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Justice John Paul Stevens on Bilski and Business Methods Patents, as text - Updated
Tuesday, June 29 2010 @ 03:00 AM EDT

Today is US Supreme Court Justice John Paul Stevens' last day on the court. He was appointed in 1975. His retirement begins today, and it seemed appropriate to highlight his concurring opinion in Bilski v. Kappos [PDF]. I think you'll enjoy it. He concurs, but in reality he thinks the decision made some glaring mistakes in judgment. He believes no business method should ever be granted a patent, and he carefully explains why, in the course of telling the history of patents in the US. I thought you'd like to know you are not alone in thinking business methods patents are absurd.

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.

Thankfully. I hope software patents will go out with the tide soon.

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.
Certainly if they take the time to read the careful and scholarly Justice Stevens, they should be cautious and narrow in their claims, but of course you know and I know, that doesn't happen in real life. In fact, the lawyer representing Bilski has already said he will be submitting the same patent application with new wording. Tony Mauro on Law.com:
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."

I'm not positive "smart" is le mot juste. The Prior Art breaks down the votes, which coincidentally or not split pretty much on ideological grounds. So now what?:
"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.
Remember, these are the same judges who will someday vote on specific cases about specific patents. How favorable is the climate now, really? So what happens if business methods are broadly allowed? Justice Stevens paints quite a picture:
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

Ah. A class of speculative schemers. You mean like the SCO Group, who in the beginning thought it had a patent or two and threatened to use them against Linux to beat down an innovative competitor, one that benefits the public and the economy? Or like Microsoft, vaguely threatening Linux, so as to force folks in fear to pay for a license on patents of unknown value, if the patents are known at all, and with a similar motive? You mean like that?

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.
I call this progress. State Street has taken it on the chin. Justice Stevens references this case, Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989), so I thought you'd like to have it handy.

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.
Either post it in a comment, or email me if you prefer. Remember that abstract ideas are not patentable either. What else do you see in software that is patentable, then?

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.

So, did you notice #s 2 and 3? See now why I wrote immediately that I saw plenty to work with going forward? I'm also happy to see that my call on State Street appears to have been correct. I was worried I'd misunderstood at first, because I saw on Patently O something saying the opposite, but now both Jason and Patently O are agreeing that State Street is effectively dead. That is, in my view, the most important and the most helpful thing to happen in the Bilski case. That is what it will be remembered for, down the road. When I think about all the pain and financial loss and block innovation that State Street caused, all the stupid patents that issued, it's a relief to know it has done as much damage as it can do.

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?
I am grinning just thinking about this.

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).

And someone responded to my challenge regarding software being math, claiming that "A word processing application is not math. A database engine is not math." Member cpetersen responded by suggesting three more questions those claiming software is not math should ask themselves:
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

patentable. In the late 1990’s, the Federal Circuit and others called this proposition into question. Congress quickly responded to a Federal Circuit decision with a stopgap measure designed to limit a potentially significant new problem for the business community. It passed the First Inventors Defense Act of 1999 (1999 Act), 113 Stat. 1501A–555 (codified at 35 U. S. C. §273), which provides a limited defense to claims of patent infringement, see §273(b), for “method[s] of doing or conducting business,” §273(a)(3). Following several more years of confusion, the Federal Circuit changed course, overruling recent deci- sions and holding that a series of steps may constitute a patentable process only if it is tied to a machine or trans- forms an article into a different state or thing. This “ma- chine-or-transformation test” excluded general methods of doing business as well as, potentially, a variety of other subjects that could be called processes.

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

business does not qualify as a “process” under §101.

I

Although the Court provides a brief statement of facts, ante, at 1–4, a more complete explication may be useful for those unfamiliar with petitioners’ patent application and this case’s procedural history.

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.

Although the patent application makes clear that the “method can be used for any commodity to manage consumption risk in a fixed bill price product,” id., at 11, it includes specific applications of the method, particularly in the field of energy, as a means of enabling suppliers and consumers to minimize the risks resulting from fluctuations in demand during specified time periods. See id., at 20–22. Energy suppliers and consumers may use that

3

method to hedge their risks by agreeing upon a fixed series of payments at regular intervals throughout the year instead of charging or paying prices that fluctuate in response to changing weather conditions. The patent application describes a series of steps, including the evaluation of historical costs and weather variables and the use of economic and statistical formulas, to analyze these data and to estimate the likelihood of certain outcomes. See id., at 12–19.

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

eligible subject matter”; and (5) whether the court’s decisions in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368 (1998) (State Street), and AT&T Corp. v. Excel Communications, Inc., 172 F. 3d 1352 (1999), should be overruled in any respect. App. to Pet. for Cert. 144a–145a.

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

moreover, that “[t]here is no suggestion in any of this early consideration of process patents that processes for organizing human activity were or ever had been patentable.” Id., at 972.

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

Before explaining in more detail how I would decide this case, I will comment briefly on the Court’s opinion. The opinion is less than pellucid in more than one respect, and, if misunderstood, could result in confusion or upset settled areas of the law. Three preliminary observations may be clarifying.

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First, the Court suggests that the terms in the Patent Act must be read as lay speakers use those terms, and not as they have traditionally been understood in the context of patent law. See, e.g., ante, at 6 (terms in §101 must be viewed in light of their “‘ordinary, contemporary, common meaning’”); ante, at 10 (patentable “method” is any “orderly procedure or process,” “regular way or manner of doing anything,” or “set form of procedure adopted in investigation or instruction” (internal quotation marks omitted)). As I will explain at more length in Part III, infra, if this portion of the Court’s opinion were taken literally, the results would be absurd: Anything that constitutes a series of steps would be patentable so long as it is novel, nonobvious, and described with specificity. But the opinion cannot be taken literally on this point. The Court makes this clear when it accepts that the “atextual” machine-or-transformation test, ante, at 12, is “useful and important,” ante, at 8, even though it “violates” the stated “statutory interpretation principles,” ante, at 6; and when the Court excludes processes that tend to pre-empt commonly used ideas, see ante, at 14–15.

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

important clue, an investigative tool, for determining whether some claimed inventions are processes under §101”). Notwithstanding this internal tension, I under- stand the Court’s opinion to hold only that the machine-or- transformation test remains an important test for patentability. Few, if any, processes cannot effectively be evaluated using these criteria.

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

that petitioners’ application is phrased broadly. See ante, at 14–15. But claim specification is covered by §112, not §101; and if a series of steps constituted an unpatentable idea merely because it was described without sufficient specificity, the Court could be calling into question some of our own prior decisions.2

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.

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III

I agree with the Court that the text of §101 must be the starting point of our analysis. As I shall explain, however, the text must not be the end point as well.

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

141, 151 (1989).3

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

argued that because “a word” in a statute “is given more precise content by the neighboring words with which it” associates, United States v. Williams, 553 U. S. 285, 294 (2008), we may draw inferences from the fact that “[t]he other three statutory categories of patent-eligible subject matter identified in Section 101 — ‘machine, manufacture, or composition of matter’ — all ‘are things made by man, and involve technology.’” Brief for Respondent 26. Specifically, the Government submits, we may infer “that the term ‘process’ is limited to technological and industrial methods.” Ibid. The Court rejects this submission categorically, on the ground that “§100(b) already explicitly defines the term ‘process.’” Ante, at 6. But §100(b) defines the term “process” by using the term “process,” as well as several other general terms. This is not a case, then, in which we must either “follow” a definition, ante, at 7, or rely on neighboring words to understand the scope of an ambiguous term. The definition itself contains the very ambiguous term that we must define.

