The Volokh Conspiracy

Mostly law professors | Sometimes contrarian | Often libertarian | Always independent

Volokh Conspiracy

'Patents constricting the essential channels of online communication run afoul of the First Amendment'


So writes Judge Haldane Mayer of the U.S. Court of Appeals for the Federal Circuit, concurring in Friday's panel majority opinion in Intellectual Ventures, Inc. v. Symantec Corp. I'm swamped right now and can't go into more detail; I'm also not a patent law expert. But I thought the issue would be very interesting to many readers, so here's the heart of Mayer's First Amendment argument—you can also read the rest of the opinion (and the majority and partial dissent), which discuss the patent law issues in more detail:

"The Constitution protects the right to receive information and ideas. . . . This right to receive information and ideas, regardless of their social worth, is fundamental to our free society." Stanley v. Georgia, 394 U.S. 557, 564 (1969) (citations omitted). Patents, which function as government-sanctioned monopolies, invade core First Amendment rights when they are allowed to obstruct the essential channels of scientific, economic, and political discourse. See United States v. Playboy Entm't Grp., Inc., 529 U.S. 803, 812 (2000) ("The distinction between laws burdening and laws banning speech is but a matter of degree."); see also In re Tam, 808 F.3d 1321, 1340 (Fed. Cir. 2015) (en banc) (explaining that the government may impermissibly burden speech "even when it does so indirectly").

Although the claims at issue here disclose no new technology, they have the potential to disrupt, or even derail, large swaths of online communication. [The "'050 patent"] purports to cover methods of "identifying characteristics of data files," whereas [the "'142 patent"] broadly claims systems and methods which allow an organization to control internal email distribution. [The "'610 patent"] describes, in sweeping terms, screening a communication for viruses or other harmful content at an intermediary location before delivering it to an addressee. The asserted claims speak in vague, functional language, giving them the elasticity to reach a significant slice of all email traffic. Indeed, the claims of the '610 patent could reasonably be read to cover most methods of screening for harmful content while data is being transmitted over a network.

Suppression of free speech is no less pernicious because it occurs in the digital, rather than the physical, realm. . . . Essential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.

Like all congressional powers, the power to issue patents and copyrights is circumscribed by the First Amendment. In the copyright context, the law has developed "built-in First Amendment accommodations." Specifically, copyright law "distinguishes between ideas and expression and makes only the latter eligible for copyright protection." It also applies a "fair use" defense, permitting members of "the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances."

Just as the idea/expression dichotomy and the fair use defense serve to keep copyright protection from abridging free speech rights, restrictions on subject matter eligibility can be used to keep patent protection within constitutional bounds. Section 101 creates a "patent-free zone" and places within it the indispensable instruments of social, economic, and scientific endeavor. Online communication has become a "basic tool[]" of modern life, driving innovation and supplying a widely-used platform for political dialogue. Section 101, if properly applied, can preserve the Internet's open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas.

As both the Supreme Court and this court have recognized, section 101 imposes "a threshold test," one that must be satisfied before a court can proceed to consider subordinate validity issues such as non-obviousness under 35 U.S.C. § 103 or adequate written description under 35 U.S.C. § 112. Indeed, if claimed subject matter is not even eligible for patent protection, any pronouncement on whether it is novel or adequately supported by the written description constitutes an impermissible advisory opinion.

The public has a "paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope." Nowhere is that interest more compelling than in the context of claims that threaten fundamental First Amendment freedoms. "As the most participatory form of mass speech yet developed, the Internet deserves the highest protection from governmental intrusion." A robust application of section 101 at the outset of litigation will ensure that the essential channels of online communication remain "free to all men and reserved exclusively to none."