The Predictability of the Mayo/Alice Framework – A New Empirical Perspective

By Jason Rantanen and Nikola Datzov. Professor Datzov is an Assistant Professor  on the College of North Dakota College of Regulation.

The Mayo/Alice framework used to find out patent eligibility has been a lightning rod for criticism because the Supreme Court docket’s selections a decade in the past. Some have argued that the two-step framework is inconsistent with earlier patent eligibility precedent, whereas others have centered their objections on its purported unfavorable results on innovation. However arguably the most well-liked narrative is the asserted deadly flaw that the framework lacks administrability and can’t be utilized predictably.

Too many critics to rely—together with lecturers, practitioners, legislators, and judges—have lambasted the patent eligibility framework as an unpredictable morass of confusion. Even some judges on the Federal Circuit have labeled the eligibility framework as an “incoherent doctrine”[1] that may tempt district courts into “an efficient coin toss,”[2] whereas others have brazenly confessed that “the nation’s lone patent court docket … [is] at a loss as to the right way to uniformly apply § 101.”[3] The newest legislative try and reframe patent eligibility is equally premised on “intensive confusion and lack of consistency [in applying the 101 exceptions] all through the judicial department of the Federal Authorities and Federal companies.”[4] These issues for unpredictability are undoubtedly echoed by numerous practitioners who’ve been within the trenches of litigating this polarizing challenge. Given the actual emphasis on bringing predictability to patent legislation in creating the Federal Circuit, these criticisms elevate a grave concern concerning some of the vital areas in patent legislation.

But, empirical evaluation means that these claims of unpredictability might stand on shaky grounds. In an try to higher perceive whether or not judges have been in a position to predictably apply the doctrine, we analyzed the Federal Circuit’s whole physique of 368 instances on § 101 from 2012-2022 at a extra granular stage than any prior examine. To judge the extent of predictability inside § 101 jurisprudence, we used a multi-dimensional strategy that thought-about: (1) whether or not decrease tribunals are reaching the legally right end result (i.e., reversal charges); (2) whether or not decrease tribunals are appropriately making use of present legislation in every case (i.e., error charges); and (3) whether or not appellate judges exhibit disagreement in making use of the legislation (i.e., dissent charges).

What we discovered shocked us. It seems that patent eligible subject material jurisprudence appears to be like remarkably like different patent legislation points on the Federal Circuit and lacks the sorts of empirical hallmarks that we’d anticipate given the rhetoric for unpredictability. In truth, beneath some of the well-established metrics for measuring the predictability within the legislation, § 101 proved to be extra predictable than different areas of patent legislation over the previous decade.

Importantly, our aim was to not look at or argue the place the road must be drawn for figuring out what’s eligible for a patent. As a substitute, we simply sought to judge whether or not judges can inform the place the road has been drawn by the Supreme Court docket in Mayo. In different phrases, whether or not the Mayo/Alice framework has confirmed workable and predictable via ten years of litigation. As to that query, our evaluation means that the favored narrative that § 101 and the Mayo/Alice framework can’t be predictably utilized, notably by judges is likely to be extra of a false impression than an correct narrative.

Under are a few of our key findings concerning predictability from the analysis examine.  For those who’d like to leap forward to the draft paper itself, right here’s a hyperlink: http://ssrn.com/abstract=4380434.

 A Traditionally Excessive Affirmance Charge

Our examination of the Federal Circuit’s physique of case legislation on § 101 revealed that from the Federal Circuit’s perspective, the district courts and the PTO are getting the fitting outcome almost each time, boasting an general 87.2% affirmance fee.

Determine 1

Determine 1 reveals that the Federal Circuit believes district courts and the PTO are getting the fitting lead to a very excessive share of instances. That is particularly notable provided that 98.2% of the district court docket selections reviewed by the Federal Circuit arose within the context of a Rule 12 movement, abstract judgment, or JMOL—procedural postures through which the usual of evaluate on attraction owes no deference to the district court docket.

Eager about these numbers in context, the excessive affirmance fee on patent eligibility just isn’t solely a far cry from the Federal Circuit’s one-time 50% affirmance fee on declare development, it’s greater than the Federal Circuit’s observe report on obviousness. In truth, this can be the very best affirmance fee of any vital patent legislation challenge tracked over a major time period.

