He's actually read and absorbed James Bessen's book Patent Failure and he comprehends the dangers and the costs that such patents present. Thank you, Jim Bessen (and co-authors Mike Meurer, Eric Maskin and Bob Hunt), for all your careful and helpful work, educating judges and lawyers to the dangers of software patents. Significantly, Stevens is joined by Justices Ginsburg, Breyer and Sotomayor. Even Justice Scalia, in a separate concurring opinion written by Justice Breyer, agreed that business methods should not be granted patents. That's five Supreme Court judges. As Tom Goldstein of SCOTUSblog points out in his analysis of the Bilski opinion, that means that business methods patents survived by a single vote. And even at that, the opinion stated that few such methods should be granted a patent.

Patently O notices that State Street is no longer in favor:

The 1998 Federal Circuit decision in State Street Bank opened the door to patent protection on a wider variety of innovations — especially in the fields of business methods and software. State Street held that an invention should be patent eligible under 35 U.S.C. §101 if it involves some practical application and “it produces a useful, concrete and tangible result.”

Although not rejected by the majority opinion, it is clear that the broad “useful, concrete, and tangible result” test is dead. That test is conclusively rejected by what I term the Anti-State-Street Majority — a majority created by the combining the two concurring opinions in Bilski and their five-justice majority. The result is that the scope of patentable subject matter is certainly narrowed from its 1998 high-water-mark.

There is a lot of analysis wondering what the opinion really means going forward. Goldstein again:

The breadth of today’s ruling is an open question. Justice Kennedy seemingly suggested that the Court favored the basic patent eligibility “of inventions in the Information Age,” including to some extent with respect to “software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.” But that part of the opinion is only a plurality – not controlling – because Justice Scalia did not join that discussion and did not explain his reasons for declining to do so.

Stevens' concurrence, one day before he retired from the high court, had the look of a writing that could have started out as a majority opinion but lost its fifth vote. Stevens, who was joined by justices Ruth Bader Ginsburg, Stephen Breyer and Sonia Sotomayor, called the majority a "tepid disposition" of the case.

It was tepid enough, apparently, that even the lawyer for patent holders Bernard Bilski and Rand Warsaw did not concede defeat. Finnegan, Henderson, Farabow, Garrett & Dunner partner J. Michael Jakes, who argued the case for the patent holders, said, "We are disappointed by today's decision because we believed the Bilski/Warsaw claims should be patentable under the broad language of the Patent Act." But Jakes said he would work with his clients to revive their patent claim to meet the new guidance provided by the Court....

"In the short run, there may be fewer claims for patent infringement," said Cynthia Kernick of Reed Smith. "At the end of the day, though, smart people will still figure out how to make money from the patent system and business methods no matter what the Supreme Court rules."

"This case didn't tell us much, and the Bilski facts were not great for dealing with the hard issues in this area, which related to personalized medicine, diagnostic claims, and patenting of gene fragments," Dragseth says. While the subject matter covered under such patents may not be as "out there," in Dragseth's words, as the kinds of things covered under business method patents, some of their claims are recited so broadly "that they may have a problem."

Among the looming cases that find the Court eventually providing more clarity on the subject is Prometheus v. Mayo Laboratories; the justices are likely to issue an order as soon as Tuesday with regard to whether they will hear that case. (Dragseth and his colleagues at Fish & Richardson represent Mayo.)

Luis Villa also gives the details on the complicated voting:

This was a very splintered decision - while every judge agreed in the outcome, no part of the opinion got more than five votes, and many parts got only four. This probably explains why it took so long, and why Stevens was not (as widely anticipated) the author of the majority opinion - one or more judges probably were swinging between the two opinions until very late in the process.

The primary concern is that patents on business methods may prohibit a wide swath of legitimate competition and innovation. As one scholar explains, “it is useful to conceptualize knowledge as a pyramid: the big ideas are on top; specific applications are at the bottom.” Dreyfuss 275. The higher up a patent is on the pyramid, the greater the social cost and the greater the hindrance to further innovation.⁵³ Thus, this Court stated in Benson that “[p]henomena of nature . . . , mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work,” 409 U. S., at 67; see also, Joseph E. Seagram & Sons, Inc.commercial work. They are also, in many cases, the basic tools of further business innovation: Innovation in business methods is often a sequential and complementary process in which imitation may be a “spur to innovation” and patents may “become an impediment.” Bessen & Maskin, Sequential Innovation, Patents, and Imitation, 40 RAND J. Econ. 611, 613 (2009).⁵⁴ “Think how the airline industry might now be structured if the first company to offer frequent flyer miles had enjoyed the sole right to award them.” Dreyfuss 264. “[I]mitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.” Bonito Boats, 489 U. S., at 146.

If business methods could be patented, then many business decisions, no matter how small, could be potential patent violations. Businesses would either live in constant fear of litigation or would need to undertake the costs of searching through patents that describe methods of doing business, attempting to decide whether their innovation is one that remains in the public domain. See Long, Information Costs in Patent and Copyright, 90 Va. L. Rev. 465, 487–488 (2004) (hereinafter Long). But as we have long explained, patents should not “embaras[s] the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.” Atlantic Works v. Brady, 107 U. S. 192, 200 (1883).⁵⁵

These effects are magnified by the “potential vagueness” of business method patents, eBay Inc., 547 U. S., at 397 (KENNEDY, J., concurring). When it comes to patents, “clarity is essential to promote progress.” Festo Corp., 535 U. S., at 730–731. Yet patents on methods of conducting business generally are composed largely or entirely of intangible steps. Compared to “the kinds of goods . . . around which patent rules historically developed,” it thus tends to be more costly and time consuming to search through, and to negotiate licenses for, patents on business methods. See Long 539, 470.⁵⁶

The breadth of business methods, their omnipresence in our society, and their potential vagueness also invite a particularly pernicious use of patents that we have long criticized. As early as the 19th century, we explained that the patent laws are not intended to “creat[e] a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts.” Atlantic Works, 107 U. S., at 200. Yet business method patents may have begun to do exactly that. See eBay Inc., 547 U. S., at 396–397 (opinion of KENNEDY, J.).

These many costs of business method patents not only may stifle innovation, but they are also likely to “stifle competition,” Bonito Boats, 489 U. S., at 146. Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation.5⁵⁷That can take a particular toll on small and upstart businesses.⁵⁸ Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace.⁵⁹

Or maybe you read about the new financial reform package including a ban on what some wanted to do and were setting up to do -- a kind of derivative where you could bet, essentially, on how a movie would do at the box office. That kind of class of speculative schemers? The kind that nearly destroyed the world's economy, while pocketing pocketfuls of cash for themselves?

How is that different from gambling on a horse at the track?

I know. That's not about patents. But the simple truth is, those who push for patents on everything under the sun do it precisely so that they can make a killing financially, easy money at the expense of the public. Period. There. I said it. The Bilski patent application couldn't be more apropos in this context. Betting on the weather. A *patent* on betting on the weather, no less.

As you can see from this one snip from Justice Stevens' concurring opinion, you'll enjoy what you read. Here's what Justice Breyer wrote, with Justice Scalia joining, about Microsoft's idea of "useful, concrete, and tangible results" being a fine standard:

Indeed, 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.” In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a “method of training janitors to dust and vacuum using video displays,” a “system for toilet reservations,” and a “method of using color-coded bracelets to designate dating status in order to limit ‘the embarrassment of rejection’ ”); see also Brief for Respondent 40–41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit’s decision in this case rejected that approach, nothing in today’s decision should be taken as disapproving of that determination.

So, I believe my first reading is essentially correct, that there is a lot to work with here going forward, and it's by no means all negative. In my view, the essential problem is educating lawyers and judges on the tech, so they understand what software actually is and what it isn't. It's clear to me that currently that is not the case.

Here's my challenge to those who feel software should be patentable:

Please show me something patentable in software that is not an algorithm. I mean "show me" literally. Show me in the software code something patentable that is not an algorithm, since algorithms are not patentable subject matter.

Update: I've left this article in place longer than I normally would for two reasons. First, I wanted to give you time to think of ways to explain to non-programmers how we know that software is math, and I wanted to give pro-software patent folks time to answer my challenge -- to show us something in software code that is *not* an algorithm and hence patentable. That last still has not happened effectively that I have seen. So have at it, everyone. What is in software programs that is patentable? Show us with specifics, please. It's the single most pertinent question I can think of that must be answered if folks want software to be patentable.

Second, I wanted to give the lawyers out there time to reflect on the Bilski opinion, because I know analysis in real time is never as good as when they have time to look at all the details. Law is all about the details. So here's Jason M. Schultz at Cyberlaw Cases with his reflection on the opinion, Sifting through clues to patentability: Four take-home points from Bilski's mixed bag. Happily it's published under a Creative Commons license, so I can quote substantively:

Justice Kennedy’s five-vote majority opinion – which reads more like a concurrence and is quite short (16 pages) for a case that took 231 days to decide – argues that Bilski’s application fails because it is an “abstract idea” and thus not allowed to be a “process” under Section 101 of the Patent Act. Yet Kennedy does not provide much explanation as to why the Patent Act prohibits abstract processes or how one tells the difference between an abstract process and a concrete process. For example, we leave the opinion without any sense of whether or not Judge Sotomayor’s famous “speed dating” example [PDF] or Justice Breyer’s new method for teaching antitrust law are abstract or concrete. Instead, Kennedy merely states that “[c]oncerns about attempts to call any form of human activity a ‘process’ can be met by making sure the claim meets the requirements of §101” without explaining which requirements would do this or how.

