Citing the '610 patent as particularly pernicious in this regard, Judge Mayer was concerned that its claims "could reasonably be read to cover most methods of screening for harmful content while data is being transmitted over a network."  Notably, he concluded that "[e]ssential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression."

According to Judge Mayer, the judicial exceptions to 35 U.S.C. § 101 "create[] a 'patent-free zone' and place[] within it the indispensable instruments of social, economic, and scientific endeavor."

Thus, the Judge advocated that "Section 101, if properly applied, can preserve the Internet's open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas."

Where to start?

The First Amendment has two basic applications.  First, laws that put unreasonable limits on speech may be determined to be unconstitutional under the First Amendment.  Second, acts of government entities that similarly restrict speech can violate First Amendment rights.  But the right to free speech is not absolute.  For example, it is often acceptable to place reasonable time, place, and manner restrictions on certain types of speech (the oft-cited shouting "Fire!" in a crowded theater).

From the outset, it is worth noting that a patent is neither a law nor an act.  Instead, it is a legal, time-limited monopoly over a specific invention.  Patents are not a right to practice such an invention — they provide the right to exclude others from practicing the invention.  Thus, a patent covering a method for restricting communication does not imply that the method has to be carried out by the patentee or any other party.  Instead, the patentee has the ability to prevent others from restricting communication in accordance with what is claimed.

While U.S. patents are granted and enforced by the U.S. Federal government, any acts that occur in accordance with a claimed invention are those of the patent owner or its licensee.  To the extent that such an entity is a private party, any restriction to communication that might occur due to practicing claims like those of the '610 patent would not be that of the government.

Further, the act of restricting communications by private parties is commonplace.  In most networking environments, there are firewalls that filter traffic to and from the Internet.  Similar firewalls are often deployed on computers within the network, along with spam filters on incoming emails.  The existence of patents on such technologies is unlikely to change these facts.

Indeed, technology restricting communication has a fundamental and critical role in today's networking infrastructure — it keeps unwanted parties from improperly attaining certain types of information, and limits the amount of nuisance communications to which one is subjected.[1]  Without such technology, the ability for individuals and organizations to maintain trade secrets may be impeded.  Despite Judge Mayer's concern for preservation of the open Internet architecture, communication restriction technologies have served to make the Internet safer for speech, business, research, and e-commerce.

Another way of looking at how communication patents intersect with the First Amendment, however, is by noticing that a patent's very existence may actually serve to discourage limiting speech.  Specifically, the issuance of a patent on a communication restriction technology may foster the marketplace of ideas for similar technologies.  Once they are revealed to the public, researchers and engineers may be influenced by the ideas set forth in a patent to improve on those ideas with ideas of their own.  Some of these improvements may be workarounds or otherwise non-infringing variations.  And, as Judge Mayer recognized in his concurrence, the correlation between these improvements and the patent's existence is no new revelation — for our courts or patent practitioners.  As just one example, Judge Mayer cited the Supreme Court's 1853 opinion in O'Reilly v. Morse for just this proposition:  "patent protection promotes, rather than impedes, 'the onward march of science,' . . . allowing technological innovation to proceed apace."

In fact, despite the existence of patents of telecommunication technologies, telecommunications has reached a point where access to information has never been easier or more widespread.  Thus, a strong patent system is not inconsistent with the rapid dissemination of Mayer's "social, economic, and scientific endeavor[s]."  For the sake of argument however, we will turn to the merits of Judge Mayer's concerns.

As noted above, First Amendment rights are important, yet limited.  That statement is not disputable.  Identifying and defining the boundaries of these rights, however, is another question entirely — one that is incredibly complicated.  Even though the First Amendment has been in existence for over 200 years, the Fifth Circuit recently noted that there are few areas of the law as "abstruse, complicated, [or] subject to great debate among jurists."  Thus, to ponder its restrictions in a vacuum would be to ponder an over-generalized misconception.

Instead, determining the bounds of any restriction involves determining the distinct case law surrounding:  1) what type message is being conveyed (e.g., political speech, commercial speech, school-related speech, religious speech, obscene speech, speech that is critical of the government, speech that defames another, etc.); 2) who is conveying the message (e.g., a private individual, the press, governmental employees, anonymous figures, etc.); and 3) where/when/how the speech is being conveyed (e.g., historically public forums, limited and non-public forums, during the day, late at night, by one individual or an assembly, the scope of the speech, etc.).  Then, once these questions are properly answered, the court must also determine why the limitation is being imposed and employ the appropriate legal deference accordingly (e.g., content-based restrictions are often reviewed under strict scrutiny — they must be narrowly tailored to accomplish a compelling governmental interest, while content-neutral restrictions are often reviewed under intermediate scrutiny — they must be no greater than necessary to further a substantial government interest).

