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Predicting Bilski: Over the Last 20 Years of Patent Cases, the Supreme Court Almost Always Supports the Government's Position : Bilski is Likely to be Affirmed

By Andis Kaulins

Patently-O in Chien: Recent History Suggests that Supreme Court will Rule Bilski's Claim Unpatentable summarizes an article by Professor Colleen Chien which points out that in the last 20 years the Supreme Court in its patent decisions has very much followed the government line.

The merits brief authored by Solicitor General Elena Kagan et al. in Bilski has the followinng "Summary of Argument":

"SUMMARY OF ARGUMENT

This case presents the question whether petitioners' claimed hedging method is a patent-eligible "process" under 35 U.S.C. 101. Interpreted in light of the historical scope and development of the patent laws, as well as the statutory context, the term "process" encompasses all technological and industrial processes, broadly conceived. But it does not extend patent-eligibility beyond those bounds, to methods of organizing human activity that are untethered to technology - e.g., methods by which people conduct economic, social, or legal tasks, such as entering into contracts, playing poker, or choosing a jury. Such methods fall outside of the broad expanse of technological and industrial fields that "the statute was enacted to protect." Parker v. Flook, 437 U.S. 584, 593 (1978). Because petitioners' hedging method relates solely to human conduct, untethered to any technology - any machine or transformation of matter - it falls outside the coverage of Section 101.

I. The historical understanding of the term "process" and its statutory precursor "art" demonstrates that technological and industrial processes are the "types which have historically been eligible to receive the protection of our patent laws." Diamond v. Diehr, 450 U.S. 175, 184 (1981). Methods of organizing human activity are not patent-eligible "process[es]" within the meaning of Section 101. When Congress enacted the initial patent statutes in 1790 and 1793, the processes deemed eligible for patent protection were those involving the "useful arts" - namely, the fields of technology and industry, as opposed to the fields of general knowledge and economic endeavor. This Court and others applied that approach, emphasizing the technological nature of patent-eligible processes, through the enactment of the current statute, the Patent Act of 1952, 35 U.S.C. 1 et seq. The statutory context confirms this understanding of "process," as the term appears together with other categories of patent-eligible subject matter - machines, compositions of matter, and manufactures - that "are things made by man[,] and involve technology." Pet. App. 194a.

This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term "process" in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology - including claims concerning software and other modern technologies - from those that do not. In contrast, petitioners' proposed definition, which would encompass any series of steps culminating in a useful result, whether or not technological in nature, Pet. Br. 43- 44, would permit patents for a vast swath of human activities far removed from the essential purposes and historical scope of the patent laws.

II. Congress's enactment of 35 U.S.C. 273 does not suggest that methods of organizing human activity are patent-eligible "processes" under Section 101. Congress enacted Section 273 in response to State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), which held that inventions that otherwise satisfy Section 101's requirements should not be excluded from patent protection simply because they relate to business activities. Section 273 provides an affirmative defense to protect businesses that had been using methods previously regarded as unpatentable. Congress's decision to limit the practical impact of State Street in that manner does not suggest that Congress viewed State Street as extending patent protection to non-technological methods of organizing human activity, much less that it approved or impliedly ratified such a drastic expansion of patent-eligible subject matter.

III. Petitioners' method for hedging risk in the purchase and sale of commodities - a technique for organizing human activity untethered to technology - is not a "process" eligible for patent protection under 35 U.S.C. 101. Petitioners' claimed method is not directed to the operation of a particular machine or apparatus, nor does it involve the transformation of matter into a different state or thing. Petitioners' hedging method is also ineligible for a patent on the independent ground that it would preempt the abstract idea of hedging consumption risk."

Full post as published by LawPundit on May 19, 2010 (boomark / email).