By Kevin E. Noonan —

In a recent book entitled Imbeciles: The Supreme Court, American Eugenics, and the Sterilization of Carrie Buck, author Adam Cohen examines the case of Buck v. Bell, where Justice Oliver Wendell Holmes wrote that "[t]hree generations of imbeciles are enough" to justify the forced sterilization of a woman the State of Virginia had labeled "feebleminded."  This term was used to identify immigrants, epileptics, and women of "loose morals," among others, deemed to be a blight on America's genetic heritage, and cast as a societal threat by the American eugenics movement.

The tragedy, first explored by Stephen Jay Gould in "Carrie Buck's Daughter," The Flamingo's Smile (1985), was that not only was Carrie not an imbecile but neither were her mother nor her daughter (who was less than one year old at the time).  Justice Holmes rendered his opinion based on this factual inaccuracy and, according to Mr. Cohen, his own prejudices about race and class as a Boston Brahmin of the turn of the 20th Century.  While the Justice had more than adequate help in coming to the wrong conclusion, ultimately Mr. Cohen shows that the combination of predilection and factual error informed one of the cruelest aphorisms in American jurisprudence (which remains good law today).

It is easy for this example to come to mind when reading the questions and assertions from current Associate Justice Stephen Breyer, author of the Court's unanimous decision in Mayo v. Prometheus, regarding his understanding and concerns with the patent system and its discontents.  A sampling of these quotations illustrate the point:

But there is another way to look at it.  And the other way to look at it ­­– and that's what I would like your comment about — ­is that there are these things, for better words, let's call them patent trolls, and that the Patent Office has been issuing billions of patents that shouldn't have been issued.  I overstate ­­ but only some.  And what happens is some person in business gets this piece of paper and ­­looks at it and says, oh, my God, I can't go ahead with my invention.

And so what we're trying to do with this process is to tell the Office, you've been doing too much, too fast.  Go back and let people who are hurt by this come in and get rid of those patents that shouldn't have been issued.  Now, we will give you, again, once the same chance we gave you before, and that is you can amend it once if you convince the judge you should have done it before.  But if, on the broadest possible interpretation, you know, reasonable interpretation, it shouldn't have been issued, we're canceling it.  And that is for the benefit of those people who were suffering from too many patents that shouldn't have been issued in the first place.  I don't know.

(Oral Argument, Cuozzo Speed Technologies v. Lee, April 25, 2016)

Today's patent world is not a steam ­engine world.  We have decided to patent tens of thousands of software products and similar things where hardly anyone knows what the patents really about.  A company that's a start­up, a small company, once it gets a letter, cannot afford to pay $10,000 to $100,000 for a letter from Counsel, and may be willing to run its chances.

You start saying, little company, you must pay $10,000 to $100,000 to get a letter, lest you get willful damages against you should your bet be wrong.

We have one more path leading us to national monopoly by Google and Yahoo or their equivalence, and the patent statute is not designed to create monopolies throughout the United States.  It's designed to help the small businessman, not to hurt him.  So leave those words for interpretation to the expert court, and in this area it may well be the Federal Circuit.

We have all kind of amicus briefs that say that's the truth.  And indeed, thousands and thousands and thousands of small businessmen are trying to break into businesses that they just can't do without software.  And when you have tens or hundreds of thousands of patents on software by other companies, that means we can't break in.

(Oral Argument, Halo Electronics v. Pulse Electronics and Stryker Corp. v. Zimmer, Inc., February 26, 2016)

Can you in fact ­­ now, this is ­­ — look, there are 42 briefs in this case.  I actually read them and I found them very, very helpful up to the point where I have to make a decision, because they're serious.  I mean, you know ­­ now, the problem that I came away with is the one that you're beginning to discuss, that if you simply say, take an idea that's abstract and implement it on a computer, there are ­­ — you're going to get it much faster, you're going to be able to do many, many things, and if that's good enough, there is a risk that you will take business in the United States or large segments and instead of having competition on price, service and better production methods, we'll have competition on who has the best patent lawyer.  You see where I'm going on that one?

And if you go the other way and say never, then what you do is you rule out real inventions with computers.

And so in those 42 briefs, there are a number of suggestions as to how to go between Scylla and Charybdis.  Now, I would like to know ­­ — I don't know if you can step back from your representational model.  That's a problem.  But you're all we have now.  And ­­from my point of view, I need to know what in your opinion is the best way of sailing between these two serious harms.

(Oral Argument, Alice Corp. v. CLS Bank Int'l., March 31, 2014)

It's highly abstract language.  I gather you, like I, have read some of these claims.  They are very hard to understand and when you get to the bottom of it, the abstract nature of the language, plus the fact that it has something to do with computer input, plus the fact that, you know, you suspect very strongly it's baseless, but you really don't like to say something that isn't true and you can say, well, I could see how somebody might think there was something to this claim, just in that tone of voice, which you can't write down that tone of voice.

(Oral Argument, Octane Fitness LLC v. Icon Health and Fitness, Inc., February 26, 2014)

Well, how ­­ what do you do with the government's argument here, which I take it as being on page 17, they make an argument which, as I understood it, which is a big qualification, ­­ that ­­ some of these things are awfully complicated.

You might have a ­­ a claim or, really, it's a set of claims that cover 48 pages with all kinds of symbols and 42 different sort of division possibilities.

And ­­then the ­­so ­called infringer, or the person who falls outside the coverage, is looking at his product, and it's one of the most complex things you've ever seen.  And he has to think to himself, well, how ­am I supposed ­­ — how does the claim cover this?  And ­­it's — ­­ there are many, many, many possibilities.  I take it that's what they mean when they say it makes sense to put the burden of demonstrating how the claim limitations map onto the accused product because infringement may be found only when the product falls within the scope ­­of the asserted claim or claims in every respect.