Later, in a part of the plurality opinion that Justice Scalia did not join, Kennedy suggests that “i[f] a high enough bar is not set when considering patent applications for [business tasks], patent examiners and courts could be flooded with claims that would put a chill on creative endeavor and dynamic change.” Kennedy then suggests that the “abstract idea” concept can establish a limiting principle on business method patents “if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas.” Again, ironically, Kennedy’s approach is rather abstract itself and offers little if any guidance.

So what can we take away from Bilski? Well, besides Justice Stevens’ 47-page tour-de-force concurrence arguing to uphold the historical exclusion of business method patents, here are my top four:

1) State Street Bank’s “useful, concrete, and tangible result” test is dead.

In the 1998 State Street Bank v. Signature case, the Federal Circuit Court of Appeals opened the floodgates to an explosion of questionable patent applications by allowing patents to cover any subject matter as long as they produced a “useful, concrete, and tangible result.” This was far too broad and part of what lead to the Supreme Court taking Bilski in the first place. In the Bilski decision, four justices explicitly advocate against this standard and the majority opinion goes out of its way to state that nothing in its holding “should be read as endorsing” the State Street interpretation of Section 101: a clear message to the Federal Circuit that this test should go quietly into the history books.

2) Abstract ideas likely include “basic concepts” and methods that can be reduced to a mathematical formula.

While most of the Bilski opinion is vague about how to define an abstract idea or the appropriate test to use, Justice Kennedy does provide a few more clues when he analyzes the Bilski claim directly. There, he describes the claims at issue as covering “the basic concept of hedging or protecting against risk” – “a fundamental economic practice.” He then writes: “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea.” Thus, we are left with the suggestion that anything “conceptual” or that can be reduced to a mathematical formula is an unpatentable abstract idea. This may well be a defendant’s best argument when challenging a patent claim in court on these grounds.

3) Parker v. Flook’s “field of use” and “postsolution activity” limitations are alive and well.

In 1978, Justice Stevens wrote Parker v. Flook, a case about a mathematical algorithm used to update alarm limits for a catalytic converter. In the case, the Court held this was unpatentable because an algorithm was a law of nature, even when the applicant attempted to limit it to a specific field of use or to add insignificant post-solution activity (such as triggering an alarm). In 1981, however, the Court decided Diamond v. Diehr, and called some of Flook’s holdings into question. Some commentators then speculated that Flook’s limitations on patentable subject matter were dead or at least diminished and that Diehr had essentially quietly overruled Flook.

While Kennedy cites to both Flook and Diehr in the Bilski opinion, he emphasized Flook much more heavily and suggests that its two major limitations could be among the most useful for the PTO or courtroom defendants who want to challenge patent claims as abstract ideas and especially those merely hitched to a concrete term here and there. So there is no question, Flook is alive, well, and good law.

4) Expect more Section 101 challenges, especially at the early stages of patent litigation.

Under the State Street Bank test, very few patent litigation defendants had incentive to bring a challenge under Section 101 to a method claim, as it was almost impossible to prove that a patent had absolutely no “useful, concrete, and tangible result.” Now, even with the vague formulations offered by the Court’s opinion in Bilski, there will be more hope for patent litigation defendants to challenge broad method claims in court as abstract ideas. Two key reasons to do so are cost and timing. In patent litigation, defendants are often dragged through courts for years, even on bogus or bad patents, because proving a patent was obvious or that someone else had invented it first is expensive, time-consuming, and fact-intensive.

Arguing that a patent claim is an abstract idea, however, could be much simpler. While litigants might want to include some facts and expert testimony, others might simply want to challenge the patent claims as abstract on their very language. This is certainly how the Court in Bilski decided the abstractness question, and how the courts in Flook and Diehr did as well. Under this approach, defendants could even bring a motion to dismiss the case at the initial pleading stage, before any burdensome discovery and other litigation costs are incurred. This could also result in more decisions that interpret Bilski coming out at a relatively fast pace and providing the additional guidance litigants will need to navigate this new approach.

For others’ analysis, see here, here, here, and here.

One last note: As a result of the Supreme Court’s ruling, we will be moving this case off the Top Ten list. However, given that the Court left so many issues open and raised so many new questions, I still think the issue of method patentability for technologies such as software, medical diagnostics, and other information innovations is still very much up in the air and in play. We will be watching cases such as Prometheus v. Mayo to see how the Federal Circuit and other courts respond. But I anticipate this issue taking years to work out.

His analysis makes me come up with this question:

What is there in software that *isn't* an abstraction that can be reduced to math?

Dan Ravicher joined Karen Sandler and Bradley Kuhn on the Software Freedom Law Center's Law Show [mp3; ogg] to discuss the Bilski opinion yesterday.

Update 2: SCOTUSblog has an interesting essay on Stevens' role on the Supreme Court:

The bolder side of Stevens’ jurisprudence is better explained by another insight from our series: that Stevens is – and has been since his appointment – a champion of the powerless against the powerful. Stevens has taken a leading role in ensuring that power is exercised transparently and judiciously, and that individuals at its mercy are treated fairly.

That often means enforcing strict rules of conduct against the government and other powerful actors, while applying a more flexible standard to the conduct of less powerful individuals. This simple thesis comes across in essays by professors Daniel Farber (clerk OT76), Rory Little (part-time clerk OT84), Gregory Magarian (clerk OT94), Jeffrey Fisher (clerk OT98), Deborah Pearlstein (clerk OT00), and Pamela Karlan (election law scholar).

Why is it that *every* *single* *character* must be converted to a number before the word processor can understand it?

Why is it that nothing can be entered into the database unless it can be represented numerically?

Why is it that every input to or output from any computerized controller must be digital, regardless of the form it may take in the world outside the computer box?

Cite as: 561 U. S. ____ (2010)

STEVENS, J., concurring in judgment

SUPREME COURT OF THE UNITED STATES
_________________
No. 08–964
_________________
BERNARD L. BILSKI AND RAND A. WARSAW,
PETITIONERS v. DAVID J. KAPPOS, UNDER
SECRETARY OF COMMERCE FOR INTEL-
LECTUAL PROPERTY AND DIRECTOR,
PATENT AND TRADEMARK OFFICE

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT

[June 28, 2010]

JUSTICE STEVENS, with whom JUSTICE GINSBURG, JUSTICE BREYER, and JUSTICE SOTOMAYOR join, concurring in the judgment.

In the area of patents, it is especially important that the law remain stable and clear. The only question presented in this case is whether the so-called machine-or-transformation test is the exclusive test for what constitutes a patentable “process” under 35 U. S. C. §101. It would be possible to answer that question simply by holding, as the entire Court agrees, that although the machine-or-transformation test is reliable in most cases, it is not the exclusive test.

I agree with the Court that, in light of the uncertainty that currently pervades this field, it is prudent to provide further guidance. But I would take a different approach. Rather than making any broad statements about how to define the term “process” in §101 or tinkering with the bounds of the category of unpatentable, abstract ideas, I would restore patent law to its historical and constitutional moorings.

For centuries, it was considered well established that a series of steps for conducting business was not, in itself,

1

The Court correctly holds that the machine-or- transformation test is not the sole test for what constitutes a patentable process; rather, it is a critical clue.¹ But the Court is quite wrong, in my view, to suggest that any series of steps that is not itself an abstract idea or law of nature may constitute a “process” within the meaning of §101. The language in the Court’s opinion to this effect can only cause mischief. The wiser course would have been to hold that petitioners’ method is not a “process” because it describes only a general method of engaging in business transactions—and business methods are not patentable. More precisely, although a process is not patent-ineligible simply because it is useful for conducting business, a claim that merely describes a method of doing

2

I

Petitioners’ patent application describes a series of steps for managing risk amongst buyers and sellers of commodities. The general method, described in Claim 1, entails “managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price,” and consists of the following steps:

“(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers;

“(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

“(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.” App. 19–20.

3

The patent examiner rejected petitioners’ application on the ground that it “is not directed to the technological arts,” insofar as it “is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application.” App. to Pet. for Cert. 148a.

The Board of Patent Appeals and Interferences (Board) affirmed the examiner’s decision, but it rejected the position that a patentable process must relate to “technological arts” or be performed on a machine. Id., at 180a–181a. Instead, the Board denied petitioners’ patent on two alternative, although similar, grounds: first, that the patent involves only mental steps that do not transform physical subject matter, id., at 181a–184a; and, second, that it is directed to an “abstract idea,” id., at 184a–187a.

