Let's start here, the official bios of the justices that serve on the U.S. Court of Appeals for the Federal Circuit, the court that just rendered the ruling in In Re Bilski [PDF]. It will help us to understand their point of view, and that will make us more effective in responding. You'll have to make an effort to look at things from a different angle, since most of us feel so strongly that software patents are a curse on development and innovation. But it's worth it to try, if only so as to formulate arguments that can be effective in trying to help them, and those who think as they do, to realize that there is something new in the patent world, a development model that depends not on closing others out but on collaboration and shared science.
The first thing you probably noticed in the ruling was that not all the judges thought identically. Two justices strongly dissented, two answered their points in a concurring decision, and one felt that the court didn't go far enough and should have just decided that business methods could never be patented.
Look on the bios, though, at the backgrounds of these judges. These are not Generation Y-ers. Here's when each was appointed and by which president:
PAUL R. MICHEL was appointed as a Circuit Judge to the United States Court of Appeals for the Federal Circuit by President Ronald Reagan in 1988.
- DANIEL M. FRIEDMAN was nominated by President Jimmy Carter as Chief Judge of the United States Court of Claims on March 22, 1978, was confirmed by the Senate on May 17, 1978, and assumed duties on May 24, 1978.
PAULINE NEWMAN was appointed by President Ronald Reagan in 1984.
GLENN L. ARCHER, JR. was nominated by President Ronald Reagan and assumed duties as Circuit Judge on December 23, 1985.
HALDANE ROBERT MAYER was appointed by President Ronald Reagan in 1987, and served as Chief Judge from 1997 to 2004.
S. JAY PLAGER was appointed Circuit Judge by President George H. W. Bush in 1989, and assumed the status of Senior Circuit Judge in 2000.
ALAN D. LOURIE was appointed by President George H. W. Bush in 1990.
RAYMOND C. CLEVENGER, III was appointed by President George H. W. Bush in 1990.
RANDALL R. RADER was appointed to the United States Claims Court by President George H. W. Bush in 1989 and served on that court until his appointment to the Federal Circuit in 1990.
ALVIN A. SCHALL was appointed by President George H. W. Bush in 1992.
WILLIAM C. BRYSON was appointed by President William J. Clinton in 1994.
ARTHUR J. GAJARSA was appointed by President William J. Clinton in 1997.
RICHARD LINN was appointed by President William J. Clinton in 1999.
TIMOTHY B. DYK was appointed by President William J. Clinton in 2000.
SHARON PROST was appointed by President George W. Bush in 2001.
KIMBERLY A. MOORE was appointed by President George W. Bush in 2006.
See? Catching my drift? As you know, in the US, federal judges are appointed by the president in office at the time, and they are appointed for life, as long as they don't commit treason, etc. This was a deliberate choice back in the early days, when the Constitution was being written, to create an independent federal judiciary. By making the judges immune from the voting/political process (except for the obvious in the appointment process), the hope was that the judiciary would balance out the other two branches and protect the Constitution from any legislative or executive mistakes or overreaching.
So that's why you see the court here made up of folks old enough, probably, in some cases to be your grandfather or at least your father. That doesn't mean they are out of it or unable to think. Just as you would show respect to your father or grandfather, knowing they have more life experience than you do, it's perfectly appropriate to show respect to those in the judiciary. But does your grandfather understand computers? Your parents? Did you have to show them how to do email? I'm guessing yes. I know I did.
There probably isn't a single judge on this court who grew up with computers in his or her life. But look at their backgrounds a little more carefully, and you'll see that while they may not know what you know about tech, they are certainly highly educated and highly accomplished individuals in their area of expertise, namely patent law. Let's focus on those who wrote opinions, now. The entire court was involved in the decision, but only six wrote opinions.
The Chief Judge, who wrote the decision:
PAUL R. MICHEL was appointed as a Circuit Judge to the United States Court of Appeals for the Federal Circuit by President Ronald Reagan in 1988. On December 25, 2004, after 16 years on the court, he assumed the duties of Chief Judge. Chief Judge Michel has written over 300 opinions in patent, trademark, takings, contract, tax, veterans' rights, international trade and government personnel cases. He is the recipient of the Eli Whitney Prize, the Katz-Kiley Prize, and the Jefferson Medal for "outstanding contribution
to the progress of science and useful arts." In 2003, he was named by Managing Intellectual Property magazine as one of the 50 most influential people in the world in intellectual property. Prior to his appointment to the court, Chief Judge Michel served in the executive and legislative branches of government for 22 years. Following graduation from Williams College in 1963 and the University of Virginia Law School in 1966, he served as Assistant District Attorney and Deputy District Attorney for Investigations in Philadelphia under Arlen Specter; as Assistant Special Watergate Prosecutor under Leon Jaworski responsible for the Howard Hughes-Bebe Rebozo investigation; and under Dick Thornburgh as Deputy Chief of the Justice Department's Public Integrity Section directing the "Koreagate" investigation. In 1978 he was appointed by Benjamin Civiletti as Associate Deputy Attorney General, helping to supervise United States Attorneys, the FBI, and the Marshals Service. From April 1981 until his appointment to the court in March of 1988, he served on Senator Arlen Specter's staff, including as Chief of Staff. Since October 2005, he has been a member of the Executive Committee of the Judicial Conference of the United States, the governing body of the Judicial Branch. He has taught at George Washington and other law schools, made many presentations to various city, state, national and international bar associations and participated in the training of judges of other nations. With two co-authors, he helped produce a casebook for law students, entitled, Modern Patent Litigation and Strategy. He has published many articles on appellate advocacy.
The judges who wrote the two dissents:
PAULINE NEWMAN was appointed by President Ronald Reagan in 1984. From 1982 to 1984, Judge Newman was Special Adviser to the United States Delegation to the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property. She served on the advisory committee to the Domestic Policy Review of Industrial Innovation from 1978 to 1979 and on the State Department Advisory Committee on International Intellectual Property from 1974 to 1984. From 1969 to 1984, Judge Newman served as director, Patent, Trademark and Licensing Department, FMC Corp. From 1961 to 1962 she worked for the United Nations Educational, Scientific and Cultural Organization as a science policy specialist in the Department of Natural Resources. She served as patent attorney and house counsel of FMC Corp. from 1954 to 1969 and as research scientist, American Cyanamid Co. from 1951 to 1954. Judge Newman received a B.A. from Vassar College in 1947, an M.A. from Columbia University in 1948, a Ph.D. from Yale University in 1952 and an LL.B. from New York University School of Law in 1958.
The concurring opinions:
RANDALL R. RADER was appointed to the United States Claims Court by President George H. W. Bush in 1989 and served on that court until his appointment to the Federal Circuit in 1990. Prior to his appointment, Judge Rader served as Minority Chief Counsel, Staff Director, Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks, and Copyrights from 1987 to 1988. He also served as General Counsel and Chief of the Senate Committee on the Judiciary's Subcommittee on the Constitution from 1981 to 1986, and as Counsel in the House of Representatives from 1975 to 1980. Judge Rader taught Patent Law at the University of Virginia School of Law and at the George Washington University National Law Center, and Comparative Patent Law at Georgetown University Law Center. Judge Rader is the author of a casebook entitled Patent Law, published by West Publishing in 1998.
RICHARD LINN was appointed by President William J. Clinton in 1999. Prior to his appointment, Judge Linn was a Partner and Practice Group Leader at the Washington, DC law firm of Foley and Lardner from 1997 to 1999. He was a Partner and head of the intellectual property department at Marks and Murase, L.L.P. from 1977 to 1997. Judge Linn served as Patent Advisor, United States Naval Air Systems Command from 1971 to 1972, was a Patent Agent at the United States Naval Research Laboratory from 1968 to 1969, and served as a Patent Examiner at the United States Patent Office from 1965 to 1968. He was a member of the founding Board of Governors of the Virginia Bar Section on Patent, Trademark, and Copyright Law and served as Chairman in 1975. Judge Linn was a recipient in 2000 of the Rensselaer Alumni Association Fellows Award. He served as an Adjunct Professor and Professional Lecturer in Law at George Washington University Law School from 2001 to 2004. Judge Linn is a past president of the Giles Sutherland Rich Inn of Court and an honorary member of the Richard Linn American Inn of Court. He received a B.E.E. from Rensselaer Polytechnic Institute in 1965, and a J.D. from Georgetown University Law Center in 1969.
The judge who thought the court didn't go far enough:
TIMOTHY B. DYK was appointed by President William J. Clinton in 2000. Prior to his appointment, Judge Dyk was Partner and Chair, Issues and Appeals Practice Area, at Jones, Day, Reavis and Pogue from 1990 to 2000. He was Adjunct Professor at Yale Law School from 1986 to 1987 and 1989, at the University of Virginia Law School in 1984 and 1985, and from 1987 to 1988, and at the Georgetown University Law Center in 1983, 1986, 1989 and 1991. Judge Dyk was Associate and Partner, Wilmer Cutler and Pickering from 1964 to 1990. From 1963 to 1964, Judge Dyk served as Special Assistant to Assistant Attorney General Louis F. Oberdorfer. He also served as Law Clerk to Chief Justice Warren from 1962 to 1963, and to Justices Reed and Burton (retired) from 1961 to 1962. Judge Dyk received an A.B. from Harvard College in 1958 and an LL.B. from Harvard Law School in 1961. He was First President of the Edward Coke Appellate Inn of Court from 2000 to 2002 and President of the Giles Sutherland Rich Inn of Court from 2006 to 2007.
HALDANE ROBERT MAYER was appointed by President Ronald Reagan in 1987, and served as Chief Judge from 1997 to 2004. Judge Mayer served on the United States Claims Court from 1982 until his appointment to the Federal Circuit. He was an adjunct professor at George Washington University National Law Center and the University of Virginia School of Law. He served as Deputy and Acting Special Counsel, and was in private practice in Charlottesville, Virginia, in the 1970s, and in Washington, DC, in the early 1980s. Judge Mayer served as Special Assistant to the Chief Justice of the United States, Warren E. Burger, for three years, and as Law Clerk to the Honorable John D. Butzner, Jr., United States Court of Appeals for the Fourth Circuit. Judge Mayer served in the Army from 1963 to 1975, in the Infantry and the Judge Advocate General's Corps. He was awarded the Bronze Star, Meritorious Service, and Army Commendation Medals, the Combat Infantryman Badge, Parachutist Badge, Ranger Tab, and Ranger Combat Badge. He retired as Lieutenant Colonel. Judge Mayer received a B.S. from the United States Military Academy, and a J.D. from The College of William and Mary, where he was editor-in-chief of the William and Mary Law Review.
As you can see, there is no one in this picture who doesn't deserve our respect for their accomplishments. But they're not the MTV generation. Do any of them have a Facebook page? Use Debian, or even know what it is? Just saying.
What they know better than you and I do is patent law. They know it through and through, and you and I, most of us, do not. Their accomplishment in the law doesn't mean they understand much about your area of expertise, the Free and Open Source Software development model or about programming, period. If anything, their backgrounds will make it very hard for them to understand that FOSS development conflicts by its very nature with patents. Their brains are wired for patents as being a good thing. It's what they do, what they've done all their lives.
What is so incredible and, frankly, surprising to me, is that they went as far as they did. Do you find it easy to tell your friends, family or boss that you were wrong about something? With specifics? How would you feel about doing so in public, knowing that it would result not only in headlines but in extensive analysis and opinions being expressed about you?
This is the same court that originally thought that business methods patents were a great idea. It was only after they decided State Street and saw how it played out in real life, the incredible upsurge in stupid patents, that they realized that something was amiss. And the Supreme Court gave this court a strong shove in a new direction with a couple of recent patent decisions. So they looked again. And to their credit, they did say they were wrong in that decision. There are, of course, the same level of footnotes and face-saving that you might employ in your mea culpas. That explains the somewhat Kafkaesque wording, I believe, claiming not to overturn State Street while gutting it so thoroughly one has to wonder how they define "overturn". Did the court draw the line in the perfect spot? I don't think so. Justice Mayer doesn't think so. You probably don't either. But there is another side to listen to and consider.
The patent bar, as I showed you earlier, is very disturbed by this decision. So are two of the circuit court judges that were involved in this case. Incidentally, not all lawyers were unhappy. Tax lawyers were thrilled by this decision, and from what I've seen only wish it had gone further. I'll show you that in a later article. But the important point to remember is this: none of these judges has any financial interest in patent law being extended to business methods patents or software. That's why I explained all that to you, so you'll understand that we're looking at sincerely held positions, not anything underhanded or financially based. These judges have jobs for life, and no one can remove them from the bench except for gross misconduct. Their only motivation, then, is to express themselves according to what they believe to be the law. That doesn't make them right, but it means they are worth reading and considering, if only to know how to respond.
So let's look now at the dissenting opinions, as text, so you can give consideration to the point of view of those who sincerely believe that patents should cover more than they now can. You'll note that the State Street decision was in 1998. Some of these justices were sitting on the court at that time. The decision in State Street was decided by three judges, Giles Sutherland Rich, who passed away in 1999, and justices Plager and Bryson, still serving. Judge Rich wrote the decision in State Street, when he was 94 years old. Most of the 16 judges that decided Bilski were serving in 1998, only four of them having been appointed later than that.
You'll see Justice Newman referenced in one of the footnotes of that State Street decision, footnote 10. So she is no newbie to patent law. I don't agree with her, and most of you don't either, but leave that aside for the moment and listen to what they have to say, with the level of respect that you'd show your technically limited parents or grandparents, and ask yourself, how would I speak to them to help them understand what FOSS is all about and what the development model needs to encourage innovation.
I know. My mother includes in every conversation about the Internet that it's ruining the world. But although I'm clear that she is wrong about that, I never call her a moron. So please keep your comments respectful, just in case we have visitors who are curious about what the tech community has in mind. But other than that, feel free to comment on what the two dissenting justices had to say.
[Update: To provide you with insight into some of their personalities and gifts, and senses of humor, you might like to read a transcript of the keynote speech [PDF] by Judge Plager, given at the University of North Carolina just before the decision on Bilski was published. He talks briefly about State Street and its impact and mentions AT&T, which he decided. I think you will enjoy his sense of humor. ("When I was a young member of the Illinois law faculty, back in the days when the earth was boiling and the dinosaurs were roaming...") And here's a speech [PDF] by Judge Linn, given at the AIPLA annual meeting on the same date, October 24. He discusses the recent shift by the Supreme Court on patents and what it means for those seeking patents now, as well as some questions he has on how to interpret what they wrote in decisions like KSR. ("The net result of all of these decisions is that patentees are likely to have to confront more obviousness challenges, patentees are less likely to obtain enhanced damage awards based on willfulness, and patentees will be more challenged to obtain injunctive relief than just a few years ago.") End update.]
You'll find the concurring opinion, basically answering the dissents, on page 37 of the PDF. Justice Newman's dissenting opinion begins on page 57 and ends on page 97, and the one by Justice Rader begins on page 123. Here they are as text, first the Newman dissent, then Rader's, and then the concurring opinion by Justices Linn and Dyk:
United States Court of Appeals for the Federal
(Serial No. 08/883,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board
of Patent Appeals and Interferences.
