Professor Ronald Mann has a thought provoking article Is the Patent Act more like the Sherman Act or the securities laws? He discusses how the Supreme Court interprets various sections of the US Patent Act in very different ways.
As Professor Mann puts it: "In some areas, the Justices view the language of the statute as calling for them to pour judicially created content into vague and general words in the statute: the most obvious examples are patentability cases like Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, and Alice Corp. v. CLS Bank. I’d probably put the Court’s analysis of definiteness in Nautilus v. Biosig in the same pile."
"In other situations, the Court seems much more inclined to treat cases as purely statutory, to be resolved almost entirely by parsing the statute, however detailed or general it might be. Here I’m thinking of cases like Octane Fitness v. Icon and Highmark v. Allcare, cases that (in Justice Sonia Sotomayor’s words) “begin and end with” the language of the Patent Act. Limelight Networks v. Akamai Technologies – or at least Justice Samuel Alito’s explanation of the result – is another example."
In my opinion, Professor Mann is right. And we have watched the Supreme Court pour more judicial content into 35 USC 101. But why not resolve software patent eligibility standard by parsing the literal broad terms of 35 USC 101? I know talk about 150 years precedent, but also consider when Benson added an abstract idea exception to the broad language of 35 USC 101, the Supreme Court in effect wrote a "narrower 35 USC 101." Justice William Douglas apparently was seeking to not allow wholly preempting mathematical algorithm and expressed that patenting of software programs in general was a policy question and the Court was not competent to decide.
Further, Justice Douglas stated: "If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed."
It has been a while since the suggestion was made, but it seems maybe this is where the entire issue needs to go now-- before Congress.
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