August 05, 2019 Perspective

A Certain Kind of Thinking for a Certain Time

Mark K. Dickson

©2019. Published in Landslide, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Attorneys pride themselves on analytical thinking. After all, step-by-step progression through facts and reasoning built upon past practice and precedent is the hallmark of common law development. But analytical thinking doesn’t always carry the day, at least not according to an article I read recently. “Logical analytical thinking is really good when you are trying to solve a problem you’ve seen before. You can use known methods and techniques to approach whatever issue you are dealing with. Elastic thinking is what you need when the circumstances change and you are dealing with something new. It’s not about following rules.”1

The concept of elastic or flexible thinking has been around a long time and falls under a lot of different labels such as “thinking outside the box.” Contrary to analytical thinking, which is based on reason and order, flexible thinking implies eluding the established rules in favor of fresh approaches to solve problems. It’s the backbone behind innovation and invention, and it drives the startup culture of “disruptive technologies” in places like Silicon Valley; Austin, Texas; and Route 128, Boston’s technology corridor.

Flexible thinking has a place in business as well as the law, especially when it comes to issues involving intellectual property law. As recently as 10 years ago, it was uncommon for the conservative leaning U.S. Supreme Court to take up intellectual property cases. The U.S. Court of Appeals for the Federal Circuit was often referred to as the court of last resort in intellectual property matters, particularly for patent cases, because so few certiorari applications were granted that a Federal Circuit decision was generally the final word on the matter at issue. But an unanticipated 10 years later, the Federal Circuit sits atop the list of the most reversed federal appellate courts in the nation, a spot previously dominated by the more liberal Ninth Circuit. The outcome of the last decade has been a lot of change, and in some cases a lot of confusion, in the application of what had previously been considered reasonably well-settled intellectual property law. In dramatically changing course, the Supreme Court has reversed years of lower court precedent in areas such as scandalous trademarks, patent litigation venue, obviousness, and importantly, what is and isn’t eligible as patentable subject matter under § 101 of the patent law.

Unfortunately, the analytical approach in lower court cases that followed the recent decade of Supreme Court decisions hasn’t always worked well for developing clear guidance under the common law for intellectual property matters. In particular, patent subject matter eligibility has become a tangled web of conflicting decisions lacking well-defined direction in the lower courts. Whole industry groups like medical diagnostics, methods of treatment, and artificial intelligence are at risk of being declared as unpatentable terrain despite undeniably groundbreaking discoveries and innovation. Indeed, even the Federal Circuit admitted that a legislative solution is needed to overcome the analytical corner into which the case law on subject matter eligibility has been painted.

So, since analytical thinking hasn’t worked well, then perhaps what is needed is some elastic thinking to resolve the dilemma posed by these Supreme Court decisions. Fortunately, our Section and many other leaders of the bar and industry have been participating for months in a Senate-led roundtable effort to achieve an acceptable legislative solution on patent subject matter eligibility. As in any political issue, there have been many diverse factors and competing viewpoints to consider in arriving at a successful set of proposed amendments to § 101. The process has been time consuming and difficult, with flexibility needed to achieve compromise, but we believe it will result in a better, more understandable, and more workable resolution to the issues of the law on subject matter eligibility.

One thing has been clear throughout the entire process. The timing is right to act now to enact a solution while we have the attention and participation of Congress. Failure to act will undoubtedly leave us with what could be another 10 years of confusion and instability in our patent system—an outcome we cannot afford.

As I close out my year as Section chair, I am honored to have led many dedicated and flexible thinking volunteers in our work. I thank our volunteers and entire membership for your attention to what we do and for your active participation when you can. We welcome you to add your voice as the Section advocates for improved intellectual property laws and systems.

Endnote

1. Dhruti Shah, How to Become an “Elastic Thinker” and Problem Solver, BBC Capital (May 16, 2018), http://www.bbc.com/capital/story/20180515-how-to-become-an-elastic-thinker-and-problem-solver (quoting Leonard Mlodinow); see also Leonard Mlodinow, Elastic: Flexible Thinking in a Constantly Changing World (2018).

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Mark K. Dickson is chair of the ABA Section of Intellectual Property Law. As solo practitioner and principal of Phase M Legal in San Mateo, California, he specializes in portfolio development and evaluation, risk assessment, licensing, and litigation avoidance for a wide range of technologies, including plant patent matters.