A Certain Kind of Thinking for a Certain Time

• Author: Mark K. Dickson
• Position: 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. He can be reached...
• Pages: 3-3

Perspective

©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

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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 arti-

cle 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 what-

ever 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 exible 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, exible 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 tech-

nologies” 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 pat-

ent cases, because so few certiorari applications were granted

that a Federal Circuit decision was generally the nal 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 scan-

dalous 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 particu-

lar, patent subject matter eligibility has become a tangled web

of conicting decisions lacking well-dened direction in the

lower courts. Whole industry groups like medical diagnos-

tics, methods of treatment, and articial 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 sub-

ject 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. For-

tunately, 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 view-

points to consider in arriving at a successful set of proposed

amendments to § 101. The process has been time consuming

and difcult, with exibility 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 sub-

ject 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 exible 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. n

Endnote

1. Dhruti Shah, How to Become an “Elastic Thinker” and Problem

Solver, BBC C (May 16, 2018), http://www.bbc.com/capital/

story/20180515-how-to-become-an-elastic-thinker-and-problem-solver

(quoting Leonard Mlodinow); see also L M, E:

F T   C C W (2018).

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. He can

be reached at mdickson@phasem.com.

By Mark K. Dickson

A Certain Kind of Thinking for a Certain Time