District Courts Very Not often Err in Their Evaluation

To take a deeper look, we additionally examined the Federal Circuit’s evaluation when it did affirm to see whether or not possibly the decrease tribunal acquired the fitting outcome however for the flawed motive.  Though an evaluation of affirmance charges has been a longtime and vital marker in measuring the predictability of the legislation, it gives a considerably incomplete image of judges’ means to use the legislation predictably as a result of it focuses solely on the outcomes and never the method of creating the choice. It’s potential {that a} choose can err within the authorized evaluation (or incorrectly apply a authorized customary) and nonetheless attain the proper general outcome—in different phrases, get the fitting outcome for the flawed causes. Thus, wanting past mere outcomes to find out how typically a choose applies the proper evaluation is a crucial perspective in figuring out whether or not a legislation may be predictably utilized.

We discovered that district court docket and PTAB judges not solely not often get the result flawed, in addition they make only a few errors in making use of the legislation. When district courts reached the fitting end result (i.e., full affirmance on § 101), the Federal Circuit famous a mistake within the district court docket’s § 101 evaluation a mere 4.5% of the time—and 0% of the time for PTAB judges. There have been a mere 7 errors in 153 affirming opinions (excluding Rule 36 affirmances). If wanting solely to precedential opinions (these written for the bar and individuals apart from the events), there have been 4 errors in 67 opinions, leading to a comparable 6.0% error fee. General, bearing in mind reversals and vacated selections, greater than 80% of the time for the district court docket—and 95.5% of the time for the PTAB—the choose’s Mayo/Alice evaluation was error free.

One of these granular examination of appellate outcomes has been largely absent from earlier empirical research, so it’s troublesome to place the § 101 error fee in historic context. Nonetheless, the low fee of errors in district court docket and PTO § 101 selections seems to be remarkably low for an space of legislation recognized to be in crises.  Certainly, it seems to be one other sturdy indicator that district courts and the PTO perceive the right way to apply the legislation, general.

Federal Circuit Judges Not often Disagree Concerning § 101 Outcomes

Athena Diagnostics v. Mayo, 927 F.3d 1333 (Fed. Cir. 2019) and American Axle v. Neapco, 966 F.3d 1347 (Fed. Cir. 2020) are § 101 selections regularly cited as exemplars of what some—together with a number of judges on the Federal Circuit—have argued to be an entire breakdown among the many Federal Circuit on the right way to apply § 101 legislation. Surprisingly, regardless of the eye § 101 has obtained, there have been nearly no empirical research to look at this query on a deeper stage.

But, in what often is the most shocking discovering from our examine, in all however just a few instances, Federal Circuit judges have proven outstanding settlement (93.5%) in deciding § 101 points over the previous decade. In truth, beneath this measure of predictability, § 101 proved to be extra predictable than the opposite areas of patent legislation.  Within the 368 § 101 instances determined by the Federal Circuit from 2012 to 2022, there have been simply 24 dissenting opinions referring to § 101. As proven under, the variety of instances through which there was a dissenting opinion on § 101 has remained persistently low and peaked in 2019-2020:

Determine 2

Placing the § 101 dissent charges over the previous decade in historic and subject material context additional signifies that § 101 legislation has not been the topic of extra disagreement than different areas of patent legislation.

Determine 3

The abstract tables above present that the dissent fee in Federal Circuit selections involving § 101 over the interval 2012-2022 is an identical to the speed amongst all different Federal Circuit selections, and was decrease than in non-101 patent selections. And whereas the speed of dissents in § 101 opinions is considerably greater than in all different opinions that don’t contain § 101, it’s nonetheless decrease than the dissent fee in non-101 patent opinions typically and almost an identical for patent opinions arising from the district courts—probably as a result of a considerable variety of § 101 appeals are summarily affirmed. With that in thoughts, it’s outstanding that the dissent fee for § 101 selections (together with Rule 36 affirmances) arising from the district courts is definitely decrease than the court docket’s dissent fee in appeals from the district courts that don’t contain § 101.

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Extra particulars on the methodology and evaluation—in addition to extra findings on the forms of appeals, procedural posture of selections, breakdowns by exception sort, and invalidity outcomes—may be discovered within the working draft paper on SSRN: http://ssrn.com/abstract=4380434. Along with our core findings on predictability, we additionally present up to date information on § 101 points studied by earlier students. Feedback are welcome, and may be communicated by electronic mail to Jason Rantanen.

[1] Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1348 (Fed. Cir. 2018) (Plager, J., concurring-in-part and dissenting-in-part).

[2] Realtime Knowledge LLC v. Reduxio Sys., Inc., 831 F. App’x 492, 493 (Fed. Cir. 2020) (emphasis added).

[3] Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 977 F.3d 1379, 1382 (Fed. Cir. 2020) (Moore, J., concurring).

[4] Patent Eligibility Restoration Act of 2023, S. 2140, 118th Cong. § 2(3) (2023) https://www.congress.gov/118/payments/s2140/BILLS-118s2140is.pdf.