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

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under other sections of the statute but are not relevant to §101, Flook, 437 U. S., at 588. The placement of “process” next to other items thus cannot prove that the term is limited to any particular categories; it does, however, give reason to be skeptical that the scope of a patentable “process” extends to cover any series of steps at all.

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

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So is the Court, perhaps. What is particularly incredible about the Court’s stated method of interpreting §101 (other than that the method itself may be patent-eligible under the Court’s theory of §101) is that the Court deviates from its own professed commitment to “ordinary, contemporary, common meaning.” As noted earlier, the Court accepts a role for the “atextual” machine-or-transformation “clue.” Ante, at 12, 7. The Court also accepts that we have “foreclose[d] a purely literal reading of §101,” Flook, 437 U. S., at 589, by holding that claims that are close to “laws of nature, natural phenomena, and abstract ideas,” Diamond v. Diehr, 450 U. S. 175, 185 (1981), do not count as “processes” under §101, even if they can be colloquially described as such.6 The Court attempts to justify this latter exception to §101 as “a matter of statutory stare decisis.” Ante, at 5. But it is strange to think that the very same term must be interpreted literally on some occasions, and in light of its historical usage on others.

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.

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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:

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American Patent Law and Administration, 17891836, p. 109 (1998) (hereinafter Walterscheid, To Promote the Progress).7 The governing English law, the Statute of Monopolies, responded to abuses whereby the Crown would issue letters patent, granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public. Graham, 383 U. S., at 5. The statute generally prohibited the Crown from granting such exclusive rights, 21 Jam. 1, c. 3, §1 (1623), in 4 Statutes of the Realm 1213 (reprint 1963), but it contained exceptions that, inter alia, permitted grants of exclusive rights to the working or making of any manner of new Manufacture. §6. Pursuant to that provision, patents issued for the mode, method, or way of manufacturing, F. Campin, Law of Patents for Inventions 11 (1869) (emphasis deleted), and English courts construed the phrase working or making of any manner of new manufactures to encompass manufacturing processes, see, e.g., Boulton v. Bull, 2 H. Bl. 463, 471, 492, 126 Eng. Rep. 651, 655, 666 (C. P. 1795) (holding that the term manufacture applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice). Thus, English courts upheld James Watts famous patent on a method for reducing the consumption of fuel in steam engines,8 as

16

well as a variety of patents issued for methods of synthesizing substances or building mechanical devices.9 Although it is difficult to derive a precise understanding of what sorts of methods were patentable under English law, there is no basis in the text of the Statute of Monopolies, nor in pre-1790 English precedent, to infer that business methods could qualify.10 There was some debate throughout the relevant time period about what processes could be patented. But it does not appear that anyone seriously believed that one could patent a method for organizing human activity. 545 F. 3d, at 970 (Dyk, J., concurring).11 There were a small number of patents issued between 1623 and 1790 relating to banking or lotteries and one for a method of life insurance,12 but these did not constitute

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the “prevail[ing]” “principles and practice” in England on which our patent law was based, Pennock v. Dialogue, 2 Pet. 1, 18 (1829). Such patents were exceedingly rare, and some of them probably were viewed not as inventions or discoveries but rather as special state privileges13 that until the mid-1800’s were recorded alongside inventions in the patent records, see MacLeod 1–2 (explaining that various types of patents were listed together). It appears that the only English patent of the time that can fairly be described as a business method patent was one issued in 1778 on a “Plan for assurances on lives of persons from 10 to 80 years of Age.” Woodcroft 324.14 And “[t]here is no indication” that this patent “was ever enforced or its validity tested,” 545 F. 3d, at 974 (Dyk, J., concurring); the patent may thus have represented little more than the whim—or error—of a single patent clerk.15

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

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known about particular patents only if they were well publicized or subject to reported litigation. So far as I am aware, no published cases pertained to patents on business methods.

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

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Early American Patent Law

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

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Clause included the authority to patent methods of doing business, it might not have passed so quietly.

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

law,” Chakrabarty, 447 U. S., at 316. It appears, however, that regardless of how one construes the term “useful arts,” business methods are not included.

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

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Statutory Useful Arts, 34 J. Pat. Off. Soc. 487, 493–500 (1952); see also Thomas, The Patenting of the Liberal Professions, 40 Boston College L. Rev. 1139, 1164 (1999) (“[The Framers of the Constitution] undoubtedly contemplated the industrial, mechanical and manual arts of the late eighteenth Century, in contrast to the seven ‘liberal arts’ and the four ‘fine arts’ of classical learning”). Indeed, just days before the Constitutional Convention, one delegate listed examples of American progress in “manufactures and the useful arts,” all of which involved the creation or transformation of physical substances. See T. Coxe, An Address to an Assembly of the Friends of American Manufactures 17–18 (1787) (listing, inter alia, meal, ships, liquors, potash, gunpowder, paper, starch, articles of iron, stone work, carriages, and harnesses). Numerous scholars have suggested that the term “useful arts” was widely understood to encompass the fields that we would now describe as relating to technology or “technological arts.”29

23

Thus, fields such as business and finance were not generally considered part of the “useful arts” in the founding Era. See, e.g., The Federalist No. 8, p. 69 (C. Rossiter ed. 1961) (A. Hamilton) (distinguishing between “the arts of industry, and the science of finance”); 30 The Writings of George Washington 1745–1799, p. 186 (J. Fitzpatrick ed. 1939) (writing in a letter that “our commerce has been considerably curtailed,” but “the useful arts have been almost imperceptible pushed to a considerable degree of perfection”). Indeed, the same delegate to the Constitutional Convention who gave an address in which he listed triumphs in the useful arts distinguished between those arts and the conduct of business. He explained that investors were now attracted to the “manufactures and the useful arts,” much as they had long invested in “commerce, navigation, stocks, banks, and insurance companies.” T. Coxe, A Statement of the Arts and Manufactures of the United States of America for the Year 1810, (1814), in 2 American State Papers, Finance 666, 688 (1832).

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

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subject matter. See, e.g., Graham, 383 U. S., at 9–10 (discussing Thomas Jefferson’s observations). It has been suggested, however, that “[p]erhaps this was in part a function of an understanding—shared widely among legislators, courts, patent office officials, and inventors— about what patents were meant to protect. Everyone knew that manufactures and machines were at the core of the patent system.” Merges, Property Rights for Business Concepts and Patent System Reform, 14 Berkeley Tech. L. J. 577, 585 (1999) (hereinafter Merges). Thus, although certain processes, such as those related to the technology of the time, might have been considered patentable, it is possible that “[a]gainst this background, it would have been seen as absurd for an entrepreneur to file a patent” on methods of conducting business. Ibid.

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

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should be patentable.32 Id., at 9. He drafted the 1793 Act, id., at 7, and, years later, explained that in that Act “‘the whole was turned over to the judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful,’” id., at 10 (quoting Letter to Issac McPherson, in VI Writings of Thomas Jefferson 181– 182 (H. Washington ed. 1861)). As the Court has explained, “Congress agreed with Jefferson ... that the courts should develop additional conditions for patentability.” Graham, 383 U. S., at 10. Thus “[a]lthough the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear” of adding statutory requirements of patentability. Ibid. For nearly 160 years, Congress retained the term “useful arts,” see, e.g., Act of July 4, 1836, ch. 357, 5 Stat. 117, leaving “wide latitude for judicial construction . . . to keep pace with industrial development,” Berman, Method Claims, 17 J. Pat. Off. Soc. 713, 714 (1935) (hereinafter Berman).