NEWMAN, Circuit Judge, dissenting.
The court today acts en banc to impose a new and
far-reaching restriction on the kinds of inventions that are
eligible to participate in the patent system. The court achieves
this result by redefining the word "process" in the patent statute,
to exclude all processes that do not transform physical matter or
that are not performed by machines. The court thus excludes many of
the kinds of inventions that apply today's electronic and photonic
technologies, as well as other processes that handle data and
information in novel ways. Such processes have long been patent
eligible, and contribute to the vigor and variety of today's
Information Age. This exclusion of process inventions is contrary
to statute, contrary to precedent, and a negation of the
constitutional mandate. Its impact on the future, as well as on the
thousands of patents already granted, is unknown.
This exclusion is imposed at the threshold, before it is
determined whether the excluded process is new, non-obvious,
enabled, described, particularly claimed, etc.; that is, before the
new process is examined for patentability. For example, we do
know whether the Bilski process would be found patentable under
the statutory criteria, for they were never applied.
The innovations of the "knowledge economy" of "digital
prosperity" have been dominant contributors to today's
economic growth and societal change. Revision of the commercial
structure affecting major aspects of today's industry should be
approached with care, for there has been significant reliance on
the law as it has existed, as many amici curiae pointed out.
Indeed, the full reach of today's change of law is not clear, and
the majority opinion states that many existing situations may
require reassessment under the new criteria.
Uncertainty is the enemy of innovation. These new uncertainties
not only diminish the incentives available to new enterprise, but
disrupt the settled expectations of those who relied on the law as
it existed. I respectfully dissent.
The court's exclusion of specified process inventions from
access to the patent system is achieved by redefining the word
"process" in the patent statute. However, the court's redefinition
is contrary to statute and to explicit rulings of the Supreme Court
and this court. I start with the statute:
Section 101 is the statement of statutory
From the first United States patent act in 1790, the subject
matter of the "useful arts" has been stated broadly, lest advance
restraints inhibit the unknown future.
The nature of patent-eligible subject matter has received
judicial attention over the years, as new issues arose with
advances in science and technology. The Supreme Court has
consistently confirmed the constitutional and legislative purpose
a broadly applicable incentive to commerce and creativity,
through this system of limited exclusivity. Concurrently, the Court
early explained the limits of patentable subject matter, in that
"fundamental truths" were not intended to be included in a system
of exclusive rights, for they are the general foundations of
knowledge. Thus laws of nature, natural phenomena, and abstract
ideas are not subject to patenting. Several rulings of the Court
have reviewed patent eligibility in light of these fundamentals.
However, the Court explicitly negated today's restrictions. My
colleagues in the majority are mistaken in finding that decisions
of the Court require the per se limits to patent eligibility
that the Federal Circuit today imposes. The patent statute and the
Court's decisions neither establish nor support the exclusionary
criteria now adopted.
The court today holds that any process that does not transform
physical matter or require performance by machine is not within the
definition of "process" in any of the patent statutes since 1790.
All of the statutes contained a broad definition of patent-eligible
subject matter, like that in the current Patent Act of 1952:
35 U.S.C §101 Whoever 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
In Diamond v. Diehr, 450 U.S. 175 (1981) the Court explained
that Section 101 is not an independent condition of patentability,
but a general statement of subject matter eligibility. The Court
Section 101, however, is a general statement of the
type of subject matter that is eligible for patent protection
"subject to the conditions and requirements of this title."
Specific conditions for patentability follow and §102 covers
in detail the conditions relating to novelty. The question
therefore of whether a particular invention is novel is "wholly
apart from whether the invention falls in a category of statutory
Id. at 189-90 (footnote omitted) (quoting In re
Bergy, 596 F.2d 952, 961 (C.C.P.A. 1979)).
"Process" is defined in the 1952 statute as follows:
35 U.S.C. §100(b) The term "process" means
process, art or method, and includes a new use of a known process,
machine, manufacture, composition of matter, or
The 1952 Patent Act replaced the word "art" in prior statutes with
the word "process," while the rest of Section 101 was unchanged
from earlier statutes. The legislative history for the 1952 Act
explained that "art" had been "interpreted by courts to be
practically synonymous with process or method." S. Rep. No. 82-1979
(1952), reprinted in 1952 U.S.C.C.A.N. 2394, 2398, 2409-10.
In Diehr the Court explained that a process "has
historically enjoyed patent protection because it was considered a
form of 'art' as that term was used in the 1793 Act." 450 U.S. at
The definition of "process" provided at 35 U.S.C. §100(b)
is not "unhelpful," as this court now states, maj. op. at 6 n.3,
but rather points up the errors in the court's new statutory
interpretation. Section 100(b) incorporates the prior usage "art"
and the term "method," and places no restriction on the definition.
This court's redefinition of "process" as limiting access to the
patent system to those processes that use specific machinery or
that transform matter, is contrary to two centuries of statutory
The breadth of Section 101 and its predecessor provisions
reflects the legislative intention to accommodate not only known
fields of creativity, but also the unknown future. The Court has
consistently refrained from imposing unwarranted restrictions on
statutory eligibility, and for computer-implemented processes the
Court has explicitly
rejected the direction now taken. Nonetheless, this court now
adopts a redefinition of "process" in Section 101 that excludes
forms of information-based and software-implemented inventions
arising from new technological capabilities, stating that this
result is required by the Court's computer-related cases, starting
with Gottschalk v. Benson, 409 U.S. 63 (1972). However, the
Court in Benson rejected the restriction that is imposed
This court's new definition of "process" was rejected in
Gottschalk v. Benson
In Benson the claimed invention was a mathematical
process for converting binary-coded decimal numerals into pure
binary numbers. The Court explained that a mathematical formula
unlimited to a specific use was simply an abstract idea of the
nature of "fundamental truths," "phenomena of nature," and
"abstract intellectual concepts," as have traditionally been
outside of patent systems. 409 U.S. at 67. However, the Court
explicitly declined to limit patent-eligible processes in the
manner now adopted by this court, stating:
It is argued that a process patent must either be tied
to a particular machine or apparatus or must operate to change
articles or materials to a "different state or thing." We do not
hold that no process patent could ever qualify if it did not meet
the requirements of our prior precedents. It is said that the
decision precludes a patent for any program servicing a computer.
We do not so hold.
Id. at 71. The Court explained that "the requirements of our
prior precedents" did not preclude patents on computer programs,
despite the statement drawn from Cochrane v. Deener, 94 U.S.
780, 787-88 (1876), 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." Benson, 409 U.S. at 70. Although this same
statement is now relied upon by this court as requiring its present
ruling, maj. op at 13 & n.11, the
Court in Benson was explicit that: "We do not hold that
no process patent could ever qualify if it did not meet [the
Court's] prior precedents." The Court recognized that
Cochrane's statement was made in the context of a mechanical
process and a past era, and protested:
It is said we freeze process patents to old
technologies, leaving no room for the revelations of the new,
onrushing technology. Such is not our purpose.
Benson, 409 U.S. at 71. Instead, the Court made clear that
it was not barring patents on computer programs, and rejected the
"argu[ment] that a process patent must either be tied to a
particular machine or apparatus or must operate to change articles
or materials to a 'different state or thing'" in order to satisfy
Section 101. Id. Although my colleagues now describe these
statements as "equivocal," maj. op. at 14, there is nothing
equivocal about "We do not so hold." Benson, 409 U.S. at 71.
Nonetheless, this court now so holds.
In Parker v. Flook the Court again rejected today's
The eligibility of mathematical processes next reached the Court
in Parker v. Flook, 437 U.S. 584 (1978), where the Court
held that the "process" category of Section 101 was not met by a
claim to a mathematical formula for calculation of alarm limits for
use in connection with catalytic conversion of hydrocarbons and, as
in Benson, the claim was essentially for the mathematical
formula. The Court later summarized its Flook holding,
stating in Diamond v.Diehr that:
The [Flook] application, however, did not purport to
explain how these other variables were to be determined, nor did it
purport "to contain any disclosure relating to the chemical
processes at work, the monitoring of the process variables, nor the
means of setting off an alarm or adjusting an alarm system. All
that it provides is a formula for computing an updated alarm
Diehr, 450 U.S. at 186-87 (quoting Flook, 437 U.S.
The Court explained in Flook that a field-of-use
restriction to catalytic conversion did not distinguish Flook's
mathematical process from that in Benson. However, the Court
reiterated that patent eligibility of computer-directed processes
is not controlled by the "qualifications of our earlier
precedents," again negating any limiting effect of the usages of
the past, on which this court now places heavy reliance. The Court
The statutory definition of "process" is broad. An
argument can be made, however, that this Court has only recognized
a process as within the statutory definition when it either was
tied to a particular apparatus or operated to change materials to a
"different state or thing." As in Benson, we assume that a
valid process patent may issue even if it does not meet one of
these qualifications of our earlier precedents.
Flook, 437 U.S. at 589 n.9 (quoting Cochrane, 94 U.S.
at 787). This statement directly contravenes this court's new
requirement that all processes must meet the court's
"machine-or-transformation test" or be barred from access to the
The Court in Flook discussed that abstractions and
fundamental principles have never been subject to patenting, but
recognized the "unclear line" between an abstract principle and the
application of such principle:
The line between a patentable "process" and an
unpatentable "principle" is not always clear. Both are
"conception[s] of the mind, seen only by [their] effects when being
executed or performed."
Flook, 437 U.S. at 589 (alterations in original) (quoting
Tilghman v. Proctor, 102 U.S. 707, 728 (1880)).
The decision in Flook has been recognized as a step in
the evolution of the Court's thinking about computers. See
Arrhythmia Res. Tech., Inc. v. Corazonix Corp., 958 F.2d
1053, 1057 n.4 (Fed. Cir. 1992) ("it appears to be generally agreed
that these decisions represent evolving views of the Court")
(citing R.L. Gable & J.B. Leaheey, The Strength of Patent
Protection for Computer Products, 17 Rutgers Computer &
Tech. L.J. 87 (1991); D. Chisum, The Patentability of
Algorithms, 47 U. Pitt. L. Rev. 959 (1986)). That Flook
does not support today's per se exclusion of forms of
process inventions from access to the patent system is reinforced
in the next Section 101 case decided by the Court:
In Diamond v. Chakrabarty the Court again rejected per
se exclusions of subject matter from Section 101
In Diamond v. Chakrabarty, 447 U.S. 303 (1980), the scope
of Section 101 was challenged as applied to the new fields of
biotechnology and genetic engineering, with respect to the patent
eligibility of a new bacterial "life form." The Court explained the
reason for the broad terms of Section 101:
The subject-matter provisions of the patent law have
been cast in broad terms to fulfill the constitutional and
statutory goal of promoting "the Progress of Science and the useful
Arts" with all that means for the social and economic benefits
envisioned by Jefferson. Broad general language is not necessarily
ambiguous when congressional objectives require broad
Id. at 315 (quoting U.S. Const., art. I, §8). The Court
referred to the use of "any" in Section 101 ("Whoever invents or
discovers any new and useful process . . . or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title"), and
reiterated that the statutory language shows that Congress "plainly
contemplated that the patent laws would be given wide scope."
308. The Court referred to the legislative intent to include
within the scope of Section 101 "anything under the sun that is
made by man," id. at 309 (citing S. Rep. 82-1979, at 5; H.R.
Rep. 82-1923, at 6 (1952)), and stated that the unforeseeable
future should not be inhibited by judicial restriction of the
"broad general language" of Section 101:
A rule that unanticipated inventions are without
protection would conflict with the core concept of the patent law
that anticipation undermines patentability. Mr. Justice Douglas
reminded that the inventions most benefiting mankind are those that
push back the frontiers of chemistry, physics, and the like.
Congress employed broad general language in drafting §101
precisely because such inventions are often
Id. at 315-16 (citations and internal quotation marks
omitted). The Court emphasized that its precedents did not alter
this understanding of Section 101's breadth, stating that
"Flook did not announce a new principle that inventions in
areas not contemplated by Congress when the patent laws were
enacted are unpatentable per se." Id. at 315.
Whether the applications of physics and chemistry that are
manifested in advances in computer hardware and software were more
or less foreseeable than the advances in biology and biotechnology
is debatable, but it is not debatable that these fields of endeavor
have become primary contributors to today's economy and culture, as
well as offering an untold potential for future advances. My
colleagues offer no reason now to adopt a policy of exclusion of
the unknown future from the subject matter now embraced in Section
Soon after Chakrabarty was decided, the Court returned to
patentability issues arising from computer capabilities:
In Diamond v. Diehr the Court directly held that
computer-implemented processes are included in Section
The invention presented to the Court in Diehr was a
"physical and chemical process for molding precision synthetic
rubber products" where the process steps included using a
mathematical formula. The Court held that the invention fit the
"process" category of Section 101 although mathematical
calculations were involved, and repeated its observation in
Chakrabarty that "courts should not read into the patent
laws limitations and conditions which the legislature has not
expressed." Diehr, 450 U.S. at 182 (internal quotation marks
omitted) (citing Chakrabarty, 447 U.S. at 308).
The Court distinguished a claim that would cover all uses of a
mathematical formula and thus is an abstract construct, as in
Benson, from a claim that applies a mathematical calculation
for a specified purpose, as in Diehr. The Court stated that
"a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula,
computer program, or digital computer," id. at 187, and
explained that the line between statutory and nonstatutory
processes depends on whether the process is directed to a specific
purpose, see id. ("It is now commonplace that an
application of a law of nature or mathematical formula to a
known structure or process may well be deserving of patent
protection." (emphasis in original)). The Court clarified that
Flook did not hold that claims may be dissected into old and
new parts to assess their patent eligibility. Id. at 189
However, the Court did not propose the
"machine-or-transformation" test that this court now insists was
"enunciated" in Diehr as a specific limit to Section 101.
Maj. op. at 10. In Diehr there was no issue of machine or
transformation, for the Diehr process both employed a
machine and produced a chemical transformation: the process was
conducted in "an openable rubber molding press," and it cured the
discussing the known mathematical formula used by Diehr
to calculate the relation between temperature and the rate of a
chemical reaction, the Court recited the traditional exceptions of
"laws of nature, natural phenomena, and abstract ideas," 450 U.S.
at 185, and explained that the entirety of the process must be
considered, not an individual mathematical step.
The Court characterized the holdings in Benson and
Flook as standing for no more than the continued relevance
of these "long-established" judicial exclusions, id., and
repeated that a practical application of pure science or
mathematics may be patentable, citing Mackay Radio &
Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939)
("While a scientific truth, or the mathematical expression of it,
is not a patentable invention, a novel and useful structure created
with the aid of knowledge and scientific truth may be."). The Court
explained that the presence of a mathematical formula does not
preclude patentability when the structure or process is performing
a function within the scope of the patent system, stating:
[W]hen a claim containing a mathematical formula
implements or applies that formula in a structure or process which,
when considered as a whole, 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), then the claim
satisfies the requirements of §101.
