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