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

an art”); Guthrie v. Curlett, 10 F. 2d 725, 726 (CA2 1926) (method of abbreviating rail tariff schedules, “if it be novel, is not the kind of art protected by the patent acts”); In re Patton, 127 F. 2d 324, 327–328 (CCPA 1942) (holding that novel “‘interstate and national fire-fighting system’” was not patentable because, inter alia, “a system of transacting business, apart from the means for carrying out such system is not” an art within the meaning of the patent law, “nor is an abstract idea or theory, regardless of its importance or . . . ingenuity”); Loew’s Drive-In Theatres, Inc. v. Park-In Theatres, Inc., 174 F. 2d 547, 552 (CA1 1949) (“[A] system for the transaction of business, such, for example, as the cafeteria system for transacting the restaurant business . . . however novel, useful, or commercially successful is not patentable apart from the means for making the system practically useful, or carrying it out”); Joseph E. Seagram & Sons, Inc. v. Marzall, 180 F. 2d 26, 28 (CADC 1950) (method of focus-group testing for beverages is not patentable subject matter); see also In re Howard, 394 F. 2d 869, 872 (CCPA 1968) (Kirkpatrick, J., concurring) (explaining that a “method of doing business” cannot be patented). Between 1790 and 1952, this Court never addressed the patentability of business methods. But we consistently focused the inquiry on whether an “art” was connected to a machine or physical transformation,33 an inquiry that would have excluded methods of doing business.

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,

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Walker on Patents §18, p. 62 (1937).34 Citing many of the cases listed above, the treatise concluded that a “method of transacting business” is not an “ ‘art.’ ” Id., §22, at 69; see also L. Amdur, Patent Law and Practice §39, p. 53 (1935) (listing “Methods of doing business” as an “Unpatentable [A]r[t]”); Berman 718 (“[C]ases have been fairly unani- mous in denying patentability to such methods”); Tew, Method of Doing Business, 16 J. Pat. Off. Soc. 607 (1934) (“It is probably settled by long practice and many prece- dents that ‘methods of doing business,’ as these words are generally understood, are unpatentable”). Indeed, “[u]ntil recently” it was still “considered well established that [business] methods were non-statutory.” 1 R. Moy, Walker on Patents §5:28, p. 5–104 (4th ed. 2009).35

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

statutory designation of a new and useful art”).36 Thus in 1952, when Congress updated the patent laws as part of its ongoing project to revise the United States Code, it changed the operative language in §101, replacing the term “art” with “process” and adding a definition of “process” as a “process, art or method,” §100(b).

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-

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ess” was used in §101 “to clarify the present law as to the patentability of certain types of processes or methods as to which some insubstantial doubts have been expressed.” S. Rep. 1979, at 5; accord, H. Rep. 1923, at 6. And both noted that those terms were used to convey the prevailing meaning of the term “art,” “as interpreted” by courts, S. Rep. 1979, at 17; accord, H. Rep. 1923, at 17. Indeed, one of the main drafters of the Act explained that the definition of the term “process” in §100(b) reflects “how the courts have construed the term ‘art.’ ” Tr. of address by Judge Giles S. Rich to the New York Patent Law Association 7–8 (Nov. 6, 1952).

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

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of the 1952 Act, later explained that “the invention of a more effective organization of the materials in, and the techniques of teaching a course in physics, chemistry, or Russian is not a patentable invention because it is outside of the enumerated categories of ‘process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.’ ” Principles of Patentability, 28 Geo. Wash. L. Rev. 393, 394 (1960). “Also outside that group,” he added, was a process for doing business: “the greatest inventio[n] of our times, the diaper service.” Ibid. 40

“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

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that piece of legislative history to mean that any series of steps is a patentable process. Indeed, if that were so, then our many opinions analyzing what is a patentable process were simply wastes of pages in the U. S. Reports. And to accept that errant piece of legislative history as widening the scope of the patent law would contradict other evidence in the congressional record, as well as our presumption that the 1952 Act merely codified the meaning of “process” and did not expand it, see Diehr, 450 U. S., at 184.

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

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opinion below, the phrase “made by man” “is reminiscent” of a 1790’s description of the limits of English patent law, that an “invention must be ‘made by man’” and cannot be “‘a philosophical principle only, neither organized or capable of being organized’ from a patentable manufacture.” 545 F. 3d, at 976 (quoting Hornblower v. Boulton, 8 T. R. 95, 98 (K. B. 1799)).

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).

* * *

Since at least the days of Assyrian merchants, people have devised better and better ways to conduct business. Yet it appears that neither the Patent Clause, nor early patent law, nor the current §101 contemplated or was publicly understood to mean that such innovations are patentable. Although it may be difficult to define with precision what is a patentable “process” under §101, the historical clues converge on one conclusion: A business method is not a “process.” And to the extent that there is ambiguity, we should be mindful of our judicial role. “[W]e

33

must proceed cautiously when we are asked to extend patent rights” into an area that the Patent Act likely was not “enacted to protect,” Flook, 437 U. S., at 596, 593, lest we create a legal regime that Congress never would have endorsed, and that can be repaired only by disturbing settled property rights.

V

Despite the strong historical evidence that a method of doing business does not constitute a “process” under §101, petitioners nonetheless argue—and the Court suggests in dicta, ante, at 10–11—that a subsequent law, the First Inventor Defense Act of 1999, “must be read together” with §101 to make business methods patentable. Brief for Petitioners 29. This argument utilizes a flawed method of statutory interpretation and ignores the motivation for the 1999 Act.

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

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addresses “Patentability of Inventions and Grant of Patents.” Particularly because petitioners’ reading of the 1999 Act would expand §101 to cover a category of processes that have not “historically been eligible” for patents, Diehr, 450 U. S., at 184, we should be loathe to conclude that Congress effectively amended §101 without saying so clearly. We generally presume that Congress “does not, one might say, hide elephants in mouseholes.” Whitman v. American Trucking Assns., Inc., 531 U. S. 457, 468 (2001).

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

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(1999).41 The fact that Congress decided it was appropriate to create a new defense to claims that business method patents were being infringed merely demonstrates recognition that such claims could create a significant new problem for the business community.

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

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applied to different statutes.42 The 1999 Act was passed to limit the impact of the Federal Circuit’s then-recent statements on the 1952 Act. Although repudiating that judicial dictum (as we should) might effectively render the 1999 Act a nullity going forward, such a holding would not mean that it was a nullity when Congress enacted it. Section 273 may have been a technically unnecessary response to confusion about patentable subject matter, but it appeared necessary in 1999 in light of what was being discussed in legal circles at the time.43 Consider the logical implications of the Court’s approach to this question: If, tomorrow, Congress were to conclude that patents on business methods are so important that the special infringement defense in §273 ought to be abolished, and thus repealed that provision, this could paradoxically strengthen the case against such patents because there would no longer be a §273 that “acknowledges . . . business method patents,” ante, at 11. That is not a sound method of statutory interpretation.

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

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that the 1999 Congress would never have enacted §273 if it had foreseen that this Court would rely on the provision as a basis for concluding that business methods are patentable. Section 273 is a red herring; we should be focus- ing our attention on §101 itself.