450 U.S. at 192. This statement's parenthetical "e.g." is
relied on by the majority for its statement that Diehr
requires today's "machine-or-transformation" test. However, this
"e.g." does not purport to state the only "function which
the patent laws were designed to protect." Id. This
"e.g." indeed describes the process in Diehr, but it
does not exclude all other processes from access to patenting.
It cannot be inferred that the Court intended, by this
"e.g." parenthetical, to require the far-reaching exclusions
now attributed to it. To the contrary, the Court in Diehr
was explicit that "an application of a law of nature or
mathematical formula" may merit patent protection, 450 U.S. at 187
(emphasis in original), and that the claimed process must be
considered as a whole, id. at 188. The Court recognized that
a process claim may combine steps that were separately known, and
that abstract ideas such as mathematical formulae may be combined
with other steps to produce a patentable process. Id. at
187. The steps are not to be "dissect[ed]" into new and old steps;
it is the entire process that frames the Section 101 inquiry.
Id. at 188.
The Diehr Court did not hold, as the majority opinion
states, that transformation of physical state is a requirement of
eligibility set by Section 101 unless the process is performed by a
machine. It cannot be inferred that the Court silently imposed such
a rule. See maj. op. at 14 (relying on lack of repetition in
Diehr of the Benson and Flook disclaimers of
requiring machine or transformation, as an implicit rejection of
these disclaimers and tacit adoption of the requirement). There was
no issue in Diehr of the need for either machine or
transformation, for both were undisputedly present in the process
of curing rubber. It cannot be said that the Court "enunciated"
today's "definitive test" in Diehr.2
Subsequent Supreme Court authority reinforced the breadth
of Section 101
In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International,
Inc., 534 U.S. 124 (2001), the Court described Section 101 as a
"dynamic provision designed to encompass new and unforeseen
inventions," id. at 135, that case arising in the context of
eligibility of newly developed plant varieties for patenting. The
Court stated: "As in Chakrabarty, we decline to narrow the
reach of §101 where Congress has given us no indication that
it intends this result." Id. at 145-46. The Court reiterated
that "Congress plainly contemplated that the patent laws would be
given wide scope," id. at 130 (quoting Chakrabarty,
447 U.S. at 308), and that the language of Section 101 is
"extremely broad," id. This is not language of restriction,
and it reflects the statutory policy and purpose of inclusion, not
exclusion, in Section 101.
The Court's decisions of an earlier age do not support
this court's restrictions of Section 101
My colleagues also find support for their restrictions on
patent-eligible "process" inventions in the pre-Section 101
decisions O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1853),
Cochrane v. Deener, 94 U.S. 780 (1876), and Tilghman v.
Proctor, 102 U.S. 707 (1880). Although the Court in
Benson and in Flook took care to state that these
early decisions do not require the restrictions that the Court was
rejecting, this court now places heavy reliance on these early
decisions, which this court describes as "consistent with the
machine-or-transformation test later articulated in Benson
and reaffirmed in Diehr." Maj. op. at 12. As I have
discussed, no such test was "articulated in Benson" and
"reaffirmed in Diehr."
However, these early cases do show, contrary to the majority
opinion, that a "process" has always been a distinct category of
patentable invention, and not tied to either apparatus or
transformation, as this court now holds. For example, in
Proctor the Court considered a patent on a process for
separating fats and oils, and held that the process was not
restricted to any particular apparatus. The Court held that a
process is an independent category of invention, and stated:
That a patent can be granted for a process, there can
be no doubt. The patent law is not confined to new machines and new
compositions of matter, but extends to any new and useful art or
102 U.S. at 722; see also Corning v. Burden, 56 U.S.
(15 How.) 252, 268 (1853) ("It is for the discovery or invention of
some practical method or means of producing a beneficial result or
effect, that a patent is granted, and not for the result or effect
itself.") The difference between a process and the other categories
of patent-eligible subject matter does not deprive process
inventions of the independent status accorded by statute, by
precedent, and by logic, all of which negate the court's new rule
that a process must be tied to a particular machine or must
transform physical matter.
The majority also relies on O'Reilly v. Morse, citing the
Court's rejection of Morse's Claim 8 for "the use of the motive
power of the electro or galvanic current, which I call
electromagnetism, however developed, for making or printing
intelligible characters, signs or letters at any distances . . . ."
The Court explained:
In fine he claims an exclusive right to use a manner
and process which he has not described and indeed had not invented,
and therefore could not describe when he obtained his patent. The
Court is of the opinion that the claim is too broad, and not
warranted by law.
56 U.S. (15 How.) at 113. However, the claims that were directed to
the communication system that was described by Morse were held
patentable, although no machine, transformation, or manufacture was
required. See Morse's Claim 5 ("The system of signs,
consisting of dots and spaces, and horizontal lines, for numerals,
letters, words, or sentences, substantially as herein set forth and
illustrated, for telegraphic
purposes."). I cannot discern how the Court's rejection of
Morse's Claim 8 on what would now be Section 112 grounds, or the
allowance of his other claims, supports this court's ruling today.
Indeed, Morse's claim 5, to a system of signs, is no more
"tangible" than the systems held patentable in Alappat and
State Street Bank, discussed post and now cast into doubt,
or the Bilski system here held ineligible for access to
The majority opinion also relies on Cochrane v. Deener,
particularly on certain words quoted in subsequent opinions of the
Court. In Cochrane the invention was a method for bolting
flour, described as a series of mechanical steps in the processing
of flour meal. The question before the Court was whether the
patented process would be infringed if the same steps were
performed using different machinery. The answer was "that a process
may be patentable, irrespective of the particular form of the
instrumentalities used." 94 U.S. at 788. The Court stressed the
independence of a process from the tools that perform it:
A process is a mode of treatment of certain materials
to produce a given result. It is an act, or series of acts,
performed upon the subject-matter to be transformed and reduced to
a different state or thing. If new and useful, it is just as
patentable as is a piece of machinery. In the language of the
patent law, it is an art. The machinery pointed out as suitable to
perform the process may or may not be new or patentable; whilst the
process itself may be altogether new, and produce an entirely new
result. The process requires that certain things should be done
with certain substances, and in a certain order; but the tools to
be used in doing this may be of secondary consequence.
94 U.S. at 788. The Court did not restrict the kinds of patentable
processes; the issue in Cochrane was whether the process
must be tied to the machinery that the patentee used to perform it.
This court now cites Cochrane's description of a process
as "acts performed upon subject-matter to be transformed and
reduced to a different state or thing," id., this
court stating that unless there is transformation there is no
patentable process. That is not what this passage means. In earlier
opinions this court and its predecessor court stated the correct
view of this passage, as has the Supreme Court. The Court of
Customs and Patent Appeals observed:
[This Cochrane passage] has sometimes been misconstrued
as a 'rule' or 'definition' requiring that all processes, to be
patentable, must operate physically on substances. Such a result
misapprehends the nature of the passage quoted as dictum, in its
context, and the question being discussed by the author of the
opinion. To deduce such a rule from the statement would be contrary
to its intendment which was not to limit process patentability but
to point out that a process is not limited to the means used in
In re Prater, 415 F.2d 1393, 1403 (C.C.P.A. 1969). Again in
In re Schrader, 22 F.3d 290, 295 n.12 (Fed. Cir. 1994) this
court noted that Cochrane did not limit patent eligible
subject matter to physical transformation, and that transformation
of "intangibles" could qualify for patenting. In AT&T Corp.
v. Excel Communications, Inc., 172 F.3d 1352, 1358 (Fed. Cir.
1999), this court described physical transformation as "merely one
example of how a mathematical algorithm may bring about a useful
The Court saw the Cochrane decision in its proper
perspective. Both Flook and Benson rejected the idea
that Cochrane imposed the requirement of either specific
machinery or the transformation of matter, as discussed
ante. See Flook, 437 U.S. at 588 n.9;
Benson, 409 U.S. at 71. Non-transformative processes were
not at issue in either Cochrane or Diehr, and there is no
endorsement in Diehr of a "machine-or-transformation"
requirement for patentable processes.
These early cases cannot be held now to require exclusion, from
the Section 101 definition of "process," of all processes that deal
with data and information, whose only
machinery is electrons, photons, or waves, or whose product is
not a transformed physical substance.
The English Statute of Monopolies and English common law
do not limit "process" in Section 101
I comment on this aspect in view of the proposal in the
concurring opinion that this court's new two-prong test for Section
101 process inventions was implicit in United States law starting
with the Act of 1790, because of Congress's knowledge of and
importation of English common law and the English Statute of
Monopolies of 1623. The full history of patent law in England is
too ambitious to be achieved within the confines of Bilski's
appeal,3 and the concurring opinion's
selective treatment of this history may propagate
The concurrence places primary reliance on the Statute of
Monopolies, which was enacted in response to the monarchy's grant
of monopolies "to court favorites in goods or businesses which had
long before been enjoyed by the public." Graham v. John Deere
Co., 383 U.S. 1, 5 (1966) (citing Peter Meinhardt,
Inventions, Patents and
Monopoly 30-35 (1946)). The Statute of Monopolies
outlawed these "odious monopolies" or favors of the Crown, but,
contrary to the concurring opinion, the Statute had nothing
whatever to do with narrowing or eliminating categories of
inventive subject matter eligible for a British patent. See
Prager, Historical Background and Foundation of American Patent
Law, 5 Am. J. Legal Hist. at 313 ("The statute [of Monopolies]
said nothing about meritorious functions of patents, nothing about
patent disclosures, and nothing about patent procedures; it was
only directed against patent abuses.").
Patents for inventions had been granted by the Crown long before
1623. See Hulme, The History of the Patent System Under the
Prerogative and at Common Law, 12 L.Q. Rev. at 143 (the first
patent grant to the "introducer of a newly-invented process" was in
1440); Klitzke, Historical Background of the English Patent
Law, 41 J.P.O.S. at 626-27 (discussing first patents for
"invention" in England in the fifteenth century). That practice was
unaffected by the terms of the Statute of Monopolies, which
rendered "utterly void" all "Monopolies and all Commissions,
Grants, Licenses, Charters and Letters Patent" that were directed
to "the sole Buying, Selling, Making, Working or Using any Thing
within this Realm," 21 Jac. 1, c.3, §I (Eng.), but which
specifically excepted Letters Patent for inventions from that
exclusion, id. §VI. The only new limitation on patents
for invention was a fourteen-year limit on the term of exclusivity.
See Klitzke, Historical Background of the English Patent
Law, 41 J.P.O.S. at 649.
The usage "Letters Patent" described one of the forms of
document whereby the Crown granted various rights, whether the
grant was for an odious monopoly that the Statute of Monopolies
eliminated, or for rights to an invention new to England. That
usage was not changed by the Statute of Monopolies. Nor were other
aspects of the
British practice which differed from that enacted in the United
States, particularly the aspect whereby a British patent could be
granted to a person who imported something that was new to England,
whether or not the import was previously known or the importer was
the inventor thereof. In England, "[t]he rights of the inventor are
derived from those of the importer, and not vice versa as is
commonly supposed." Hulme, The History of the Patent System
Under the Prerogative and at Common Law, 12 L.Q.R. at 152;
see also MacLeod, Inventing the Industrial Revolution
13 ("The rights of the first inventor were understood to derive
from those of the first importer of the invention.").
In contrast, in the United States the patent right has never
been predicated upon importation, and has never been limited to
"manufactures." See, e.g., Walterscheid, To Promote the
Progress of Useful Arts 93, 137-38, 224; see also
Prager, Historic Background and Foundation of American Patent
Law, 5 Am. J. Legal Hist. at 309 ("The American Revolution
destroyed many of the ancient customs; it brought a sweeping
reorientation of patent law, with new forms, new rules, new
concepts, and new ideals."). The differences between the American
and English patent law at this nation's founding were marked, and
English judicial decisions interpreting the English statute are of
limited use in interpreting the United States statute. In all
events, no English decision supports this court's new restrictive
definition of "process."
The concurrence proposes that the Statute of Monopolies provides
a binding definition of the terms "manufacture," "machine,"
"composition of matter," and "process" in Section 101 of the U.S.
Patent Act. See concurring op. at 5-8. The only one of these
terms that appears in the Statute of Monopolies is "manufacture", a
broad term that reflects the usage of the period. Even at the time
of this country's founding, the usage
was broad, as set forth in Samuel Johnson's Dictionary of the
English Language (3d. ed. 1768), which defines "manufacture" as
"any thing made by art," and defines "art" as "the power of doing
something not taught by nature and instinct"; "a science"; "a
trade"; "artfulness"; "skill"; "dexterity." Historians explain that
England's primary motive for patenting was to promote
"[a]cquisition of superior Continental technology" at a time when
England lagged behind, see MacLeod, Inventing the
Industrial Revolution 11; this cannot be interpreted to mean
that England and perforce the United States intended to eliminate
"processes" from this incentive system. It is inconceivable that on
this background the Framers, and again the enactors of the first
United States patent statutes in 1790 and 1793, intended sub
silentio to impose the limitations on "process" now created by
Congress' earliest known draft patent bill included the terms
"art, manufacture, engine, machine, invention or device, or any
improvement upon the same." Walterscheid, To Promote the
Progress of Useful Arts 92. The 1793 Act explicitly stated "any
new and useful art," §1, 1 Stat. 318 (1793), a usage that was
carried forward until "art" was replaced with "process" in 35
U.S.C. §101 and defined in §100(b). Historians discuss
that Congress' inclusion of any "art" or "process" in the patent
system was a deliberate clarification of the English practice.
See Walterscheid, To Promote the Progress of Useful
Arts 93 ("[The first patent bill] appears to be an obvious
attempt to deal legislatively with issues that were beginning to be
addressed by the English courts. . . . [I]t states unequivocally
that improvement inventions are patentable and expands the
definition of invention or discovery beyond simply
'manufacture.'"); Karl B. Lutz, Patents and Science: A
Clarification of the Patent Clause of the U.S.
32 J.P.O.S. 83, 86 (1950) ("By the year 1787 it was being
recognized even in Great Britain that the phrase 'new manufactures'
was an unduly limited object for a patent system, since it seems to
exclude new processes. . . . [This question was] resolved in the
United States Constitution by broadening the field from 'new
manufactures' to 'useful arts' . . . .").
In interpreting a statute, it is the language selected by
Congress that occupies center stage: "[O]ur obligation is to take
statutes as we find them, guided, if ambiguity appears, by the
legislative history and statutory purpose." Chakrabarty, 447
U.S. at 315. The Court has "perceive[d] no ambiguity" in Section
101, leaving no need for foreign assistance. Id. The
legislative choice to afford the patent system "wide scope,"
id. at 308, including "process" inventions, evolved in the
United States independent of later developments of the common law
The concurrence concludes that the Statute of Monopolies
foreclosed the future patenting of anything that the concurrence
calls a "business method" the term is not defined
whether or not the method is new, inventive, and useful. But the
Statute of Monopolies only foreclosed "odious" monopolies,
illustrated by historical reports that Queen Elizabeth had granted
monopolies on salt, ale, saltpeter, white soap, dredging machines,
playing cards, and rape seed oil, and on processes and services
such as Spanish leather-making, mining of various metals and ores,
dying and dressing cloth, and iron tempering. See
Walterscheid, Early Evolution (Part 2), 76 J.P.T.O.S. at 854
n.14; Klitzke, Historical Background of the English Patent
Law, 41 J.P.O.S. at 634-35. These and other grants, many of
which were implemented by Letters Patent, were the "odious
monopolies" that were rendered illegal. They included several
classes of known
activity, product and process, and had nothing to do with new
"inventions." The Statute of Monopolies cannot be held to have
restricted the kinds of new processes that can today be eligible
for patenting in the United States, merely because it outlawed
patents on non-novel businesses in England. The presence or absence
of "organizing human activity," a vague term created by the
concurrence, has no connection or relevance to Parliament's
elimination of monopoly patronage grants for old, established arts.
