Patent Textualism

Category: Print Issues

David O. Taylor

Volume 32

, Issue 1

Introduction

Justice Elena Kagan once famously said, “we’re all textualists now.”¹ In context, Justice Kagan’s statement referred, in part, to Justice Antonin Scalia’s preference and, indeed, evangelism of the benefits of textualism—the practice of interpreting legal text by reference to how an ordinary person would have understood that text at the time it was promulgated.² Justice Kagan was indicating that, not only was Justice Scalia applying textualist principles, but all of the Justices were, to one degree or another, applying textualist principles as a result of his influence.³

Since Justice Kagan’s statement, the makeup of the Supreme Court has changed significantly. At the time of her statement, several Justices did not wholeheartedly embrace textualism.⁴ Even on the conservative side of the bench, for example, Justice Anthony Kennedy was characterized as merely “textualist-leaning.”⁵ On the liberal side of the bench, “neither textualism nor intentionalism” defined Justice Ruth Bader Ginsburg’s approach.⁶ Justice Stephen Breyer, moreover, was a noted evangelist of intentionalism or purposivism, an approach to interpreting legal texts with an eye toward achieving the intent or purpose of the institution that promulgated the legal text.⁷ Since Justice Kagan spoke her words, however, several conservative Justices have joined the Supreme Court.⁸ And two noted textualists, Justices Brett Kavanaugh and Amy Coney Barrett, have replaced Justices Kennedy and Ginsburg.⁹ These newer Justices have embraced textualism to a far greater degree than their predecessors.¹⁰

This Article studies the Supreme Court’s increased emphasis on textualist principles and then deeply considers the application of textualism to patent law. In particular, this Article considers the extent to which the Supreme Court has interpreted the patent statute consistent with the tenets of textualism by conducting a comprehensive study of the Court’s use and disuse of textualism in patent cases over the past ten years.¹¹ There is surprisingly little prior analysis of textualism applied to the patent statute.¹² This Article thus provides, for the first time, a deep analysis of this application in the patent field.

This Article identifies how certain aspects of the statute have been interpreted by the Supreme Court consistent with textualist principles.¹³ Examples include the statutory provisions governing the award of enhanced damages and attorneys’ fees.¹⁴ It then identifies how other aspects of the patent statute have not been interpreted by the Supreme Court consistent with textualist principles.¹⁵ The most notable example of the Supreme Court’s failure to apply textualism to the patent statute turns out to be one of the foundational aspects of the patent statute—its provision governing patent eligibility.¹⁶

When it comes to patent cases at the Supreme Court interpreting the statutory provision governing patent eligibility, textualism has rarely been used as an interpretive tool. This is a striking deviation from the general rule. Because this provision defines the types of inventions that are and are not eligible for patenting, it serves as the gateway to the patent system.¹⁷ It is not only the patent statute’s foundation but also the foundation of the whole patent system. Despite its importance, the Court has interpreted this provision using interpretive tools the Court has generally rejected in other fields to reach interpretations of the patent statute that are inconsistent with textualism. In short, the Court significantly deviates in its treatment of a foundational patent law doctrine.

Finally, this Article explores why the Supreme Court has not embraced textualist interpretations of the patent statute and the ramifications if the Court were to do so in the future.¹⁸ It highlights how a textualist approach to patent eligibility would broaden it. In other words, a textualist approach would expand the scope of inventions eligible for patenting. More importantly, textualism would return political power over the doctrine to the political branches of our government. It would also provide certainty over the question of what is and is not eligible for patenting.¹⁹ Thus, this Article is not only novel in its analysis, and it does not merely identify a significant deviation in the Court’s use of textualism, it suggests a pathway to boost both the democratic legitimacy and accurate functioning of the patent system.

This Article is organized into two main parts. Part I discusses textualism generally, first by providing a review of the textualist approach to interpreting legal texts and then by highlighting the recent trend toward the increased use of textualism and textualist interpretations by the Supreme Court. Part II then considers textualism in the patent field, identifying and analyzing the Court’s use and disuse of textualism with respect to the patent statute before considering several important takeaway points based on my analysis.

I. Textualism Generally

A. Interpreting Legal Texts to Identify Their Original Ordinary Meaning

So, what is textualism? It is an interpretive approach that focuses on how an ordinary person would have understood legal texts at the time they were promulgated.²⁰ According to its leading proponent, Justice Scalia, textualism embraces the “oldest and most commonsensical interpretive principle,” that is, “[i]n their full context, words mean what they conveyed to reasonable people at the time they were written—with the understanding that general terms may embrace later technological innovations.”²¹ While academics now identify (and critique) what they see as various versions of textualism,²² the common idea is that the text of the law must be understood in light of the original ordinary meaning of the text’s words rather than the presumed intention of the legislature or the more sweeping idea of using “judicial power to render the law more just.”²³

Justice Scalia argued that textualism holds the ability to gain “society’s confidence in the rule of law.”²⁴ It does so, he said, by (1) “curb[ing]—even revers[ing]—the tendency of judges to imbue authoritative texts with their own policy preferences,” (2) “discourag[ing] legislative free-riding, whereby legal drafters idly assume that judges will save them from their blunders,” and (3) “provid[ing] greater certainty in the law,” all of which creates “greater predictability and greater respect for the rule of law.”²⁵

Others focus on textualism’s ability to promote the law’s legitimacy. Textualism is rooted “in straightforward faithful agent theory,” the idea that judges should interpret legal texts as a faithful agent of the political branches of government.²⁶ Toward that end, proponents of textualism argue that it “provide[s] a superior way for federal judges to fulfill their presumed duty as Congress’s faithful agents.”²⁷ Focusing on the enacted text of the law rather than seeking to identify and fulfil the purposes of the law’s drafters, textualists highlight how “many statutes result from bargains struck among interest groups competing for advantage in the legislative process.”²⁸ Textualists “contend that judges simply cannot discover an actual (but unexpressed) legislative ‘intent.’”²⁹ Moreover, textualists maintain, “enforcing the purpose, rather than the letter, of the law may defeat the legislature’s basic decision to use rules rather than standards to articulate its objectives.”³⁰ And when judges simply give the words used by the political actors their original, ordinary meaning—when judges are faithful agents of the legislative branches—the result is more legitimate law.³¹ Stated otherwise, textualism is “politically and policy neutral when applied across the board.”³²

Textualism’s advocates identify functional advantages associated with the doctrine. Textualism, for example, promotes fair notice of the law by seeking to identify how an ordinary person would understand the law’s text.³³ Consistent with the faithful agency theory, textualism respects compromise by seeking the ordinary meaning of the words used to craft a legislative compromise rather than seeking the unexpressed intention of one or more of those involved in crafting the compromise.³⁴ Textualism also restrains judges from seeking to displace the text of the law with their own sense of right and wrong—restraint that reflects the separation of powers between the judicial and legislative branches of government.³⁵ Finally, textualism promotes judicial economy by focusing judges on “those tasks that judges are best equipped to perform.”³⁶

Textualism’s critics focus on the assumptions underlying textualism, textualism’s methodology, and the incentives and results it creates. For example, Justice Scalia highlighted the criticism that “[y]ou can never tell what a word means,” a criticism that, he noted with dry humor, is “usually express[ed] . . . in words.”³⁷ Beyond this challenge to the assumption underlying textualism—that words have an ascertainable original, ordinary meaning—critics argue textualism invokes a methodology that “requires judges to apply a literal and static interpretive framework.”³⁸ Critics also claim that “textualism overemphasizes the importance of the text and undervalues other evidence in conveying Congress’s policymaking directives.”³⁹ Relatedly, textualism is said to be “insensitive to the actual workings of Congress.”⁴⁰ As for incentives created by textualism, critics argue textualism “compels legislators to specify policy at an impossible level of detail.”⁴¹ And, as for the results it creates, critics argue textualism “often compels judges to enforce irrational or unjust results.”⁴²