VI

The constitutionally mandated purpose and function of the patent laws bolster the conclusion that methods of doing business are not “processes” under §101.

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

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Thus, although it is for Congress to “implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim,” Graham, 383 U. S., at 6, we interpret ambiguous patent laws as a set of rules that “wee[d] out those inventions which would not be disclosed or devised but for the inducement of a patent,” id., at 11, and that “embod[y]” the “careful balance between the need to promote innovation and the recognition that imitation 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. And absent a discernible signal from Congress, we proceed cautiously when dealing with patents that press on the limits of the “‘standard written into the constitution,’ ” Graham, 383 U. S., at 6, for at the “fringes of congressional power,” “more is required of legislatures than a vague delegation to be filled in later,” Barenblatt v. United States, 360 U. S. 109, 139–140 (1959) (Black, J., dissenting); see also Greene v. McElroy, 360 U. S. 474, 507 (1959) (“[D]ecisions of great constitutional import and effect” “requir[e] careful and purposeful consideration by those responsible for enacting and implementing our laws”). We should not casually risk exceeding the constitutional limitation on Congress’ behalf. The Court has kept this “constitutional standard” in mind when deciding what is patentable subject matter under §101. For example, we have held that no one can patent “laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U. S., at 185. These “are the basic tools of scientific and technological work,” Benson, 409 U. S., at 67, and therefore, if patented, would stifle the very progress that Congress is authorized to promote, see, e.g., O’Reilly, 15 How., at 113 (explaining that Morse’s patent on electromagnetism for writing would preempt a wide

39

swath of technological developments). Without any legislative guidance to the contrary, there is a real concern that patents on business methods would press on the limits of the “standard expressed in the Constitution,” Graham, 383 U. S., at 6, more likely stifling progress than “promot[ing]” it. U. S. Const., Art. I, §8, cl. 8. I recognize that not all methods of doing business are the same, and that therefore the constitutional “balance,” Bonito Boats, 489 U. S., at 146, may vary within this category. Nevertheless, I think that this balance generally supports the historic understanding of the term “process” as excluding business methods. And a categorical analysis fits with the purpose, as Thomas Jefferson explained, of ensuring that “‘every one might know when his actions were safe and lawful,’ ” Graham, 383 U. S., at 10; see also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722, 730–731 (2002) (“The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress”); Diehr, 450 U. S., at 219 (STEVENS, J., dissenting) (it is necessary to have “rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy” what is patentable).

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

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vary by the type of thing being patented.46 And the functional case that patents promote progress generally is stronger for subject matter that has “historically been eligible to receive the protection of our patent laws,” Diehr, 450 U. S., at 184, than for methods of doing business.

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

therefore can be protected with trade secrecy.50 And for those methods that occur in public, firms that innovate often capture long-term benefits from doing so, thanks to various first mover advantages, including lockins, branding, and networking effects.51 Business innovation, moreover, generally does not entail the same kinds of risk as does more traditional, technological innovation. It generally does not require the same “enormous costs in terms of time, research, and development,” Bicron, 416 U. S., at 480, and thus does not require the same kind of “compensation to [innovators] for their labor, toil, and expense,” Seymour v. Osborne, 11 Wall. 516, 533–544 (1871).52

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

hard to see how the public would be benefited by disclosure” of certain business tools, since the nondisclosure of these tools “encourages businesses to initiate new and individualized plans of operation,” which “in turn, leads to a greater variety of business methods.” Bicron, 416 U. S., at 483.

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

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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,

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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

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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

46

The constitutional standard for patentability is difficult to apply with any precision, and Congress has significant discretion to “implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim,” Graham, 383 U. S., at 6. But Congress has not, either explicitly or implicitly, determined that patents on methods of doing business would effectuate this aim. And as I understand their practical consequences, it is hard to see how they would.

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.

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_________

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.

******************************
******************************

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 agree with JUSTICE STEVENS that a “general method of engaging in business transactions” is not a patentable “process” within the meaning of 35 U. S. C. §101. Ante, at 2 (STEVENS, J., concurring in judgment). This Court has never before held that so-called “business methods” are patentable, and, in my view, the text, history, and purposes of the Patent Act make clear that they are not. Ante, at 10–47. I would therefore decide this case on that ground, and I join JUSTICE STEVENS’ opinion in full.

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

In addition to the Court’s unanimous agreement that the claims at issue here are unpatentable abstract ideas, it is my view that the following four points are consistent

1

with both the opinion of the Court and JUSTICE STEVENS’ opinion concurring in the judgment:

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

at 589.

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

“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. See ante, at 16; ante, at 2, n. 1 (STEVENS, J., concurring in judgment).

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

With these observations, I concur in the Court’s judgment.

4


  


Justice John Paul Stevens on Bilski and Business Methods Patents, as text - Updated | 708 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Boulton & Watt had a patent on the crank.
Authored by: Anonymous on Tuesday, June 29 2010 @ 03:14 AM EDT
That held back progress too.

[ Reply to This | # ]

Corrections
Authored by: ETian on Tuesday, June 29 2010 @ 03:25 AM EDT
Remember to put you correction in the title. For example:
Korekt-->Correct

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Off topic here please
Authored by: tiger99 on Tuesday, June 29 2010 @ 03:25 AM EDT
Please remember the clickies, and remember to use HTML mode when necessary.
Preview is your friend.....

[ Reply to This | # ]

Newspick discussions here please
Authored by: tiger99 on Tuesday, June 29 2010 @ 03:27 AM EDT
Please remember to mention which Groklaw Newspick item you are referring to in
the title of your post. You may also wish to make a clicky, so that when the
newspick scrolls down off the page it is still easily accessible.

[ Reply to This | # ]

COMES comes here....
Authored by: tiger99 on Tuesday, June 29 2010 @ 03:30 AM EDT
For people who can contribute to conversion of some of the scanned documents to
HTML. See previous examples for how it is done.

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text
Authored by: Anonymous on Tuesday, June 29 2010 @ 03:33 AM EDT
PJ

When do you ever rest ? :)

Also that mind of yours must be starting to fill up with an incredible amount of
data. Becareful as that may slow your memory recall greatly as you age :)

Said in admiration of your tireless efforts by someone else with a lifetime of
data cluttering his brain :)

DSM

[ Reply to This | # ]

What is the legal impact of this?
Authored by: Anonymous on Tuesday, June 29 2010 @ 04:56 AM EDT

While I believe Steven's opinion to be a fine piece of work, I am having some
trouble.

First of all - if 4 judges (Steven's opinion) join him, and a fifth (Sotomajor)
also agrees Business Methods cannot / should not be patentable - why did the
court not just rule so?

Secondly - What kind of impact does this big minority opinion have? Can a lawyer
use this opinion in a different case to say "This is how I believe the
court should rule" even when the opinion is not controlling?

[ Reply to This | # ]

Farewell, Justice John Paul Stevens
Authored by: Anonymous on Tuesday, June 29 2010 @ 05:17 AM EDT
I am not surprised at the position taken by Stevens, as compared to the majority
opinion. I'm very sorry to see Stevens leaving the Court - but he has served
long and well.

[ Reply to This | # ]

Told you!
Authored by: Ian Al on Tuesday, June 29 2010 @ 07:13 AM EDT
"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."