Petitioners appealed to the United States Court of Appeals for the Federal Circuit. After briefing and argument before a three-judge panel, the court sua sponte decided to hear the case en banc and ordered the parties to address: (1) whether petitioners’ “claim 1 . . . claims patent-eligible subject matter under 35 U. S. C. §101”; (2) “[w]hat standard should govern in determining whether a process is patent-eligible subject matter”; (3) “[w]hether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process”; (4) “[w]hether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-

4

The en banc Court of Appeals affirmed the Board’s decision. Eleven of the twelve judges agreed that petitioners’ claims do not describe a patentable “process,” §101. Chief Judge Michel’s opinion, joined by eight other judges, rejected several possible tests for what is a patent-eligible process, including whether the patent produces a “‘useful, concrete and tangible result,’” whether the process relates to “technological arts,” and “categorical exclusions” for certain processes such as business methods. In re Bilski, 545 F. 3d 943, 959–960 (2008). Relying on several of our cases in which we explained how to differentiate a claim on a “fundamental principle” from a claim on a “process,” the court concluded that a “claimed process is surely patent-eligible under §101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Id., at 954–955. The court further concluded that this “machine-or-transformation test” is “the sole test governing §101 analyses,” id., at 955 (emphasis added), and therefore the “test for determining patent eligibility of a process under §101,”id., at 956. Applying that test, the court held that petitioners’ claim is not a patent-eligible process. Id., at 963–966.

In a separate opinion reaching the same conclusion, Judge Dyk carefully reviewed the history of American patent law and English precedents upon which our law is based, and found that “the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded . . . since the time of the Patent Act of 1793.” Id., at 966. Judge Dyk observed,

5

Three judges wrote dissenting opinions, although two of those judges agreed that petitioners’ claim is not patent eligible. Judge Mayer would have held that petitioners’ claim “is not eligible for patent protection because it is directed to a method of conducting business.” Id., at 998. He submitted that “[t]he patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions.” Ibid. “Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation[,] and usurps that which rightfully belongs in the public domain.” Ibid.

Judge Rader would have rejected petitioners’ claim on the ground that it seeks to patent merely an abstract idea. Id., at 1011.

Only Judge Newman disagreed with the court’s conclusion that petitioners’ claim seeks a patent on ineligible subject matter. Judge Newman urged that the en banc court’s machine-or-transformation test ignores the text and history of §101, id., at 977–978, 985–990, is in tension with several of decisions by this Court, id., at 978–985, and the Federal Circuit, id., at 990–992, and will invalidate thousands of patents that were issued in reliance on those decisions, id., at 992–994.

II

6

Second, in the process of addressing the sole issue presented to us, the opinion uses some language that seems inconsistent with our centuries-old reliance on the machine-or-transformation criteria as clues to patentability. Most notably, the opinion for a plurality suggests that these criteria may operate differently when addressing technologies of a recent vintage. See ante, at 8–9 (machine-or-transformation test is useful “for evaluating processes similar to those in the Industrial Age,” but is less useful “for determining the patentability of inventions in the Information Age”). In moments of caution, however, the opinion for the Court explains—correctly—that the Court is merely restoring the law to its historical state of rest. See ante, at 8 (“This Court’s precedents establish that the machine-or-transformation test is a useful and

7

Third, in its discussion of an issue not contained in the questions presented—whether the particular series of steps in petitioners’ application is an abstract idea—the Court uses language that could suggest a shift in our approach to that issue. Although I happen to agree that petitioners seek to patent an abstract idea, the Court does not show how this conclusion follows “clear[ly],” ante, at 15, from our case law. The patent now before us is not for “[a] principle, in the abstract,” or a “fundamental truth.” Parker v. Flook, 437 U. S. 584, 589 (1978) (internal quotation marks omitted). Nor does it claim the sort of phenomenon of nature or abstract idea that was embodied by the mathematical formula at issue in Gottschalk v. Benson, 409 U. S. 63, 67 (1972), and in Flook.

The Court construes petitioners’ claims on processes for pricing as claims on “the basic concept of hedging, or protecting against risk,” ante, at 14, and thus discounts the application’s discussion of what sorts of data to use, and how to analyze those data, as mere “token postsolution components,” ante, at 15. In other words, the Court artificially limits petitioners’ claims to hedging, and then concludes that hedging is an abstract idea rather than a term that describes a category of processes including petitioners’ claims. Why the Court does this is never made clear. One might think that the Court’s analysis means that any process that utilizes an abstract idea is itself an unpatentable, abstract idea. But we have never suggested any such rule, which would undermine a host of patentable processes. It is true, as the Court observes,

8

At points, the opinion suggests that novelty is the clue. See ante, at 14. But the fact that hedging is “‘long prevalent in our system of commerce,’” ibid., cannot justify the Court’s conclusion, as “the proper construction of §101 ... does not involve the familiar issu[e] of novelty” that arises under §102. Flook, 437 U. S., at 588. At other points, the opinion for a plurality suggests that the analysis turns on the category of patent involved. See, e.g., ante, at 12 (courts should use the abstract-idea rule as a “too[l]” to set “a high enough bar” “when considering patent applications of this sort”). But we have never in the past suggested that the inquiry varies by subject matter.

The Court, in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea. Indeed, the Court does not even explain if it is using the machine-or-transformation criteria. The Court essentially asserts its conclusion that petitioners’ application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it also means that the Court’s musings on this issue stand for very little.

9

III

Pursuant to its power “[t]o promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries,” U. S. Const., Art. I, §8, cl. 8, Congress has passed a series of patent laws that grant certain exclusive rights over certain inventions and discoveries as a means of encouraging innovation. In the latest iteration, the Patent Act of 1952 (1952 Act), Congress has provided that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title,” 35 U. S. C. §101, which include that the patent also be novel, §102, and nonobvious, §103. The statute thus authorizes four categories of subject matter that may be patented: processes, machines, manufactures, and compositions of matter. Section 101 imposes a threshold condition. “[N]o patent is available for a discovery, however useful, novel, and nonobvious, unless it falls within one of the express categories of patentable subject matter.” Kewanee Oil Co. v. Bicron Corp., 416 U. S. 470, 483 (1974).

Section 101 undoubtedly defines in “expansive terms” the subject matter eligible for patent protection, as the statute was meant to ensure that “‘ingenuit[ies] receive a liberal encouragement.’ ” Diamond v. Chakrabarty, 447 U. S. 303, 308–309 (1980); see also J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U. S. 124, 130 (2001). Nonetheless, not every new invention or discovery may be patented. Certain things are “free for all to use.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S.

10

The text of the Patent Act does not on its face give much guidance about what constitutes a patentable process. The statute defines the term “process” as a “process, art or method [that] includes a new use of a known process, machine, manufacture, composition of matter, or material.” §100(b). But, this definition is not especially helpful, given that it also uses the term “process” and is therefore somewhat circular.

As lay speakers use the word “process,” it constitutes any series of steps. But it has always been clear that, as used in §101, the term does not refer to a “‘process’ in the ordinary sense of the word,” Flook, 437 U. S., at 588; see also Corning v. Burden, 15 How. 252, 268 (1854) (“[T]he term process is often used in a more vague sense, in which it cannot be the subject of a patent”). Rather, as discussed in some detail in Part IV, infra, the term “process” (along with the definitions given to that term) has long accumulated a distinctive meaning in patent law. When the term was used in the 1952 Patent Act, it was neither intended nor understood to encompass any series of steps or any way to do any thing.

With that understanding in mind, the Government has

11

In my view, the answer lies in between the Government’s and the Court’s positions: The terms adjacent to “process” in §101 provide a clue as to its meaning, although not a very strong clue. Section 101’s list of categories of patentable subject matter is phrased in the disjunctive, suggesting that the term “process” has content distinct from the other items in the list. It would therefore be illogical to “rob” the word “process” of all independent meaning. Reiter v. Sonotone Corp., 442 U. S. 330, 338 (1979). Moreover, to the extent we can draw inferences about what is a “process” from common attributes in §101, it is a dangerous endeavor to do so on the basis of a perceived overarching theme. Given the many moving parts at work in the Patent Act, there is a risk of merely confirming our preconceived notions of what should be patentable or of seeing common attributes that track “the familiar issues of novelty and obviousness” that arise

12

The Court makes a more serious interpretive error. As briefly discussed in Part II, supra, the Court at points appears to reject the well-settled proposition that the term “process” in §101 is not a “‘process’ in the ordinary sense of the word,” Flook, 437 U. S., at 588. Instead, the Court posits that the word “process” must be understood in light of its “ordinary, contemporary, common meaning,” ante, at 6 (internal quotation marks omitted). Although this is a fine approach to statutory interpretation in general, it is a deeply flawed approach to a statute that relies on complex terms of art developed against a particular historical background.⁴ Indeed, the approach would render §101 almost comical. A process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories, or songs if framed as the steps of typing letters or uttering sounds—all would be patent- eligible. I am confident that the term “process” in §101 is not nearly so capacious.⁵

13

In fact, the Court’s understanding of §101 is even more remarkable because its willingness to exclude general principles from the provision’s reach is in tension with its apparent willingness to include steps for conducting business. The history of patent law contains strong norms against patenting these two categories of subject matter. Both norms were presumably incorporated by Congress into the Patent Act in 1952.

