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Constitutional Avoidance Concepts Applied to Patentable Subject Matter Eligibility Questions

March 14, 2012

Recently, in Myspace, Inc. v. GraphOn Corp.(Fed. Cir. 2012), the Federal Circuit (at least Judges Newman and Plager) chose to avoid a determination of validity under 35 U.S.C. 101 Subject Matter Eligibility, and instead used Novelty and Obviousness (35 U.S.C. 102, 103) grounds to invalidate the patents at issue. The court analogized to the Constitutional avoidance doctrine to avoid a finding of subject matter eligibility.

The Myspace “avoidance” concept is a prudent approach, and encourages good patent policy. It allows broad patentable subject matter as intended by Congress and the Constitution, and also encourages the use of novelty and obviousness laws as the true “Conditions for Patentability”- as they are titled. Further, the avoidance concept limits novelty/obviousness issues from being confused with patentable subject matter considerations- which is so often the case.

One notable case of confusion of novelty with patentable subject matter can be seen in the dissent, thereby proving the majority’s point to some extent. When arguing for the use of 101 to invalidate patents, the dissent states, on page 7:

“Many software and business method patents simply describe a basic, well-known concept that has been implemented or applied using conventional computer technology.”

So, the dissent (Judge Mayer) is admitting that the patents he dislikes are “well-known” and thus not new. Accordingly, by the dissent’s own reasoning, novelty is actually the proper tool to invalidate, or perhaps a coupling of references establishing obviousness under 103: one showing the well-known concept and another showing that the computer implementation would be obvious to a PHOSITA. This type of confusion of novelty/obviousness with subject matter issues is pervasive in patentable subject matter disputes, and demonstrates the value of favoring invalidation and rejection using novelty and obviousness grounds.

The dissent does raise a good point that the patents at issue are low quality or “bad” patents. However, I disagree with the dissent that their allowance is because sections 102 and 103 are unfit to prevent the issuance of such bad patents. Indeed, in invalidating the patents at issues, the majority opinion made it quite clear that novelty and obviousness (102 and 103) are perfectly suitable for invalidating (or preventing) low quality patents. Instead, I suspect that “Teaching/Suggestion/Motivation” test and generally the narrow application of obviousness pre-KSR had quite a bit to do with the allowance of these, and other “bad” patents. Certainly more so than a lax application of section 101.

Hopefully, Myspace signals a new approach to dealing with subject matter issues under section 101. If so, it will allow invalidation of patents as needed without confusing the use of 101 with 102/103 and further muddying the subject matter jurisprudence.

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