Search for: Translation for Non-lawyers

---
Regards
Ian Al
SCOG, what ever happened to them? Whatever, it was less than they deserve.

[ Reply to This | # ]

  • Told you! - Authored by: Anonymous on Tuesday, June 29 2010 @ 12:25 PM EDT
Data Structures Are Not Algorithms....
Authored by: Anonymous on Tuesday, June 29 2010 @ 08:05 AM EDT
Playing devil's advocate, you said "show me something in software that is
not an algorithm". Data structures, upon which algorithms operate, are not
algorithms themselves. A properly designed data structure is critical to the
elegance and robustness of a software program.

Is it patentable? My personal opinion is that software is not patentable, so
any subset thereof is also not. I just decided to rise to the challenge and see
what other folks think.

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text
Authored by: Anonymous on Tuesday, June 29 2010 @ 08:37 AM EDT
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.
That's exactly the practical problem with software patents -- except that the second option, searching for patents that describe software and trying to match them to what your program is doing, is nearly impossible and would be prohibitively expensive for all but the very largest of software companies. Programmers, small businesses, open source projects, are all endangered by software patents that do nothing but hinder and chill innovation. They are a Sword of Damocles hanging over our heads.

A team of 50 programmers can write thousands of lines of code every day, using dozens of algorithms (either snagged from textbooks or just discovered on the spot). The code produced by those programmers every single day potentially infringes hundreds of software patents, if they are held to be valid (which currently requires months or years of litigation, costing millions of dollars, to determine). Any large software product potentially infringes thousands, even tens of thousands of software patents. And any of those patent holders might come along at any time and hold your business hostage through litigation.

This state of affairs has been aptly described as "patently ridiculous".

Its a shame the Supreme Court didn't take the near-ideal opportunity presented by Bilski to rid the software industry of this ball-and-chain. Then we might have seen some real innovation over the next ten or twenty years!

[ Reply to This | # ]

en.swpat.org info
Authored by: ciaran on Tuesday, June 29 2010 @ 09:18 AM EDT

Here's what I've gathered about Justice Stevens:

It's a pity he's going, but it's encouraging that his opinion was joined by Ginsburg, Breyer, and Sotomayor. The latter is particularly good news - many of us were worried about what she might think about patents. Unfortunately, there have been rumours in the past months that Ginsburg will be next to retire, so we could lose two of those good four judges.

Other related info:

[ Reply to This | # ]

No sanction, no point
Authored by: Anonymous on Tuesday, June 29 2010 @ 09:28 AM EDT
Did I blink and miss the part where Bilski was sanctioned and Kappos awarded
costs?

No?

Then the judgement is nearly irrelevant, and the commentary entirely so, as
there is still no disincentive to file ridiculous patents and use them to
blackmail innocents.

Bilski's declaration that they will simply make cosmetic modifications and kick
off another round of shake-downs demonstrates that beyond any possible doubt.

[ Reply to This | # ]

Patentable Software
Authored by: MDT on Tuesday, June 29 2010 @ 09:58 AM EDT
The only patent I could see being valid for software would be if someone managed
to make a true AI. That would be unique, and not something that can be done by
an average programmer in the business. Even the best and brightest haven't
managed it, so to me that would be patentable.

Anything else is just grunt work and logical application of tools taught in any
college course.

Disclaimer: Professional Programmer.

---
MDT

[ Reply to This | # ]

Justice John Paul Stevens' Concurring Opinion
Authored by: Ian Al on Tuesday, June 29 2010 @ 09:58 AM EDT
Accordingly, while I concur in the judgment, I strongly disagree with the Court’s disposition of this case.
He goes right back to the history of crown grants and the fact that abuse by the crown was the reason for restricting grants of crown patent.

All the way through he sticks to the conclusion that, from the early restriction of applicable crown patent award material, through the industrial age and to the present, business methods are not awarded patents.

He notes that, after 150 years of technological advance, the courts decided to hint that business processes might be patentable. Congress panicked and passed a statute outlining a defence to mitigate this gross subversion of the constitution. The courts then claimed this as Congress giving Business Process Patents the seal of approval.

It is a magnificently greater work than was ever necessary to concur with the court opinion. He has defined what the Constitution, Congress and the law means when it deals with patents.

Contrary to tradition, he has given us a leaving gift. He has given us the arguments to be made in law about patents together with the citations going back to the birth of the nation and beyond to back that up. If we cannot show that software cannot in law be given a patent award with the help of this gift then it probably cannot be shown.

Because of the length, I have posted a string of extracts in the order they appear in the opinion. I find that most of them are just as applicable to software patents as they are to business patents.

My question is how much weight does this opinion hold for future litigation since it rejects the disposition of the case?

---
Regards
Ian Al
SCOG, what ever happened to them? Whatever, it was less than they deserve.

[ Reply to This | # ]

Betting on the weather
Authored by: Anonymous on Tuesday, June 29 2010 @ 10:14 AM EDT
This might actually be a much better way to arrive at forecasts. There are
several methods now that deal with incomplete or uncertain information. They
usually combine several opinions or like Delphi iterate until consensus is
reached. With disinterested parties making the forecasts They have no incentive
to get it right. If it was the bookies putting money behind the forecasts there
would be more incentive to get it right, or forecasts wold get very vague.
There will be periods of sun and cloud with darkness beginning in the evening,
possible precipitation. This forecast covers the northern hemisphere. Check
specific marine or aeronautical forecasts for local conditions.

[ Reply to This | # ]

The real encouragement is...
Authored by: TemporalBeing on Tuesday, June 29 2010 @ 02:00 PM EDT
Stevens did an excellent job in writing his opinion; and the really encouraging
part is that he very blatantly rebuffs abstract ideas as being patentable, and
even suggests that business methods (and other things) can and perhaps should be
removed from patent-ability on that aspect alone - going to great length to show
why they are abstract ideas.

Hopefully USPTO will pick up on that and reject anything Bilski tries to
re-submit with, as well as most other business/software/etc patent applications.

[ Reply to This | # ]

The Good - Thoughts not patentable
Authored by: kawabago on Tuesday, June 29 2010 @ 02:24 PM EDT
The Bad - The entertainment industry owns the copyright to your thoughts.

[ Reply to This | # ]

Every Process is an algorithm - Where did you get the impression that they can't be patented?
Authored by: Anonymous on Tuesday, June 29 2010 @ 03:52 PM EDT
--since algorithms are not patentable subject matter--

Where did you get that idea? Every process, even a process for making a drug,
is an algorithm. What makes you think process/algorithms are not patentable?

[ Reply to This | # ]

Patents Vs. Copyright
Authored by: Cypher3c on Tuesday, June 29 2010 @ 08:11 PM EDT
IANAL, but it seems to me that software is more akin to a literary composition
than a mechanical device. It is simply an expression of a technique in a
language understood by computers.

For example, if I write a song in French and create a new style of composition
in the process, I hold a copyright on the song. I cannot get a patent on 'the
arrangement of
ideas according to style X (and with the intention of producing listener
reaction Y).'

Therefore, why is it that if I write a computer program in C++ to accomplish a
new task (which is then translated to machine code), I can patent 'the
arrangement of computational methods according to (and with the intention of
accomplishing) method Z'?

Why should someone be able to patent a "method" of accomplishing
something in software when its implementation can be copyrighted?

It does not promote innovation to permit someone to patent the double-click, for
example. It simply prevents anyone else for using the technique. However, if
someone rips off their code or "paraphrases" it, then they should be
liable under copyright law. This would not restrict development.