The Statute of Monopolies neither excluded nor included inventions
that involve human activity, although the words "the sole
working or making in any manner of new manufactures"
presuppose human activity. 21 Jac. 1, c.3, §VI (emphases
added). We are directed to no authority for the proposition that a
new and inventive process involving "human activity" has
historically been treated differently from other processes; indeed,
most inventions involve human activity.
The concurrence has provided hints of the complexity of the
evolution of patent law in England, as in the United States, as the
Industrial Revolution took hold. Historians have recognized these
complexities. See, e.g., Walterscheid, To Promote the
Progress of Useful Arts 5 ("[T]he American patent law almost
from its inception departed from its common law counterpart in the
interpretation that would be given to the definition of novelty . .
. ."); Klitzke, Historical Background of the English Patent
Law, 41 J.P.O.S. at 638 (noting that in Elizabethan times,
novelty only required a showing that "the industry had not been
carried on within the realm within a reasonable period of time,
while today "the proof of a single public sale of an article" or a
"printed publication" can negate patentability).
I caution against over-simplification, particularly in view of
the uncertainties in English common law at the time of this
country's founding. See Boulton v. Bull, 2 H. Bl.
463, 491 (C.P. 1795) (Eyre, C.J.) ("Patent rights are no where that
I can find accurately discussed in our books."); MacLeod,
Inventing the Industrial Revolution 61 ("It was only from
the time when the Privy Council relinquished jurisdiction that a
case law on patents began to develop. . . . But it was a slow
process and even the spate of hard-fought patent cases at the end
of the eighteenth century did little to establish a solid core of
judicial wisdom."). The English judicial opinions of the eighteenth
century were not as limiting on the United States as my colleagues
suggest. See Walterscheid, The Nature of the Intellectual
Property Clause: A Study in Historical Perspective 355 (2002)
("In the eighteenth century, patentees and those who gave advice
concerning patents were certainly of the view that the Statute did
not preclude the patenting of general principles of operation.");
see also MacLeod, Inventing the Industrial Revolution 63-64.
It is reported that in the century and a half following
enactment of the Statute of Monopolies, the English patent
registers were replete with inventions claimed as "processes."
See Walterscheid, Early Evolution (Part 3), 77
J.P.T.O.S. at 856 ("As one of the earliest texts on the patent law
stated in 1806: 'most of the patents now taken out, are by name,
for the method of doing particular things . . . ."). The
concurrence agrees; but it is also reported that because patents
were not litigated in the common law courts until the Privy Council
authorized such suits in 1752, judicial interpretation of various
aspects of patent law were essentially absent until about the time
this country achieved independence, leading to the variety of views
expressed in Boulton v. Bull. The legislators in the new
United States cannot now be assigned the straightjacket of law
not yet developed in England. Indeed, the first patent granted
by President Washington, upon examination by Secretary of State
Jefferson, was for a method of "making Pot-ash and Pearl-ash," a
process patent granted during the period that the concurrence
states was fraught with English uncertainty about process patents.
See The First United States Patent, 36 J.P.O.S. 615,
The concurrence lists some English process patents predating the
United States' 1793 Patent Act, and argues that processes not
sufficiently "like" these archaic inventions should not now be
eligible for patenting. I refer simply to Flook, 437 U.S. at
588 n.9, where the Court stated: "As in Benson, we assume
that a valid process patent may issue even if it does not meet one
of the qualifications of our earlier precedents." Similarly, the
Chakrabarty Court stated: "[A] statute is not to be confined
to the particular applications . . . contemplated by the
legislators. This is especially true in the field of patent law."
Chakrabarty, 447 U.S. at 315-16 (citing Barr v. United
States, 324 U.S. 83, 90 (1945); Browder v. United States,
312 U.S. 335, 339 (1941); Puerto Rico v. Shell Co., 302 U.S.
253, 257 (1937)). The meaning of the statutory term "process" is
not limited by particular examples from more than two hundred years
However, I cannot resist pointing to the "business method"
patents on Woodcroft's list. See concurring op. at 15
(citing No. 1197 to John Knox (July 21, 1778) ("Plan for assurances
on lives of persons from 10 to 80 years of age.")). Several other
process patents on Woodcroft's list appear to involve financial
subject matter, and to require primarily human activity.
See, e.g., No. 1170 to John Molesworth (Sept. 29, 1777)
("Securing to the purchasers of shares and chances of state-lottery
tickets any prize drawn in their favor."); No. 1159 to William
Nicholson (July 14, 1777) ("Securing
the property of persons purchasing shares of State-lottery
tickets."), cited in Bennet Woodcroft, Alphabetical Index
of Patentees of Inventions 383, 410 (U.S. ed. 1969). Other
English process patents from the several decades following 1793 can
aptly be described as "business methods," although not performed
with the aid of computers. E.g., No. 10,367 to George Robert
D'Harcourt (Oct. 29, 1844) ("Ascertaining and checking the number
of checks or tickets which have been used and marked, applicable
for railway officers.").
While most patents of an earlier era reflect the dominant
mechanical and chemical technologies of that era, modern processes
reflect the dramatic advances in telecommunications and computing
that have occurred since the time of George III. See USPTO
White Paper, Automated Financial or Management Data Processing
Methods (Business Methods) 4 (2000), available at
USPTO White Paper) ("The full arrival of electricity as a component
in business data processing system[s] was a watershed event."). It
is apparent that economic, or "business method," or "human
activity" patents were neither explicitly nor implicitly foreclosed
from access to the English patent system.
Evolution of process patents in the United
The United States' history of patenting establishes the same
point. The PTO has located various patents predating modern
computer usages that can be described as financial or business
methods. The USPTO White Paper at 3-4 and appendix A describes the
history of financial apparatus and method patents dating back to
1799, including patents on bank notes, bills of credit, bills of
exchange, check blanks,
detecting and preventing counterfeiting, coin counting, interest
calculation tables, and lotteries, all within the first fifty years
of the United States patent system. It is a distortion of these
patents to describe the processes as "tied to" another statutory
category that is, paper and pencil. Concurring op. at 16-17
& n.18. Replacement of paper with a computer screen, and pencil
with electrons, does not "untie" the process. Fairly considered,
the many older financial and business-oriented patents that the PTO
and many of the amici have identified are of the same type
as the Bilski claims; they were surely not rendered patent-eligible
solely because they used "paper" to instantiate the financial
strategies and transactions that comprised their contribution.
I do not disagree with the general suggestion that statutes
intended to codify the existing common law are to be interpreted in
light of then-contemporary practice, including, if relevant, the
English cases. See concurring op. at 12-13. However, the
court must be scrupulous in assessing the relevance of decisions
that were formulated on particularized facts involving the
technology of the period. The United States Supreme Court has never
held that "process" inventions suffered a second-class status under
our statutes, achieving patent eligibility only derivatively
through an explicit "tie" to another statutory category. The Court
has repeatedly disparaged efforts to read in restrictions not based
on statutory language. See Diehr, 450 U.S. at 182;
Chakrabarty, 447 U.S. at 308. Yet second-class status is
today engrafted on "process" inventions. There is plainly no basis
for such restriction, which is a direct path to the "gloomy
thought" that concerned Senator O.H. Platt in his Remarks in
Congress at the Centennial Proceedings of the United States Patent
For one, I cannot entertain the gloomy thought that we
have come to that century in the world's life in which new and
grander achievements are
impossible. . . . Invention is a prolific mother; every
inventive triumph stimulates new effort. Man never is and never
will be content with success, and the great secrets of nature are
as yet largely undiscovered.
Invention and Advancement (1891), reprinted in
United States Bicentennial Commemorative Edition of Proceedings
and Addresses: Celebration of the Beginning of the Second Century
of the American Patent System 75-76 (1990).
In sum, history does not support the retrogression sponsored by
This court now rejects its own CCPA and Federal Circuit
The majority opinion holds that there is a Supreme Court
restriction on process patents, "enunciated" in Benson,
Flook, and Diehr; and that this restriction was
improperly ignored by the Federal Circuit and the Court of Customs
and Patent Appeals, leading us into error which we must now
correct. Thus this court announces that our prior decisions may no
longer be relied upon. Maj. op. at 19-20 & nn.17, 19. The
effect on the patents and businesses that did rely on them is not
The Court's decisions in Benson, Flook, and
Diehr all reached the Supreme Court by way of the CCPA, and
the CCPA successively implemented the Court's guidance in
establishing the Freeman/Walter/Abele test for
eligibility under Section 101. The Federal Circuit continued to
consider computer-facilitated processes, as in Arrhythmia Research
Technology, 958 F.2d at 1059-60, where patent-eligibility was
confirmed for a computer-assisted mathematical analysis of
electrocardiograph signals that determined the likelihood of
recurrence of heart attack. This court now rules that this
precedent "should no longer be relied on." Maj. op. at 19 n.17.
In In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en
banc) the question was the eligibility for patent of a
rasterizer that mathematically transforms data to eliminate
aliasing in a digital oscilloscope. The court held that a
computer-implemented system that produces a "useful, concrete, and
tangible result" is Section 101 subject matter. Id. at 1544.
This court now rules that "a 'useful, concrete and tangible result'
analysis should no longer be relied on." Maj. op. at 20 n.19.
The Alappat court stressed the intent, embodied in the
language of the statute, that the patent system be broadly
available to new and useful inventions:
The use of the expansive term "any" in §101
represents Congress's intent not to place any restrictions on the
subject matter for which a patent may be obtained beyond those
specifically recited in §101 and other parts of Title
33 F.3d at 1542. This court looked to the Supreme Court's guidance
in its Section 101 decisions, and explained:
A close analysis of Diehr, Flook, and
Benson reveals that the Supreme Court never intended to
create an overly broad, fourth category of [mathematical] subject
matter excluded from §101. Rather, at the core of the Court's
analysis in each of these cases lies an attempt by the Court to
explain a rather straightforward concept, namely, that certain
types of mathematical subject matter, standing alone, represent
nothing more than abstract ideas until reduced to some type
of practical application, and thus that subject matter is not, in
and of itself, entitled to patent protection.
Id. at 1543 (emphasis in original). The court cited the
Supreme Court's distinction between abstract ideas and their
practical application, and stated of the claimed rasterizer: "This
is not a disembodied mathematical concept which may be
characterized as an 'abstract idea,' but rather a specific machine
to produce a useful, concrete, and tangible result." Id. at
This principle was applied to a computer-implemented data
processing system for managing pooled mutual fund assets in
State Street Bank & Trust Co. v. Signature Financial Group,
Inc., 149 F.3d 1368 (Fed. Cir. 1998), and to a method for
recording and processing telephone data in AT&T v.
Excel. The court explained that processes that include
mathematical calculations in a practical application can produce a
useful, concrete, and tangible result, which in State Street
Bank was "expressed in numbers, such as price, profit,
percentage, cost, or loss." 149 F.3d at 1375. In AT&T v.
Excel the court applied State Street Bank and
Diehr, and stated that "physical transformation . . . is not
an invariable requirement, but merely one example of how a
mathematical algorithm may bring about a useful application" and
thus achieve a useful, concrete, and tangible result. 172 F.3d at
1358. This analysis, too, can no longer be relied on. Maj. op. at
The now-discarded criterion of a "useful, concrete, and tangible
result" has proved to be of ready and comprehensible applicability
in a large variety of processes of the information and digital
ages. The court in State Street Bank reinforced the thesis
that there is no reason, in statute or policy, to exclude
computer-implemented and information-based inventions from access
to patentability. The holdings and reasoning of Alappat and
State Street Bank guided the inventions of the electronic
age into the patent system, while remaining faithful to the
Diehr distinction between abstract ideas such as
mathematical formulae and their application in a particular process
for a specified purpose. And patentability has always required
compliance with all of the requirements of the statute, including
novelty, non-obviousness, utility, and the provisions of Section
The public has relied on the rulings of this court and of
the Supreme Court
The decisions in Alappat and State Street Bank
confirmed the patent eligibility of many evolving areas of
commerce, as inventors and investors explored new technological
capabilities. The public and the economy have experienced
extraordinary advances in information-based and computer-managed
processes, supported by an enlarging patent base. The PTO reports
that in Class 705, the examination classification associated with
"business methods" and most likely to receive inventions that may
not use machinery or transform physical matter, there were almost
10,000 patent applications filed in FY 2006 alone, and over 40,000
applications filed since FY 98 when State Street Bank was
decided. See Wynn W. Coggins, USPTO, Update on Business
Methods for the Business Methods Partnership Meeting 6 (2007)
(hereinafter "PTO Report"), available at
amicus in the present case reports that over 15,000 patents
classified in Class 705 have issued. See Br. of Amicus
Curiae Accenture, at 22 n.20.4 The industries
identified with information-based and data-handling processes, as
several amici curiae explain and illustrate, include fields
as diverse as banking and finance, insurance, data processing,
industrial engineering, and medicine.
Stable law, on which industry can rely, is a foundation of
commercial advance into new products and processes. Inventiveness
in the computer and information services fields has placed the
United States in a position of technological and commercial
preeminence. The information technology industry is reported to be
key factor responsible for reversing the 20-year productivity
slow-down from the mid-1970s to the mid-1990s and in driving
today's robust productivity growth." R.D. Atkinson & A.S.
McKay, Digital Prosperity: Understanding the Economic Benefits
of the Information Technology Revolution 10 (Info. Tech. &
Innovation Found. 2007), available at
http://www.itif.org/files/digital_prosperity.pdf. By revenue
estimates, in 2005 the software and information sectors constituted
the fourth largest industry in the United States, with
significantly faster growth than the overall U.S. economy. Software
& Info. Indus. Ass'n, Software and Information: Driving the
Knowledge Economy 7-8 (2008),
http://www.siia.net/estore/globecon-08.pdf. A Congressional Report
in 2006 stated:
As recently as 1978, intangible assets, such as
intellectual property, accounted for 20 percent of corporate assets
with the vast majority of value (80 percent) attributed to tangible
assets such as facilities and equipment. By 1997, the trend
reversed; 73 percent of corporate assets were intangible and only
27 percent were tangible.
H.R. Rep. No. 109-673 (accompanying a bill concerning judicial
This powerful economic move toward "intangibles" is a challenge
to the backward-looking change of this court's ruling today. Until
the shift represented by today's decision, statute and precedent
have provided stability in the rapidly moving and commercially
vibrant fields of the Information Age. Despite the economic
importance of these interests, the consequences of our decision
have not been considered. I don't know how much human creativity
and commercial activity will be devalued by today's change in law;
but neither do my colleagues.