14

IV

Because the text of §101 does not on its face convey the scope of patentable processes, it is necessary, in my view, to review the history of our patent law in some detail. This approach yields a much more straightforward answer to this case than the Court’s. As I read the history, it strongly supports the conclusion that a method of doing business is not a “process” under §101.

I am, of course, mindful of the fact that §101 “is a dynamic provision designed to encompass new and unforeseen inventions,” and that one must therefore view historical conceptions of patent-eligible subject matter at an appropriately high level of generality. J. E. M. Ag Supply, 534 U. S., at 135; see also Chakrabarty, 447 U. S., at 315– 316. But it is nonetheless significant that while people have long innovated in fields of business, methods of doing business fall outside of the subject matter that has “historically been eligible to receive the protection of our patent laws,” Diehr, 450 U. S., at 184, and likely go beyond what the modern patent “statute was enacted to protect,” Flook, 437 U. S., at 593. It is also significant that when Congress enacted the latest Patent Act, it did so against the background of a well-settled understanding that a series of steps for conducting business cannot be patented. These considerations ought to guide our analysis. As Justice Holmes noted long ago, sometimes, “a page of history is worth a volume of logic.” New York Trust Co. v. Eisner, 256 U. S. 345, 349 (1921).

English Backdrop

The Constitution’s Patent Clause was written against the “backdrop” of English patent practices, Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 5 (1966), and early American patent law was “largely based on and incorporated” features of the English patent system, E. Walterscheid, To Promote the Progress of Useful Arts:

15

16

17

In any event, these patents (or patent) were probably not known to the Framers of early patent law. In an era before computerized databases, organized case law, and treatises, ¹⁶the American drafters probably would have

18

Also noteworthy is what was not patented under the English system. During the 17th and 18th centuries, Great Britain saw innovations in business organization,¹⁷ business models,¹⁸ management techniques,¹⁹ and novel solutions to the challenges of operating global firms in which subordinate managers could be reached only by a long sea voyage.²⁰ Few if any of these methods of conducting business were patented.²¹

19

At the Constitutional Convention, the Founders decided to give Congress a patent power so that it might “promote the Progress of . . . useful Arts.” Art. I, §8, cl. 8. There is little known history of that Clause.²² We do know that the Clause passed without objection or debate.²³ This is striking because other proposed powers, such as a power to grant charters of incorporation, generated discussion about the fear that they might breed “monopolies.”²⁴ Indeed, at the ratification conventions, some States recommended amendments that would have prohibited Congress from granting “‘exclusive advantages of commerce.’”²⁵ If the original understanding of the Patent

20

In 1790, Congress passed the first Patent Act, an “Act to promote the progress of useful Arts” that authorized patents for persons who had “invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used,” if “the invention or discovery [was] sufficiently useful and important.” 1 Stat. 109–110. Three years later, Congress passed the Patent Act of 1793 and slightly modified the language to cover “any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter.” 1 Stat. 319.

The object of the constitutional patent power and the statutory authorization for process patents in the early patent Acts was the term “useful art.” It is not evident from the face of the statutes or the Constitution whether the objects of the patent system were “arts” that are also useful, or rather a more specific category, the class of arts known as “useful arts.” Cf. Graham, 383 U. S., at 12 (describing the “‘new and useful’ tests which have always existed in the statutory scheme” and apply to all categories of subject matter). However, we have generally assumed that “useful art,” at least as it is used in the Patent Act, is itself a term of art. See Burden, 15 How., at 267– 268.

The word “art” and the phrase “useful arts” are subject to many meanings. There is room on the margins to debate exactly what qualifies as either. There is room, moreover, to debate at what level of generality we should understand these broad and historical terms, given that “[a] rule that unanticipated inventions are without protection would conflict with the core concept of the patent

21

Noah Webster’s first American dictionary²⁶ defined the term “art” as the “disposition or modification of things by human skill, to answer the purpose intended,” and differentiated between “useful or mechanic” arts, on the one hand, and “liberal or polite” arts, on the other. 1 An American Dictionary of the English Language (1828) (facsimile edition) (emphasis added). Although other dictionaries defined the word “art” more broadly,²⁷ Webster’s definition likely conveyed a message similar to the meaning of the word “manufactures” in the earlier English statute. And we know that the term “useful arts” was used in the founding era to refer to manufacturing and similar applied trades.²⁸ See Coulter, The Field of the

22

23

Some scholars have remarked, as did Thomas Jefferson, that early patent statutes neither included nor reflected any serious debate about the precise scope of patentable

24

Development of American Patent Law

During the first years of the patent system, no patents were issued on methods of doing business.³⁰ Indeed, for some time, there were serious doubts as to “the patentability of processes per se,” as distinct from the physical end product or the tools used to perform a process. Id., at 581– 582.³¹

Thomas Jefferson was the “‘first administrator of our patent system’” and “the author of the 1793 Patent Act.” Graham, 383 U. S., at 7. We have said that his “conclusions as to conditions of patentability . . . are worthy of note.” Ibid. at 7. During his time administering the system, Jefferson “saw clearly the difficulty” of deciding what

25

Although courts occasionally struggled with defining what was a patentable “art” during those 160 years, they consistently rejected patents on methods of doing business. The rationales for those decisions sometimes varied. But there was an overarching theme, at least in dicta: Business methods are not patentable arts. See, e.g., United States Credit Sys. Co. v. American Credit Indem. Co., 53 F. 818, 819 (CC NY 1893) (“method of insuring against loss by bad debts” could not be patented “as an art”);Hotel Security Checking Co. v. Lorraine Co., 160 F. 467, 469 (CA2 1908) (“A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term,

26

By the early 20th century, it was widely understood that a series of steps for conducting business could not be patented. A leading treatise, for example, listed “ ‘systems’ of business” as an “unpatentable subjec[t].” 1 A. Deller,

27

Modern American Patent Law

By the mid-1900’s, many courts were construing the term “art” by using words such as “method, process, system, or like terms.” Berman 713; see Expanded Metal Co. v. Bradford, 214 U. S. 366, 382 (1909) (“The word ‘process’ has been brought into the decisions because it is supposedly an equivalent form of expression or included in the

28

That change was made for clarity and did not alter the scope of a patentable “process.” See Diehr, 450 U. S., at 184. The new terminology was added only in recognition of the fact that courts had been interpreting the category “art” by using the terms “process or method”; Congress thus wanted to avoid “the necessity of explanation that the word ‘art’ as used in this place means ‘process or method.’ ” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952) (hereinafter S. Rep. 1979); accord, H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (hereinafter H. R. Rep. 1923); see alsoid., at 17 (explaining that “the word ‘art’” in §101 “has been interpreted by the courts as being practically synonymous with process or method,” and that the switch to the word “[p]rocess” was intended only for clarity).³⁷

It appears that when Congress changed the language in §101 to incorporate the prevailing judicial terminology, it merely codified the prevailing judicial interpretation of that category of subject matter. See Diehr, 450 U. S., at 184; see also Barber v. Gonzales, 347 U. S. 637, 641 (1954) (“While it is true that statutory language should be interpreted whenever possible according to common usage, some terms acquire a special technical meaning by a process of judicial construction”). Both the Senate and House Committee Reports explained that the word “proc-

29

As discussed above, by this time, courts had consistently construed the term “art” to exclude methods of doing business. The 1952 Act likely captured that same mean- ing.³⁸ Cf. Graham, 383 U. S., at 16–17 (reasoning that because a provision of the 1952 Act “paraphrases language which has often been used in decisions of the courts” and was “added to the statute for uniformity and definiteness, ” that provision should be treated as “a codification of judicial precedents”).³⁹ Indeed, Judge Rich, the main drafter

30

“Anything Under the Sun”

Despite strong evidence that Congress has consistently authorized patents for a limited class of subject matter and that the 1952 Act did not alter the nature of the then-existing limits, petitioners and their amici emphasize a single phrase in the Act’s legislative history, which suggests that the statutory subject matter “‘include[s] anything under the sun that is made by man.’” Brief for Petitioners 19 (quoting Chakrabarty, 447 U. S., at 309, in turn quoting S. Rep. 1979, at 5). Similarly, the Court relies on language from our opinion in Chakrabarty that was based in part on this piece of legislative history. See ante, at 4, 6.

This reliance is misplaced. We have never understood

31

Taken in context, it is apparent that the quoted lan- guage has a far less expansive meaning. The full sentence in the Committee Reports reads: “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of [this] title are fulfilled.” S. Rep. 1979, at 5; H. R. Rep. 1923, at 6. Viewed as a whole, it seems clear that this language does not purport to explain that “anything under the sun” is patentable. Indeed, the language may be understood to state the exact opposite: that “[a] person may have ‘invented’ . . . anything under the sun,” but that thing “is not necessarily patentable under section 101.” Thus, even in the Chakrabarty opinion, which relied on this quote, we cautioned that the 1952 Reports did not “suggest that §101 has no limits or that it embraces every discovery.” 447 U. S., at 309.