The problem, however, is not just that Judge Mayer suggests some interaction between these two bodies of well-trodden jurisprudence (patent law and the First Amendment), but does so without providing any firm legal nexus between the two or suggesting how to navigate the morass of confusion invoked by the comparison.  For example, is Judge Mayer suggesting that the property rights afforded to individuals who own communication patents are, themselves, imposing a burden on the First Amendment rights of others?  Or, is this alleged burden attributable to the government, because it was responsible, per the PTO, for imposing such a burden on these First Amendment rights?  Moreover, are these burdens or restrictions content-neutral or conduct-neutral?  Is there a subset of First Amendment jurisprudence that can be analogized to patent monopolies on communication technologies (and the restrictions or burdens arising therefrom)?  Should courts borrow or incorporate some portion of the case law surrounding such a subset of First Amendment jurisprudence (assuming it exists), or create an entirely new standard or test to fill in this jurisprudential gap?  Should courts do any of this without any guidance or suggestion from the Federal Circuit or the Supreme Court?

Looking to Judge Mayer's concurring opinion, there is no way of knowing because he does not provide any answers, nor does he even properly frame the question.  Instead, he asserts a robustly overgeneralized statement — "patents constricting essential channels of online communications run afoul of the First Amendment" — and moves on to other topics.

It would be easy to attribute such statements to activism, or the byproduct of allowing concurrences in judicial opinions generally.  But this type of results-oriented judicial vagueness is a form of dangerous reasoning — especially when it implicates, but does not acknowledge, the intricacies of navigating the case law surrounding such a fundamental constitutional right.  And, to illustrate the dangers of this type of reasoning, and such cursory legal analysis generally, two points are worth considering.

First, consider the parade of horribles that could follow from asserting this type of bald jurisprudential correlation.  For example, under Judge Mayer's view, would a patentee be implicated in cases where their protected device, system, or method surrounding an emerging technology was used to violate someone's Fourth Amendment rights?  Alternatively, would patents aimed at increasing the efficiency of firing mechanisms in a firearm (see, e.g., U.S. Pat. No. 3,250,034) implicate the Second Amendment?  Would patents aimed at allowing only one specifically-identified person to engage the trigger of a firearm (see, e.g., U.S. Pat. No. 5,953,844) implicate the same?  Looking to the specific legal analysis and guidance provided by Judge Mayer's concurrence, one can't help but surmise — as the advertisers for Tootsie Pop once quipped — "The world may never know!"

This lack of clarity, however, leads to a second, and perhaps more concrete, danger.  Specifically, it is no secret that district courts rely on appellate courts to provide guidance for interpreting complex and unresolved legal issues; or, as Judge Mayer correctly identified in his concurrence:  "Article III courts," such as the one on which he sits, "do not render advisory opinions."  Moreover, in the wake of Alice Corp. v. CLS Bank Int'l, it is hard to imagine a more unsettled landscape for courts interpreting patent cases than the issues that arise under § 101 pertaining to software patents.  Thus, while not precedential or controlling, Judge Mayer's concurring opinion — and the conclusory First Amendment analysis contained therein — may carry weight in the district courts throughout the country.

More problematic, however, is the realization that Judge Mayer's suggestions for interpreting issues under § 101 in his previous concurrences (see, e.g., Ultramercial v. Hulu) have gained traction nationally, and have even become the standard for many district courts.  Thus, a dangerous possibility could arise from his concurrence in the present case — when determining a patentee's rights, district courts might take it upon themselves to analogize the "restrictions" imposed by communication patents to one of the almost endless subsets of the jurisprudence surrounding the First Amendment.  Undoubtedly, the conflicts and uncertainty arising from such a result would be extensive.  But all is not lost.

In fact, before rallying the defenders of patent or constitutional law, wailing that patent law as we know it is over, or calling for Judge Mayer's retirement (all of which may be natural reactions for one who reads the concurrence), it is worth taking a step back and seeing Judge Mayer's foray into First Amendment jurisprudence for exactly what it is: a new pitch for a well-known product — his unwavering distaste for software patents under § 101.

Indeed, immediately after outlining the dire straits of the First Amendment in the light of such patents aimed at communication methods, Judge Mayer wrote in his concurrence:

Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents . . . [as] all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.

Thus, while unnerving, Judge Mayer's First Amendment commentary is more of a means to an end, rather than the end itself.  Accordingly, although this commentary may well provide fodder for legal scholars, law school exam hypotheticals, and robust debate within our profession, hopefully, it will not gain traction or appreciable application within the district courts.  At least not until the Federal Circuit, the Supreme Court, or Judge Mayer himself, provides some semblance of a workable model for his proposition.

[1] The widespread distributed denial of service (DDOS) attacks that made a significant number of Internet services unreachable on October 21, 2016 is just one example of how a lack of the proper communication restriction technologies can impact tens of millions of individuals.