The Section 101 interpretation that is now uprooted has the
authority of years of reliance, and ought not be disturbed absent
the most compelling reasons. "Considerations of stare
decisis have special force in the area of statutory
for here, unlike in the context of constitutional
interpretation, the legislative power is implicated, and Congress
remains free to alter what [the courts] have done." Shepard v.
United States, 544 U.S. 13, 23 (2005) (quoting Patterson v.
McLean Credit Union, 491 U.S. 164, 172-73 (1989)); see
also Hilton v. S.C. Pub. Res. Comm'n, 502 U.S. 197, 205
(1991) (in cases of statutory interpretation the importance of
adhering to prior rulings is "most compelling"). Where, as here,
Congress has not acted to modify the statute in the many years
since Diehr and the decisions of this court, the force of
stare decisis is even stronger. See Shepard,
544 U.S. at 23.
Adherence to settled law, resulting in settled expectations, is
of particular importance "in cases involving property and contract
rights, where reliance interests are involved." Payne v.
Tennessee, 501 U.S. 808, 828 (1991); see also United
States v. Title Ins. & Trust Co., 265 U.S. 472, 486 (1924)
(declining to overrule precedent where prior ruling "has become a
rule of property, and to disturb it now would be fraught with many
injurious results"). This rationale is given no weight by my
colleagues, as this court gratuitously disrupts decades of law
underlying our own rulings. The only announced support for today's
change appears to be the strained new reading of Supreme Court
quotations. But this court has previously read these decades-old
opinions differently, without objection by either Congress or the
Court. My colleagues do not state a reason for their change of
heart. See Benjamin N. Cardozo, The Nature of the
Judicial Process 149 (1921) ("[T]he labor of judges would be
increased almost to the breaking point if every past decision could
be reopened in every case, and one could not lay one's own course
of bricks on the secure foundation of the courses laid by others
who had gone before him.").
It is the legislature's role to change the law if the public
interest so requires. In Chakrabarty the Court stated: "The
choice we are urged to make is a matter of high policy for
resolution within the legislative process after the kind of
investigation, examination, and study that legislative bodies can
provide and courts cannot." 447 U.S. at 317; see also
Flook, 437 U.S. 595 ("Difficult questions of policy
concerning the kinds of programs that may be appropriate for patent
protection and the form and duration of such protection can be
answered by Congress on the basis of current empirical data not
equally available to this tribunal.").
It is, however, the judicial obligation to assure a correct,
just, and reliable judicial process, and particularly to respect
the principles of stare decisis in an area in which prior
and repeated statutory interpretations have been relied upon by
others. See, e.g., Shepard, 544 U.S. at 23 ("[T]he
claim to adhere to case law is generally powerful once a decision
has settled statutory meaning."); Hilton, 502 U.S. at 202
("Adherence to precedent promotes stability, predictability, and
respect for judicial authority."); Payne, 501 U.S. at 827
("Stare decisis is the preferred course because it promotes
the evenhanded, predictable, and consistent development of legal
principles, fosters reliance on judicial decisions, and contributes
to the actual and perceived integrity of the judicial process.").
These considerations appear to be abandoned.
Uncertain guidance for the future
Not only past expectations, but future hopes, are disrupted by
uncertainty as to application of the new restrictions on patent
eligibility. For example, the court states that even if a process
is "tied to" a machine or transforms matter, the machine or
transformation must impose "meaningful limits" and cannot
extra-solution activity". Maj. op. at 24. We are advised that
transformation must be "central to the purpose of the claimed
process," id., although we are not told what kinds of
transformations may qualify, id. at 25-26. These concepts
raise new conflicts with precedent.
This court and the Supreme Court have stated that "there is no
legally recognizable or protected 'essential' element, 'gist' or
'heart' of the invention in a combination patent." Allen Eng'g
Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1345 (Fed.
Cir. 2002) (quoting Aro Mfg. Co. v. Convertible Top Replacement
Co., 365 U.S. 336, 345 (1961)). This rule applies with equal
force to process patents, see W.L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983)
(there is no gist of the invention rule for process patents), and
is in accord with the rule that the invention must be considered as
a whole, rather than "dissected," in assessing its patent
eligibility under Section 101, see Diehr, 450 U.S. at
188. It is difficult to predict an adjudicator's view of the
"invention as a whole," now that patent examiners and judges are
instructed to weigh the different process components for their
"centrality" and the "significance" of their "extra-solution
activity" in a Section 101 inquiry.
As for whether machine implementation will impose "meaningful
limits in a particular case," the "meaningfulness" of computer
usage in the great variety of technical and informational subject
matter that is computer-facilitated is apparently now a flexible
parameter of Section 101. Each patent examination center, each
trial court, each panel of this court, will have a blank slate on
which to uphold or invalidate claims based on whether there are
sufficient "meaningful limits", or whether a transformation is
adequately "central," or the "significance" of process steps. These
to a novel test which itself is neither suggested nor supported
by statutory text, legislative history, or judicial precedent,
raise more questions than they answer. These new standards add
delay, uncertainty, and cost, but do not add confidence in reliable
standards for Section 101.
Other aspects of the changes of law also contribute uncertainty.
We aren't told when, or if, software instructions implemented on a
general purpose computer are deemed "tied" to a "particular
machine," for if Alappat's guidance that software converts a
general purpose computer into a special purpose machine remains
applicable, there is no need for the present ruling. For the
thousands of inventors who obtained patents under the court's
now-discarded criteria, their property rights are now
The court also avoids saying whether the State Street
Bank and AT&T v. Excel inventions would pass the new
test. The drafting of claims in machine or process form was not
determinative in those cases, for "we consider the scope of
§101 to be the same regardless of the form machine or
process in which a particular claim is drafted."
AT&T v. Excel, 172 F.3d at 1357. From either the machine
or the transformation viewpoint, the processing of data
representing "price, profit, percentage, cost, or loss" in State
Street Bank is not materially different from the processing of
the Bilski data representing commodity purchase and sale prices,
market transactions, and risk positions; yet Bilski is held to fail
our new test, while State Street is left hanging. The
uncertainty is illustrated in the contemporaneous decision of In
re Comiskey, 499 F.3d 1365, 1378-79 (Fed. Cir. 2007), where the
court held that "systems that depend for their operation on human
intelligence alone" to solve practical problems are not within the
scope of Section 101; and In re Nuijten, 500 F.3d 1346,
1353-54 (Fed. Cir. 2007),
where the court held that claims to a signal with an embedded
digital watermark encoded according to a given encoding process
were not directed to statutory subject matter under Section 101,
although the claims included "physical but transitory forms of
signal transmission such as radio broadcasts, electrical signals
through a wire, and light pluses through a fiber-optic cable."
Although this uncertainty may invite some to try their luck in
court, the wider effect will be a disincentive to innovation-based
commerce. For inventors, investors, competitors, and the public,
the most grievous consequence is the effect on inventions not made
or not developed because of uncertainty as to patent protection.
Only the successes need the patent right.
The Bilski invention has not been examined for
To be patentable, Bilski's invention must be novel and
non-obvious, and the specification and claims must meet the
requirements of enablement, description, specificity, best mode,
etc. See 35 U.S.C. §101 ("Whoever invents or discovers
a new and useful process . . . may obtain a patent therefor,
subject to the conditions and requirements of this title.");
Diehr, 490 U.S. at 190 (the question of whether an invention
is novel is distinct from whether the subject matter is statutory);
State Street Bank, 149 F.3d at 1377 ("Whether the patent's
claims are too broad to be patentable is not to be judged under
§101, but rather under §§102, 103, and 112."). I
don't know whether Bilski can meet these requirements but
neither does this court, for the claims have not been examined for
patentability, and no rejections apart from Section 101 are
included in this appeal.
Instead, the court states the "true issue before us" is "whether
Applicants are seeking to claim a fundamental principle (such as an
abstract idea) or mental process," maj. op. at 7, and answers
"yes." With respect, that is the wrong question, and the wrong
answer. Bilski's patent application describes his process of
analyzing the effects of supply and demand on commodity prices and
the use of a coupled transaction strategy to hedge against these
risks; this is not a fundamental principle or an abstract idea; it
is not a mental process or a law of nature. It is a "process," set
out in successive steps, for obtaining and analyzing information
and carrying out a series of commercial transactions for the
purpose of "managing the consumption risk costs of a commodity sold
by a commodity provider at a fixed price." Claim 1, preamble.
Because the process Bilski describes employs complex
mathematical calculations to assess various elements of risk, any
practicable embodiment would be conducted with the aid of a machine
a programmed computer but the court holds that
since computer-implementation is not recited in claim 1, for that
reason alone the process fails the "machine" part of the court's
machine-or-transformation test. Maj. op. at 24. And the court holds
that since Bilski's process involves the processing of data
concerning commodity prices and supply and demand and other risk
factors, the process fails the "transformation" test because no
"physical objects or substances" are transformed. Maj. op. at
28-29. The court then concludes that because Bilski's Claim 1 fails
the machine-or-transformation test it ipso facto preempts a
"fundamental principle" and is thereby barred from the patent
system under Section 101: an illogical leap that displays the flaws
in the court's analysis.
If a claim is unduly broad, or if it fails to include sufficient
specificity, the appropriate ground of rejection is Section 112,
for claims must "particularly point out and distinctly claim" the
invention. See In re Vaeck, 947 F.2d 488, 495-96
(Fed. Cir. 1991) (affirming rejection under Section 112 where
"[t]here is no reasonable correlation between the narrow disclosure
in applicant's specification and the broad scope of protection
sought in the claims"); In re Foster, 438 F.2d 1011, 1016
(C.C.P.A. 1971) (claims "not commensurate with appellants' own
definition of what they are seeking to cover" are rejected under
Section 112, rather than Section 101); In re Prater, 415
F.2d at 1403-04 (applying Section 112 to claims that included
mental steps). The filing of a broader claim than is supported in
the specification does not convert the invention into an
abstraction and evict the application from eligibility for
examination. A broad first claim in a patent application is
routine; it is not the crisis event postulated in the court's
The role of examination is to determine the scope of the claims
to which the applicant is entitled. See 37 C.F.R.
§1.104(a). The PTO's regulations provide:
On taking up an application for examination or a patent
in a reexamination proceeding, the examiner shall make a thorough
study thereof and shall make a thorough investigation of the
available prior art relating to the subject matter of the claimed
invention. The examination shall be complete with respect to both
compliance of the application or patent under reexamination with
the applicable statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form,
unless otherwise indicated.
Id. §1.104(a)(1). The Manual of Patent Examining
Procedure (MPEP) similarly instructs the examiners to conduct a
"thorough search of the prior art" before evaluating the invention
under Section 101. MPEP §2106(III) (8th ed., rev. 7, July.
2008) ("Prior to evaluating the claimed invention under 35 U.S.C.
§101, USPTO personnel are expected
to conduct a thorough search of the prior art."). The MPEP also
requires examiners to identify all grounds of rejection in the
first official PTO action to avoid unnecessary delays in
examination. Id. §2106(II) ("Under the principles of
compact prosecution, each claim should be reviewed for compliance
with every statutory requirement for patentability in the initial
review of the application, even if one or more claims are found to
be deficient with respect to some statutory requirement."). I note
that this requirement does not appear to have been here met.
Several amici curiae referred to the difficulties that
the PTO has reported in examining patents in areas where the
practice has been to preserve secrecy, for published prior art is
sparse. The Federal Trade Commission recognized that the problem of
"questionable" patents stems mostly from "the difficulty patent
examiners can have in considering all the relevant prior art in the
field and staying informed about the rapid advance of computer
science." FTC, To Promote Innovation: The Proper Balance of
Competition & Patent Law and Policy at ch. 3, pp. 44 (Oct.
2003), available at
http://www.ftc.gov/os/2003/10/innovationrpt.pdf. However, this
problem seems to be remedied, for the PTO reported in 2007 that for
Class 705, "[t]he cases the examiners are now working on have
noticeably narrower claims" than the cases filed in or before FY
2000. PTO Report at 9. The PTO reports that its search
fields have been enlarged, staff added, and supervision augmented.
FTC Report at ch. 1, p. 30. ("Since the PTO introduced
[these changes] the allowance rate for business method patents has
decreased, and the PTO believes that this decreased allowance rate
indicates improved PTO searches for prior art."). If this court's
purpose now is to improve the quality of
issued patents by eliminating access to patenting for large
classes of past, present, and future inventions, the remedy would
appear to be excessive.
A straightforward, efficient, and ultimately fair approach to
the evaluation of "new and useful" processes quoting
Section 101 is to recognize that a process invention that
is not clearly a "fundamental truth, law of nature, or abstract
idea" is eligible for examination for patentability. I do not
suggest that basic scientific discoveries are a proper subject
matter of patents (the Court in Chakrabarty mentioned
E=mc2 and the law of gravity), and I do not attempt an
all-purpose definition of the boundary between scientific theory
and technological application. But it is rare indeed that a
question arises at the boundary of basic science; more usual is the
situation illustrated by Samuel Morse's telegraph, in which the
Court simply held that Morse's general claim was "too broad,"
exceeding the scope of his practical application.
Bilski's process for determining risk in commodity transactions
does not become an abstraction because it is broadly claimed in his
first claim. It may be claimed so broadly that it reads on the
prior art, but it is neither a fundamental truth nor an
abstraction. Bilski's ten other claims contain further details and
limitations, removing them farther from abstraction. Although claim
1 may have been deemed "representative" with respect to Section
101, the differences among the claims may be significant with
respect to Sections 102, 103, and 112. Bilski's application, now
pending for eleven years, has yet to be examined for
In sum, the text of Section 101, its statutory history, its
interpretation by the Supreme Court, and its application by the
courts, contravene this court's redefinition of
the statutory term "process." The court's decision affects
present and future rights and incentives, and usurps the
legislative role. The judicial role is to support stability and
predictability in the law, with fidelity to statue and precedent,
and respect for the principles of stare decisis.
Patents provide an incentive to invest in and work in new
directions. In United States v. Line Materials Co., 333 U.S.
287, 332 (1948), Justice Burton, joined by Chief Justice Vinson and
Justice Frankfurter, remarked that "the frontiers of science have
expanded until civilization now depends largely upon discoveries on
those frontiers to meet the infinite needs of the future. The
United States, thus far, has taken a leading part in making those
discoveries and in putting them to use." This remains true today.
