No. 08-964
In The Supreme Court Of the United States
______________
BERNARD L. BILSKI AND RAND A. WARSAW,
PETITIONERS,
v.
JOHN J. DOLL, ACTING UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND ACTING
DIRECTOR OF THE UNITED STATES PATENT AND
TRADEMARK OFFICE,
RESPONDENT.
______________
On Writ of Certiorari to The United States Court of
Appeals for the Federal Circuit
______________
BRIEF OF AMICUS CURIAE
AUSTIN INTELLECTUAL PROPERTY
LAW ASSOCIATION
IN SUPPORT OF NEITHER PARTY
______________
Jennifer C. Kuhn, Esq.
Counsel of Record
5003 Timberline Drive
Austin,
Texas
78746
(512)
731-1847
Counsel for Amicus Curiae
Austin Intellectual Property
Law
Association
_________________________________________________
Austin 52789v2
i
Questions Presented for Review
1) Whether the Federal Circuit erred by holding
that a “process” must be tied to a particular machine
or apparatus, or transform a particular article into a
different state or thing (“machine-or-transformation”
test), to be eligible for patent under 35 U.S.C. § 101,
despite this Court’s precedent declining to limit the
broad statutory grant of patent eligibility for “any”
new and useful process beyond excluding patents for
“laws of nature, physical phenomena, and abstract
ideas.”
2) Whether the Federal Circuit’s “machine-or-
transformation” test for patent eligibility, which
effectively forecloses meaningful patent protection to
many business methods, contradicts the clear
Congressional intent that “patents protect
“method[s] of doing or conducting business.” 35
U.S.C. § 273.
Austin 52789v2
ii
TABLE OF CONTENTS
Page
Questions Presented for Review.........................i
Table of Authorities ..........................................iv
I.
Introduction and Summary of
Argument................................................. 2
II.
The Federal Circuit’s Bilski Decision
Is Contrary to the Canon that Statutory
Terms Must Be Construed Consistently
Throughout
a Statute.............................. 5
A. Statutory Interpretation Begins
With the Language of Sections
101
and
100(b).................................... 6
B. A Court Must Follow an
Explicit Statutory Definition,
Such as 35 U.S.C. § 100(b) ................ 7
C. The Fact That the Statutory
Definition of the Term “Process”
in 35 U.S.C. § 100(b) Recites the
Term “Process” Illustrates That
Congress Intended to Include the
Common Law Meaning of “Process”
Within a Broader Statutory
Definition
of “Process” ....................... 8
Austin 52789v2
iii
III. The Federal Circuit’s Interpretation in
Bilski Is Contrary to the Canon that
Statutory Terms Should Not Be Interpreted
So As to Render Another Portion of
the
Same
Statute Superfluous.............. 12
IV. Conclusion ............................................. 14
Austin 52789v2
iv
TABLE OF AUTHORITIES
Page(s)
CASES
Bankamerica Corp. v. United States,
462 U.S. 122 (1983)....................................... 5
Diamond v. Diehr,
450 U.S. 175 (1981)....................................... 6
Estate of Cowart v. Niklos Drilling Co.,
505 U.S. 469 (1992)....................................... 5
Gottschalk v. Benson,
409 U.S. 63 (1972)....................................... 10
In re Bilski,
545 F.3d 943 (2008) ............................ passim
Kungys v. United States,
485 U.S. 759 (1988) (Scalia, J.) ................ 3, 9
Mackey v. Lanier Collection Agency & Serv.,
Inc.,
486 U.S. 825 (1988)..................................... 12
NLRB v. Amax Coal Co.,
453 U.S. 322 (1981)....................................... 3
Parker v. Flook,
437 U.S. 584 (1978)..................................... 10
Austin 52789v2
v
Perrin v. United States,
444 U.S. 37 (1979)......................................... 3
State Street Bank & Trust Co. v. Signature
Financial Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998)................... 13
Stenberg v. Carhart,
530 U.S. 914 (2000)....................................... 7
United States v. Ron Pair Enters.,
489 U.S. 235 (1989)....................................... 8
STATUTES
35 U.S.C. § 100(b) (2008) ......................... passim
35 U.S.C. § 101 ......................................... passim
35 U.S.C. § 273 ....................................... 3, 12, 13
OTHER AUTHORITIES
Supreme Court Rule 37.1 ................................ 10
Austin 52789v2
STATEMENT OF INTEREST
OF THE AMICUS CURIAE1
Amicus curiae Austin Intellectual Property
Law Association (“Austin IPLA”) is a bar association
located in Austin, Texas with approximately 300
members engaged in private and corporate practice
across a wide range of industries and technologies.