Other criticisms seem to focus more on textualists than textualism, or perhaps reflect the belief that textualism does not adequately constrain those who use it.⁴³ Critics, for example, “claim that textualists behave selectively in their allegiance to the text and their willingness to rely on extrinsic evidence.”⁴⁴ As a result, these critics argue, textualists “find it necessary to act inconsistently in constitutional and statutory cases.”⁴⁵ Similarly, others contend textualism is “overly malleable” and thus “not a neutral method of interpretation.”⁴⁶

In short, despite its identified advantages, textualism has its critics. Even its leading advocate, Justice Scalia, admitted that textualism is “not perfect.”⁴⁷ In his view, however, textualism “just happens to be better” than any other method of interpreting legal texts.⁴⁸

B. Textualism at the Supreme Court

Beyond understanding what textualism is and its purported advantages and disadvantages, it is helpful to consider the Supreme Court’s recent embrace of textualism. A brief study of the history of references to textualism at the Supreme Court reveals how the doctrine has gone from being scorned to being embraced. Whatever textualism’s benefits or faults, several Justices of the Supreme Court have recently adopted it as their preferred approach to interpreting legal texts.

Interestingly, the first reference to “textualism” in a Supreme Court opinion appeared in 1952 with Justice Robert Jackson’s concurrence in Youngstown Sheet & Tube Co. v. Sawyer,⁴⁹ the so-called Steel Seizure Case.⁵⁰ Justice Jackson agreed with the majority that President Truman was not “acting within his constitutional power when he issued an order directing the Secretary of Commerce to take possession of and operate most of the Nation’s steel mills.”⁵¹ But, in his concurrence, Justice Jackson highlighted how his interpretation of the Constitution allowed for “some latitude of interpretation for changing times” and “elasticity afforded by what seem to be reasonable, practical implications.”⁵² Moreover, he contrasted his approach with “the rigidity dictated by a doctrinaire textualism.”⁵³ In other words, he sought to make clear that his conclusion—that President Truman did not have the power he claimed under the Constitution—did not reflect a rigid textualist interpretation of the Constitution. This, unmistakably, was a criticism of textualism. And no Justice working on this case wrote in response to Justice Jackson in defense of textualism.

The next reference to textualism would not occur in a Supreme Court opinion until forty-one years later (1993) in Deal v. United States.⁵⁴ Yet again, textualism was criticized, this time by Justice John Paul Stevens in a dissenting opinion joined by Justices Harry Blackmun and Sandra Day O’Connor.⁵⁵ While Justice Jackson had merely distanced himself from “doctrinaire textualism,” Justice Stevens provided a scathing criticism of textualism more generally; he referred to textualism as “replac[ing] common sense” and as an exercise in “sentence parsing.”⁵⁶ This time, however, Justice Scalia was there, on behalf of the Court in its majority opinion, to defend textualism against these criticisms. Justice Scalia argued that it did not take much “sentence parsing” to reject the interpretation put forward by Justice Stevens.⁵⁷ By contrast, he characterized the position put forward by Justice Stevens as “requir[ing] a degree of verbal know-nothingism that would render government by legislation quite impossible.”⁵⁸ He derisively characterized the approach advocated by Justice Stevens as the “text-insensitive” approach.⁵⁹ And, in the end, Justice Scalia argued, “nothing but personal intuition” supported the interpretation Justice Stevens advocated.⁶⁰

Seven years would pass before the next reference to textualism appeared in a Supreme Court opinion, and again textualism would be criticized. In 2001, in Johnson v. United States,⁶¹ Justice David Souter, on behalf of the Court, needled Justice Scalia for his embrace of textualism. Justice Souter argued Justice Scalia’s “erudite explanation” and “virtuoso lexicography” proved only that “English is rich enough to give even textualists room for creative readings.”⁶² Never avoiding a fight, Justice Scalia crafted a dissenting opinion that, in effect, rejoined the broader debate over textualism and its role in statutory interpretation. He began by highlighting his view that the term at issue, which was not defined by the statute, “should be construed ‘in accordance with its ordinary or natural meaning.’”⁶³ Then, while diving into details of how the particular term should be construed, he identified “the acid test of whether a word can reasonably bear a particular meaning.”⁶⁴ According to Justice Scalia, that test “is whether you could use the word in that sense at a cocktail party without having people look at you funny.”⁶⁵

On a more serious note, Justice Scalia also highlighted the importance of his dispute over textualism with Justice Souter and the majority. In his view, “nothing but the Court’s views of policy and ‘congressional purpose’” supported its judgment, and that, in Justice Scalia’s view, was “a matter of great concern, if only because of what it tells district and circuit judges.”⁶⁶ He explained, “The overwhelming majority of the Courts of Appeals—9 out of 11—notwithstanding what they might have viewed as the more desirable policy arrangement, reached the result unambiguously demanded by the statutory text.”⁶⁷ But, he continued, the majority’s decision “invites them to return to headier days of not-too-yore, when laws meant what judges knew they ought to mean.”⁶⁸

Despite Justice Scalia’s description of the importance of textualism, another eight years would pass before the Court would refer again expressly to textualism. And, yet again, the methodology would be criticized. In 2008, in Florida Department of Revenue v. Piccadilly Cafeterias, Inc.,⁶⁹ Justice Breyer filed a dissenting opinion joined by Justice Stevens.⁷⁰ In it, he took a position similar to Justice Souter’s position in Johnson, arguing that textualism did not answer the relevant interpretive question.⁷¹ Expressing his view that the “statutory language itself is perfectly ambiguous,”⁷² Justice Breyer characterized Justice Clarence Thomas’s majority opinion as having “methodically comb[ed] the textualist beaches” to no avail.⁷³ But, beyond criticizing textualism, his opinion espoused a different approach to interpreting legal texts.⁷⁴ According to Justice Breyer, “[j]udges are free to consider statutory language in light of a statute’s basic purposes.”⁷⁵ Indeed, according to Justice Breyer, “the majority’s failure to work with this important tool of statutory interpretation . . . led it to construe the present statute in a way that . . . runs contrary to what Congress would have hoped for and expected.”⁷⁶

The next year, Justice Thomas found an opportunity to respond to the idea suggested by Justice Breyer that statutes should be interpreted consistent with their “basic purposes” and “what Congress would have hoped for and expected.” In Wyeth v. Levine,⁷⁷ Justice Thomas argued “there is no factual basis for the assumption . . . that every policy seemingly consistent with federal statutory text has necessarily been authorized by Congress.”⁷⁸ Rather, he explained, the right analysis requires identifying “policies that are actually authorized by and effectuated through the statutory text.”⁷⁹ Justice Thomas, in other words, joined Justice Scalia in defending textualism.

Over the next decade, between 2009 and 2019, a handful of Supreme Court opinions included a brief statement referencing textualism or cited one or more law review articles discussing textualism.⁸⁰ Then, beginning in 2019, the floodgates, so to speak, were opened: More than half of all Supreme Court opinions in history that include the word “textualist” or “textualism” have been issued since June 26, 2019, in just over five years as of the date of this writing.⁸¹ Moreover, while Justice Jackson disassociated himself with “doctrinaire textualism” and Justices Stevens, Souter, and Breyer criticized textualism, the latest opinions routinely laud the doctrine.

