CONFUSING PATENT ELIGIBILITY DAVID 0. TAYLOR* INTRODUCTION ................................................. 158 I. CODIFYING PATENT ELIGIBILITY ....................... 164 A. The FirstPatent Statute ........................... 164 B. The Patent Statute Between 1793 and 1952................... 166 C. The Modern Patent Statute ................ ..... 170 D. Lessons About Eligibility Law ................... 174 II. UNRAVELING PATENT ELIGIBILITY. ........ ............. 178 A. Mayo Collaborative Servs. v. Prometheus Labs............ 178 B. Alice Corp. v. CLS Bank Int'l .......... .......... 184 III. UNDERLYING CONFUSION ........................... 186 A. The Requirements of Patentability.................................. 186 B. Claim Breadth............................ 188 1. The Supreme Court's Underlying Concerns............ 189 2. Existing Statutory Requirements Address the Concerns with Claim Breadth .............. 191 3. The Supreme Court Wrongly Rejected Use of Existing Statutory Requirements to Address Claim Breadth ..................................... 197 4. Even if § 101 Was Needed to Exclude Patenting of Natural Laws and Phenomena, A Simple Statutory Interpretation Would Do So .................... 212 C. Claim Abstractness ........................... 221 1. Problems with the Supreme Court's Test................221 2. Existing Statutory Requirements Address Abstractness, Yet the Supreme Court Has Not Even Addressed Them.............................. 223 IV. LACK OF ADMINISTRABILITY ....................... ....... 227 A. Whether a Claim is Directed to a Law of Nature, Physical Phenomenon, or Abstract Idea...... ..... 228 B. Whether a Claim Includes an Inventive Concept........... 230 V. PERVERSE IMPACT. .......................... ..... 235 * Co-Director of the Tsai Center for Law, Science and Innovation and Associate Professor of Law, SMU Dedman School of Law; J.D., 2003, Harvard Law School; B.S., 1999, Texas A&M University. This Article was funded in part by the Fred E. Tucker Endowment for Faculty Excellence. Alex Bridge, Angela Oliver, and Kristen Zahnow provided helpful research assistance. Thanks to Bob Armitage, Dmitry Karshtedt, and Oskar Liivak for their insightful comments. Special thanks to Rachel, Caroline, Emily, and Joshua Taylor. The views expressed in this Article, as well as any errors, are my own. 158 TENNESSEE LAW REVIEW [Vol. 84.157 A. The Impact of the Supreme Court's Recent Cases on Lower Court Decisions ................................. 236 B. Reduced Incentives to Invest in Research and Development ................................. 240 CONCLUSION ...................................... ....... 244 Patent law-and in particular the law governing patent eligibility-is in a state of crisis. This crisis is one of profound confusion. Confusion exists because the current approach to determining patent eligibility confuses the relevant policies underlying numerous discrete patent law doctrines, and because the current approach lacks administrability.Ironically, the result of all this confusion is seemingly clear. The result seems to be that, when challenged, patent applications and issued patents in certain technology areas probably do not satisfy the requirement of eligibility-at least that is the perception. A resulting concern, therefore, is that the current environment substantially reduces incentives to invest in research and development. Given this confusion, lack of administrability, and risk of under-investment in research and development, the time has come for Congress to amend the patent statute. In this article, I lay the groundwork for an analysis of potential amendments to the patent statute by examining the root causes of the current confusion in this area of patent law. This groundwork is essential to resolving the present crisis. INTRODUCTION Patent law-and in particular the law governing patent eligibility-is in a state of crisis.' What started as a crisis of confidence in the patent system 2 has now transformed into a crisis of confusion in the patent system. The crisis of confidence resulted from the application of broad patentability standards that allowed for the issuance and enforcement of numerous patents seen by critics as undeserving of validity under the law. 3 The crisis of confusion, in 1. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1285 (Fed. Cir. 2015) (Lourie, J., concurring in the denial of en banc rehearing) ("It is ... said that a crisis of patent law and medical innovation may be upon us, and there seems to be some truth in that concern."). 2. See generally, e.g., DAN L. BURK & MARK A. LEMLEY, THE PATENT CRISIS AND HOW THE COURTS CAN SOLVE IT (2009). 