(See www.austin-ipla.org.) Austin IPLA members
represent both the owners of and users of
intellectual property.
Austin IPLA takes no position on the ultimate
outcome of this matter, and specifically takes no
position on whether petitioner’s particular process
claims should be granted patent protection. Austin
IPLA’s sole interest is that the integrity of the
Patent Act be maintained through consistent
statutory interpretation.
1 This amicus curiae brief is presented by the Austin IPLA
under Supreme Court Rule 37(a). Petitioner and Respondent
have consented to the filing of this brief. In accordance with
Supreme Court Rule 37.6, Austin IPLA states that this brief
was authored by Jennifer C. Kuhn, Esq., Amicus Committee
Chair for Austin IPLA. No counsel for a party authored this
brief in whole or in part, and no counsel or party made a
monetary contribution intended to fund the preparation or
submission of this brief. No person other than amicus curiae,
its members, or its counsel made a monetary contribution to its
preparation or submission.
Austin 52789v2
2
I. Introduction and Summary of Argument
Patent law is in no way exempt from the
general rules of statutory interpretation that apply
to all other statutes. Accordingly, when faced with
an issue of statutory construction in a patent case,
as here, this Court should look not only to its patent
law precedent, but also its non-patent statutory
interpretation precedent.
Austin IPLA expects that the parties and
other amici may focus their arguments on patent
related jurisprudence. So as to avoid arguments
already presented by others, Austin IPLA focuses
instead on the proper statutory interpretation of 35
U.S.C. §101 under the Supreme Court’s non-patent
general statutory interpretation precedent.
This Court’s non-patent precedent
overwhelmingly shows that the statutory
interpretation adopted by the Federal Circuit in In
re Bilski, 545 F.3d 943 (2008) cannot be affirmed by
this Court.
First, the Federal Circuit’s interpretation of
“process” does not comport with the general
statutory interpretation canon that statutory terms
must be interpreted consistently throughout a
statute. The Federal Circuit’s version of “process” in
35 U.S.C. § 101 is far narrower than the broad
definition of “process” in 35 U.S.C. § 100(b) (2008).
The Federal Circuit’s decision in Bilski notes that
the definition in 35 U.S.C. § 100(b) is “unhelpful”
because the term “process” is repeated in the
Austin 52789v2
3
definition. 545 F.3d at 951, n.3. The inclusion of the
term “process” in the statutory definition of “process”
is not circular or unhelpful. Instead, it suggests that
Congress incorporated the settled common law
meaning of “process” into the statutory definition of
“process.”2 Applying the broader statutory definition
of “process,” the “machine-or-transformation” test is
a sufficient, but not necessary test to determine the
patentability of a process patent under 35 U.S.C. §
101. The proper statutory interpretation of 35
U.S.C. § 101 will include the “machine-or-
transformation” test.
Second, the Federal Circuit’s decision in Bilski
applies a statutory interpretation that renders
superfluous another portion of the statute, an
interpretation that is highly disfavored according to
principles of general statutory interpretation. The
Federal Circuit’s statutory interpretation in Bilski
renders superfluous portions of 35 U.S.C. § 273, a
statute that provides a defense to the infringement
of business method patents.
As a result, the Federal Circuit’s decision
appears to be in conflict with two separate, well-
established canons found in Supreme Court non-
2 See Kungys v. United States, 485 U.S. 759, 770 (1988) (Scalia,
J.) (“Where Congress uses terms that have accumulated settled
meaning under either equity or the common law, a court must
infer, unless the statute otherwise dictates, that Congress
means to incorporate the established meaning of these terms.”
NLRB v. Amax Coal Co., 453 U.S. 322, 329 (1981). See also
Perrin v. United States, 444 U.S. 37, 42-43 (1979)).
Austin 52789v2
4
patent statutory interpretation case law. Austin
IPLA addresses each of these in greater detail below.
Austin 52789v2
5
II. The Federal Circuit’s Bilski Decision Is
Contrary to the Canon that Statutory
Terms Must Be Construed Consistently
Throughout a Statute
It is a “basic canon of statutory construction
that identical terms within an Act bear the same
meaning.” Estate of Cowart v. Niklos Drilling Co.,
505 U.S. 469, 479 (1992)(citing Sullivan v. Stroop,
496 U.S. 478, 484 (1990) and Sorenson v. Secretary
of Treas., 475 U.S. 851, 860 (1986)). In rejecting
arguments based on two different interpretations of
the phrase “other than” this Court stated that
attempting to give a single term two different
interpretations in single statute “strains the
meaning of ordinary words.” Bankamerica Corp. v.