It is antithetical to this incentive to restrict eligibility for
patenting to what has been done in the past, and to foreclose what
might be done in the future.
||My colleagues cite only part of this quotation as the Court's
holding in Flook, maj. op. at 13, ignoring the qualifying
words "[a]n argument can be made" as well as the next sentence
clarifying that this argument was rejected by the Court in
Benson and is now again rejected in Flook.
||Many amici curiae pointed out that the Supreme Court did
not adopt the test that this court now attributes to it. See,
e.g., Br. of Amicus Curiae Am. Intellectual Property Law
Ass'n at 18 & n.16; Br. of Amicus Curiae Biotechnology Industry
Org. at 17-21; Br. of Amicus Curiae Boston Patent Law Ass'n
at 6-8; Br. of Amicus Curiae Business Software Alliance at
13; Br. of Amicus Curiae Federal Circuit Bar Ass'n at 21;
Br. of Amicus Curiae Regulatory Datacorp, Inc. at 12-13; Br.
of Amicus Curiae Accenture at 16-17; Br. of Amicus
Curiae Washington State Patent Law Ass'n at 10-11.
||Scholarly histories include M. Frumkin, The Origin of
Patents, 27 J.P.O.S. 143 (1945); E. Wyndham Hulme, Privy
Council Law and Practice of Letters Patent for Invention from the
Restoration to 1794, 33 L.Q. Rev. 63 (Part I), 180 (Part II)
(1917); Hulme, On the History of Patent Law in the Seventeenth
and Eighteenth Centuries, 18 L.Q. Rev. 280 (1902); Hulme,
The History of the Patent System Under the Prerogative and at
Common Law, 12 L.Q. Rev. 141 (1896); Ramon A. Klitzke,
Historical Background of the English Patent Law, 41 J.P.O.S
615 (1959); Christine MacLeod, Inventing the Industrial
Revolution: The English Patent System 1660-1800 (1988); Frank
D. Prager, Historic Background and Foundation of American Patent
Law, 5 Am. J. Legal Hist. 309 (1961); Brad Sherman & Lionel
Bently, The Making of Modern Intellectual Property Law: The
British Experience , 1760-1911 (1999); Edward C. Walterscheid,
The Early Evolution of the United States Patent Law:
Antecedents, printed serially at J. Pat. & Trademark
Off. Soc'y ("J.P.T.O.S.") 76:697 (1994) (Part 1); 76:849 (1994)
(Part 2); 77:771, 847 (1995) (Part 3); 78:77 (1996) (Part 4);
78:615 (1996) (Part 5, part I); and 78:665 (1996) (Part 5, part II)
(hereinafter "Early Evolution"); and Edward C. Walterscheid,
To Promote the Progress of Useful Arts: American Patent Law and
Administration, 1798-1836 (1998).
||The PTO recognizes that patents on "business methods" have been
eligible subject matter for two centuries. See USPTO White
Paper 2 ("Financial patents in the paper-based technologies have
been granted continuously for over two hundred years.").
United States Court of Appeals for the Federal
(Serial No. 08/883,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board
of Patent Appeals and Interferences.
RADER, Circuit Judge, dissenting.
This court labors for page after page, paragraph after
paragraph, explanation after explanation to say what could have
been said in a single sentence: "Because Bilski claims merely an
abstract idea, this court affirms the Board's rejection." If the
only problem of this vast judicial tome were its circuitous path, I
would not dissent, but this venture also disrupts settled and wise
principles of law.
Much of the court's difficulty lies in its reliance on dicta
taken out of context from numerous Supreme Court opinions dealing
with the technology of the past. In other words, as innovators seek
the path to the next techno-revolution, this court ties our patent
system to dicta from an industrial age decades removed from the
bleeding edge. A direct reading of the Supreme Court's principles
and cases on patent eligibility would yield the one-sentence
resolution suggested above. Because this court, however, links
patent eligibility to the age of iron and steel at a time of
subatomic particles and terabytes, I must respectfully dissent.
The Patent Law of the United States has always embodied the
philosophy that "ingenuity should receive a liberal encouragement."
Writings of Thomas Jefferson 75-76 (Washington ed. 1871); see
also Diamond v. Chakrabarty, 447 U.S. 303, 308-09
(1980). True to this principle, the original Act made "any
new and useful art, machine, manufacture or composition of matter"
patent eligible. Act of Feb. 21, 1793, ch. 11, § 1, 1 Stat.
318 (emphasis supplied). Even as the laws have evolved, that
bedrock principle remains at their foundation. Thus, the Patent Act
from its inception focused patentability on the specific
characteristics of the claimed invention its novelty and
utility not on its particular subject matter category.
The modern incarnation of section 101 holds fast to that
principle, setting forth the broad categories of patent eligible
subject matter, and conditioning patentability on the
characteristics, not the category, of the claimed invention:
Whoever 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
35 U.S.C. § 101 (2006) (emphases supplied). As I have
suggested, the Supreme Court requires this court to rely on the
"ordinary, contemporary, common meaning" of these words. Diamond
v. Diehr, 450 U.S. 175, 182 (1981). If this court would follow
that Supreme Court rule, it would afford broad patent protection to
new and useful inventions that fall within the enumerated
categories and satisfy the other conditions of patentability. That
is, after all, precisely what the statute says.
In Diehr, the Supreme Court adopted a very useful
algorithm for determining patentable subject matter, namely, follow
the Patent Act itself. After setting forth the
procedural history of that case, the Supreme Court stated: "In
cases of statutory construction, we begin with the language of the
statute." Diehr, 450 U.S. at 182. With an eye to the
Benson language (so central to this court's reasoning) 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," Gottschalk v. Benson,
409 U.S. 63, 72 (1972), the Court then noted:
[I]n dealing with the patent laws, we have more than
once cautioned that "courts 'should not read into the patent laws
limitations and conditions which the legislature has not
Diehr, 450 U.S. at 182 (citations omitted). Indeed section
101's term "process" contains no hint of an exclusion for certain
types of methods. This court today nonetheless holds that a process
is eligible only if it falls within certain subsets of "process."
Ironically the Patent Act itself specifically defines "process"
without any of these judicial innovations. 35 U.S.C. § 100(b).
Therefore, as Diehr commands, this court should refrain from
creating new circuitous judge-made tests.
Read in context, section 101 gives further reasons for
interpretation without innovation. Specifically, section 101 itself
distinguishes patent eligibility from the conditions of
patentability providing generously for patent eligibility,
but noting that patentability requires substantially more. The
language sweeps in "any new and useful process . . . [and]
any improvement." 35 U.S.C. § 101 (emphasis supplied).
As an expansive modifier, "any" embraces the broad and ordinary
meanings of the term "process," for instance. The language of
section 101 conveys no implication that the Act extends patent
protection to some subcategories of processes but not others. It
does not mean "some" or even "most," but all.
Unlike the laws of other nations that include broad exclusions
to eligible subject matter, such as European restrictions on
software and other method patents, see European Patent
Convention of 1973, Art. 52(2)(c) and (3), and prohibitions against
patents deemed contrary to the public morality, see
id. at Art. 53(a), U.S. law and policy have embraced
advances without regard to their subject matter. That promise of
protection, in turn, fuels the research that, at least for now,
makes this nation the world's innovation leader.
With all of its legal sophistry, the court's new test for
eligibility today does not answer the most fundamental question of
all: why would the expansive language of section 101
preclude protection of innovation simply because it is not
transformational or properly linked to a machine (whatever that
means)? Stated even more simply, why should some categories of
invention deserve no protection?
This court, which reads the fine print of Supreme Court
decisions from the Industrial Age with admirable precision, misses
the real import of those decisions. The Supreme Court has answered
the fundamental question above many times. The Supreme Court has
counseled that the only limits on eligibility are inventions that
embrace natural laws, natural phenomena, and abstract ideas.
See, e.g., Diehr, 450 U.S. at 185 ("This Court has
undoubtedly recognized limits to § 101 and every discovery is
not embraced within the statutory terms. Excluded from such patent
protection are laws of nature, natural phenomena, and abstract
ideas."). In Diehr, the Supreme Court's last pronouncement
on eligibility for "processes," the Court said directly that its
only exclusions from the statutory language are these three common
"Our recent holdings . . . stand for no more than these
long-established principles." Id. at 185.
This point deserves repetition. The Supreme Court stated that
all of the transformation and machine linkage explanations simply
restated the abstractness rule. In reading Diehr to suggest
a non-statutory transformation or preemption test, this court
ignores the Court's admonition that all of its recent holdings do
no more than restate the natural laws and abstractness exclusions.
Id.; see also Chakrabarty, 447 U.S. at 310
("Here, by contrast, the patentee has produced a new bacterium with
markedly different characteristics from any found in nature and one
having the potential for significant utility. His discovery is not
nature's handiwork, but his own; accordingly it is patentable
subject matter under § 101."); Parker v. Flook, 437
U.S. 584, 591-594 (1978) ("Even though a phenomenon of nature or
mathematical formula may be well known, an inve ntive application
of the principle may be patented. Conversely, the discovery of such
a phenomenon cannot support a patent unless there is some other
inventive concept in its application."); In re Taner, 681
F.2d 787, 791 (C.C.P.A 1982) ("In Diehr, the Supreme Court
made clear that Benson stands for no more than the
long-established principle that laws of nature, natural phenomena,
and abstract ideas are excluded from patent protection.").
The abstractness and natural law preclusions not only make
sense, they explain the purpose of the expansive language of
section 101. Natural laws and phenomena can never qualify for
patent protection because they cannot be invented at all. After
all, God or Allah or Jahveh or Vishnu or the Great Spirit provided
these laws and phenomena as humanity's common heritage.
Furthermore, abstract ideas can never
qualify for patent protection because the Act intends, as
section 101 explains, to provide "useful" technology. An abstract
idea must be applied to (transformed into) a practical use before
it qualifies for protection. The fine print of Supreme Court
opinions conveys nothing more than these basic principles. Yet this
court expands (transforms?) some Supreme Court language into rules
that defy the Supreme Court's own rule.
When considering the eligibility of "processes," this court
should focus on the potential for an abstract claim. Such an
abstract claim would appear in a form that is not even susceptible
to examination against prior art under the traditional tests for
patentability. Thus this court would wish to ensure that the claim
supplied some concrete, tangible technology for examination. Indeed
the hedging claim at stake in this appeal is a classic example of
abstractness. Bilski's method for hedging risk in commodities
trading is either a vague economic concept or obvious on its face.
Hedging is a fundamental economic practice long prevalent in our
system of commerce and taught in any introductory finance class. In
any event, this facially abstract claim does not warrant the
creation of new eligibility exclusions.
This court's willingness to venture away from the statute
follows on the heels of an oft-discussed dissent from the Supreme
Court's dismissal of its grant of certiorari in Lab. Corp. of
Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006).
That dissent is premised on a fundamental misapprehension of the
distinction between a natural phenomenon and a patentable
The distinction between "phenomena of nature," "mental
processes," and "abstract intellectual concepts" is not difficult
to draw. The fundamental error in that Lab
Corp. dissent is its failure to recognize the difference
between a patent ineligible relationship i.e., that between
high homocysteine levels and folate and cobalamin deficiencies
and a patent eligible process for applying that
relationship to achieve a useful, tangible, and concrete result
i.e., diagnosis of potentially fatal conditions in
patients. Nothing abstract here. Moreover, testing blood for a
dangerous condition is not a natural phenomenon, but a human
The distinction is simple but critical: A patient may suffer
from the unpatentable phenomenon of nature, namely high
homocysteine levels and low folate. But the invention does not
attempt to claim that natural phenomenon. Instead the patent claims
a process for assaying a patient's blood and then analyzing the
results with a new process that detects the life-threatening
condition. Moreover, the sick patient does not practice the
patented invention. Instead the patent covers a process for testing
blood that produces a useful, concrete, and tangible result:
incontrovertible diagnostic evidence to save lives. The patent does
not claim the patent ineligible relationship between folate and
homocysteine, nor does it foreclose future inventors from using
that relationship to devise better or different processes. Contrary
to the language of the dissent, it is the sick patient who
"embod[ies] only the correlation between homocysteine and vitamin
deficiency," Lab. Corp., 548 U.S. at 137, not the claimed
From the standpoint of policy, the Lab Corp. dissent
avoids the same fundamental question that the Federal Circuit does
not ask or answer today: Is this entire field of subject matter
undeserving of incentives for invention? If so, why? In the context
of Lab. Corp. that question is very telling: the natural
condition diagnosed by
the invention is debilitating and even deadly. See U.S.
Patent No. 4,940,658, col. 1, ll. 32-40 ("Accurate and early
diagnosis of cobalamin and folate deficiencies . . . is important
because these deficiencies can lead to life-threatening hematologic
abnormalities . . . . Accurate and early diagnosis of cobalamin
deficiency is especially important because it can also lead to
incapacitating and life-threatening neuropsychiatric
abnormalities."). Before the invention featured in Lab
Corp., medical science lacked an affordable, reliable, and fast
means to detect this debilitating condition. Denial of patent
protection for this innovation precisely because of its
elegance and simplicity (the chief aims of all good science)
would undermine and discourage future research for
diagnostic tools. Put another way, does not Patent Law wish to
encourage researchers to find simple blood tests or urine tests
that predict and diagnose breast cancers or immunodeficiency
diseases? In that context, this court might profitably ask whether
its decisions incentivize research for cures and other important
technical advances. Without such attention, this court
inadvertently advises investors that they should divert their
unprotectable investments away from discovery of "scientific
relationships" within the body that diagnose breast cancer or Lou
Gehrig's disease or Parkinson's or whatever.
In sum, this court today invents several circuitous and
unnecessary tests. It should have merely noted that Bilski attempts
to patent an abstract idea. Nothing more was needed. Instead this
opinion propagates unanswerable questions: What form or amount of
"transformation" suffices? When is a "representative" of a physical
object sufficiently linked to that object to satisfy the
transformation test? (e.g., Does only vital
sign data taken directly from a patient qualify, or can
population data derived in part from statistics and extrapolation
be used?) What link to a machine is sufficient to invoke the "or
machine" prong? Are the "specific" machines of Benson
required, or can a general purpose computer qualify? What
constitutes "extra-solution activity?" If a process may meet
eligibility muster as a "machine," why does the Act "require" a
machine link for a "process" to show eligibility? Does the rule
against redundancy itself suggest an inadequacy in this complex
spider web of tests supposedly "required" by the language of
One final point, reading section 101 as it is written will not
permit a flurry of frivolous and useless inventions. Even beyond
the exclusion for abstractness, the final clause of section 101
"subject to the conditions and requirements of this title"
ensures that a claimed invention must still satisfy the
"conditions and requirements" set forth in the remainder title 35.
Id. These statutory conditions and requirements better serve
the function of screening out unpatentable inventions than some
vague "transformation" or "proper machine link" test.
In simple terms, the statute does not mention "transformations"
or any of the other Industrial Age descriptions of subject matter
categories that this court endows with inordinate importance today.
The Act has not empowered the courts to impose limitations on
patent eligible subject matter beyond the broad and ordinary
meaning of the terms process, machine, manufacture, and composition
of matter. It has instead preserved the promise of patent
protection for still unknown fields of invention.
Innovation has moved beyond the brick and mortar world. Even
this court's test, with its caveats and winding explanations seems
to recognize this. Today's software
transforms our lives without physical anchors. This court's test
not only risks hobbling these advances, but precluding patent
protection for tomorrow's technologies. "We still do not know one
thousandth of one percent of what nature has revealed to us."
Attributed to Albert Einstein. If this court has its way, the
Patent Act may not incentivize, but complicate, our search for the
vast secrets of nature. When all else fails, consult the
United States Court of Appeals for the Federal
(Serial No. 08/833,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board
of Patent Appeals and Interferences.