Moreover, even if the language in the Committee Reports was meant to flesh out the meaning of any portion of §101, it did not purport to define the term “process.” The language refers only to “manufacture[s]” and “machine[s],” tangible objects “made by man.” It does not reference the “process” category of subject matter (nor could a process be comfortably described as something “made by man”). The language may also be understood merely as defining the term “invents” in §101. As Judge Dyk explained in his

32

The 1952 Act, in short, cannot be understood as expanding the scope of patentable subject matter by suggesting that any series of steps may be patented as a “process” under §101. If anything, the Act appears to have codified the conclusion that subject matter which was understood not to be patentable in 1952 was to remain unpatentable.

Our recent case law reinforces my view that a series of steps for conducting business is not a “process” under §101. Since Congress passed the 1952 Act, we have never ruled on whether that Act authorizes patents on business methods. But we have cast significant doubt on that proposition by giving substantial weight to the machine- or-transformation test, as general methods of doing busi- ness do not pass that test. And more recently, Members of this Court have noted that patents on business methods are of “suspect validity.”eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 397 (2006) (KENNEDY, J., concurring).

* * *

33

V

In 1999, following a Federal Circuit decision that intimated business methods could be patented, see State Street, 149 F. 3d 1368, Congress moved quickly to limit the potential fallout. Congress passed the 1999 Act, codified at 35 U. S. C. §273, which provides a limited defense to claims of patent infringement, see §273(b), regarding certain “method[s] of doing or conducting business,” §273(a)(3).

It is apparent, both from the content and history of the Act, that Congress did not in any way ratify State Street (or, as petitioners contend, the broadest possible reading of State Street). The Act merely limited one potential effect of that decision: that businesses might suddenly find themselves liable for innocently using methods they assumed could not be patented. The Act did not purport to amend the limitations in §101 on eligible subject matter. Indeed, Congress placed the statute in Part III of Title 35, which addresses “Patents and Protection of Patent Rights,” rather than in Part II, which contains §101 and

34

The Act therefore is, at best, merely evidence of 1999 legislative views on the meaning of the earlier, 1952 Act. “[T]he views of a subsequent Congress,” however, “form a hazardous basis for inferring the intent of an earlier one.” United States v. Price, 361 U. S. 304, 313 (1960). When a later statute is offered as “an expression of how the . . . Congress interpreted a statute passed by another Congress . . . a half century before,” “such interpretation has very little, if any, significance.” Rainwater v. United States, 356 U. S. 590, 593 (1958).

Furthermore, even assuming that Congress’ views at the turn of the 21st century could potentially serve as a valid basis for interpreting a statute passed in the mid- 20th century, the First Inventor Defense Act does not aid petitioners because it does not show that the later Congress itself understood §101 to cover business methods. If anything, it shows that a few judges on the Federal Circuit understood §101 in that manner and that Congress understood what those judges had done. The Act appears to reflect surprise and perhaps even dismay that business methods might be patented. Thus, in the months following State Street, congressional authorities lamented that “business methods and processes . . . until recently were thought not to be patentable,” H. R. Rep. No. 106–464, p. 121 (1999); accord, H. R. Rep. No. 106–287, pt. 1, p. 31

35

The Court nonetheless states that the 1999 Act “acknowledges that there may be business method patents,” thereby “clarify[ing]” its “understanding” of §101. Ante, at 11. More specifically, the Court worries that if we were to interpret the 1952 Act to exclude business methods, our interpretation “would render §273 meaningless.” Ibid. I agree that “[a] statute should be construed so that effect is given to all its provisions.” Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9) (internal quotation marks omitted). But it is a different matter altogether when the Court construes one statute, the 1952 Act, to give effect to a different statute, the 1999 Act. The canon on which the Court relies is predicated upon the idea that “[a] statute is passed as a whole.” 2A N. Singer & J. Singer, Statutes and Statutory Construction §46:5, p. 189 (7th ed. 2007). But the two statutes in question were not passed as a whole.

Put another way, we ordinarily assume, quite sensibly, that Congress would not in one statute include two provisions that are at odds with each other. But as this case shows, that sensible reasoning can break down when

36

In light of its history and purpose, I think it obvious

37

VI

The Constitution allows Congress to issue patents “[t]o promote the Progress of . . . useful Arts,” Art. I, §8, cl. 8. This clause “is both a grant of power and a limitation.” Graham, 383 U. S., at 5. It “reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the ‘Progress of Science and useful Arts.’” Bonito Boats, 489 U. S., at 146. “This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity ‘requires reference to [the] standard written into the Constitution.’” Graham, 383 U. S., at 6 (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 154 (1950) (Douglas, J., concurring) (emphasis deleted)); see also Grant v. Raymond, 6 Pet. 218, 241–242 (1832) (explaining that patent “laws which are passed to give effect to this [constitutional] purpose ought, we think, to be construed in the spirit in which they have been made”).⁴⁴

38

39

On one side of the balance is whether a patent monopoly is necessary to “motivate the innovation,” Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 63 (1998). Although there is certainly disagreement about the need for patents, scholars generally agree that when innovation is expensive, risky, and easily copied, inventors are less likely to undertake the guaranteed costs of innovation in order to obtain the mere possibility of an invention that others can copy.⁴⁵ Both common sense and recent economic scholarship suggest that these dynamics of cost, risk, and reward

40

Many have expressed serious doubts about whether patents are necessary to encourage business innovation.⁴⁷ Despite the fact that we have long assumed business methods could not be patented, it has been remarked that “the chief business of the American people, is business.”⁴⁸ Federal Express developed an overnight delivery service and a variety of specific methods (including shipping through a central hub and online package tracking) without a patent. Although counterfactuals are a dubious form of analysis, I find it hard to believe that many of our entrepreneurs forwent business innovation because they could not claim a patent on their new methods.

“[C]ompanies have ample incentives to develop business methods even without patent protection, because the competitive marketplace rewards companies that use more efficient business methods.” Burk & Lemley 1618.⁴⁹ Innovators often capture advantages from new business methods notwithstanding the risk of others copying their innovation. Some business methods occur in secret and

41

Nor, in many cases, would patents on business methods promote progress by encouraging “public disclosure.” Pfaff, 525 U. S., at 63; see also Brenner v. Manson, 383 U. S. 519, 533 (1966) (“[O]ne of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions”). Many business methods are practiced in public, and therefore a patent does not necessarily encourage the dissemination of anything not already known. And for the methods practiced in private, the benefits of disclosure may be small: Many such methods are distributive, not productive—that is, they do not generate any efficiency but only provide a means for competitors to one-up each other in a battle for pieces of the pie. And as the Court has explained, “it is

42

In any event, even if patents on business methods were useful for encouraging innovation and disclosure, it would still be questionable whether they would, on balance, facilitate or impede the progress of American business. For even when patents encourage innovation and disclosure, “too much patent protection can impede rather than ‘promote the Progress of . . . useful Arts.’” Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U. S. 124, 126–127 (2006) (BREYER, J., dissenting from dismissal of certiorari). Patents “can discourage research by impeding the free exchange of information,” for example, by forcing people to “avoid the use of potentially patented ideas, by leading them to conduct costly and time-consuming searches of existing or pending patents, by requiring complex licensing arrangements, and by raising the costs of using the patented” methods. Id., at 127. Although “[e]very patent is the grant of a privilege of exacting tolls from the public,” Great Atlantic, 340 U. S., at 154 (Douglas, J., concurring), the tolls of patents on business methods may be especially high.

The primary concern is that patents on business methods may prohibit a wide swath of legitimate competition and innovation. As one scholar explains, “it is useful to conceptualize knowledge as a pyramid: the big ideas are on top; specific applications are at the bottom.” Dreyfuss 275. The higher up a patent is on the pyramid, the greater the social cost and the greater the hindrance to further innovation.⁵³ Thus, this Court stated in Benson

43

If business methods could be patented, then many business decisions, no matter how small, could be potential patent violations. Businesses would either live in constant fear of litigation or would need to undertake the costs of searching through patents that describe methods of doing business, attempting to decide whether their innovation is one that remains in the public domain. See Long, Information Costs in Patent and Copyright, 90 Va. L. Rev. 465,

44

These effects are magnified by the “potential vagueness” of business method patents, eBay Inc., 547 U. S., at 397 (KENNEDY, J., concurring). When it comes to patents, “clarity is essential to promote progress.” Festo Corp., 535 U. S., at 730–731. Yet patents on methods of conducting business generally are composed largely or entirely of intangible steps. Compared to “the kinds of goods . . . around which patent rules historically developed,” it thus tends to be more costly and time consuming to search through, and to negotiate licenses for, patents on business methods. See Long 539, 470.⁵⁶

The breadth of business methods, their omnipresence in our society, and their potential vagueness also invite a particularly pernicious use of patents that we have long criticized. As early as the 19th century, we explained that the patent laws are not intended to “creat[e] a class of

45

These many costs of business method patents not only may stifle innovation, but they are also likely to “stifle competition,” Bonito Boats, 489 U. S., at 146. Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation.5⁵⁷That can take a particular toll on small and upstart businesses.⁵⁸ Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace.⁵⁹

46

VII

The Constitution grants to Congress an important power to promote innovation. In its exercise of that power, Congress has established an intricate system of intellectual property. The scope of patentable subject matter under that system is broad. But it is not endless. In the absence of any clear guidance from Congress, we have only limited textual, historical, and functional clues on which to rely. Those clues all point toward the same conclusion: that petitioners’ claim is not a “process” within the meaning of §101 because methods of doing business are not, in themselves, covered by the statute. In my view, acknowledging as much would be a far more sensible and restrained way to resolve this case.