Consider, in particular, Justice Neil Gorsuch’s concurring opinion in Kisor v. Wilkie.⁸² In his opinion, Justice Gorsuch explained why the Court should have overruled Auer v. Robbins⁸³ and eliminated the requirement that federal courts defer to an agency’s interpretation of its own regulations.⁸⁴ In a portion of the opinion joined by Justices Thomas and Kavanaugh, Justice Gorsuch highlighted how “during the period of Auer’s ascendancy some suggested that the meaning of written law is always ‘radically indeterminate’ and that judges expounding it are ‘for the most part, guided by policy—not text.’”⁸⁵ But, he explained, “we’ve long since come to realize that the real cure doesn’t lie in turning judges into rubber stamps for politicians.”⁸⁶ Instead, he continued, the real cure lies “in redirecting the judge’s interpretive task back to its roots, away from open-ended policy appeals and speculation about legislative intentions and toward the traditional tools of interpretation judges have employed for centuries to elucidate the law’s original public meaning.”⁸⁷ In this way, Justice Gorsuch directed judges to focus on what textualism focuses on: the law’s original public meaning. As if to make this point about the importance of textualism crystal clear to lower court judges, he concluded this portion of his analysis with the same turn of phrase invoked by Justice Kagan in 2015: “Today it is even said that we judges are, to one degree or another, ‘all textualists now.’”⁸⁸ In short, the early criticism of textualism has given way to praise of textualism.

C. The Modern, Textualist Court

As of this writing, the Supreme Court includes four Justices who have identified themselves as textualists and applied textualist interpretive methods (Justices Thomas, Gorsuch, Kavanaugh, and Barrett) and two Justices who have applied textualist interpretive methods, albeit less absolutely (Chief Justice John Roberts and Justice Samuel Alito).⁸⁹ In a sign of how far the Supreme Court’s discourse has changed, rather than always responding to criticisms of textualism or even praising textualism, these Justices now sometimes find themselves arguing about which Justice is more faithfully applying textualism.

Consider as a prime example Bostock v. Clayton County,⁹⁰ decided by the Supreme Court in 2020.⁹¹ In this case, Justice Gorsuch authored a majority opinion concluding that “[a]n employer who fires an individual merely for being gay or transgender defies the law,” in particular Title VII of the Civil Rights Act of 1964.⁹² Regardless of whether you agree or disagree with the Court’s holding or analysis, one thing is clear: Justice Gorsuch repeatedly indicated he believed he was applying textualism to decide the case. He began his analysis by describing how the “Court normally interprets a statute in accord with the ordinary public meaning of its terms at the time of its enactment,”⁹³ a statement that effectively summarizes textualism. He then described the use of textualism as the clear task of the Court:

With this in mind, our task is clear. We must determine the ordinary public meaning of Title VII’s command that it is “unlawful . . . for an employer to fail or refuse to hire or to discharge any individual, or otherwise to discriminate against any individual with respect to his compensation, terms, conditions, or privileges of employment, because of such individual’s race, color, religion, sex, or national origin.”⁹⁴

Justice Gorsuch’s later statement reinforces his belief that he was applying textualism to decide the case: “From the ordinary public meaning of the statute’s language at the time of the law’s adoption, a straightforward rule emerges.”⁹⁵ He similarly indicated certain “cases involve no more than the straightforward application of legal terms with plain and settled meanings.”⁹⁶ In these ways, he was identifying the goal of his task: to identify the ordinary public meaning, or the plain and settled meanings, of the language in the statute. Indeed, he later described how “when the meaning of the statute’s terms is plain, our job is at an end.”⁹⁷

As it turns out, however, Justice Gorsuch did not stop there. In response to arguments that a different ordinary meaning controlled, he suggested that, “[b]ecause the law’s ordinary meaning at the time of enactment usually governs,” it is possible that “a statutory term that means one thing today or in one context might have meant something else at the time of its adoption or might mean something different in another context.”⁹⁸ And, he continued, “we must be attuned to the possibility that a statutory phrase ordinarily bears a different meaning than the terms do when viewed individually or literally.”⁹⁹ Thus, he professed to focus on the ordinary meaning of the language in the context of the governing statute at the time of its enactment. In short, Justice Gorsuch repeatedly argued that textualism supported his conclusion.

Justice Alito, however, in a dissenting opinion joined by Justice Thomas, denounced the majority opinion on this exact point. According to Justice Alito, while the Court sought “to convince readers” that it was “merely enforcing the terms of the statute, . . . that is preposterous.”¹⁰⁰ Indeed, he continued, “no one should be fooled” by the Court’s “attempts to pass off its decision as the inevitable product of the textualist school of statutory interpretation championed by our late colleague Justice Scalia.”¹⁰¹ Comparing the Court’s opinion to “a pirate ship,” he said “[i]t sails under a textualist flag, but what it actually represents is a theory of statutory interpretation that Justice Scalia excoriated––the theory that courts should ‘update’ old statutes so that they better reflect the current values of society.”¹⁰² In the process of leveling these criticisms, Justice Alito contrasted Justice Gorsuch’s approach with what he described as the “duty . . . to interpret statutory terms to ‘mean what they conveyed to reasonable people at the time they were written.’”¹⁰³ This, then, was a dispute over which set of judges were more faithfully applying the tenets of textualism to the dispute before the Court.

This dispute between adherents to textualism about the proper application of the doctrine in a particular case demonstrates quite clearly just how far textualism has come. It is no longer merely the subject of criticism, but instead the central methodology for resolving disputes over statutory interpretation at the Supreme Court. Justices no longer dispute whether to apply textualism, but instead how it applies in particular cases. Scholars, in turn, have turned from comparing and contrasting various interpretive methodologies, such as textualism and purposivism,¹⁰⁴ to comparing and contrasting versions of textualism itself.¹⁰⁵ In short, it has become quite clear that interpreting legal texts requires applying textualism.

II. Textualism Applied to the Patent Statute

Understanding both what textualism is and how it has become a central tenet of the Supreme Court’s approach to interpreting legal texts provides a precursor to the question: How would a textualist interpret the patent statute? The answer can be easily found by reviewing the Supreme Court’s patent cases issued in the past ten years—just before and ever since Justice Kagan’s pronouncement in 2015 that the Supreme Court Justices were “all textualists now.”¹⁰⁶ Cases that interpret statutory provisions (or, in one case, a Federal Rule of Civil Procedure) are categorized as textualist or atextualist.¹⁰⁷

As a high-level summary, some of these opinions do reflect textualist interpretations; others, despite Justice Kagan’s pronouncement, do not. The following table summarizes the past decade of interpretations of the patent statute, including any application (or lack thereof) of textualist principles. An analysis of particularly good or important examples of textualist and atextualist Supreme Court opinions in the patent arena follows. Given the Court’s noticeable rejection of textualism to interpret the statutory provision governing patent eligibility, this Article also considers the Court’s earlier cases related to the same statutory provision.

