Judge Michel Sounds Off About Alice v. CLS Bank


Recently, I had the opportunity to sit down with Paul Michel, who we in the patent community know as the former Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Michel stepped down as Chief Judge and retired several years ago, he told me that he decided to retire so he could say what needed to be said on behalf of the patent system, something he felt he couldn’t do while a member of the federal judiciary. Judge Michel has been true to his promise. He keeps an active schedule.

Judge Michel has been generous with his time over the past several years, and I have interviewed him on a number of topics. Most recently we discussed the Supreme Court’s patent decisions during the October 2013 term, spending most of our discussion on Alice v. CLS Bank.

Below are the highlights of my interview with Judge Michel. If you would like to read the entire interview, which lasted for approximately one hour and spans over 9,000 words, please see: Judge Michel says Alice Decision ‘will create total chaos’.

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QUINN: I think one of the last times you and I chatted, we were talking about 101 and Bilski, and now the Supreme Court has just issued another 101 decision, which I’m not thrilled with. I know some people think I’m overreacting and I’d like to get your take on it. What did you think?

MICHEL: Well, I think that the Alice decision is very problematic for a number of reasons. One is that it is so unclear how the standards annunciated can be applied by all the different decision makers. And there are other problems with it. Of course, it could have been much more worrisome. It could have broadly invalidated all software-related patents or all business-method-related patents or all computer-implemented patents and things of that sort, and it didn’t do that. But it did, in my view, create a standard that is too vague, too subjective, too unpredictable and impossible to administer in a coherent, consistent way in the patent office or in the district courts or even in the federal circuit….

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QUINN: … I am concerned because of the subjective nature of the text. And it made me think about all the texts in the past that we’ve had, particularly dealing with computerized or computer-implemented methods. One of the reasons so many of the previous tests have failed is because of the way they ultimately wind up being applied, they turn out to be purely subjective…

MICHEL: Well, it’s bad news at least for the reason that it will create total chaos. No one will know what is eligible and what is not eligible, so there will be no predictability, no consistency, and that by itself will create delays and costs and discourage progress that the Constitution was trying to promote by encouraging Congress to create the patent system. Consider the decision makers. You’ve got 9,000 patent examiners, 250 or so board members, approximately 1,000 district judges, and a few other people, the International Trade Commission, the Federal Circuit, and so on. So you’re talking about 10,000 decision makers. I don’t see any way they can apply the Alice standard in a way that’s fair or consistent or predictable. And all the other people who are involved in advising economic actors and business leaders are similarly faced with chaos and uncertainty, delay and extra costs. That is the worst thing that could happen. We need to be reducing delay, reducing uncertainty, promoting greater incentives to invest in R&D and commercialization. And it looks to me like the result will be exactly the opposite. Everything will be slower, more uncertain, less encouraging to invest…

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QUINN: …This is going to be a mess for many applications that are in process and for patents that have already been issued.

MICHEL: It’s ironic that, in i4i, the Supreme Court strongly emphasized the reliance interest that people had invested in the elevated burden of proof required to invalidate an issued patent. But when it comes to 101, apparently reliance interests aren’t important any more. So I’m shocked that they didn’t seem to be worried about that…

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MICHEL: [I]t’s so ironic some people are calling for the abolition of the Federal Circuit at the very time that many other countries, Japan is an example, but there are many others, are moving quickly to create things modeled on the Federal Circuit. Many countries are trying to strengthen their patent system and clarify to make it more efficient at the very time when people here are trying to weaken it.

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QUINN: … Cutting off patent eligibility at the very beginning is scientifically very dangerous and legally naive.

MICHEL: … the district judge is going to be forced to look at these kind of verbal formulations of the Supreme Court inventive concept, adding enough—they don’t even say it right. It’s not a question of whether the claim covers something more than the abstract idea, the question is whether the claim covers something less than the abstract idea. So even the way they talk about it is backwards.


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