Accordingly, while I concur in the judgment, I strongly disagree with the Court’s disposition of this case.

47

¹Even if the machine-or-transformation test may not define the scope of a patentable process, it would be a grave mistake to assume that anything with a “‘useful, concrete and tangible result,’” State Street Bank & Trust v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), may be patented.

² For example, a rule that broadly-phrased claims cannot constitute patentable processes could call into question our approval of Alexander Graham Bell’s famous fifth claim on “‘[t]he method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth,’” The Telephone Cases, 126 U.S. 1, 531 (1888).

³ The Court quotes our decision in Diamond v. Chakrabarty, 447 U. S. 303 (1980), for the proposition that, “‘[i]n choosing such expansive terms ... modified by the comprehensive “any,” Congress plainly contemplated that the patent laws would be given wide scope.’” Ante, at 4. But the Court fails to mention which terms we were discussing in Chakrabarty: the terms “manufacture” and “composition of matter.” See 447 U. S., at 308 (“In choosing such expansive terms as ‘manufacture’ and ‘composition of matter,’ modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope”). As discussed herein, Congress’ choice of the term “process” reflected a background understanding of what sorts of series of steps could be patented, and likely reflected an intentional design to codify that settled, judicial understanding. This may not have been the case with the terms at issue in Chakrabarty.

⁴ For example, if this Court were to interpret the Sherman Act accord- ing to the Act’s plain text, it could prohibit “the entire body of private contract,” National Soc. of Professional Engineers v. United States, 435 U. S. 679, 688 (1978).

⁵ The Court attempts to avoid such absurd results by stating that these “[c]oncerns” “can be met by making sure that the claim meets the requirements of §101.” Ante, at 6. Because the only limitation on the plain meaning of “process” that the Court acknowledges explicitly is the bar on abstract ideas, laws of nature, and the like, it is presumably this limitation that is left to stand between all conceivable human activity and patent monopolies. But many processes that would make for absurd patents are not abstract ideas. Nor can the requirements of novelty, nonobviousness, and particular description pick up the slack. Cf. ante, at 12–13 (plurality opinion). A great deal of human activity was at some time novel and nonobvious.

⁶ Curiously, the Court concedes that “these exceptions are not required by the statutory text,” but urges that “they are consistent with the notion that a patentable process must be ‘new and useful.’ ” Ante, at 5 (emphasis added). I do not see how these exceptions find a textual home in the term “new and useful.” The exceptions may be consistent with those words, but they are sometimes inconsistent with the “ordinary, contemporary, common meaning,” ante, at 6, 10 (internal quot tion marks omitted), of the words “process” and “method.”

⁷See Pennock v. Dialogue, 2 Pet. 1, 18 (1829) ([M]any of the provisions of our patent act are derived from the principles and practice, which have prevailed in the construction of that of England); Proceedings in Congress During the Years 1789 and 1790 Relating to the First Patent and Copyright Laws, 22 J. Pat. Off. Soc. 352, 363 (1940) (explaining that the 1790 Patent Act was framed according to the Course of Practice in the English Patent Office); see also Walterscheid, The Early Evolution of the United States Patent Law: Antecedents, 76 J. Pat. & Trademark Off. Soc. 697, 698 (1994) (describing the role of the English backdrop).

⁸See Hornblower v. Boulton, 8 T. R. 95 (K. B. 1799).

⁹See, e.g., Roebuck and Garbett v. William Stirling & Son (H. L. 1774), reprinted in 1 T. Webster, Reports and Notes of Cases on Letters Patent for Inventions 45 (1844) (method of making acid spirit by burning sulphur and saltpetre, and collecting the condensed fumes); id., at 77 ( method of producing a yellow colour for painting in oil or water, making white lead, and separating the mineral alkali from common salt, all to be performed in one single process ); see also C. MacLeod, Inventing the Industrial Revolution: The English Patent System, 16601800, pp. 8493, 100104, 109110, 152155 (1988) (listing patents) (hereinafter MacLeod).

¹⁰Some English cases made reference to the permissibility of patents over new trades. But so far as I can tell, the term trade referred not to the methods of conducting business but rather to methods of making and using physical items or to the object of the trade. See, e.g., Clothworkers of Ipswich Case, 78 Eng. Rep. 147, 148 (K. B. 1603) ([I]f a man hath brought in a new invention and a new trade within the kingdom . . . [the King] may grant by charter unto him).

¹¹See also Pollack, The Multiple Unconstitutionality of Business Method Patents: Common Sense, Congressional Consideration, and Constitutional History, 28 Rutgers Computer & Tech. L. J. 61, 9496 (2002) (hereinafter Pollack) (describing English practice).

¹²See id., at 95; B. Woodcroft, Alphabetical Index of Patentees of Inventions, from March 2, 1617 (14 James I) to October 1, 1852 (16 Victoriae) 383, 410 (2d ed. 1969) (hereinafter Woodcroft).

¹³See, e.g., C. Ewen, Lotteries and Sweepstakes 70–71 (1932) (de- scribing the “letters patent” to form a colony in Virginia and to operate lotteries to fund that colony).

¹⁴ See also Renn, John Knox’s Plan for Insuring Lives: A Patent of Invention in 1778, 101 J. Inst. Actuaries 285, 286 (1974) (hereinafter Renn) (describing the patent).

¹⁵ “The English patent system” at that time “was one of simple regis- tration. Extensive scrutiny was not expected of the law officers admin- istering it.” MacLeod 41. Thus, as one scholar suggested of the patent on life insurance, “perhaps the Law Officer was in a very good humour that day, or perhaps he had forgotten the wording of the statute; most likely he was concerned only with the promised ‘very considerable Consumption of [Revenue] Stamps’ which [the patent holder] declared, would ‘contribute to the increase of the Public Revenues.’ ” Renn 285.

¹⁶ See Markman v. Westview Instruments, Inc., 517 U. S. 370, 381 (1996) (“[T]he state of patent law in the common-law courts before 1800 led one historian to observe that ‘the reported cases are destitute of any decision of importance’” (quoting Hulme, On the Consideration of the Patent Grant, Past and Present, 13 L. Q. Rev. 313, 318 (1897))); MacLeod 1, 61–62 (explaining the dearth of clear case law); see also Boulton v. Bull, 2 H. Bl. 463, 491, 126 Eng. Rep. 651, 665 (C. P. 1795) (Eyre, C. J.) (“Patent rights are no where that I can find accurately discussed in our books”).

¹⁷ See, e.g., A. DuBois, The English Business Company After the Bub- ble Act, 1720–1800, pp. 38–40, 435–438 (1938); Harris, The Bubble Act: Its Passage and its Effects on Business Organization, 54 J. Econ. Hist. 610, 624–625 (1994).

¹⁸ See Pollack 97–100. For example, those who held patents on oil lamps developed firms that contracted to provide street lighting. See M. Falkus, Lighting in the Dark Ages of English Economic History: Town Streets before the Industrial Revolutions, in Trade, Government, and Economy in Pre-Industrial England 249, 255–257, 259–260 (D. Coleman & A. John eds. 1976).

¹⁹ See, e.g., G. Hammersley, The State and the English Iron Industry in the Sixteenth and Seventeenth Centuries, in id., at 166, 173, 175– 178 (describing the advent of management techniques for efficiently running a major ironworks). ²⁰ See, e.g., Carlos & Nicholas, Agency Problems in Early Chartered Companies: The Case of the Hudson’s Bay Company, 50 J. Econ. Hist. 853, 853–875 (1990).

²¹ Nor, so far as I can tell, were business method patents common in the United States in the brief period between independence and the creation of our Constitution—despite the fact that it was a time of great business innovation, including new processes for engaging in risky trade and transport, one of which has been called “the quintessential business innovation of the 1780s.” T. Doerflinger, A Vigorous Spirit of Enterprise: Merchants and Economic Development in Revolutionary Philadelphia 291 (1986) (describing new methods of conducting and financing trade with China). Enterprise: Merchants and Economic Development in Revolutionary Philadelphia 291 (1986) (describing new methods of conducting and financing trade with China).