Year	Opinion	Provision	Author	Textualist?
2013	Bowman v. Monsanto Co.¹⁰⁸	None: Exhaustion¹⁰⁹	Kagan	N/A
2013	Ass’n for Molecular Pathology v. Myriad Genetics, Inc.¹¹⁰	35 U.S.C. § 101¹¹¹	Thomas	No
2014	Medtronic, Inc. v. Mirowski Family Ventures, LLC¹¹²	None; Burden of Proving Infringement¹¹³	Breyer	N/A
2014	Octane Fitness, LLC v. ICON Health & Fitness, Inc.¹¹⁴	35 U.S.C. § 285¹¹⁵	Sotomayor	Yes
2014	Highmark Inc. v. Allcare Health Management System, Inc.¹¹⁶	35 U.S.C. § 285¹¹⁷	Sotomayor	Yes
Year	Opinion	Provision	Author	Textualist?
2014	Nautilus, Inc. v. Biosig Instruments, Inc.¹¹⁸	35 U.S.C. § 112, ¶ 2¹¹⁹	Ginsburg	No
2014	Limelight Networks, Inc. v. Akamai Technologies, Inc.¹²⁰	35 U.S.C. § 271(b)¹²¹	Alito	No
2014	Alice Corp. v. CLS Bank International¹²²	35 U.S.C. § 101¹²³	Thomas	No
2015	Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.¹²⁴	Fed. R. Civ. P. 52(a)(6)¹²⁵	Breyer	Yes
2015	Commil USA, LLC v. Cisco Systems, Inc.¹²⁶	35 U.S.C. § 271(b)¹²⁷	Kennedy	Yes
2016	Halo Electronics, Inc. v. Pulse Electronics, Inc.¹²⁸	35 U.S.C. § 284¹²⁹	Roberts	Yes
2016	Cuozzo Speed Technologies, LLC v. Lee¹³⁰	35 U.S.C. §§ 314(d), 316(a)(4)¹³¹	Breyer	Yes and No
2016	Samsung Electronics Co. v. Apple Inc.¹³²	35 U.S.C. § 289¹³³	Sotomayor	Yes
Year	Opinion	Provision	Author	Textualist?
2017	Life Technologies Corp. v. Promega Corp.¹³⁴	35 U.S.C. § 271(f)¹³⁵	Sotomayor	Yes
2017	SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC¹³⁶	35 U.S.C. § 286¹³⁷	Alito	Yes
2017	TC Heartland LLC v. Kraft Foods Group Brands LLC¹³⁸	28 U.S.C. § 1400(b)¹³⁹	Thomas	Yes
2017	Impression Products, Inc. v. Lexmark International, Inc.¹⁴⁰	35 U.S.C. § 154(a)¹⁴¹	Roberts	No
2018	Oil States Energy Services, LLC v. Greene’s Energy Group, LLC¹⁴²	Article III and the Seventh Amendment of the Constitution¹⁴³	Thomas	N/A
2018	SAS Institute, Inc. v. Iancu¹⁴⁴	35 U.S.C. § 318(a)¹⁴⁵	Gorsuch	Yes
2018	WesternGeco LLC v. ION Geophysical Corp.¹⁴⁶	35 U.S.C. §§ 271, 284¹⁴⁷	Thomas	No
Year	Opinion	Provision	Author	Textualist?
2019	Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.¹⁴⁸	35 U.S.C. § 102(a)(1)¹⁴⁹	Thomas	Yes
2019	Return Mail, Inc. v. U.S. Postal Service¹⁵⁰	35 U.S.C. §§ 311(a), 321(a)¹⁵¹	Sotomayor	Yes
2019	Peter v. NantKwest, Inc.¹⁵²	35 U.S.C. § 145¹⁵³	Sotomayor	Yes
2020	Thryv, Inc. v. Click-To-Call Technologies, LP¹⁵⁴	35 U.S.C. § 314(d)¹⁵⁵	Ginsburg	Yes and No
2021	United States v. Arthrex, Inc.¹⁵⁶	Appointments Clause of the Constitution¹⁵⁷	Roberts	N/A
2021	Minerva Surgical, Inc. v. Hologic, Inc.¹⁵⁸	35 U.S.C. § 282(b)¹⁵⁹	Kagan	No
2023	Amgen Inc. v. Sanofi¹⁶⁰	35 U.S.C. § 112(a)¹⁶¹	Gorsuch	Yes

A. Textualist Interpretations

Several of the Supreme Court’s cases interpreting provisions of the patent statute in the past ten years demonstrate strong textualist analyses. So, too, do some of the Court’s older cases interpreting the statutory provision governing patent eligibility.

1. Statutory Provisions Related to Remedies

In the past decade, four patent cases interpreting statutory provisions related to remedies present strong textualist analyses.

The first two examples related to the interpretation of the statutory provision governing awards of attorney fees. In both Octane Fitness, LLC v. ICON Health & Fitness, Inc.¹⁶² and Highmark Inc. v. Allcare Health Management System, Inc.,¹⁶³ the parties called upon the Court to interpret 35 U.S.C. § 285. This section of the patent statute states: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”¹⁶⁴ Both opinions demonstrate textualist analyses. Interestingly, one of the Court’s liberals, Justice Sonia Sotomayor, authored them.

In Octane Fitness, the Court identified the “question before us” as one to be decided by textualism: whether the “framework” established by the lower court (the U.S. Court of Appeals for the Federal Circuit) for determining whether a case may be deemed exceptional “is consistent with the statutory text.”¹⁶⁵ Although Justice Sotomayor cited the statutory provision’s legislative history when reviewing the history of the revision of the statutory language,¹⁶⁶ the Court’s analysis turned on the text of the provision. The Court held that the “framework established by the Federal Circuit . . . is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”¹⁶⁷ Then, the Court indicated its “analysis begins and ends with the text of § 285.”¹⁶⁸ Because the Patent Act did not define “exceptional,” the Court said it would “construe it ‘in accordance with [its] ordinary meaning.’”¹⁶⁹ And so it did, identifying the ordinary meaning of the term “[i]n 1952, when Congress used the word in § 285.”¹⁷⁰ In rejecting the lower court’s framework, moreover, the Court noted that the Federal Circuit’s “formulation superimposes an inflexible framework onto statutory text that is inherently flexible.”¹⁷¹ In short, the Court rooted its analysis in textualism.

The Court likewise applied textualism in the second case, Highmark. There, the Court considered whether the Federal Circuit correctly held that it should review a district court’s award of attorney fees under a de novo standard of review.¹⁷² The Supreme Court again disagreed with the Federal Circuit based on the text of § 285. The Court explained that “[b]ecause § 285 commits the determination whether a case is ‘exceptional’ to the discretion of the district court, that decision is to be reviewed on appeal for abuse of discretion.”¹⁷³

The third case applied textualism to interpret a different remedial statutory provision governing enhanced damages. In Halo Electronics, Inc. v. Pulse Electronics, Inc.,¹⁷⁴ the Court considered 35 U.S.C. § 284,¹⁷⁵ the section of the patent statute that states a court “may increase the damages up to three times the amount found or assessed.”¹⁷⁶ The Court’s opinion, authored by Chief Justice Roberts, again demonstrated a textualist approach.

The Court expressed the question presented as one governed by the text of the statutory provision: whether the Federal Circuit’s two-part test for when a district court may increase damages pursuant to § 284 “is consistent with § 284.”¹⁷⁷ The Court reviewed the history of the development of the modern statutory provision to identify the historical “backdrop that Congress, in the 1952 codification of the Patent Act, enacted § 284.”¹⁷⁸ Then, in analyzing how to interpret the provision, the Court began with its language. Highlighting the “pertinent text,” the Court noted that it “contains no explicit limit or condition” and emphasized “that the word ‘may’ clearly connotes discretion.”¹⁷⁹ Later, in rejecting the Federal Circuit’s two-part test, the Court quoted Octane Fitness for the proposition that the test “impermissibly encumbers the statutory grant of discretion to district courts.”¹⁸⁰ The Court likewise quoted Octane Fitness when it said the test “is also inconsistent with § 284” because § 284 “imposes no specific evidentiary burden, much less such a high one.”¹⁸¹ The Court also supported its conclusion by another textualist principle, the idea that “Congress expressly erected a higher standard of proof elsewhere in the Patent Act but not in § 284.”¹⁸²

The fourth case involved an interpretation of another remedial statutory provision, this one governing the remedy for infringement of a design patent. In Samsung Electronics Co. v. Apple Inc.,¹⁸³ the Court explained that “the Patent Act provides a damages remedy specific to design patent infringement.”¹⁸⁴ That provision, as codified at 35 U.S.C. § 289, indicates a “person who manufactures or sells ‘any article of manufacture to which [a patented] design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit.’”¹⁸⁵ To set the stage for the interpretive question the Court faced, the Court first explained that “‘[t]otal,’ of course, means all” and that the “‘total profit’ . . . is thus all of the profit made from the prohibited conduct, that is, from the manufacture or sale of the ‘article of manufacture to which [the patented] design or colorable imitation has been applied.’”¹⁸⁶ The Court then explained that the case “requires us to address a threshold matter: the scope of the term ‘article of manufacture.’”¹⁸⁷

