Could the Federal Circuit fix the empirical stalemate in patent law by moving toward a more candid, pragmatic, and information-eliciting approach, focused on patentable subject matter doctrine? This is the thesis of a working paper by Professor Anna Laakmann (VAP at Penn State), Pragmatic Patent Adjudication, which she presented in the same session as me at IPSC.
Laakmann notes that "evidence to confirm or refute the various patent theories remains elusive," and that "advocates and critics of strong patent rights tend to rely on anecdotal evidence to support their positions." Like T.J. Chiang in his Levels of Abstraction paper, Laakmann critiques the indeterminacy of the Federal Circuit's formalism for problems of patent scope, and also like Chiang, she argues that the court should acknowledge this indeterminacy and be more open about its approach. But Laakmann goes on to illustrate her arguments with an interesting case study of medical methods, and she then argues that patentable subject matter is the best tool for tailoring patent scope.
In particular, Laakmann argues that "[t]he revived [patentable subject matter] doctrine offers the Federal Circuit a new tool to limit the scope of medical methods patents, since both diagnostic and therapeutic claims implicate the 'abstract ideas' and 'natural phenomena' exceptions to patentability." To illustrate how the Federal Circuit has avoided this approach, she examines cases including Ariad v. Eli Lilly, Prometheus v. Mayo, King Phamaceuticals v. Eon Labs, Classen v. Biogen, and Association for Molecular Pathology.
So what should the Federal Circuit do instead? In Part IV, Laakmann argues for "pragmatic" and evidence-based adjudication. The Federal Circuit could help test the various theories in the academic literature "by creating an incentive for litigants to produce and interpret relevant empirical information." She argues that rather than leading to an abuse of judicial power, this approach would limit discretion: a "doctrine that explicitly acknowledges the Federal Circuit's policy engineering role will prevent the court from washing its hands of any systemic problems that its opinions engender." And like Lemley et al. in Life After Bilski, she argues that the pragmatic use of patentable subject matter doctrine should only come into play as "backstop" after other patentability requirements are examined.
My main concern with this proposal is whether the role Laakmann envisions for Federal Circuit judges is realistic. Even if the judges were able to do everything she asks of them, would information-forcing adjudication elicit any useful information? Academics have been unable to reach any empirical consensus in patent law, so it is not clear that there is useful evidence to elicit. But in defending her choice of the Federal Circuit as the appropriate policy-making body, Laakmann draws an interesting parallel to the Delaware Chancery Court, which has attained its preeminence through a pragmatic approach in which judges "actively engage with the academic corporate law literature." I'm not familiar with the Delaware Chancery Court, but it sounds like this could be a promising model.