United States, 462 U.S. 122, 129 (1983).
By giving the term “process” in 35 U.S.C. §
101 an interpretation distinctly narrower than the
definition of “process” in 35 U.S.C. § 100(b), the
Federal Circuit’s decision in Bilski “strains the
meaning of ordinary words,” contrary to this Court’s
precedent. 462 U.S. at 129. The Federal Circuit’s
stated reason for not applying the definition of
“process” in 35 U.S.C. § 100(b) is that it contains the
very term it is defining, such that the Federal
Circuit deemed the statutory definition “unhelpful.”
545 F.3d at 951, n.3.
This Court’s statutory construction precedent,
however, suggests a deeper analysis. First,
statutory interpretation begins with the language of
sections 101 and 100(b). Second, an express
Austin 52789v2
6
statutory definition such as that found in section
100(b) should control. Third, the fact that the
express statutory definition of “process” contains the
term “process” is not necessarily circular or
“unhelpful” as the Federal Circuit noted in Bilski,
but instead, is consistent with Congress’s use of term
“process” in its common law sense to arrive at a
broader statutory definition of the term “process.”
Austin IPLA treats these points seriatim.
A. Statutory Interpretation Begins With the
Language of Sections 101 and 100(b)
The starting point for any question of
statutory interpretation is the language of the
statute. See Diamond v. Diehr, 450 U.S. 175, 182
(1981). First, the term “process” is used in 35 U.S.C.
101 as follows:
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.
Second, the term “process” is defined in 35
U.S.C. § 100(b) as follows:
Austin 52789v2
7
The term ‘process’ means process, art
or method, and includes a new use of a
known process, machine,
manufacture, composition of matter or
material.
35 U.S.C. § 100(b).
Any statutory interpretation of the term
“process” in 35 U.S.C. § 101 must be consistent with
the language of 35 U.S.C. § 100(b), which defines the
term “process” for the entire Patent Act. See
Stenberg v. Carhart, 530 U.S. 914, 942 (2000).
B. A Court Must Follow an Explicit
Statutory Definition, Such as 35 U.S.C. §
100(b)
The Federal Circuit’s failure to follow the
statutory definition of “process” in section 100(b)
when interpreting “process” in section 101 is
inconsistent with this Court’s non-patent precedent.
In addition to requiring statutory terms to be
interpreted consistently throughout a statute, this
Court accords a special status to statutory
definitions: “When a statute includes an explicit
definition, we must follow that definition, even if it
varies from that term’s ordinary meaning.” Stenberg
v. Carhart, 530 U.S. 914, 942 (2000). The question
of the proper statutory interpretation of “process” in
section 101 then depends solely on the proper
interpretation of the statutory definition of “process”
in section 100(b). See 35 U.S.C. §§ 100(b) & 101; cf.
Stenberg, 530 U.S. at 942.
Austin 52789v2
8
C. The Fact That the Statutory Definition of
the Term “Process” in 35 U.S.C. § 100(b)
Recites the Term “Process” Illustrates
That Congress Intended to Include the
Common Law Meaning of “Process”
Within a Broader Statutory Definition of
“Process”
The Federal Circuit in Bilski dismissed
section 100(b) as “unhelpful given that the definition
itself uses the term ‘process.’” Bilski, 545 F.3d at
951, n.3. The use of the term “process” within the
statutory definition of “process” does not necessarily
render the statutory definition circular or invalid.
Analysis of the manner in which “process” is used in
section 100(b) suggests that Congress intended to
incorporate the common law meaning of “process”
into a broader statutory definition.
This Court has held that grammar, syntax
and punctuation play a role in statutory
interpretation. See United States v. Ron Pair
Enters., 489 U.S. 235, 242 (1989) (“The language and
punctuation Congress used cannot be read any other
way.”) In this case, analysis of the way the words in
section 100(b) are used and punctuated demonstrate
that the defined term “process” is distinct from the
common law meaning of “process” used in the
statutory definition:
The term ‘process’ means process, art
or method, and includes a new use of a
known process, machine,
manufacture, composition of matter or
material.
Austin 52789v2
9
35 U.S.C. § 100(b) (emphases added to show three
uses of the term “process”).
The first use of “process” shows the term
“process” in single quotation marks. Those quotation
marks serve to show it is the term being defined, and
set it apart from the rest of the definition. The
second and third uses of “process” in the definition
show “process” with no quotation marks. Without
the quotation marks, the use of “process” shows that
it is being used as an undefined term in the statute.