“The text,” the Court decided, “resolves this case.”¹⁸⁸ According to the Court, “The term ‘article of manufacture,’ as used in § 289, encompasses both a product sold to a consumer and a component of that product.”¹⁸⁹ Quoting definitions of “article” and “manufacture” from 1885, the Court concluded: “So understood, the term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer as well as a component of that product.”¹⁹⁰ The Court then found this understanding of the phrase consistent with other portions of the patent statute.¹⁹¹ It also determined that the “Federal Circuit’s narrower reading of ‘article of manufacture’ cannot be squared with the text of § 289.”¹⁹² Notably absent from the Court’s analysis is any consideration of the legislative history behind § 289. This is notable because that legislative history arguably contradicts the Court’s holding.¹⁹³ But textualism would not give effect to the legislative history to the extent it contradicts the fairest reading of the statutory language.¹⁹⁴

In all four of these cases addressing remedies for patent infringement, the Court interpreted the patent statute based on textualist principles.

2. Statutory Provisions Related to the America Invents Act

Another set of four cases highlights the Court’s use of textualism (at varying levels of enthusiasm or consistency) to interpret provisions of the patent statute set forth in the Leahy-Smith America Invents Act (“AIA”).¹⁹⁵

In Cuozzo Speed Technologies, LLC v. Lee,¹⁹⁶ the Court addressed two of these provisions.¹⁹⁷ The first, 35 U.S.C. § 314(d), states that the “determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and non-appealable.”¹⁹⁸ The second, 35 U.S.C. § 316(a)(4), states that the “Director [of the Patent Office] shall prescribe regulations establishing and governing inter partes review under this chapter.”¹⁹⁹ As to the first provision, in an opinion authored by Justice Breyer, the Court concluded that, “though it may not bar consideration of a constitutional question, for example,” it “does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review.”²⁰⁰ As to the second provision, the Court concluded that it “authorize[s] the Patent Office to issue a regulation stating that the agency, in inter partes review, ‘shall [construe a patent claim according to] its broadest reasonable construction in light of the specification of the patent in which it appears.’”²⁰¹ More significant, for this Article’s purposes at least, is the Court’s method of interpretation applying textualist principles.

With respect to the first provision, the Court noted its agreement with the lower court that “Cuozzo’s contention that the Patent Office unlawfully initiated its agency review is not appealable.”²⁰² As for why, the Court said, “For one thing, that is what § 314(d) says.”²⁰³ So far, so textualist. Later, however, Justice Breyer injected a distinctly non-textualist analysis by citing legislative history and indicating “a contrary holding would undercut one important congressional objective, namely, giving the Patent Office significant power to revisit and revise earlier patent grants.”²⁰⁴ In rejecting an argument made in a dissent, however, the Court returned (somewhat) to a textualist approach. The Court could not accept the dissent’s interpretation because “[i]t reads into the provision a limitation (to interlocutory decisions) that the language nowhere mentions and that is unnecessary.”²⁰⁵

With respect to the second provision, the Court based its decision on the provision’s text. “No statutory provision unambiguously directs the agency to use one standard or the other,” explained the Court.²⁰⁶ Again, so far, so textualist. Justice Breyer, however, later considers the argument that the Court would “reach a different conclusion if we carefully examine the purpose of inter partes review.”²⁰⁷ The Court grapples with this question—a decidedly purposivist approach to interpreting the relevant statute. But, in the end, the Court indicated that the “upshot is, whether we look at statutory language alone, or that language in context of the statute’s purpose, we find an express delegation of rulemaking authority, a ‘gap’ that rules might fill, and ‘ambiguity’ in respect to the boundaries of that gap.”²⁰⁸

In SAS Institute Inc. v. Iancu,²⁰⁹ a second case interpreting the AIA, the Court more enthusiastically demonstrated textualism.²¹⁰ In an opinion authored by Justice Gorsuch, the Court addressed 35 U.S.C. § 318(a). This section of the patent statute states that, “[i]f an inter partes review is instituted and not dismissed . . . the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”²¹¹ The Court concluded that “the plain text of § 318(a) supplies a ready answer” to the question of whether the Board was required to decide the patentability of “every claim” challenged in a petition or instead “just some” of those claims.²¹² The Court, for example, highlighted that the “word ‘shall’ generally imposes a nondiscretionary duty” and “the word ‘any’ naturally carries ‘an expansive meaning.’”²¹³ Moreover, the “trouble” with the government’s position was that “nothing in the statute says anything like” the idea that the Director “retains discretion to decide which claims make it into an inter partes review and which don’t.”²¹⁴ The Court went on to explain that the “rest of the statute confirms, too, that the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation.”²¹⁵ In rejecting the government’s policy argument, the Court stated that “[p]olicy arguments are properly addressed to Congress, not this Court,” given that “[i]t is Congress’s job to enact policy and it is this Court’s job to follow the policy Congress has prescribed.”²¹⁶

Another example of the use of textualism in the context of interpreting the patent statute is Return Mail, Inc. v. U.S. Postal Service.²¹⁷ In an opinion authored by Justice Sotomayor, the Court answered the question “whether a federal agency is a ‘person’ able to seek” inter partes or post-grant review of a patent under the relevant statute.²¹⁸ The first provision, 35 U.S.C. § 311(a), states that “a person who is not the owner of a patent may file with the [Patent] Office a petition to institute an inter partes review of the patent.”²¹⁹ The second, 35 U.S.C. § 321(a), similarly states that “a person who is not the owner of a patent may file with the [Patent] Office a petition to institute a post-grant review of the patent.”²²⁰ The Court applied textualist principles to conclude that a federal agency is not a “person” under these provisions.²²¹ In particular, the Court applied a presumption based in part on “common usage” as well as the Dictionary Act that “person” does not encompass the federal government.²²² The Court, however, did go on to state the Postal Service ultimately failed to “point to some indication in the text or context of the statute that affirmatively shows Congress intended to include the Government.”²²³ This last sentence mixes textualism with purposivism.

In Thryv, Inc. v. Click-To-Call Technologies, LP,²²⁴ the Court considered “a statutorily prescribed limitation of the issues a party may raise on appeal from an inter partes review proceeding.”²²⁵ In an opinion authored by Justice Ginsburg, the Court determined that the limitation in question, expressed at 35 U.S.C. § 314(d), does preclude appellate review of the timeliness of a request for inter partes review.²²⁶ Section 314(d) states that “[t]he determination by the [Patent Office] Director whether to institute an inter partes review under this section shall be final and nonappealable.”²²⁷

The Court interpreted this language, first, by analyzing its plain meaning. “That language,” said the court, “indicates that a party generally cannot contend on appeal that the agency should have refused ‘to institute an inter partes review.’”²²⁸ After noting that in Cuozzo the Court refrained from answering the question presented in Thryv, the Court proceeded to address whether a challenge to the timeliness of a request for inter partes review “ranks as an appeal of the agency’s decision ‘to institute an inter partes review’” pursuant to the text of § 314(d).²²⁹ The Court answered this question based on the text of § 314(d). Because the statutory provision related to timeliness “expressly governs institution and nothing more, a contention that a petition” was not timely “is a contention that the agency should have refused ‘to institute an inter partes review.’”²³⁰

Under a textualist analysis, that would have been enough to justify the Court’s conclusion in the case. But Justice Ginsburg went on to consider what she deemed to be the “AIA’s purpose and design,” finding they “strongly reinforce our conclusion.”²³¹ Thus, while starting its analysis using textualist principles, the Court veered away from these principles toward a purposive approach.