DYK, Circuit Judge, with whom LINN, Circuit Judge,
While I fully join the majority opinion, I write separately to
respond to the claim in the two dissents that the majority's
opinion is not grounded in the statute, but rather "usurps the
legislative role."1 In fact, the unpatentability of
processes not involving manufactures, machines, or compositions of
matter has been firmly embedded in the statute since the time of
the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793). It is our
dissenting colleagues who would legislate by expanding patentable
subject matter far beyond what is allowed by the statute.
Section 101 now provides:
Whoever 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 (emphases added).
The current version of § 101 can be traced back to the
Patent Act of 1793. In relevant part, the 1793 Act stated that a
patent may be granted to any person or persons who:
shall allege that he or they have invented 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. 318, 319 § 1 (1793) (emphases added). The criteria for
patentability established by the 1793 Act remained essentially
unchanged until 1952, when Congress amended § 101 by replacing
the word "art" with "process" and providing in § 100(b) a
definition of the term "process". The Supreme Court has made clear
that this change did not alter the substantive understanding of the
statute; it did not broaden the scope of patentable subject
matter.2 Thus, our interpretation of §
101 must begin with a consideration of what the drafters of the
early patent statutes understood the patentability standard to
require in 1793. See Diehr, 450 U.S. at 182-83
(looking to the 1793 Act).
The patentability criteria of the 1793 Act were to a significant
extent the same in the 1790 Act.3 The 1790 "statute
was largely based on and incorporated" features of
the English system and reveals a sophisticated knowledge of the
English patent law and practice.4 This is reflected
in Senate committee report5 for the bill that became the 1790
Act, which expressly noted the drafters. reliance on the English
The Bill depending before the House of Representatives
for the Promotion of useful Arts is framed according to the
Course of Practice in the English Patent Office except in two
22 J. Pat. Off. Soc'y at 363 (emphasis added).6
Likewise, the legislative history of the 1793 Patent Act reflects
the same keen understanding of English patent practice. During a
debate in the House over the creation of a Patent Office, for
Representative who introduced the bill noted that its principles
were "an imitation of the Patent System of Great Britain." 3 Annals
of Congress 855 (1793).7
Later, Justice Story, writing for the Supreme Court, recognized
the profound influence of the English practice on these early
patent laws, which in many respects codified the common law:
It is obvious to the careful inquirer, that many of the
provisions of our patent act are derived from the principles and
practice which have prevailed in the construction of that of
England. . . . The language of [the patent clause of the
Statute of Monopolies] is not, as we shall presently see, identical
with ours; but the construction of it adopted by the English
courts, and the principles and practice which have long regulated
the grants of their patents, as they must have been known and are
tacitly referred to in some of the provisions of our own statute,
afford materials to illustrate it.
Pennock v. Dialogue, 27 U.S. 1, 18 (1829) (emphases added);
see also Graham v. John Deere Co., 383 U.S. 1, 5
(1966) (noting that first patent statute was written against the
"backdrop" of English monopoly practices); Sears, Roebuck &
Co. v. Stiffel Co., 376 U.S. 225, 230 n.6 (1964) ("Much
American patent law derives from English patent law.").
While Congress departed from the English practice in certain
limited respects, in many respects Congress simply adopted the
English practice without change. Both the 1790 and the 1793 Acts,
for example, adopted the same 14-year patent term as in
England. Both also required inventors to file a written
specification a requirement recognized by the English
common law courts in the mid-eighteenth century.8
In addition, as discussed below, the categories of patentable
subject matter closely tracked the English approach, and in certain
respects reflected a deliberate choice between competing views
prevalent in England at the time.
The English practice in 1793, imported into the American
statutes, explicitly recognized a limit on patentable subject
matter. As the Supreme Court recounted in Graham v. John
Deere, the English concern about limiting the allowable scope
of patents arose from an aversion to the odious Crown practice of
granting patents on particular types of businesses to court
favorites. 383 U.S. 1, 5 (1966); see also MacLeod,
supra n.8 at 15 ("But most offensive of all was the granting
of monopoly powers in established industries, as a form of
patronage, to courtiers whom the crown could not otherwise afford
to reward."). Parliament responded to the Crown.s abuses in 1623 by
passing the Statute of Monopolies, prohibiting the Crown from
granting these despised industry-type monopolies. Not all
monopolies were prohibited, however: the Statute expressly exempted
invention-type patent monopolies. Section 6 of the Statute exempted
from its prohibitions "letters patent and grants of privilege for
the term of fourteen years or under, hereafter to be made, of the
sole working or making of any manner of new manufactures within
this realm, to the true and first inventor and inventors of such
manufactures . . . ." 21 Jac. 1. c.3, s.6 (emphases added).
Each of the five categories of patentable subject matter
recognized by the 1793 Patent Act (1) "manufacture," (2)
"machine," (3) "composition of matter," (4) "any new and useful
improvement," and (5) "art" was drawn either from the
Statute of Monopolies and the common law refinement of its
interpretation or resolved competing views being debated in England
at the time. See To Promote the Progress,
supra n.4 at 239.
"Manufacture." At the most basic level, the 1793 Act,
like the Statute of Monopolies, expressly provided for the
patentability of "manufactures." This language was not accidental,
but rather reflected a conscious adoption of that term as it was
used in the English practice. Id. ("It is clear that the
Congress sought to incorporate into the U.S. statutory scheme in
1793 at least as much of the common law interpretation of 'new
manufactures' as was understood at the time.").
"Machine." Likewise, the category of "machines" in the
1793 Act had long been understood to be within the term
"manufactures" as used in the English statute. See
id.; see, e.g., Morris v. Bramson, 1 Carp.
P.C. 30, 31 (K.B. 1776) (sustaining a patent "for an engine or
machine on which is fixed a set of working needles. . . for the
making of eyelet-holes") (emphasis added); MacLeod, supra
n.8 at 101 (noting, among numerous other early machine patents,
seven patents on "machinery to raise coal and ores" before
"Composition of Matter." Although the 1790 statute did not
explicitly include "compositions of matter," this was remedied in
the 1793 statute. At the time, "compositions of matter" were
already understood to be a type of manufacture patentable under the
English statute. See To Promote the Progress,
supra n.4, at
224 n.4. One example is found in Liardet v. Johnson, 1
Carp. P.C. 35 (K.B. 1778), a case involving a patent on a
"composition" of stucco (a composition of matter). Lord Mansfield's
jury instructions noted that by the time of that trial he had
decided "several cases" involving compositions: "But if . . . the
specification of the composition gives no proportions, there is an
end of his patent. . . . I have determined, [in] several cases
here, the specification must state, where there is a composition,
the proportions . . . ."9
"Any new and useful improvement." The reference to "any
new and useful improvement" in the 1793 Act also adopted a
consensus recently reached by the English courts. The common law
courts had first ruled in Bircot's Case in the early
seventeenth century that an improvement to an existing machine
could not be the proper subject of a patent under the Statute of
Monopolies. See Boulton v. Bull, 2 H. Bl. 463, 488
(C.P. 1795). In 1776 that line of cases was overruled in Morris
v. Bramson, because such a reading of the statute "would go to
repeal almost every patent that was ever granted."10
"Art." As the Supreme Court has recognized, a process
"was considered a form of 'art' as that term was used in the 1793
Act." Diehr, 450 U.S. at 182 (citing Corning v.
Burden, 56 U.S. at 267-268). The language of the Statute of
Monopolies permitted patents on that which could be characterized
as the "working or making of any manner of new manufactures within
this realm." 21 Jac. 1. c.3, s.6. While this language plainly
applied to tangible "new manufactures" (such as machines or
compositions of matter), it also appeared to allow patenting of
manufacturing processes as the "working or making of any
manner of new manufactures." Thus, under the Statute of Monopolies
patents could be had on the "working or making of any manner of new
manufactures." Numerous method patents had issued by 1793,
including James Watt's famous 1769 patent on a "[m]ethod of
diminishing the consumption of fuel in [steam]-engines."11 However, the English courts in the
mid-eighteenth century had not yet resolved whether processes for
manufacturing were themselves patentable under the statute, and as
discussed below, the issue was being actively litigated in the
English courts. In the 1793 Act Congress resolved this question by
including the term "art" in the statute, adopting the practice of
the English law officers and the views of those in England who
favored process patents.
The question remains as to what processes were considered to be
patentable in England at the time of the 1793 Act. Examination of
the relevant sources leads to the conclusion that the method Bilski
seeks to claim would not have been considered patentable subject
matter as a process under the English statute.
First, the language of the Statute of Monopolies
"working or making of any manner of new manufactures"
suggests that only processes that related to "manufactures"
(including machines or compositions of matter) could be
Second, the English patent practice before and contemporaneous
with the 1793 Act confirms the notion that patentable subject
matter was limited by the term "manufacture" in the Statute of
Monopolies and required a relation to the other categories of
patentable subject matter. The organization of human activity was
not within its bounds. Rather, the patents registered in England
under the Statute of Monopolies before 1793 were limited to
articles of manufacture, machines for manufacturing, compositions
of matter, and related processes. A complete list of such patents
(with a few missing patents from the 17th century) was published in
the mid- 1800s by Bennet Woodcroft, the first head of the English
Patent Office.12 Representative examples of
patented processes at the time include: "Method of making a more
easy and perfect division in stocking frame-work manufactures," No.
1417 to John Webb (1784); "Making and preparing potashes and
pearl-ashes of materials not before used for the purpose," No. 1223
to Richard Shannon (1779); "Making salt from sea-water or brine, by
steam," No. 1006 to Daniel Scott (1772); "Milling raw hides and
skins so as to be equally good for leather as if tanned," No. 893
to George Merchant (1768); "Making salt, and removing the corrosive
nature of the same, by a separate preparation of the brine," No.
416 to George Campbell (1717); and "Making good and merchantable
tough iron . . . with one-fifth of the expense of charcoal as now
used," No. 113 to Sir Phillibert Vernatt (1637).
Nothing in Woodcroft's list suggests that any of these hundreds
of patents was on a method for organizing human activity, save for
one aberrational patent discussed
below. Rather, the established practice reflects the
understanding that only processes related to manufacturing or
"manufactures" were within the statute. The English cases before
1793 recognized that the practice followed in issuing patents was
directly relevant to the construction of the statute. See,
e.g., Morris, 1 Carp. P.C. at 34 (declining to read the
statute in such a way that "would go to repeal almost every patent
that was ever granted").
Third, nearly contemporaneous English cases following shortly
after the 1793 Act lend further insight into what processes were
thought to be patentable under the English practice at the time the
statute was enacted. Although the issue of the validity of process
patents had not conclusively been settled in the English common law
before 1793, the question was brought before the courts in the
landmark case of Boulton v. Bull, 2 H. Bl. 463, 465 (C.P.
1795), which involved James Watt's patent for a "method of
lessening the consumption of steam, and consequently fuel in
[steam] engines."13 In 1795, the court rendered a
split decision, with two judges on each side. Boulton, 2 H.
Bl. at 463 (1795). Those who viewed process patents as invalid, as
did Justice Buller, urged that a method was merely an unpatentable
principle: "A patent must be for some new production from [elements
of nature], and not for the elements themselves." Id. at
485. He thought "it impossible to support a patent for a method
only, without having carried it into effect and produced some new
substance." Id. at 486. Justice Health similarly found that
the "new invented method for lessening the consumption of steam
and fuel in [steam] engines" (i.e., the Watt patent), being
neither "machinery" nor a "substance (such as medicine) formed
by chemical and other processes," was not within the Statute of
Monopolies. Id. at 481-82. In contrast, Lord Chief Justice
Eyres, who believed processes had long been a valid subject of
patents, urged that "two-thirds, I believe I might say
three-fourths, of all patents granted since the statute [of
Monopolies] passed, are for methods of operating and of
manufacturing . . . ." Id. at 494-95 (emphasis added).
He agreed that "[u]ndoubtedly there can be no patent for a mere
principle; but for a principle so far embodied and connected
with corporeal substances . . . I think there may be a patent."
Id. at 495 (emphasis added). Justice Rooke also noted that
Watt's method was within the statute because it was connected with
machinery: "What method can there be of saving steam or fuel in
engines, but by some variation in the construction of them?"
Id. at 478. The Justices who believed process patents were
valid spoke in terms of manufacturing, machines, and compositions
of matter, because the processes they believed fell within the
statute were processes that "embodied and connected with corporeal
substances." Id. at 495.
In 1799, on appeal from another case involving the same Watt
patent, the validity of such process patents were upheld.
Hornblower v. Boulton (K.B. 1799), 8 T.R. 95. There, Chief
Justice Lord Kenyon stated that "it evidently appears that the
patentee claims a monopoly for an engine or machine, composed of
material parts, which are to produce the effect described; and that
the mode of producing this is so described, as to enable mechanics
to produce it. . . . I have no doubt in saying, that this is a
patent for a manufacture, which I understand to be something made
by the hands of man." Id. at 99. Justice Grose agreed,
finding that "Mr. Watt had invented a method of lessening
the consumption of steam and fuel in [steam] engines", and this was
"not a patent for a mere principle, but for the working and making
of a new manufacture within the words and meaning of the statute."
Id. at 101-02. He further noted, however, that "This method
. . . if not effected or accompanied by a manufacture, I
should hardly consider as within the [statute]." Id. at
102-03 (emphasis added). Justice Lawrence similarly found such
process patents to be permissible: "Engine and method mean the same
thing, and may be the subject of a patent. 'Method,' properly
speaking, is only placing several things and performing several
operations in the most convenient order . . . ." Id. at 106.
There is no suggestion in any of this early consideration of
process patents that processes for organizing human activity were
or ever had been patentable. Rather, the uniform assumption was
that the only processes that were patentable were processes for
using or creating manufactures, machines, and compositions of
The dissenters here, by implication at least, appear to assume
that this consistent English practice should somehow be ignored in
interpreting the current statute because of technological
change.14 There are several responses to
The first of these is that the Supreme Court has made clear that
when Congress intends to codify existing law, as was the case with
the 1793 statute, the law must be interpreted in light of the
practice at the time of codification. In Schmuck v.
States, 489 U.S. 705, 718-19 (1989), for example, the
Court considered the proper interpretation of Rule 31(c) of the
Federal Rules of Criminal Procedure. The rule, "which ha[d] not
been amended since its adoption in 1944," was a restatement of an
1872 Act "codif[ying] the common law for federal criminal trials."
Because of this fact, the Court found that the "prevailing practice
at the time of the Rule's promulgation informs our understanding of
its terms." Id.; see also, e.g., Eldred v.
Ashcroft, 537 U.S. 186, 200 n.5 (2003) (considering the English
practice at the time of the enactment of the 1790 copyright act);
Tome v. United States, 513 U.S. 150, 159-60, 166 (1995)
(looking to practice and noting that "a majority of common-law
courts were performing [a task required by the common law] for well
over a century" in interpreting a Federal Rule of Evidence that
"was intended to carry over the common-law"); Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549-554
(1985) (relying on the history and practice of copyright fair-use
when statutory provision reflected the "intent of Congress to
codify the common-law doctrine"); Sprague v. Ticonic Nat'l
Bank, 307 U.S. 161, 164-65 (1939) (considering the English
practice "which theretofore had been evolved in the English Court
of Chancery" at the time of the 1789 Judiciary Act in determining
availability of costs under equity jurisdiction).