I may be rehashing stuff found in other threads, but I just wanted to put it
together to see what others think.

[ Reply to This | # ]

This Ruling Steers Us Straight by Excluding Off-point Analyses . . .
Authored by: Differance on Tuesday, June 29 2010 @ 09:11 PM EDT

While some are disappointed in this ruling in terms of how it might relate to
software patents, I see it as promising in that connection. It simply forces the
argument against software patents to be based on their being abstract ideas. By
finding the machine-or-transformation principle not sufficient and by not
finding an exclusion on business method patents, the court actually pushes us to
making the right point regarding software patents.

Software patents are patents not just on abstract ideas, but on *pure* abstract
ideas. By pure I don't mean "extremely" -- I mean "independent of
empirical facts or particulars," like math.

The general purpose logic processor does *pure* logical operations; it follows
that the instructions provided to that processor are likewise *pure* logic. What
translates a pure logical algorithm or process to something of specific use is
the devices you attach to the logic processor; it is in principle perfectly
conceivable that the exact same set of logic instructions could control entirely
different processes, just depending on what devices you attach. And while
higher-level, human-readable code uses language that humans can relate to
specific things or uses in the empirical world (variable names like
"PartNo" or "EmployeeID" or "Chemical1Proportion,"
or function names like "InitiateStirring" or
"TurnOnBlender"), at bottom the compiled code is a pure logical
abstraction.

The point is, the software is in principle not patentable, though it may be the
case that a particular empirical process that that code is being used to
control, is patentable. But what decides that is the empirical process as such,
not the pure algorithm that the code expresses.

Note that interestingly, this ruling may also undermine the European
"computer-implemented inventions" formula, since it disallows the
machine-or-transformation test as solely determining the question, and then it
specifically resorts to the abstract idea exclusion. Note also that the Court
states that its ruling should not be construed as endorsing the Federal
Circuit's past interpretations of patentable subject matter under section 101.

So I see this ruling as simply excluding the easier resolution to the software
patent issue (an approach not really on point and not really addressing the
nature of the issue of software patents) that sees software patents becoming
untenable along with business methods, as well as the notion that what makes
something patentable is that it is a machine or a transformation.

What makes software unpatentable is not really directly related to either of
those points, but rather to the fact that it is *pure* abstraction. You don't
have to say patents only cover machines and transformations to eliminate
software patents. Instead, all you have to do is show that software is always
abstract because the nature of the logic processor is inherently pure -- it
deals only in bits/numbers and logical and methematical operations and
algorithms -- and when one says those numbers and algorithms are meant to refer
to something more, what you're really saying is that there's also an empirical
process, alongside the pure code, which is the actual process which may be
patentable or not.

[ Reply to This | # ]

What is a process
Authored by: Anonymous on Tuesday, June 29 2010 @ 10:26 PM EDT
Oh how I wish it were as simple as defining "process" as it was
intended at the time the controlling law and statutes were written-

Process, in context with the other patentable machinery in the same phrase,
refers to a physical transformation, for example, to process corn into ethanol,
or to process raw rubber into its vulcanized state.

Ah, if only...

--Jpvlsmv (not logged in)

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text
Authored by: Anonymous on Wednesday, June 30 2010 @ 08:52 AM EDT
PJ

You are welcome, of course. And thanks, too, to my co-authors,
Mike Meurer, Eric Maskin and Bob Hunt (uncited here).

Jim Bessen

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text
Authored by: dwiget001 on Wednesday, June 30 2010 @ 10:02 AM EDT
"...
If only -today- one would have to convince the head of state
before a patent could be granted.... That would put a bit of
a limit upon the number of patents granted ;-)"

Uh, no.

It would actually increase the number of patents, as the head of state could,
*cough* suggest *cough*, that granting the patent would almost be assured for a
sizable campaign donation.

[ Reply to This | # ]

IBM vs TurboHercules - Bounds on patent enforcing
Authored by: Anonymous on Wednesday, June 30 2010 @ 10:14 AM EDT
If software isn't patentable because it's an algorithm, then should IBM's patent
be enforceable against the algorithm that emulates IBM's hardware?

Emulators are pieces of software that mimic existing machines. The machines may
be patentable, but the arguments against software patents should be applicable
to the emulators too, thus I don't see why IBM's patents should be enforceable
against software but at the same time software should not be patentable. It's
likely that I'm missing something, and I'd like to know what.

[ Reply to This | # ]

The pyramid analogy has it upside down.
Authored by: Anonymous on Wednesday, June 30 2010 @ 11:32 AM EDT
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

While *knowledge* may be seen as top-down, patents are limits on bottom-up growth. Or in the analogy above, downward growth, resulting in smaller pyramids or just isolated blocks left hanging in mid air.

Here's why:

Patents are written to be broad and somewhat ambiguous as to what they cover, thus 'paving' a large area at the base of the pyramid. Construction upward (i.e. innovation) becomes possible only by way of patent licensing.

Thus the outcome will become huge swaths of the landscape being paved over, but useful only for the patent holder or licensees to build on. Patent restrictions mean little building beyond the foundation will occur. At best, a layer or two may arise, but few, if any, towering edifices will be constructed. Patents serve to truncate any upward building.

Indeed, the only way to build is to pave yet more of the landscape around the edges or elsewhere, which will crowd out still more valuable terrain (the idea/innovation landscape). We could see whole continents of subject matter paved over and kept unbuildable by relatively few patent holders. (Think genome patents.)

The open source model, on the other hand, *encourages* upward building on the original foundation...a model much more conducive to creating monumental structures.

Our current patent model is useful only for parking lots, not pyramids.

[ Reply to This | # ]

correction: Justice Scalia's postion on business method patents
Authored by: IANALitj on Wednesday, June 30 2010 @ 03:19 PM EDT
PJ writes (the fourth sentence of her second paragraph): "Even Justice
Scalia, in a separate concurring opinion written by Justice Breyer, agreed that
business methods should not be granted patents."

I don't think so. Justice Scalia joined Part II of Justice Breyer's opinion.
This does not reject business method process patents. Justice Breyer's outright
rejection of business method process patents is in Part I of his opinion, which
Justice Scalia did not join.

If Justice Scalia had joined justices Stevens, Ginsburg, Breyer and Sotomayor in
rejecting all business method process patents, there would have been five votes
for that position. We would be hearing loud rejoicing on Groklaw, despite there
being no determination as to software patents. There would be no suggestions
that Bilski would try again with a rewritten application.

I was tempted to put this comment in the corrections section.

[ Reply to This | # ]

If Bilski would try again with a rewritten application
Authored by: Anonymous on Wednesday, June 30 2010 @ 07:52 PM EDT
What if Bilski would keep try again and again with rewritten applications and it
ends up getting rejected each time it goes to the supreme court? Then do you
think the judges that allowed patents on business methods would realize the
problem when they get the same patent thrown back at them all dressed up in a
different Halloween costume? If not then Bilski can just keep rewording and
coming back again and again like a zombie from the living dead and for that
matter any software patent rejections can do the same. Is the supreme court then
going to become the USPTO examiner of all patents for those that do not give up
and continue to appeal?