* * *

Still, other cases highlight a textualist approach by the Supreme Court in interpreting the patent statute during the past decade.

In Life Technologies Corp. v. Promega Corp.,²³² for example, the Court analyzed “whether 35 U.S.C. § 271(f)(2)’s requirement of ‘a substantial portion’ of the components of a patented invention refers to a quantitative or qualitative measurement.”²³³ In an opinion authored by Justice Sotomayor, the Court decided to “look first to the text of the statute.”²³⁴ Given that the “Patent Act itself does not define the term ‘substantial,’” the Court “turn[ed] to its ordinary meaning” in isolation and found “little help.”²³⁵ In isolation, the Court found, the term “might refer to an important portion or to a large portion.”²³⁶ Citing dictionary definitions from the time of the enactment of the statutory language, the Court noted that “‘[s]ubstantial,’ as it is commonly understood, may refer either to qualitative importance or to quantitatively large size.”²³⁷ Ultimately, however, the Court determined that “[t]he context in which ‘substantial’ appears in the statute . . . points to a quantitative meaning here.”²³⁸

The overarching point is that, in several opinions interpreting the patent statute, the Supreme Court applied basic principles of textualism. In short, it repeatedly looked for the original, ordinary meaning of terms used in various provisions of the patent statute.

B. Atextualist Interpretations

Other interpretations of the patent statute in the past ten years have veered away from textualism. These atextualist interpretations wholly contradict the tenets of textualism.

1. Various Statutory Provisions Related to Claiming, Infringement, the Right to Exclude, and Defenses

The following four cases highlight the Court’s failure to apply textualism meaningfully to the patent statute.

First is an opinion drafted by Justice Ginsburg. In Nautilus, Inc. v. Biosig Instruments, Inc.,²³⁹ the Court interpreted 35 U.S.C. § 112, ¶ 2, the statutory provision dictating “that a patent specification ‘conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.’”²⁴⁰ The Court rejected the Federal Circuit’s interpretation of this provision, but this time based primarily on the Court’s own understanding of the relevant “concerns” it identified rather than on the text of that provision.²⁴¹

In reviewing the history of the statutory language, the Court seemingly sought to identify the relevant timeframe to govern its analysis. The Court, in particular, noted that “[t]he 1870 [Patent] Act’s definiteness requirement survives today, largely unaltered.”²⁴² But later, in determining the correct interpretation of that language, the Court resolved the interpretive question based on its own views of how to resolve the “competing concerns” it identified.²⁴³ Indeed, the Court stated, “To determine the proper office of the definiteness command, . . . we must reconcile concerns that tug in opposite directions.”²⁴⁴ And then, “[c]ognizant of the competing concerns,” the Court “read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”²⁴⁵

In Limelight Networks, Inc. v. Akamai Technologies, Inc.,²⁴⁶ Justice Alito addressed the question “whether a defendant may be liable for inducing infringement of a patent under 35 U.S.C. § 271(b) when no one has directly infringed the patent under § 271(a) or any other statutory provision.”²⁴⁷ While the Court stated that “[t]he statutory text and structure and our prior case law require that we answer this question in the negative,”²⁴⁸ its analysis strayed far from textualist principles. Without truly consulting the text of § 271(b), the Court simply pointed to its precedent.²⁴⁹

Likewise, Chief Justice Roberts authored an opinion for the Court in Impression Products, Inc. v. Lexmark International, Inc.²⁵⁰ that failed to apply textualist principles. The opinion begins by recognizing that the relevant statutory text, 35 U.S.C. § 154(a), states that a patent grants its owner for a limited time the right to “exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”²⁵¹ Rather than attempt to understand the original meaning of this text, however, the Court relied upon a non-statutory doctrine—exhaustion—to conclude that a first authorized sale of a patented device eliminates the possibility of infringement.²⁵² Moreover, Chief Justice Roberts strangely chastised the lower court for believing that the question of the scope of patent exhaustion is answered by the statutory text.²⁵³

In Minerva Surgical, Inc. v. Hologic, Inc.,²⁵⁴ Justice Kagan authored an opinion for the Court that, in part, interprets the subsection of the patent statute identifying defenses to claims of patent infringement.²⁵⁵ Section 282(b) states that “[i]nvalidity” of a patent “shall be [a] defense[] in any action involving” infringement.²⁵⁶ According to one of the parties, this language left no room for the doctrine of assignor estoppel, which, when established, would prevent an assignor of a patent from arguing invalidity in infringement litigation.²⁵⁷ But the Court dismissed this argument, not by finding it would subvert the statutory language, but instead by finding “it would subvert congressional design.”²⁵⁸ Justice Barrett’s dissent, joined by Justices Thomas and Gorsuch, took the majority to task by explaining that the statute “nowhere mentions the equitable doctrine of assignor estoppel” and, “[t]o the contrary, where the Act does address invalidity defenses, it states that invalidity ‘shall’ be a defense ‘in any action involving the validity or infringement of a patent.’”²⁵⁹

2. Statutory Provision Related to Eligibility

The most significant departures from textualism in patent cases in the last ten years, however, come in two cases interpreting the statutory provision governing patent eligibility, which states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”²⁶⁰ The two cases are Ass’n for Molecular Pathology v. Myriad Genetics, Inc.²⁶¹ and Alice Corp. v. CLS Bank International.²⁶²

The Court’s analysis in Myriad rightly begins with the relevant statutory text.²⁶³ But the analysis quickly diverges from any version of textualism. In the next breath, relying upon the Court’s most recent precedent, the opinion states “[w]e have ‘long held that this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable.’”²⁶⁴ By “implicit,” the Court seemingly admitted that this supposed exception is not expressly written in the text of the provision.

Likewise, the Court’s analysis in Alice rightly begins with the relevant statutory text.²⁶⁵ But, again, the analysis quickly diverges from any version of textualism. The opinion in Alice relies upon Myriad for the “implicit exception” for “laws of nature, natural phenomena, and abstract ideas.” But, beyond this reliance on a non-statutory exception, the Court’s opinion in Alice diverges much further from the tenets of textualism.

The Court, notably relying upon the same recent precedent relied upon in Myriad, announced that it would utilize “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”²⁶⁶ Rather than simply use the test set forth in the statute—asking whether the inventor has claimed a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”—the Court instead asked “whether the claims at issue are directed to one of those patent-ineligible concepts” and, if so, “whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”²⁶⁷ The Court described this second part of its test as “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’”²⁶⁸

Notably, while Justice Thomas authored both opinions for the Court in Myriad and Alice, the source of the atextualism in these opinions is Justice Breyer’s opinion for the Court just a few years earlier in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,²⁶⁹ the Court’s most recent precedent on point. Justice Breyer’s opinion for the Court in Mayo takes a textualist approach—at least for its first two sentences. The opinion begins by stating that “Section 101 of the Patent Act defines patentable subject matter.”²⁷⁰ It then quotes the full text of the statutory provision: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”²⁷¹ From there, however, the text of the statute takes a backseat to the Court’s (not Congress’s) historical and current view of what should not be eligible for patenting.

After stating “[t]he Court has long held that this [statutory] provision contains an important implicit exception,”²⁷² which, as discussed above, seemingly admits that this supposed exception is not present expressly in the text of the provision, the opinion lists certain exclusions. The problem is not so much the exclusions themselves, given that some (many?) might be justified by a close analysis of the statutory text, but rather the expressed justifications for these exclusions. The Court does not rely on the statutory language; rather, it justifies these exclusions based on the Court declaring (in the past) that the exclusions represent “the basic tools of scientific and technological work.”²⁷³ Continuing its justification, the Court decided (in this case) that “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.”²⁷⁴ This reasoning represents a downhill, slippery slope constructed entirely of judge-made eligibility law.

