If hard cases make bad law, why make cases hard?

“Hard cases make bad law.” Every law student hears that adage more than once before graduation, and seemingly every appellate judge must write those words in an opinion at some point in their careers. The Internet attributes the origin of the adage to the English Judge Rolfe in the case Winterbottom v. Wright. In actual practice, the old adage certainly seems to be true. Difficult court cases so often turn on minutia or esoteric issues of law or fact that the precedent those hard cases leave behind is scarcely relevant to the mundane matters attorneys and others in the legal system experience day in and day out.

If hard cases do, indeed, make bad law, the Supreme Court’s consideration of the “abstract idea” test in Alice Corp. v. CLS Bank risks creating particularly bad patent law. While the Alice Corp. case has been generally described, fairly enough, as involving the patentability of software, the Court accepted the case by couching the issues in terms of whether patents involved improperly claim “abstract ideas.” Based upon judicially created doctrine, patent claims cannot cover an “abstract idea,” so the patents asserted in the case may be invalid.

Excluding “abstract ideas” like “buy low, sell high” or “F=ma” from patent protection makes a certain amount of sense, but since all of human technology that is, ever has been, and ever will be created derives from abstract ideas and laws of nature (also unpatentable, as per judicial precedent), drawing the line between patentable and unpatentable resembles counting angels on the head of pin. The principle of excluding abstract ideas and laws of nature from patent protection may well be worth retaining, but in most instances, and certainly in any case where a patent applicant attempted to claim something like “buy low, sell high” or “F=ma,” the easier approach would be to reject the claims in the Patent Office (or invalidate the claims in court) under the patent statutes as not new and/or as obvious, possibly with pinch of non-usefulness thrown in as well for some claims. Invalidating patent claims under those statutory provisions typically makes for an easier case and correspondingly better law.

The pity of Alice Corp. v. CLS Bank is that the claimed technology, which at a high level relates to computerized management of financial transaction risks, strikes most commentators as invalid under more mundane and statutory aspects of patent law, such as obviousness under section 103. Nevertheless, the district court concluded, based upon the evidence before it, that the patent claims were not obvious, and now the Supreme Court faces the extraordinarily difficult question of how abstract an idea must be in order to be too abstract to patent. 

PatentlyO has the definitive roundup of the issues argued in the briefs submitted to the Supreme Court. The arguments of the briefs demonstrate both how challenging the question presented is and how far reaching the Court’s decision could be. Hopefully the Court will find the best law possible in the extremely difficult question before it.