claims would cover (and therefore
preempt) all uses of the algorithm, not
just those applied to particular industrial ends.
In 1978, the Court revisited Benson
in Parker v. Flook, which considered the
patentability of a process for calculating and updating alarm limits for catalytic conversion plants. By a 6– 3 majority, the Court rejected Flook’s claim
because the only new thing about it
was an algorithm onto which had been
tacked conventional post-solution activity (updating the alarm limits).
Three years later, in Diamond v.
Diehr, the Court once again considered
the patentability of a process involving
a computer program. In Diehr, the
Court ruled by a 5– 4 majority that a
process for curing rubber, one step of
which involved a computer program
that continuously calculated temperatures inside the mold to determine
when the rubber was properly cured,
was a patentable process. Because
Diehr did not abrogate Benson or Flook
and involved a conventional process
that transformed matter from one
physical state to another, Diehr was initially viewed as a narrow decision for
patenting software innovations.
The Federal Circuit, however, construed Diehr more broadly by focusing
on its dicta that everything under the
sun made by man should be considered
patentable subject matter. For the past
27 years, this court has fashioned its
own conception of patentable subject
matter, culminating in the State Street
Bank decision. Its recent willingness to
reconsider State Street Bank and its approach to determining patentable subject matter may well be due to its sense
that the Supreme Court is not satisfied
with its rulings.
Renewed Supreme court
interest in Patents
In the past few years, the Supreme
Court has reviewed several Federal
Circuit decisions and reversed that
court’s rulings every time. In eBay v.
MercExchange, for example, the Court
rejected the Federal Circuit’s rigid rule
that courts must issue injunctions in
virtually all patent infringement cases.
In KSR v. Teleflex, the Court reinvigorated the nonobviousness standard
for invention by rejecting the Federal
Circuit’s approach to judging obvious-
ness. In Microsoft v. AT&T, the Court
overturned a Federal Circuit ruling
that Microsoft was liable for offshore
patent infringement based on its shipment to another country of a disk of
software containing a component that
infringed a U.S. patent.
The Supreme Court has also signaled renewed interest in the Federal
Circuit’s approach to patentable subject matter. In 2005, it accepted Lab
Corp’s appeal from a Federal Circuit
ruling that it had induced patent infringement by providing test results
about levels of homocysteine in patients’ blood to doctors who then correlated elevated levels of this amino
acid with vitamin deficiencies and enhanced risks of heart disease, thereby
infringing Metabolite’s patent. Justice
Breyer dissented from the decision to
drop the Lab Corp. appeal because in
his view, Metabolite’s patent claimed
a process that “is no more than an instruction to read some numbers in
light of medical knowledge.” He believed this ran afoul of the longstanding rule that laws of nature and natural
phenomena cannot be patented.
A year later, during oral argument
in the Microsoft v. AT&T case, five members of the Court asked questions
about the patentability of computer
programs, even though that issue was
not before the Court. These questions
revealed that patentable subject matter was on many Justices’ minds.
Given the Court’s renewed interest in patentable subject matter, the
BPAI seems to have decided that it was
time to push back on the Federal Cir-
the federal circuit
has the opportunity
in Bilski to clarify
the standard by
which to judge what
processes are
eligible for patent
protection.
cuit’s overbroad conception of patentable subject matter. So it rejected
Bilki’s claims.
BPai on Patentable Subject matter
Bilski sets forth a series of propositions
about patentable subject matter. The
first is that the constitutional subject
matter for patent protection is inventions in the “useful arts,” by which the
founders meant what today we would
call “technological arts,” or more simply, “technology.” Section 101 names
four kinds of technologies that are eligible for patent protection: processes,
machines, manufactures, and compositions of matter.
BPAI thinks that Congress intended
to make every human-made machine,
manufacture, and composition of matter eligible for patent protection, but
doubts it intended everything under
the sun made by humans to be eligible
for patent protection. Computer programs, documents, music, art, and
literature are innovations made by humans; yet, none is eligible for patent
protection.
Technological processes that transform matter from one physical state
to another (for example, chemical A
mixed with chemical B to produce
chemical C) are clearly patentable, as
are processes that are tied to specific
mechanical implementations. But if
processes do not transform matter and
are not tied to technical implementations, BPAI thinks they are not technological enough to be patentable.
Such methods should be considered
“abstract ideas” that are excluded from
patent protection, as was the algorithm
in Benson.
Bilski questions the Federal Circuit’s “useful, concrete, and tangible
result” test for patentable subject
matter as lacking an authoritative basis and a sound rationale. Bilski
observes that Justice Breyer’s dissent in
Lab Corp. questioned the “useful, concrete, and tangible result” test for patentable subject matter as not having
been endorsed by the Court. (Indeed,
this test is inconsistent with Benson
and Flook.)
Because Bilski’s method wasn’t tied
to an implementation in a specific device and didn’t transform matter from
one physical state to another, the BPAI
concluded it was an unpatentable