Predictable Unpredictability (Work-In-Progress)

Abstract

More than a decade has passed since the Supreme Court established the current framework for evaluating patent subject matter eligibility. Despite widespread recognition that subject matter eligibility is one of the most important areas of patent law, the impact of the Supreme Court’s decisions continues to draw sharp criticism and remains a hotly contested issue. As the law has developed over the past decade, a number of popular narratives have emerged. None have been more popular and polarizing than the often-repeated purported fatal flaw that the framework cannot be applied predictably. Too many critics to count—including academics, practitioners, legislators, and judges—have lambasted the patent eligibility framework as an unpredictable morass of confusion.

Yet, these claims that the doctrine is unpredictable stand on shaky empirical ground. Drawing on the most complete dataset of § 101 appellate cases collected to date, we examine the Federal Circuit’s caselaw at a more comprehensive and granular level than any prior study in an attempt to better understand how the sole patent appellate court has shaped and evolved this controversial doctrine. Using a multi-dimensional approach to assessing doctrinal predictability, including a novel metric that examines not just outcomes but judicial assessment, we assess whether patent subject matter eligibility doctrine is as unpredictable as the popular narrative claims.

Our findings reveal a patent eligible subject matter jurisprudence that looks remarkably like other patent law issues at the Federal Circuit, and one that lacks the kinds of empirical hallmarks that we would expect given the rhetoric. Specifically, we find that district courts and the PTO are not only getting the right result nearly every time, they also make very few errors in applying the law. Moreover, in all but a few cases, Federal Circuit judges show remarkable agreement in deciding § 101 issues. In fact, Federal Circuit judges dissent less frequently in § 101 cases than they do in other types of patent cases. Ultimately, this systematic analysis of Federal Circuit § 101 decisions reveals that there is significant reason to think the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges, is more of a misconception than an accurate narrative.

Keywords: patent, patent eligibility,