Second, the Supreme Court language upon which the dissents
rely15 offers no warrant for rewriting
the 1793 Act. To be sure, Congress intended the courts to have some
latitude in interpreting § 101 to cover emerging technologies,
Chakrabarty, 447 U.S. at 316, and the categorical terms
chosen are sufficiently broad to encompass a wide range of new
technologies. But there is no evidence that Congress intended to
confer upon the courts latitude to extend the categories of
patentable subject matter in a significant way. To the contrary,
the Supreme Court made clear that "Congress has performed its
constitutional role in defining patentable subject matter in §
101; we perform ours in construing the language Congress has
employed. In so doing, our obligation is to take statutes as we
find them, guided, if ambiguity appears, by the legislative history
and statutory purpose." Id. at 315. In Benson, the
Court rejected the argument that its decision would "freeze process
patents to old technologies, leaving no room for the revelations of
the new, onrushing technology." Gottschalk v. Benson, 409
U.S. 63, 71 (1972). Instead, the Court explained that it "may be
that the patent laws should be extended to cover [such onrushing
technology], a policy matter to which we are not competent to
speak" but that "considered action by the Congress is needed."
Id. at 72-73.
Third, we are not dealing here with a type of subject matter
unknown in 1793. One commentator has noted:
The absence of business method patents cannot be
explained by an absence of entrepreneurial creativity in Great
Britain during the century before the American Revolution. On the
contrary, 1720 is widely hailed as the beginning of a new era in
English public finance and the beginning of major innovations in
Malla Pollack, The Multiple Unconstitutionality of Business
Method Patents, 28 Rutgers Computer & Tech. L.J. 61, 96
(2002) (footnotes omitted).16 In the hundreds
of patents in Woodcroft's exhaustive list of English patents
granted from 1612 to 1793, there appears to be only a single patent
akin to the type of method Bilski seeks to claim. That sole
exception was a patent granted to John Knox in 1778 on a "Plan for
assurances on lives of persons from 10 to 80 years of age."17 Later commentators have viewed
this single patent as clearly contrary to the Statute of
Such protection of an idea should be impossible . . . .
It is difficult to understand how Knox's plan for insuring lives
could be regarded as 'a new manner of manufacture'; 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, Knox declared, would 'contribute to the increase of
the Public Revenues.'
Renn, supra n.16 at 285. There is no indication that Knox's
patent was ever enforced or its validity tested, or that this
example led to other patents or efforts to patent similar
activities. But the existence of the Knox patent suggests that as
of 1793 the potential advantage of patenting such activities was
In short, the need to accommodate technological change in no way
the judiciary is charged with rewriting the statute to include
methods for organizing human activity that do not involve
manufactures, machines, or compositions of matter.
Since the 1793 statute was reenacted in 1952, it is finally
important also to inquire whether between 1793 and 1952 the U.S.
Patent Office and the courts in this country had departed from the
English practice and allowed patents such as those sought by
Bilski. In fact, the U.S. Patent Office operating under the 1793
Act hewed closely to the original understanding of the statute. As
in the English practice of the time, there is no evidence that
patents were granted under the 1793 Act on methods of organizing
human activity not involving manufactures, machines or the creation
of compositions of matter. The amicus briefs have addressed the
early American practice, and some of them claim that human activity
patents were allowed in the early period. To the contrary, the
patents cited in the briefs are plainly distinguishable.
The earliest claimed human activity patent cited in the briefs
issued in 1840, entitled "Improvement in the Mathematical Operation
of Drawing Lottery-Schemes." Br. of Amicus Curiae Regulatory
Datacorp 23 n.54. But that patent is fundamentally unlike the
Bilski claim, since it does not claim a method of organizing human
activity not involving manufactures, machines or the creation of
compositions of matter. See U.S. Patent No. 1700 (issued
July 18, 1840). Rather, it is directed to a scheme of combining
different combinations of numbers onto a large number of physical
lottery tickets (i.e., a
method for manufacturing lottery tickets). Id. col.1. The
other early-issued patents cited in the amicus briefs are similarly
Likewise, Supreme Court decisions before the 1952 Patent Act
assumed that the only processes that were patentable were those
involving other types of patentable subject matter. In later cases
the Supreme Court has recognized that these cases set forth the
standard for process patents in the pre-1952 period. Diehr,
450 U.S. at 182-84; Gottschalk, 409 U.S. at 69-70. The
leading case is Corning v. Burden, 56 U.S. 252 (1853).
There, the Supreme Court discussed the patentability of
A process, eo nomine, is not made the subject of
a patent in our act of Congress. It is included under the general
term 'useful art.' An art may require one or more processes or
machines in order to produce a certain result or manufacture.
The term machine includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce
a certain effect or result. But where the result or effect is
produced by chemical action, by the operation or application of
some element or power of nature, or of one substance to another,
such modes, methods, or operations, are called 'processes.' A
new process is usually the result of discovery; a machine, of
invention. The arts of tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores, and numerous others are
usually carried on by processes, as distinguished from machines. .
. . It is for the discovery or invention of
some practicable method or means of producing a
beneficial result or effect that a patent is granted, and not for
the result or effect itself. It is when the term process is used to
represent the means or method of producing a result that it is
patentable, and it will include all methods or means which are not
effected by mechanism or mechanical combinations.
Id. at 267-68 (emphases added). In Cochrane v.
Deener, the Court clarified its understanding of a patentable
That a process may be patentable, irrespective of the
particular form of the instrumentalities used, cannot be disputed.
. . . A process is a mode of treatment of certain materials to
produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to
a different state or thing. If new and useful, it is just as
patentable as is a piece of machinery. In the language of the
patent law, it is an art. The machinery pointed out as suitable to
perform the process may or may not be new or patentable; whilst the
process itself may be altogether new, and produce an entirely new
result. The process requires that certain things should be done
with certain substances, and in a certain order; but the tools
to be used in doing this may be of secondary
94 U.S. 780, 787-88 (1876) (emphases added). Finally, in
Tilghman v. Proctor, 102 U.S. 707, 722 (1880), the Court
That a patent can be granted for a process there can be
no doubt. The patent law is not confined to new machines and new
compositions of matter, but extends to any new and useful art or
manufacture. A manufacturing process is clearly an art,
within the meaning of the law.
(Emphasis added). The Court's definition of a patentable process
was well-accepted and consistently applied by the courts of
appeals. See, e.g., P.E. Sharpless Co. v. Crawford
Farms, 287 F. 655, 658-59 (2nd Cir. 1923); Chicago
Sugar-Refining Co. v. Charles Pope Glucose Co., 84 F. 977, 982
(7th Cir. 1898).
Finally, nothing in the legislative history of the 1952 Act
suggests that Congress intended to enlarge the category of
patentable subject matter to include patents such as the method
Bilski attempts to claim. As discussed above, the only change made
1952 Act was in replacing the word "art" with the word
"process". The Supreme Court has already concluded that this change
did not alter the substantive understanding of the statute.
See Diehr, 450 U.S. at 182 ("[A] process has
historically enjoyed patent protection because it was considered a
form of 'art' as that term was used in the 1793 Act.").
The House Report accompanying the 1952 bill includes the
now-famous reference to "anything under the sun made by man":
A person may have "invented" a machine or a
manufacture, which may include anything under the sun made by man,
but it is not necessarily patentable under section 101 unless the
conditions of the title are fulfilled.
H.R. 1923 at 7. Although this passage has been used by our court in
past cases to justify a broad interpretation of patentable subject
matter, I agree with Judge Mayer that, when read in context, the
statement undercuts the notion that Congress intended to expand the
scope of § 101. See Mayer, J., dissenting op. at 5-6.
It refers to things .made by man,. not to methods of organizing
human activity. In this respect, the language is reminiscent of the
1799 use of the phrase "something made by the hands of man" by
Chief Justice Lord Kenyon as a limitation on patentable
subject matter under the Statute of Monopolies. The idea that an
invention must be "made by man" was used to distinguish "a
philosophical principle only, neither organized or capable of being
organized" from a patentable manufacture. Hornblower, 8 T.R.
at 98. Lord Kenyon held that the patent before him was not based on
a mere principle, but was rather "a patent for a
manufacture, which I understand to be something made by the
hands of man." Id. at 98 (emphases added); accord
American Fruit Growers v. Brogdex Co., 283
U.S. 1, 11 (1931) (giving "anything made for use from raw or
prepared materials" as one definition of "manufacture").
In short, the history of § 101 fully supports the
majority's holding that Bilski's claim does not recite patentable
subject matter. Our decision does not reflect "legislative" work,
but rather careful and respectful adherence to the Congressional
||The dissents fault the majority for "ventur[ing] away from the
statute," Rader, J., dissenting op. at 6, and "usurp[ing] the
legislative role," Newman, J., dissenting op. at 41.
||See Diamond v. Diehr, 450 U.S. 175, 182 (1981)
("[A] process has historically enjoyed patent protection because it
was considered a form of 'art' as that term was used in the 1793
Act."); Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
Rather, the 1952 Act simply affirmed the prior judicial
understanding, as set forth in Corning v. Burden, 56 U.S.
(15 How.) 252 (1853), that Congress in 1793 had provided for the
patentability of a "process" under the term "art". Diehr,
450 U.S. at 182.
||In relevant part, the 1790 Act permitted patents upon "any
useful art, manufacture, engine, machine, or device, or any
improvement therein not before known or used." Ch. 11, § 1, 1
Stat. 109, 110 (1790).
||Edward C. Walterscheid, To Promote the Progress of Useful
Arts: American Patent Law & Administration, 1798-1836 109
(1998) (hereinafter To Promote the Progress); see
also Edward C. Walterscheid, The Early Evolution of the
United States Patent Law: Antecedents (Part 1), 76 J. Pat.
& Trademark Off. Soc'y 697, 698 (1994) ("[T]he English common
law relating to patents was what was best known in the infant
||Senate Committee Report Accompanying Proposed Amendments to
H.R. 41, reprinted in Proceedings in Congress During the
Years 1789 & 1790 Relating to the First Patent & Copyright
Laws, 22 J. Pat. Off. Soc'y 352, 363 (1940).
||Neither of those two instances related to patentable subject
matter or was adopted in the enacted statute. The first proposed
departure from the English practice was a novelty provision
protecting the inventor against those who derived their knowledge
of the invention from the true inventor; the second was in a
requirement that patentees make a "Public Advertisement" of their
invention. Such a requirement was thought necessary "in so
extensive a Country as the United States." Senate Report,
reprinted in 22 J. Pat. Off. Soc'y at 363-64.
The American statute ultimately differed in some other respects.
For example, Congress rejected the English rule that the invention
need only be novel in England. The American statute required
novelty against the whole world and did not permit "patents of
importation." See To Promote the Progress,
supra n.4 at 95-97, 137-38.
||Even the opposing view urging departure from the
English practice in particular respects recognized that the
English practice provided considerable guidance. See 3
Annals of Congress at 855-56 ("[Great Britain] had afforded, it was
true, much experience on the subject; but regulations adopted there
would not exactly comport in all respects either with the situation
of this country, or with the rights of the citizen here. The minds
of some members had taken a wrong direction, he conceived, from the
view in which they had taken up the subject under its analogy with
the doctrine of patents in England."); see also To
Promote the Progress, supra n.4 at 216-17.
||See Christine MacLeod, Inventing the Industrial
Revolution: The English Patent System, 1660-1800 48-49 (2002);
To Promote the Progress, supra n.4 at 400, 404.
||Edward C. Walterscheid, The Nature of the Intellectual
Property Clause: A Study in Historical Perspective 55 (2002)
(quoting E. Wyndham Hulme, On the History of the Patent Laws in
the Seventeenth and Eighteenth Centuries, 18 L.Q. Rev. 280, 285
||Morris, 1 Carp. P.C. at 34; see also
Boulton, 2 H.Bl. at 489 ("Since [Morris v. Bramson], it has
been the generally received opinion in Westminster Hall, that a
patent for an addition is good.").
||Walterscheid, supra n.9 at 355-56 (emphasis added);
see also Boulton, 2 H. Bl. at 494-95 (1795) (noting
that many method patents had issued).
||Bennet Woodcroft, Alphabetical Index of Patentees of
Inventions, from March 2, 1617 (14 James I) to October 1, 1852 (16
Victoriae) (2d ed. 1857)).
||The Supreme Court has in several opinions noted Boulton v. Bull
in connection with its consideration of English patent practice.
See, e.g., Markman v. Westview Instruments, Inc., 517 U.S. 370 ,
381 n.6 (1996); Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 388 n.2-3
||See, e.g., Rader, J., dissenting op. at 1 ("[T]his court
ties our patent system to dicta from an industrial age decades
removed from the bleeding edge."); id. ("[T]his court . . .
links patent eligibility to the age of iron and steel at a time of
subatomic particles and terabytes . . . ."); Newman, J., dissenting
op. at 5 ("[T]his court now adopts a redefinition of "process" in
Section 101 that excludes forms of information-based and
software-implemented inventions arising from new technological
capabilities . . . .").
||See, e.g., Newman, J., dissenting op. at 10 ("'[C]ourts
should not read into the patent laws limitations and conditions
which the legislature has not expressed.'" (quoting Diehr,
450 U.S. at 182)); Rader, J., dissenting op. at 3 (same).
||Similarly, another commentator states: "it might be wondered
why none of the many ingenious schemes of insurance has ever been
protected by patenting it." D.F. Renn, John Knox's Plan for
Insuring Lives: A Patent of Invention in 1778, 101 J. Inst.
Actuaries 285 (1974), available at
pdf_file/0006/25278/0285-0289.pdf (last visited Oct. 3, 2008).
||Woodcroft, supra n.12 at 324.
||See, e.g., Complemental Accident Insurance Policy, U.S.
Patent No. 389,818 (issued Sept. 18, 1888) (claiming a
"complemental insurance policy" as an apparatus consisting of two
separate cards secured together); Insurance System, U.S. Patent No.
853,852 (issued May 14, 1907) (claiming a "two-part insurance
policy" as "an article of manufacture").
A number of the amici also refer to the discussion and the patents
cited in "A USPTO White Paper" (the "White Paper") to establish the
historical foundation of business method patents. See, e.g., Br. of
Amicus Curiae Accenture 14-15 n. 11. As Judge Mayer notes,
dissenting op. at 7 n.4, the White Paper does not show this
proposition. As the White Paper itself recognizes, the early
financial patents it discusses were largely mechanical products and
methods related to financial paper, not methods for organizing
human activity. White Paper at 2. Thus, while the White Paper shows
that inventions in the business realm of finance and management
historically enjoyed patent protection, it does little to establish
that business methods directed to the organization of human
activity not involving manufactures, machines or the creation of
compositions of matter were similarly patentable.