[ Reply to This | # ]

Newspics: MTV denies....
Authored by: vadim on Thursday, July 01 2010 @ 07:27 AM EDT
The link points to a wrong pleace

[ Reply to This | # ]

Show something in code that is not an algorithm
Authored by: Anonymous on Thursday, July 01 2010 @ 05:41 PM EDT
On one level, of course, you can't, because everything there has to be expressed
in an algorithm, or it isn't in the software.

And yet...

What's patentable? A "process, machine, article of manufacture, or
composition of matter". Let's think about "composition of
matter" for a minute. A new element is not patentable - it's a fact of
nature. But how far does it have to be removed from that to be patentable?

Is a new chemical compound patentable? IANAL, but I think it is not; if it was,
we'd have far more patents than we do. Again, one can make the "facts of
nature" argument.

How about a new recipe for making steel? That I believe is patentable. But one
could again say "fact of nature" - that those atoms, combined in those
proportions, and with those heat treatments applied, will produce those results,
by the laws of physics. But we've come far enough from raw physics that we're
more into engineering territory.

Can the same be said of software, that there comes a point where it crosses from
mathematics to engineering? LZW was a significant breakthrough, in a way that
seems to me to be significantly beyond "pure math". Is the security
architecture of an OS merely mathematics? (It's called "architecture"
for a reason - it's design, not just math.)

I would say that the "it's all just algorithms" argument is a reductio
ad absurdum that, in the end, no other area can meet either. Because in those
areas, "it's all just atoms". But unless the argument becomes that
nothing is patentable, in any field, then the argument doesn't work for
software.

Further: What do you do with an algorithm encoded in an FPGA, instead of in
software? It's the same algorithm, but now it's in hardware. Well, the FPGA
gets loaded from a file or a ROM or something. All right, what if it's in the
form of a custom ASIC? It's still the same algorithm, but now it's implemented
out of custom gates rather than in a CPU. But now we get to the point where a
new, more-efficient barrel shifter, say, is probably not patentable because it
can be described as an algorithm.

So I think my conclusions are that the current law in insanely wrong, but the
"no software patents" position is also wrong. But I can't say what's
right. There's a reasonable dividing line somewhere, but I haven't figured out
what it is.

MSS2

[ Reply to This | # ]

Yes, I did notice #2
Authored by: Anonymous on Thursday, July 01 2010 @ 06:10 PM EDT
> Abstract ideas likely include [...] methods that can be reduced
> to a mathematical formula

The value of "likely" will be assessed by twelve good men in each
state, then re-assessed in every Circuit Court, and the delta value
will be handed to SCOTUS who still won't know what to do with it.

[ Reply to This | # ]

Patents meet copyrights [promote the progress, free speech, software, etc]
Authored by: Anonymous on Thursday, July 01 2010 @ 06:31 PM EDT
Patents are all abstractions. Unlike with copyrights, the specific work is never
available (ie, an embodiment of the invention is never included). In further
contrast to copyrights, the author is tasked with defining what it means to be
infringing; the patent author defines the scope of infringement around the
hypothetical specific work using English abstractions called patent
"claims".

Copyrights also are abstract. Unlike patents, copyrights that are based on
writings are linked to an exactly defined work. Like patents, even when attached
to a specific work, copyrights infringement goes further through wide-reaching
"derivative works" interpretations (this is the main sense in which
they are abstract); however, copyright infringement scope is essentially
determined by the courts and not by the author. Additionally, there are
mandatory very important exceptions to copyright infringement though "fair
use" and independent 're-invention" free speech exceptions.

Thus patents are broader, potentially much broader depending on the skill of the
patent author+lawyer team in crafting claims, and provide no exceptions at all
from infringement.

In addition to this, patents are much more costly to acquire. They aren't
automatic nor $0 as is the case for copyright.

The one area where copyright goes further is in duration; however, 20 years is
still an awfully long time in the lifetime of contemporaries.

Now, copyright law (in contrast to patent law) was designed and created to be
much less inhibiting towards society's individual competing creators because it
has generally been applied in areas where there is a lot of competition. We must
remember that monopolies come with immediate liabilities. The more potential
competition that could exist, the greater the opportunity costs from a monopoly;
that is, the costs to a monopoly are directly proportional to the total number
of people that are hand-cuffed. And more, this opportunity cost (on a per
individual basis) is higher when dealing entirely with non-scarce resources
(like intellectual content) that would otherwise be infinitely replicable and
hence available at the "speed of light", to any and all, for all time,
and simultaneously. Making copyright even less restrictive is that it also
acknowledges freedom of speech and general liberties via independent reinvention
and fair use exceptions. We don't want monopolies that affect creators fairly
negatively to be too powerful (if exist they will).

Patent monopolies, though much less friendly than copyright monopolies, could
potentially be an asset to society where you have quite few authors/inventors
that would be hand-cuffed significantly. [We'll note that patented inventions
traditionally have not been amenable to be shipped in the mail to the USPTO or
to anyone that wants to study the patented invention.] One reason competition in
traditionally patented inventions is much less than with copyrighted inventions
is that, unlike intellectual content, traditionally patented material are costly
to manufacture and distribute, involve limited resources, and involve dealing
with the limitation mother nature exacts on physical objects (ie, costly in time
and energy as well as in money). All of these things mean that the opportunity
costs of an unexpectedly narrow patent monopoly would be much lower than for a
copyright of the same scope because many fewer people would be effectively
affected negatively (at least directly). Thus, with fewer creators "playing
the game" we can allow patents to be broader and have fewer exceptions
before expecting the costs to society to match that of copyright. The assumption
here is that the directly gagged and hand-cuffed creators (via the monopoly) are
much lower in number (and would achieve much less and much less quickly) vs.
copyrights and that the patent scope is not exaggerated (not "overly"
broad in relation to an analogous "derivative works" definition).

A few words about software: Software, like any written composition (including
sheet music or mathematics), is an exact item absolutely defined in terms of
embodiment. Software goes further than many types of written compositions in
that it has a very precise and essentially unambiguous meaning [digital
computers and most devices used today don't tolerate fuzziness in
implementation.. the instruction stream that is software is as precise as
numbers and several basic, unambiguous, mathematical functions -- and the
hardware technology used to run the software implements the ideal model
extremely closely thanks to gains in digitalization]. Additionally, software
leverages a super powerful computing system. This allows human authors to go
much further than they can through ordinary mathematical modeling limited by
their own minds and primitive tools. Together with visual displays and sound
producing equipment, software allows the author to bring to life virtual
realities much more vividly than could any fiction writer (each unlimited by
mother nature) and much more inexpensively than could a traditional film
producer.

We can clearly see that software: intellect only (infinitely reproduceable at $0
and unbound by mother nature), absolutely precise, very much like mathematics or
like literature (both, in alike and in different ways), accessible to all
citizens for many of these reasons, etc, is virtually designed to be controlled
by copyright law but not at all by patent law.

And a final note is that "promoting the progress" has been a key
criteria above, even if not mentioned directly or defined precisely. The
question of whether progress is promoted or not is directly impacted by the
total number of inventors affected negatively and accumulatively by how much
(ie, by the total opportunity costs to having no monopoly). We should all
remember that no one invents in a vacuum. If everyone was allowed to get a $0
automatic patent, we'd quickly see that most patent authors would be infringing
on many others and could not define anywhere near the broad scopes they define
for their inventions today. Monopolies on thoughts are a bad idea, certainly if
we don't stay within very careful bounds. Patents on software is very stifling
for this reason. [And it's unfair because of the great bias towards, not just
today's generation doing the land grab, but towards the wealthy that can attempt
to patent a sizable portions of ideas they have or come across (eg, that are not
being patented by others) as well as towards those that prefer to spend time
with lawyers writing patents and looking at other's inventions rather than
filling in the very important and large number of details and creative solutions
needed in actually create and perfect their composition.]