²² See Seidel, The Constitution and a Standard of Patentability, 48 J. Pat. Off. Soc. 5, 10 (1966) (hereinafter Seidel); Walterscheid, To Pro- mote the Progress of Science and Useful Arts: The Background and Origin of the Intellectual Property Clause of the United States Consti- tution, 2 J. Intell. Prop. L. 1, 26 (1994) (hereinafter Walterscheid, Background and Origin); Walterscheid, To Promote the Progress 59, and n. 12; Prager, A History of Intellectual Property From 1545 to 1787, 26 J. Pat. Off. Soc. 711, 746 (1944).

²³ Walterscheid, Background and Origin 26; 2 Records of the Federal Convention of 1787, pp. 509–510 (M. Farrand ed. 1966).

²⁴ J. Madison, Notes of Debates in the Federal Convention of 1787, pp. 638–639 (Ohio Univ. Press ed. 1966).

²⁵ See Walterscheid, Background and Origin 38, n. 124, 55–56 (collect- ing sources); see also The Objections of Hon. George Mason, One of the Delegates from Virginia, in the Late Continental Convention, to the Proposed Federal Constitution, Assigned as His Reasons For Not Signing the Same, 2 American Museum or Repository of Ancient and Modern Fugitive Pieces, etc. 534, 536 (1787) (reprint 1965); Ratification of the New Constitution by the Convention of the State of New York, 4 id., at 153, 156 (1789); Remarks on the Amendments to the Federal Constitution Proposed by The Conventions of Massachusetts, New Hampshire, New York, Virginia, South and North Carolina, with the Minorities of Pennsylvania and Maryland by the Rev. Nicholas Collin, D. D., 6 id., at 303, 303.

²⁶ Some scholars suggest that Webster’s “close proximity to the Con- stitutional Convention coupled with his familiarity with the delegates makes it likely that he played some indirect role in the development” of the Constitution’s Intellectual Property Clause—a Clause that estab- lished not only the power to create patents but also copyrights, a subject in which Webster had great interest. Donner, Copyright Clause of the U. S. Constitution: Why Did the Framers Include It With Unanimous Approval? 36 Am. J. Legal. Hist. 361, 372 (1992). But there is no direct evidence of this fact. See Walterscheid, Background and Origin 40–41.

²⁷ See, e.g., 1 S. Johnson, Dictionary of the English Language (1773) (reprint 1978) (listing as definitions of an “art”:“[t]he power of doing something not taught by nature and instinct,” “[a] science; as, the liberal arts,” “[a] trade,” “[a]rtfulness; skill; dexterity,” “[c]unning,” and “[s]peculation”). One might question the breadth of these definitions. This same dictionary offered as an example of “doing something not taught by nature and instinct,” the art of “dance”; and as an example of a “trade,” the art of “making sugar.” Ibid.

²⁸ For examples of this usage, see Book of Trades or Library of Useful Arts (1807) (describing in a three-volume work 68 trades, each of which is the means of creating a product, such as feather worker or cork cutter); 1 J. Bigelow, The Useful Arts Considered in Connexion with the Applications of Science (1840) (surveying a history of what we would today call mechanics, technology, and engineering). See also D. Defoe, A General History of Discoveries and Improvements, in Useful Arts (1727); T. Coxe, An Address to an Assembly of the Friends of American Manufactures 17–18 (1787); G. Logan, A Letter to the Citizens of Pennsylvania, on the Necessity of Promoting Agriculture, Manufac- tures, and the Useful Arts 12–13 (2d ed. 1800); W. Kenrick, An Address to the Artists and Manufacturers of Great Britain 21–38 (1774); cf. Corning v. Burden, 15 How. 252, 267 (1854) (listing the “arts of tanning, dyeing, making water-proof cloth, vulcanizing India rubber, [and] smelting ores”).

²⁹ See, e.g., 1 D. Chisum, Patents G1–23 (2010); Lutz, Patents and Science: A Clarification of the Patent Clause of the U. S. Constitution, 18 Geo. Wash. L. Rev. 50, 54 (1949–1950); Samuelson, Benson Revis- ited: The Case Against Patent Protection for Algorithms and Other Computer-Related Inventions, 39 Emory L. J. 1025, 1033, n. 24 (1990); Seidel 10, 13; see also Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 154 (1950) (Douglas, J., concurring) (explaining that in the Framers’ view, an “invention, to justify a patent, had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge”); In re Waldbaum, 457 F. 2d 997, 1003 (CCPA 1972) (Rich, J., concurring) (“ ‘The phrase “technological arts,” as we have used it, is synonymous with the phrase “useful arts” as it appears in Article I, Section 8 of the Constitution’”);Paulik v. Rizkalla, 760 F.2d 1270, 1276 (CA Fed. 1985) (explaining that “useful arts” is “the process today called technological innovation”); Thomas, The Post-Industrial Patent System, 10 Fordham Intell. Prop. Media & Ent. L. J. 3, 32–55 (1999) (cataloguing early understandings of technological arts). This view may be supported, for example, by an 1814 grant to Harvard University to create a “Professorship on the Application of Science to the Useful Arts,” something that today might be akin to applied science or engineering. See M. James, Engineering an Environment for Change: Bigelow, Peirce, and Early Nineteenth-Century Practical Education at Harvard, in Science at Harvard University: Historical Perspectives 59 (C. Elliott & M. Rossiter eds. 1992).

³⁰ See Walterscheid, To Promote the Progress 173–178; Pollack 107– 108.

³¹ These doubts ended by the time of Cochrane v. Deener, 94 U. S. 780 (1877), in which we held that “a process may be patentable irrespective of the particular form of the instrumentalities used,” and therefore one may patent “an act, or series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.” Id., at 788.

³² A skeptic of patents, Jefferson described this as “drawing a line between things which are worth to the public the embarrassment of a patent, and those which are not.” 13 Writings of Thomas Jefferson 335 (Memorial ed. 1904).

³³ See, e.g., Expanded Metal Co. v. Bradford, 214 U. S. 366, 383, 385-386 (1909); The Telephone Cases, 126 U. S., at 533–537; Cochrane, 94 U. S., at 787–788; Burden, 15 How., at 267–268.

³⁴ See also 1 A. Deller, Walker on Patents §26, p. 152 (2d ed. 1964) (A “ ‘system’ or method of transacting business is not [a process], nor does it come within any other designation of patentable subject matter”).

³⁵ Although a few patents issued before 1952 that related to methods of doing business, see United States Patent and Trademark Office, Automated Financial or Management Data Processing Methods, online at http://www.uspto.gov/ web/menu/busmethp/index.html (all Internet materials as visited June 26, 2010, and available in Clerk of Court’s case file), these patents were rare, often issued through self- registration rather than any formalized patent examination, generally were not upheld by courts, and arguably are distinguishable from pure patents on business methods insofar as they often involved the manu- facture of new objects. See In re Bilski, 545 F. 3d 943, 974, and n. 18 (CA Fed. 2008) (case below) (Dyk, J., concurring); Pollack 74–75; Walterscheid, To Promote the Progress 243.

³⁶ For examples of such usage, see The Telephone Cases, 126 U. S., at 533, and Burden, 15 How., at 267.

³⁷ See also 98 Cong. Rec. A415 (1952) (remarks of Rep. Bryson) (de- scribing, after the fact, the 1952 Patent Act, and explaining that “[t]he word ‘art’ was changed to ‘process’ in order to clarify its meaning. No change in substance was intended”).

³⁸ The 1952 Act also retained the language “invents or discovers,” which by that time had taken on a connotation that would tend to exclude business methods. See B. Evans & C. Evans, A Dictionary of Contemporary Usage 137 (1957) (explaining that “discover; invent” means “to make or create something new, especially, in modern usage, something ingeniously devised to perform mechanical operations”).

³⁹As explained in Part II, supra, the Court engages in a Jekyll-and- Hyde form of interpretation with respect to the word “process” in §101. It rejects the interpretation I proffer because the words “process” and “method” do not, on their face, distinguish between different series of acts. Ante, at 10. But it also rejects many sorts of processes without a textual basis for doing so. See ante, at 4–5, 7, 12–15. And while the Courts rests a great deal of weight on Parker v. Flook, 437 U. S. 584 (1978), for its analysis of abstract ideas, the Court minimizes Flook’s rejection of “a purely literal reading of §101,” as well as Flook’s reliance on the historical backdrop of §101 and our understanding of what “the statute was enacted to protect,” id., at 588–590, 593; see also Diamond v. Diehr , 450 U. S. 175, 192 (1981) (explaining that a “claim satisfies the requirements of §101” when it “is performing a function which the patent laws were designed to protect”).

⁴⁰ Forty years later, Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today. See State Street, 149 F. 3d, at 1375.

⁴¹ See also 145 Cong. Rec. 30985 (1999) (remarks of Sen. Schumer) (explaining that “[i]n State Street, the Court did away with the so-called ‘business methods’ exception to statutory patentable subject matter,” and “[t]he first inventor defense will provide . . . important, needed protections in the face of the uncertainty presented by . . . the State Street case”); id., at 31007 (remarks of Sen. DeWine) (“Virtually no one in the industry believed that these methods or processes were pat- enterable”); id., at 19281 (remarks of Rep. Manzullo) (“Before the State Street Bank and Trust case . . . it was universally thought that meth- ods of doing or conducting business were not patentable items”).