Justice Breyer continues with policy-based (non-textualist) reasons to support why, in his opinion, some things are and are not eligible for patenting. For example, he explains that “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.”²⁷⁵ Indeed, the statute—quoted in the second sentence of his opinion—states that a “process” is eligible.²⁷⁶ But, rather than refer to the statutory text, the opinion recites a statement by Justice Harlan Stone that “a novel and useful structure created with the aid of knowledge of scientific truth may be” eligible for patenting.²⁷⁷ Why consult Justice Stone? The statute, besides reciting “process,” identifies as eligible for patenting a “machine” or “manufacture,” and a “structure” would likely fit into the original, ordinary meaning of “manufacture.”²⁷⁸

Given that the statute lists a “process” as a patent-eligible subject matter, one might have thought that Justice Breyer was joking when he denied protection to patent claims that “cover[] processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level is too low or too high.”²⁷⁹ If the claims cover processes, and processes are listed in the governing statute, then the analysis is complete. Yet, Justice Breyer’s slippery slope remains. As if in a sleight of hand or twist of fate, he proceeds to ignore the statutory language and analyze the claims within the three-part exclusion the Court identified along with the Court-announced justifications for the exclusion. He concluded that “the processes are not patentable”²⁸⁰—an ironic way of concluding given that the statute states “[w]hoever invents or discovers any new and useful process . . . may obtain a patent therefor.”²⁸¹

At least Justice Breyer did not hide his disregard for the statutory language. He indicated quite clearly that, rather than compare the claim language to the categories of eligible subject matter identified in the statute, the Court’s conclusion “rests upon an examination of the particular claims before us in light of the Court’s precedents.”²⁸² Unflinchingly, Justice Breyer proceeds to describe those precedents as articulating policy-based (non-statutory) considerations for the Court to use to determine eligibility:

Those cases warn us against interpreting patent statutes in ways that make patent eligibility “depend simply on the draftsman’s art” without reference to the “principles underlying the prohibition against patents for [natural laws].” They warn us against upholding patents that claim processes that too broadly pre-empt the use of a natural law. And they insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.²⁸³

The Court reached its ultimate conclusion, that an “inventive concept” must be present for a claim to include eligible subject matter, without considering the original, ordinary meaning of the relevant language of § 101. There is no attempt to show that the language (“process, machine, manufacture, or composition of matter”) means “inventive concept.” In summing up the Court’s conclusion, the Court again ironically highlighted its conclusion that “the claimed processes” are not processes at all.²⁸⁴ As for why, Justice Breyer explained that the Court found “that the process claims at issue here do not satisfy” the conditions the Court derived from its precedent.²⁸⁵ “In particular,” the Court explained, “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.”²⁸⁶ There was no explanation how “well-understood, routine, conventional activity” cannot qualify as a “process.”²⁸⁷ Instead, the Court simply referred to its own view of the relevant policies, regardless of how Congress drafted the relevant statutory provision—”upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.”²⁸⁸ The rest of the opinion evinces how the Court reached this conclusion: by applying the non-statutory considerations the Court identified in its precedent. In short, rather than apply the statutory language, the Court decided to apply its own view of the purpose of the statutory language.

Justice Breyer’s failure in Mayo to embrace the text of § 101 to enforce Congress’s decision about what ought to be eligible for patenting and instead to supplant that text with his own view of the purpose of the statutory scheme was not new. In the past, however, he expressed his approach more clearly as a purposive one. In particular, he dissented in another patent case addressing eligibility. In that case, J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.,²⁸⁹ he expressed disagreement with the Court’s holding that inventions in the field of plants are eligible for utility patents.²⁹⁰ In his dissent, he made his purposivism explicit, stating that interpretive canons “are guides to help courts determine likely legislative intent.”²⁹¹ “And,” he continued, “that intent is critical.”²⁹² As for why, he argued: “Those who write statutes seek to solve human problems. Fidelity to their aims requires us to approach an interpretive problem not as if it were a purely logical game, like a Rubik’s Cube, but as an effort to divine the human intent that underlies the statute.”²⁹³ “[T]hat effort,” he went on, “calls not for an appeal to canons, but for an analysis of language, structure, history, and purpose.”²⁹⁴ It was on this basis—the purpose he identified for the relevant statute—that he believed “the Utility Patent Statute does not apply to plants.”²⁹⁵

Returning to Justice Breyer’s opinion for the Court in Mayo, a textualist approach to the question in that case would have required explaining why the claimed processes are not actually “processes” under the statute—an admittedly difficult task. Justice Breyer, however, as shown, is no textualist. He relies upon no textualist analysis. That, however, is not surprising given, for example, J.E.M. Ag Supply. The absence of any textualist analysis reflects Justice Breyer’s purposive approach to interpreting statutory provisions. Why, however, Justices Scalia and Thomas signed on to his opinion in Mayo is left unexplained.²⁹⁶ Justices Scalia and Thomas for some reason did not hold the Court to apply textualism in this context, and they did not draft their own opinions explaining why.

Still, Justice Breyer is not wholly responsible for the current state of the law governing patent eligibility and its failure to reflect textualism. The precedent relied upon by Justice Breyer in Mayo also failed to utilize textualism. Indeed, Justice Breyer’s purposive approach to statutory interpretation aligns with prior cases (not authored by Justice Breyer) addressing the doctrine of patent eligibility.

Take, for example, Diamond v. Chakrabarty,²⁹⁷ a patent eligibility case decided by the Court in 1980.²⁹⁸ In that case, the Court recognized the separation of powers between Congress and the courts as the primary justification for the Court to interpret the language Congress employed.²⁹⁹ “Congress, not the courts, must define the limits of patentability,” explained the Court.³⁰⁰ And once Congress has done so, the Court performs its constitutional role by “construing the language Congress has employed.”³⁰¹ But after noting these foundational principles, the Court left the door open for a purposive approach to interpretation. The Court stated, “our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose.”³⁰² Note this reference both to legislative history and statutory purpose, key aspects of a purposive approach to statutory interpretation. The Court then identified the relevant purpose in the context of patent eligibility, quoting the Constitution’s Intellectual Property Clause, as “the constitutional and statutory goal of promoting ‘the Progress of Science and the useful Arts.’”³⁰³

For another example, consider Bilski v. Kappos,³⁰⁴ another patent eligibility case decided by the Court more recently (2010).³⁰⁵ In terms of applying textualism, the Supreme Court half-baked the cake. At times it applied textualist principles, but at other times it drew ideas about the purpose of the statute from the Court’s precedent.

As to the former, consider that the Court drew from Diamond v. Chakrabarty the point that, “[i]n choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.”³⁰⁶ But then in the very next sentence, the Court drew from the same precedent the idea that the correct interpretation of the statutory text depends on identifying the purpose of the statute: “Congress took this permissive approach to patent eligibility to ensure that ‘ingenuity should receive a liberal encouragement.’”³⁰⁷ Likewise, later in the opinion the Court discusses how “[t]he term ‘method,’ which is within [35 U.S.C.] § 100(b)’s definition of ‘process,’ at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing business.”³⁰⁸ Again later, the Court highlighted how it was “unaware of any argument that the ‘ordinary, contemporary, common meaning’ of ‘method’ excludes business methods.”³⁰⁹ It also recognized how “[t]he argument that business methods are categorically outside of § 101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents” in other statutory provisions, including 35 U.S.C. § 273(b)(1).³¹⁰ So far as these points go, so far, so textualist.