Your client, who's the patentee, knows how.  Otherwise, he wouldn't be bringing this infringement suit or the inside ­the­ coverage suit or responding to someone who says it's outside the coverage.  But ­­the person who is the alleged infringer might not know it, and therefore, it makes sense to put everything in the same place; notice of infringement, burden of production, burden of proof.  And that way, it will be easier to focus on what's at stake.

(Oral Argument, Medtronic Inc. v. Boston Scientific Corp., November 5, 2013)

Now it is certainly the case that Justice Breyer is fond of outrageous hypotheticals to probe the parties' positions and there is nothing wrong with that.  (At least we should hope that his reference to billions of patents being improvidently granted by the USPTO was an exaggeration; after all, the Office has issued only about 9,000,000 patents in its 220 year history, and the Justice should know this.)  But behind the quoted statements is a clear concern about the possibly pernicious effects of patents, and it is fair to ask whether these concerns are grounded in reality.  While there certainly are those who agree with the Justice, there are also clear disconnects between these sentiments and how patents play out in the real world.

For example, it isn't generally the case that large companies use patents to intimidate or inhibit innovation by small companies.  They don't need to:  large companies have the wherewithal to ignore small companies and on some occasions simply expropriate whatever innovation those smaller companies have disclosed in their patents.  No, the rise in patent litigation has been by "trolls," as that term has been applied to small companies, universities, and patent aggregators to whom these entities have turned when they have lost their technologies to larger companies, in an attempt to recoup through litigation what could not be obtained by the traditional route, licensing.  There is not (although some large companies will portray things this way) a drag on innovation; indeed, the term "patent troll" was invented by a Cisco employee on an anonymous blog several years ago.  This situation is illustrated by the long history of patent litigation involving Data Treasury, a small Long Island firm that invented methods for electronic check cashing.  The banking industry not only didn't license Data Treasury's patents but, after adopting these method with a license attempted to absolve themselves of infringement liability in the court of public opinion, labeling the company as a patent troll, and getting their elected representatives to do the same.  When that didn't work, a provision that would have exempted the banks from their liability was introduced at the eleventh hour as part of S.1145, a predecessor to the America Invents Act debated by the Senate in 2008.  This provision was scuttled only when the Bush Administration realized that, as an Act of Congress any such exemption would cost the American people upwards of $1 billion as a taking (see "The (Un)intended Consequence of the Law").

In actuality, the need for and reaction to "trolls" is related to the short obsolescence horizon for most non-pharma innovation, and also its interrelatedness; an advantageous, patented feature of a product can become widespread, and there does not seem to be a universal standard setting body to referee these situations (unlike patents for prior like inventions, such as connectivity protocols for modems a generation ago).  But, particularly in view of the history of Data Treasury and other small firms trying to protect their technology, the concerns voiced by Justice Breyer seem at best misplaced and yet clearly inform his thinking.

Similarly, the idea that patent claims are a complicated tangle is inconsistent with the patent statute and how it is applied by the PTO and (at least the inferior) courts.  Certainly the subject matter can be complex to a layman, no matter what the technology.  But there is no mystery (and, insofar as the Court's Nautilus decision remedies any laxity in how 35 U.S.C. §112(b) is applied, no uncertainty) about what a claim means.  Satisfying § 112 has, over the past twenty years, become a major question in patent litigation and a resource for challenging patents, and a patentee who does not "particularly point out and distinctly claim" what is her invention is at a serious disadvantage in enforcing her claims.  It can even be said that in some instances the strictures of § 112 have ensured a heightened level of clarity and disclosure:  in the genomic era at the turn of this century it was certainly possible to publish a scientific paper identifying a newly discovered gene (found in a database of human gene sequences elucidated inter alia by the Human Genome Project) distinguished merely by homology to other genes and speculation about what such a gene might do.  Not so at the Patent Office:  the Office required disclosure of the function of the protein product of such a gene, relying on the Court's decision in Brenner v. Manson that "a patent is not a hunting license."  This points to the different functions of a patent and a scientific paper, but also illustrates that the patent system requires a practically effective level of disclosure.  This is consistent with the understanding that Congress has delegated its Article I power to grant patents only to promote progress, and that progress is promoted not only by invention but disclosure thereof "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same."  Which is not how Justice Breyer apparently sees the situation, but that doesn't mean that there has been a wholesale abandonment of these requirements, by the Office, the courts, or the inventing community.

Finally, perhaps it is appropriate to close with another quote from Justice Breyer, during oral argument in Bowman v. Monsanto:

MR. WALTERS:  Mr. Bowman went to a grain elevator and he bought from the grain elevator without restriction seeds to — and it was his purpose to plant them.  Now, the only way that he can make use –- if you assume in the first instance that there is exhaustion to the seeds that Mr. Bowman purchased from the grain elevator, you are taking away any ability for him to use that seed or use the invention . . . .

Now, if you say that there is exhaustion in the seeds that Mr. Bowman purchased from the grain elevator, but you say it doesn't apply to the progeny, you are not allowing him to actually practice the invention to grow more seeds.

JUSTICE BREYER:  No, but you are allowing him to use those seeds for anything else he wants to do.  It has nothing to do with those seeds.

There are three generations of seeds.  Maybe three generations of seeds is enough.

(Laughter.)

JUSTICE BREYER:  It is for this example.  First of — you have the Monsanto, the first generation they sold.  They have children, which is the second generation.  And those children have children, which is the third generation, okay?  So bad joke.