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text - Updated
Authored by: Anonymous on Thursday, July 01 2010 @ 07:48 PM EDT

The Justices were understandably nervous about doing something that would bring
and end to medical devices, advanced modeling techniques, etc. The problem is
that they fear (or assume) that patents are the reason those exist.

To the contrary, if mathematicians used patents, we would find fewer techniques
and inventions in existence. Similarly, by freeing the ability for anyone to
create and improve algorithms used within medical machinery, we end up with
better tools and faster. In fact, it's been shown that closed source software
(including within electronic tools) can definitely have more errors within them
than is characteristic of open source. [Not to mention the hospitals that use
Windows and end up having their networks go down.]

Anything that many people could otherwise help improve, should never be allowed
to be patented. Personally, all patents might be a net liability, but in some
cases the call is easy to make -- don't allow patents when we deal mostly with
information content. Perhaps allow patents involved in creating new expensive
products (where most people don't have a way to improve such things). Better
than any patents is to just have copyright and define "derivative
works" suitably for the various classes of products (eg, for steel
processing).

Stifling is never good, but we should not kid ourselves: monopolies are a
hand-cuff; they do nothing but take away rights from "billions" of
humans (in the hope that this motivates some to work harder to somehow make up
for the losses from the "billions" or to take extra risks presumably
need to be taken and which otherwise would not be taken within 20 years by the
"billions", even cumulatively).

[ Reply to This | # ]

But this fact does not mean that ... innovations such as ... programs are ... unpatentable
Authored by: Anonymous on Friday, July 02 2010 @ 07:18 AM EDT
From Bilski:

Read 'em and weep

But times change.Technology and other innovations progress in unexpected ways.
For example, it was once forcefully argued that until recent times,
“well-established principles of patentlaw probably would have prevented the
issuance of a valid patent on almost any conceivable computer program.” Diehr,
450 U. S., at 195 (STEVENS, J., dissenting). But this fact does not mean that
unforeseen innovations such as computer programs are always unpatentable.

[ Reply to This | # ]

USPTO too cozy with titans of industry may lead to backlash
Authored by: Anonymous on Friday, July 02 2010 @ 08:57 AM EDT
Today, many citizens are expressing a general dissatisfaction with industry and
its government regulators being too close.

Note, for example, how some of the problems in the Gulf came about from lax
regulations and permits, and how some of the giant oil companies decided to band
together and place the blame, away from regulators, firmly on the shoulders of
BP.

Will we see this anger from citizens get directed towards the USPTO as well (eg,
if their open source freebies get threatened)?

I think open source supporters need to spread the message of how the patent
system needs to be cut down in size at least some, and in particular, we should
try to educate the public about the particularly nasty, unfair patent bullets
that have been aimed at software but which we have been able to dodge so far.

With freedom, come freebies and opportunities. We need freedom.

[ Reply to This | # ]

Justice John Paul Stevens on Bilski and Business Methods Patents, as text - Updated
Authored by: proceng on Friday, July 02 2010 @ 10:38 AM EDT
I have mentioned several times on this site that there are some patents that should be accepted. When I do, I mention Speech Recognition. There is a difference between a PHOSITA seeing a solution that is obvious (search for "patent" and "linked list" in the same term) in regards to something that everybody says cannot be done.

Some things (even software) can and should be patented. Some things (we have seen some egregious examples) should not.

We need to figure out how to fix the problem, not discard it.

---
And ye shall know the truth, and the truth shall make you free.
John 8:32(King James Version)

[ Reply to This | # ]

Show me...
Authored by: Anonymous on Friday, July 02 2010 @ 04:29 PM EDT
"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."

OK - here goes... All software is NOT math - contrary to what a few narrowminded
individuals might think. A word processing application is not math. A database
engine is not math.

All data processing is broken down into three phases:
Input-Processing-Output. The input and output phases will involve very little
math, if any.

The difference between a computer and a calculator is that a computer is able to
perform comparisons and make decisions based on those comparisons.
To be sure, there are such things as "programmable calculators" that
give limited ability to store mathematical algorithms and forumlae, but that
does not make such the same as computers.

One type of software that is, and should remain, patentable is
"control" software. This is the sort of software that interfaces and
directly controls hardware (through sensors, rotors, and other similar
electro-mechanical means.)

Another area is one briefly touched on by another poster: speech recognition.
Speech recognition has very little to do with math per se and much more to do
with pattern recognition (doing comparisons and making decisions based on those
comparisons.)

Another area is codes and encryption (two very different things that many of the
less-educated confuse). Creating a codebook has nothing to do with math, but
software handling the code substitution is made more, or less, efficient by the
lookup mechanisms used.

[ Reply to This | # ]

Bonito vs Thunder: surprised Florida didn't use copyright
Authored by: vortex on Saturday, July 03 2010 @ 08:10 AM EDT

I'm surprised, in reading the Bonito boats vs Thunder craft boats case, that the Florida judiciary didn't simply dress up its restriction on moulding as a "copyright on hull shape" law, to avoid having the statute conflict with federal patent law.

What they were essentially trying to do was protect against copying; and copyright is the natural instrument for that. Of course, there might be some restriction in federal copyright law that precludes them doing so – but, in that case, they should have recognised that they weren't going to get past the Supremacy Clause. So, odd.

I'm correspondingly surprised that Bonito boats didn't try to argue that the statute constituted a copyright on hull designs and, as such, should have stood or fallen under its interaction with copyright law, rather than with patent law. They were, after all, asserting a complaint that Thunder craft had copied their work; this complaint claims a copyright-like protection for their design, more than a patent-like protection, as the court construed it.

---
Finally – the SCO group saga's end game.
Break out the pop-corn, sit back and watch the fire-works.

[ Reply to This | # ]

Any program on a computer is math.
Authored by: jjock on Saturday, July 03 2010 @ 04:52 PM EDT
My thoughts on the way to prove this, would be to get a copy of
a machine language programing book written for one of the old
8 bit machines like the C-64. The book I am specifically thinking
of, is Machine Language Programing on the C-64, by Jim
Rutherford. This book shows for a certainty that computer
programing is math, because it gets right down to the nitty
gritty of poking specific numbers into specific addresses and
then running the program.

The newer languages such as C, and the successors of C, do
nothing more than to automate this mechanical process by
collecting sets, or patterns, of these specific entries and giving
them human recognizable names.

There was a magazine called Compute, that over a period of
years in the 80s, published many machine language programs,
such as an excellent word processor, database, and
spreadsheet programs. All of these programs were machine
language programs, ie., they were not just compiled code.
PJ, I hope this is what you meant by showing examples. The
book by Jim Rutherford is Machine Language for the
Commodore 64 and other Commodore computers.
ISBN 0-89303-652-8
Bob

[ Reply to This | # ]

USPTO's New Strong Presumption Against Abstract Ideas
Authored by: Differance on Wednesday, July 07 2010 @ 05:11 PM EDT

See what I mean? Bilski simply forces us to address the question in terms of
abstract ideas. And the USPTO is now taking that seriously:

USPTO, post-Bilski:

http://diffbot.com/read/451169/1977394454

[ Reply to This | # ]

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