But then the Court later explains how, “[e]ven though petitioners’ [patent] application is not categorically outside of § 101 under the two broad and atextual approaches the Court rejects today, that does not mean it is a ‘process’ under § 101.”³¹¹ What followed was another example of the Court’s use of its precedent to identify non-textualist limitations on patent eligibility based on the concept of “attempt[ing] to patent abstract ideas.”³¹² It is this latter identification of a non-statutory exception to patent eligibility—and in this respect the Court’s failure to provide any interpretation of the relevant statutory language—that required the Supreme Court to grant three more petitions on the same subject of patent eligibility in the next four years.³¹³ To be clear, this mess was not because of the Court’s use of textualism. It was the Court’s reliance on conflicting, atextual precedent to interpret the statutory provision governing patent eligibility.

Highlighting the failure of the Court to utilize textualism from Bilski, to Mayo, and, in turn, Myriad and Alice, requires this Article to engage the only prior scholarship addressing the same topic, viz, the use of textualism to interpret the patent statute. The Supreme Court’s partial reliance on the statutory language of the Patent Act to decide eligibility in Bilski drew criticism from Professor Jonathan Siegal. He argued that in Bilski, “[t]he Supreme Court . . . provided an excellent example of its radical shift in the direction of naïve textualism in the field of patent law.”³¹⁴ But, as shown, the Court in Bilski only partially relied upon textualist principles to decide the case. Indeed, Professor Siegal appears to take issue with any use of textualism by the Court.

Notably, outside of his criticism of the Court’s analysis in Bilski, Professor Siegal has criticized textualism quite vociferously, for example, celebrating what he viewed as the “rejection of the textualist ideal.”³¹⁵ While he gave faint praise to Justice Scalia for “call[ing] attention to intentionalist and purposivist excesses,” Professor Siegal ultimately has taken the position that “the rest of the federal judiciary was right to reject [Justice Scalia’s] call for adoption of the textualist ideal.”³¹⁶ While a picture tells a thousand words, sometimes a short phrase likewise says a lot. In this regard, note that Professor Siegal has stated that the “text is usually the law, but not always.”³¹⁷ But he then goes on to make his lack of support for textualism clear when he outs himself as a purposivist: “[N]either is a court to employ interpretive techniques so exacting that they destroy the legislative plan.”³¹⁸ For Professor Siegal, it is the legislative plan he identifies that is most important, not the language Congress uses.

Returning to Professor Siegal’s criticism of Bilski, he rails against any use by the Supreme Court of the actual, enacted statutory language of the Patent Act. For example, he (falsely) argues that “the Supreme Court looked to little more than the dictionary in deciding fundamentally important questions under the patent statute.”³¹⁹ Even if this were true (it is not, as shown below), Professor Siegel appears to object to any use of the statutory language. Apparently, reference to the original, ordinary meaning of the text Congress used in the patent statute is the problem. It is, in his words, “naïve.”³²⁰ Returning to reality, it was the Court’s reliance on non-textualist precedent (1) in Bilski to identify a search for an “abstract idea” and (2) in Mayo and Alice to focus on the quest for an “inventive concept” that, as it turns out, created significant confusion in patent eligibility law.³²¹

C. Ramifications of Applying Textualism to the Patent Statute

As this Article has demonstrated, despite the Supreme Court’s general turn toward textualism, not all of the patent statute has been interpreted consistently with textualism. The Court’s failure to use textualism has been most prominently true in the context of patent eligibility. So, what would the result be if the Court applied textualism more seriously in interpreting the patent statute?

It might be hard to argue (Justice Breyer didn’t even try) that a claimed process is not a statutory process. And if, indeed, a process is a process, then, at least on this basis, Mayo was wrong, and eligibility extends more broadly—for example, to methods (processes) of diagnosing disease and methods (processes) of treating patients. In other words, eligibility under the current statutory provision would be broader under textualism.

Broader eligibility would provide significant benefits to society. For example, a survey of investors illuminates how the Supreme Court’s narrow interpretation of the patent statute’s eligibility provision “reduced venture capital and private equity investment in technological development generally, but particularly in the biotechnology, medical device, and pharmaceutical industries.”³²² The “major takeaway” of this particular study includes the likelihood of “lost investment in the life sciences that has delayed or altogether prevented the development of medicines and medical procedures.”³²³

More importantly—regardless of whether one views expanded eligibility as an advance—embracing textualism would return political power to the President and Congress to decide as a matter of policy what inventions and discoveries should be eligible for patenting. Ironically, the Supreme Court has repeatedly recognized this ideal. Outside the context of patent eligibility, for example, the Court stated:

Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim. This is but a corollary to the grant to Congress of any Article I power. Within the scope established by the Constitution, Congress may set out conditions and tests for patentability.³²⁴

But even within the context of eligibility, the Court has made similar pronouncements about the role of Congress in deciding the extent of the availability of patents. Indeed, other Supreme Court opinions clearly make the case that eligibility law is a question of policy appropriately directed to Congress.

In Gottschalk v. Benson,³²⁵ for example, the Court indicated that “considerable problems are raised” by the idea of patent eligibility for computer programs.³²⁶ The solution, however, would be for Congress to investigate and answer questions that “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.”³²⁷ Thus, the Court stated that “considered action by the Congress is needed.”³²⁸ Similarly, in Parker v. Flook,³²⁹ the Court stated that “[d]ifficult questions of policy concerning the kinds of programs that may be appropriate for patent protection . . . can be answered by Congress on the basis of current empirical data not equally available to this tribunal.”³³⁰ More recently, in Mayo itself, the Court highlighted how it is “the role of Congress in crafting more finely tailored rules where necessary” such that the Court did not need to “determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable.”³³¹ A textualist approach to interpreting the statutory provision governing patent eligibility would return political power over the doctrine to the political branches of our government, starting with Congress.

But that’s not all. The test for eligibility would be clearer. The test would turn on the original, ordinary meaning of the terms used by Congress in crafting the statutory text governing patent eligibility. As this Article has alluded, the problem that has plagued patent law since Mayo and Alice is largely the confusion resulting from the lack of clarity over what exactly is an “abstract idea” and, ultimately, an “inventive concept.”³³² This confusion has resulted in numerous requests for the Supreme Court to provide more clarity on what exactly it meant when it used these terms to identify the test for eligibility. Indeed, the Supreme Court recently requested that the Solicitor General recommend whether the Court should grant certiorari in cases applying the test the Court identified in Mayo and Alice.³³³

In short, the use of textualism to interpret the statutory provision governing patent eligibility would broaden eligibility, return political power over the doctrine to the political branches of our government, and provide clarity and predictability in determining patent eligibility.

Conclusion

Textualism is here to stay. Despite Justice Kagan’s recent disavowal of her statement that all Supreme Court Justices are now textualists,³³⁴ the Supreme Court shows no sign of turning away from this doctrine in its interpretation of statutes. Indeed, its use at the Supreme Court has only increased since Justice Scalia began defending this interpretive methodology thirty years ago.

In the field of patent law, while the Supreme Court has recently used textualism to interpret the patent statute, the most notable exception is its eligibility section, 35 U.S.C. § 101. Were the Supreme Court to apply textualism to the interpretation of its text, the result would be broader eligibility.

The Court has defended narrow eligibility based on policy. But whether broad eligibility is appropriate as a matter of policy is not a question textualism would address. Rather, that question would return to the political branches of our government, Congress and the President. Interestingly, that has long been the call of the Supreme Court in many of its past patent eligibility cases.³³⁵ Moreover, applying textualism to the section of the Patent Act defining patent eligibility would restore certainty and predictability in the rights of patent owners and, in turn, the rights of those seeking to use patented technology. In short, applying textualism to the patent statute’s eligibility provision would boost both the democratic legitimacy and function of the patent system.

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Patent Textualism

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