⁴² The Court opines that “[t]his principle, of course, applies to interpreting any two provisions in the U. S. Code, even when Congress enacted the provisions at different times.” Ante, at 11 (emphasis added). The only support the Court offers for this proposition is a 1937 opinion for three Justices, in Hague v. Committee for Industrial Organization, 307 U. S. 496, 528–530 (1939) (opinion of Stone, J.). But that opinion is inapposite. Although Justice Stone stated that two provisions “must be read together,” id., at 530, he did so to explain that an ambiguity in a later-in-time statute must be understood in light of the earlier-in-time framework against which the ambiguous statute was passed, id., at 528–530, particularly because the later statute explicitly stated that it “shall not be construed to apply” to the provision created by an earlier Act, id., at 528.

⁴³ I am not trying to “overcome” an “established rule of statutory interpretation” with “judicial speculation as to the subjective intent of various legislators,” ante, at 11, but, rather, I am explaining why the Court has illogically expanded the canon upon which it relies beyond that canon’s logical underpinnings.

⁴⁴ See also Quanta Computer, Inc. v. LG Electronics, Inc, 553 U. S. 617, 626 (2008) (“‘[T]he primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is “to promote the progress of science and useful arts” ’ ” (quoting Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U. S. 502, 511 (1917))); Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 63 (1998) (“[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology”).

⁴⁵ See generally W. Landes & R. Posner, The Economic Structure of Intellectual Property Law 13–15 (2003).

⁴⁶See, e.g., Burk & Lemley, Policy Levers in Patent Law, 89 Va. L. Rev. 1575, 1577–1589 (2003) (hereinafter Burk & Lemley).

⁴⁷ See, e.g., Burk & Lemley 1618; Carrier, Unraveling the Patent- Antitrust Paradox, 150 U.Pa. L.Rev. 761, 826 (2002) (hereinafter Carrier); Dreyfuss, Are Business Methods Patents Bad for Business? 16 Santa Clara Computer & High Tech. L. J. 263, 274–277 (2000) (hereinafter Dreyfuss); Posner, The Law and Economics of Intellectual Property, 131 Daedalus 5 (Spring 2002).

⁴⁸ C. Coolidge, The Press Under a Free Government, in Foundations of the Republic: Speeches and Addresses 187 (1926).

⁴⁹See also Pollack 75–76 (“Since business methods are ‘useful’ when they directly earn revenue, they are inherently unlikely to be under- produced”).

⁵⁰ See R. Levin et al., Appropriating the Returns from Industrial Re- search and Development, in 3 Brookings Papers on Econ. Activity 794– 795 (1987).

⁵¹ See Burk & Lemley 1618; Dreyfuss 275; see generally Carrier 821– 823. Concededly, there may some methods of doing business that do not confer sufficient first-mover advantages. See Abramowicz & Duffy, Intellectual Property for Market Experimentation, 83 N. Y. U. L. Rev. 337, 340–342 (2008).

⁵² See Burk & Lemley 1618; Carrier 826; Olson, Taking the Utilitar- ian Basis for Patent Law Seriously: The Case For Restricting Pat- entable Subject Matter, 82 Temp. L. Rev. 181, 231 (2009).

⁵³See Dreyfuss 276; Merges & Nelson, On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839, 873–878 (1990).

⁵⁴ See also Raskind, The State Street Bank Decision, The Bad Busi- ness of Unlimited Patent Protection for Methods of Doing Business, 10 Fordham Intell. Prop. Media & Ent. L. J. 61, 102 (1999) (“Interactive emulation more than innovation is the driving force of business method changes”).

⁵⁵ There is substantial academic debate, moreover, about whether the normal process of screening patents for novelty and obviousness can function effectively for business methods. The argument goes that because business methods are both vague and not confined to any one industry, there is not a well-confined body of prior art to consult, and therefore many “bad” patents are likely to issue, a problem that would need to be sorted out in later litigation. See, e.g., Dreyfuss 268–270; Eisenberg, Analyze This: A Law and Economics Agenda for the Patent System, 53 Vand. L. Rev. 2081, 2090 (2000); Merges 589–590.

⁵⁶See also J. Bessen & M. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk 46–72 (2008) (hereinafter Bessen & Meurer); P. Menell & S. Scotchmer, Intellectual Property Law, in 2 Handbook of Law and Economics 1500–1501, 1506 (M. Polinsky & S. Shavell eds. 2007). Concededly, alterations in the rem- edy structure, such as the First Inventor Defense Act of 1999, §4301 et seq., 113 Stat. 1536, codified at 35 U. S. C. §273, mitigate these costs.

⁵⁷ See generally Farrell & Shapiro, How Strong Are Weak Patents? 98 Amer. Econ. Rev. 1347 (2008); Meurer, Controlling Opportunistic and Anti-Competitive Intellectual Property Litigation, 44 Boston College L. Rev. 509 (2003); Moore, Populism and Patents, 82 N. Y. U. L. Rev. 69, 90–91 (2007).

⁵⁸ See Bessen & Meurer 176; Lessig, The Death of Cyberspace, 57 Wash. & Lee L. Rev. 337, 346–347 (2000).

⁵⁹Congress and the courts have worked long and hard to create and administer antitrust laws that ensure businesses cannot prevent each other from competing vigorously. If methods of conducting business were themselves patentable, then virtually any novel, nonobvious business method could be granted a federally protected monopoly. The tension this might create with our antitrust regime provides yet an- other reason for skepticism that Congress would have wanted the patent laws to extend to business methods.

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Cite as: 561 U. S. ____ (2010)

BREYER, J., concurring in judgment

SUPREME COURT OF THE UNITED STATES
_________________
No. 08–964
_________________
BERNARD L. BILSKI AND RAND A. WARSAW,
PETITIONERS v. DAVID J. KAPPOS, UNDER
SECRETARY OF COMMERCE FOR INTEL-
LECTUAL PROPERTY AND DIRECTOR,
PATENT AND TRADEMARK OFFICE

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT

[June 28, 2010]

JUSTICE BREYER, with whom JUSTICE SCALIA joins as to Part II, concurring in the judgment.

I

I write separately, however, in order to highlight the substantial agreement among many Members of the Court on many of the fundamental issues of patent law raised by this case. In light of the need for clarity and settled law in this highly technical area, I think it appropriate to do so.

II

1

First, although the text of §101 is broad, it is not without limit. See ante, at 4–5 (opinion of the Court); ante, at 10 (STEVENS, J., concurring in judgment). “[T]he underlying policy of the patent system [is] that ‘the things which are worth to the public the embarrassment of an exclusive patent,’ . . . must outweigh the restrictive effect of the limited patent monopoly.” Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 10–11 (1966) (quoting Letter from Thomas Jefferson to Isaac McPherson (Aug. 13, 1813), in 6 Writings of Thomas Jefferson 181 (H. Washington ed.)). The Court has thus been careful in interpreting the Patent Act to “determine not only what is protected, but also what is free for all to use.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151 (1989). In particular, the Court has long held that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable” under §101, since allowing individuals to patent these fundamental principles would “wholly pre-empt” the public’s access to the “basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U. S. 63, 67, 72 (1972); see also, e.g., Diamond v. Diehr, 450 U. S. 175, 185 (1981); Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980).

Second, in a series of cases that extend back over a century, the Court has stated that “[t]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.” Diehr, supra, at 184 (emphasis added; internal quotation marks omitted); see also, e.g., Benson, supra, at 70; Parker v. Flook, 437 U. S. 584, 588, n. 9 (1978); Cochrane v. Deener, 94 U. S. 780, 788 (1877). Application of this test, the so-called “machine-or-transformation test,” has thus repeatedly helped the Court to determine what is “a patentable ‘process.’” Flook, supra,

2

Third, while the machine-or-transformation test has always been a “useful and important clue,” it has never been the “sole test” for determining patentability. Ante, at 8; see also ante, at 1 (STEVENS, J., concurring in judgment); Benson, supra, at 71 (rejecting the argument that “no process patent could ever qualify” for protection under §101 “if it did not meet the [machine-or-transformation] requirements”). Rather, the Court has emphasized that a process claim meets the requirements of §101 when, “considered as a whole,” it “is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing).” Diehr, supra, at 192. The machine-or-transformation test is thus an important example of how a court can determine patentability under §101, but the Federal Circuit erred in this case by treating it as the exclusive test.

Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a “‘useful, concrete, and tangible result,’” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), is patentable. “[T]his Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary.” Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U. S. 124, 136 (2006) (BREYER, J., dissenting from dismissal of certiorari as improvidently granted); see also, e.g., O’Reilly v. Morse, 15 How. 62, 117 (1854); Flook, supra, at 590. Indeed, 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.” In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a

3

In sum, it is my view that, in reemphasizing that the “machine-or-transformation” test is not necessarily the sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.

III

4