The press is all abuzz with reactions to Judge Mayer’s concurring opinion bluntly stating that “claims directed to software implemented on a generic computer are categorically not eligible for patent.” Intellectual Ventures I LLC v. Symantec Corp. et al., 2015-1769, -1770, -1771 (Fed. Cir. Sept. 30, 2016).

Here, I’ll just explore one aspect of this remarkable opinion—the reasons that judicially created exceptions are dangerous. As we have previously detailed on this blog, the precipitous drop-off in PTO allowances and Article III court confirmations of validity are not driven by the literal text of Section 101 or other portions of the patent statute, but instead by judicial interpretations of exceptions that the courts deem must be read into the Patent Act. Many commentators have observed that such judicially created exceptions may be an extremely convenient way to sidestep “bad” patents but are not needed, given that the provisions of sections 102, 103 and 112 would be just as effective in addressing vague or overbroad patent claims. Single-paragraph district court explanations of why particular patents claim nothing more than an abstract idea now regularly invalidate patents at the pleadings stage. Judge Mayer’s concurrence adds fuel to this fire. A few examples from his concurrence are illustrative.

Judge Mayer starts his concurrence not with the categorical condemnation of software patents, but with a First Amendment argument, saying that “Patents, 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.” His concern is a valid one, but Congress did not agree with it in framing the patent statute and the courts have not previously seen it that way either. Indeed, many patents in traditional art areas could be said to obstruct such “essential channels,” in various ways. In one sense, excluding a community from building a patented telephone system could be seen as such obstruction. In another aspect, one could not undertake meaningful discussion of the stability of a phase-locked loop circuit under various temperature or supply voltage variations without actually making and using such a circuit. One cannot discuss the durability of a new pitman arm on a truck’s steering system without using one. So patents by their very nature can have varying impacts on discourse.

Judge Mayer’s concurrence characterizes the claims at issue as “disclosing no new technology” and “speak[ing] in vague, functional language.” Assuming he is correct, that is indeed problematic, but such concerns are directly addressed elsewhere in the statute. He concludes on this point saying that “Essential 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.” Changing only a couple of words, he could similarly condemn patents directed toward printing, radio and television systems.

His statement that “Section 101 creates a ‘patent-free zone’ and places within it the indispensable instruments of social, economic, and scientific endeavor” could be used to place almost any significant invention within that zone. In fact, the more significant the invention, the less likely it could avoid this “patent-free zone.” Many have previously observed that Congress drafted Section 101 using inclusive rather than exclusive language. Given that, Judge Mayer appears to be arguing that the patent statute on its face is unconstitutional. Under what authority are courts empowered to amend such a statute by inserting exceptions, even in an attempt to “save” the statute?

As a segue to his primary point, Judge Mayer opines that, “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.” Judge Mayer does in fact quote the most relevant portion of Alice for support, but that language says only that “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” The Supreme Court cases from Bilski to Alice go out of their way to avoid the categorical condemnation of software patents, which seems appropriate given the multiple references in the patent statute that would be hard to reconcile with such condemnation (see, e.g., the Court’s discussion of Section 273 in Bilski, 561 U.S. at 607-608, and its corresponding conclusion that “the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text, 561 U.S. at 612).

Nonetheless, Judge Mayer urges that “all software implemented on a standard computer should be deemed categorically outside the bounds of section 101” (emphasis added). He makes no mention of how such a position can be squared with Bilski, or how his view of what should be can be implemented judicially rather than by Congress.

He goes on to state that the “central problem with affording patent protection to generically-implemented software is that standard computers have long been ceded to the public domain.” Such an approach could just as easily be applied to other inventions. To give an example, one could just as easily say that since items found in a hardware store “have long been ceded to the public domain” (however one wants to interpret that), one should not be able to patent a mechanical invention created just from parts available at a hardware store.

It is at the end of his opinion that we see the policy positions Judge Mayer is really advocating. He cites four “insurmountable problems” with software claims. First, he asserts that “their scope is generally vastly disproportionate to their technological disclosure.” Again, it seems that other sections of the patent law can ably address problems with inadequate disclosure.

Second, he asserts that software patents “provide incentives at the wrong time” because “they are typically obtained at the ‘idea’ stage, before any real inventive work has been done.” The patent statute’s requirements regarding constructive reduction to practice can readily be applied to address applications that exhibit such problems. And didn’t Congress intentionally provide incentives for inventors to submit patent applications as soon as possible after such reduction to practice? That’s why the statutory bars are there.

Third, he bluntly states that, “Yet another intractable problem with software patents is their sheer number.” The point is well taken that a patent “thicket” may make it difficult for later entrants to the market, but this is by no means an issue unique to software-implemented inventions. Many industries have established players with thousands of patents in their portfolios, and there is no policy deliberation suggested by Judge Mayer that would support singling out software-implemented inventions alone—indeed these are exactly the considerations that Congress is empowered to undertake in crafting legislation.

Finally, Judge Mayer says that “generically-implemented software invariably lacks the concrete borders the patent law demands.” He provides no explanation as to why the requirements of section 112 are ill-equipped to address this perceived concern.

One of the most common concerns about our government—voiced from all parts of the political spectrum—is that Congress gets too little done. Thus, the worry that a Congressional “fix” to our patent system is not likely anytime soon is understandable. However, problems caused by any real or perceived Congressional dysfunction may be dwarfed by allowing courts to re-write the Patent Act. If there is ever an area where the balancing of interests calls for the legislative process to be involved, it is in our intellectual property system. One person’s view—or even one Court’s view—of a good solution, however well-intentioned, is not the right approach.