A Conversation on Judicial Decision-Making

Both breathtakingly broad and minutely particular, the doctrine of patentable subject matter asks us to consider which innovations are of the type for which we might grant protection. Do we include living creatures, for example, or genes? Are computer algorithms included, and just what is an algorithm anyway? These are the types of questions that the Supreme Court has considered in a number of recent cases on patentable subject matter. Looking closely at the recent cases, a fascinating conversation emerges between the Supreme Court and the Federal Circuit. It is a conversation not just about the nature of patents, but also about the nature of judicial decision making, and it implicates how one goes about crafting the rules within an area of law. The conversation has the feel of an exchange between a teacher and a student, or perhaps between an adult and an adolescent. As with any conversation of this kind, much of the talking is done by the one who has the wisdom conferred by virtue of superior status, but there are occasional rejoinders from below. This article decodes the conversation. It predicts that the Court will have two more pronouncements soon in this area, and suggests the types of cases the Court will choose. Finally, the piece notes that the Court itself has struggled to meet the standards it is demanding from the Federal Circuit and suggests an approach that would rationalize the Court’s prior jurisprudence, bringing coherence and general applicability to this area of law.