3. See State St. Bank & Tr. Co. v. Signature Fin. Grp., Inc, 149 F.3d 1368, 1375 (Fed. Cir. 1998) (holding that patent eligibility was satisfied because a 2016] CONFUSING PATENT ELIGIBILITY 159 turn, has resulted from one of many steps taken by Congress and the Supreme Court to address the crisis of confidence and these critics: in particular two of the Supreme Court's most recent decisions narrowing the scope of patent eligibility.4 No one can reasonably deny that the Supreme Court's decisions narrowing patent eligibility have had a significant impact on the patent system. Some have suggested that this impact is positive and that these decisions will improve the quality of patent applications and issued patents,5 as well as reduce abusive patent litigation.6 To the extent these positive results exist, however, they come with profound confusion. Confusion exists, first, because the current approach to determining patent eligibility confuses the relevant policy concerns underlying numerous discrete patent law doctrines. Indeed, the Supreme Court's test for eligibility-while derived from its interpretation of 35 U.S.C. § 101 as including several implicit (some would say non-statutory) exceptions-is based on several policy concerns better addressed by other statutory patent law doctrines. In particular, the existing doctrines of non-obviousness, written description, and enablement already address concerns with the transformation of data by a machine produced "a useful, concrete and tangible result") (quoting In re Alappat, 33 F.3d 1526, 1540-41 (Fed. Cir. 1994) (en banc)), abrogated by Bilski v. Kappos, 561 U.S. 593 (2010); Bilski, 561 U.S. at 659-60 (2010) (Breyer, J., concurring in the judgment) (arguing that "the introduction of the 'useful, concrete, and tangible result' approach to patentability, associated with the Federal Circuit's State Street decision, preceded the granting of patents that 'ranged from the somewhat ridiculous to the truly absurd"') (quoting In re Bilski, 545 F.3d 943, 1004 (Fed. Cir. 2008) (en banc) (Mayer, J., dissenting)). 4. See generally Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014); Mayo Collaborative Serys. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012). 5. See, e.g., Jacob S. Sherkow, The Natural Complexity of Patent Eligibility, 99 IOWA L. REV. 1137, 1190 (2014) ("These concerns with the quality of the specification's disclosure-not just its sufficiency-focus on whether the specification actually fulfills its teaching function in a manner worthy of the societal quid pro quo for the patent grant-whether the disclosure is meaningful to its particular art. Although the Mayo and Myriad Courts did not ground their decisions in those terms, their dicta concerning the patents' specifications highlight the difference between specifications that teach a meaningful new way of implementing the claimed invention and those that simply describe variants on 'well-understood, routine, conventional activity."') (quoting Mayo, 132 S. Ct. at 1298). 6. See, e.g., Daryl Lim, Standard Essential Patents, Trolls, and the Smartphone Wars: Triangulatingthe End Game, 119 PENN ST. L. REV. 1, 82 (2014) ("In Alice Corp v. CLS Bank, the Court further addressed the concern over abusive patent litigation by imposing heighted requirements to obtain a patent for software and business methods."). 160 TENNESSEE LAW REVIEW [Vol. 84.157 breadth of patent claims.7 Likewise, the utility, written description, and definiteness requirements, as well as the limit on functional claiming, already address concerns with abstractness and inadequate disclosure.8 Moreover, concern regarding preemption of the basic building blocks of human ingenuity-the concern primarily emphasized in the most recent Supreme Court case on eligibility 9- ignores the utility, enablement, and written description requirements, the limited terms of patents, and the existing experimental use exception.10 Additionally, this concern could be addressed directly by a more robust experimental use exception to infringement liability." Confusion also exists because, beyond confusing relevant policies and doctrines, the current approach to determining patent eligibility lacks administrability. It is exceedingly difficult to understand whether a patent examiner or a court should find subject matter eligible for patenting given the overarching test for eligibility 7. See 35 U.S.C. §§ 103(a) (non-obviousness), 112(a) (written description and enablement) (2012). 8. See 35 U.S.C. §§ 101 (utility), 112(a) (enablement and written description); 112(b) (definiteness), 112(f) (limitation on functional claiming) (2012). 9. See Alice, 134 S. Ct. at 2354 ("We have described the concern that drives this exclusionary principle as one of pre-emption."). 10. See 35 U.S.C. §§ 101 (utility), 112(a) (enablement and written description), 154(a)(2) (limited term),