Document Type

Article

Journal Title

Harvard Journal of Law and Technology

Volume

37

First Page

447

Publication Date

Spring 2024

Abstract

In the decade since its creation by the Supreme Court, the Alice/Mayo test for patentable subject matter under § 101 has been sharply criticized by many — and yet is still without meaningful reform. This Article adds to the corpus by empirically demonstrating a troubling consequence of contemporary § 101 doctrine: panel-dependent outcomes at the Federal Circuit. Specifically, this Article relies on a novel, whole-population dataset (all § 101 decisions made by the Federal Circuit up to 2023, hand-coded on a claim-by-claim basis) under natural-experiment circumstances (random panel assignments). Analysis of that data indicates that which judges are assigned to a panel bears an especially strong relationship to whether the subject matter will be found eligible on appeal. In particular, even after controlling for other critical case characteristics, panels with a majority of § 101-strict judges are roughly twice as likely to find a given patent ineligible compared to panels with a majority of § 101-lenient judges. This kind of intra-circuit split — at the unitary, specialized, and expert patent appeals court — indicates that § 101 reform is urgently needed. For the last ten years, Congress and the Supreme Court have given the Federal Circuit the last word on § 101. A lack of consistency from that body is cause for great concern, and further indicates that intervention from one of the former is warranted. Accordingly, the Article concludes with suggestions for an improved § 101 framework going forward, achievable via legislation or caselaw: reducing Alice/Mayo to a single step, and reallocating most of the force of Alice/Mayo’s step two to obviousness doctrine under § 103.

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