Thus, the definition of “process” in 35 U.S.C. § 100(b)
includes the normal meaning that the rules of
statutory interpretation would assign to the
undefined term “process” because the undefined
term “process” is part of the definition. Properly
interpreting both uses of “process” is necessary to
determine the scope of 35 U.S.C. § 101(b).
According to this Court’s precedent, terms
used in statutes receive their ordinary meanings, or
their settled, common law meanings, if the term has
such an “established meaning.” See Kungys 485 U.S.
at 770. (Where Congress uses terms that have
accumulated settled meaning under either equity or
the common law, a court must infer, unless the
statute otherwise dictates, that Congress means to
incorporate the established meaning of these
terms”.) When section 100(b) was added to the
Patent Act in 1952, the term “process” had a settled
meaning in the common law that was, essentially,
Austin 52789v2
10
the “machine-or-transformation” test adopted by the
Federal Circuit in Bilski.3
The creation of a separate definition of
“process” in 35 U.S.C. § 100(b) in the 1952 Patent
Act clearly indicates Congress’s intent that subject
matter of processes in the Patent Act extend beyond
what the common law had previously recognized as
patentable, but should include all previously
patentable subject matter. Congress’s use of
“process” within the definition, without quotation
marks, shows that Congress intended the common
law definition of “process” to become part of the
statutory definition of “process.”4
3 The historical development of the term “process” is discussed
at length in the Federal Circuit’s opinion and dissenting
opinions. See 545 F.3d 943 et seq. Mindful of Supreme Court
Rule 37.1, amicus curiae Austin IPLA will not repeat that
material here.
4 On two occasions this Court has acknowledged that the
“machine-or-transformation” test does not encompass the full
scope of patentable subject matter for processes. See
Gottschalk v. Benson, 409 U.S. 63, 71 (1972) (“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.”) & Parker v. Flook, 437 U.S. 584, 588 n.9
(1978) (citing Benson). In both Benson and Flook, this Court
rejected the process claims at issue as unpatentable, but took
care to note that precedent did not describe the entire set of
patentable process subject matter. These statements support
the interpretation of section 100(b) as incorporating, but not
limited to, the common law meaning of “process.” Thus, the
“machine or transformation test” test is a sufficient, but not
necessary, test for determining the patentability of a process.
Austin 52789v2
11
Hence 35 U.S.C. § 100(b) expressly defines
“process,” and the statute’s use of the term “process”
in the definition of the term “process” is not
necessarily circular. Accordingly, the Federal
Circuit’s “machine-or-transformation” test in Bilski
does not comport with the general statutory
interpretation canon that statutory terms must be
interpreted consistently throughout a statute.
Austin 52789v2
12
III. The Federal Circuit’s Interpretation in
Bilski Is Contrary to the Canon that
Statutory Terms Should Not Be
Interpreted So As to Render Another
Portion of the Same Statute
Superfluous
The Federal Circuit’s “machine-or-
transformation” test also violates another statutory
interpretation rule found in the Supreme Court’s
non-patent precedent: a statutory interpretation
should not render another section of the same
statute superfluous. Mackey v. Lanier Collection
Agency & Serv., Inc., 486 U.S. 825, 837 (1988). In
Mackey, this Court rejected an interpretation that
would have rendered a section of the ERISA statute
superfluous.
In this case, the Federal Circuit’s
interpretation of 35 U.S.C. § 101 as being limited to
the “machine-or-transformation” test renders
portions of 35 U.S.C. § 273 completely superfluous.
Section 273(a)(3) reads as follows:
§ 273 Defense to infringement based
on earlier inventor
(a)
Definitions. For the purposes of
this section…
(3) The term “method” means a
method of doing or conducting
business.
(b) Defense to Infringement.—
Austin 52789v2
13
(1) In general.—It shall be a
defense to an action for infringement
under section 271 of this title with
respect to any subject matter that
would otherwise infringe one or more
claims for a method…
35 U.S.C. § 273.
Section 273 was added to the Patent Act in
1999 specifically to create a defense against the
business method patents allowed after the Federal
Circuit’s decision in State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368 (Fed.
Cir. 1998).
The quoted portions of section 273 become
superfluous under the Federal Circuit’s “machine-or-
transformation” test because no State Street-type
business method patent claim could pass such a test,
and therefore no defense against infringement of
such a business method would be necessary. If
patentable processes are limited by the “machine-or-
transformation” test, then the statutory subject
matter would be too narrow to encompass such a
business method, and there would be no need for a
defense for prior users of such a business method.
Austin 52789v2
14
IV. Conclusion
For the foregoing reasons, amicus curiae
Austin IPLA suggests that the Federal Circuit’s
decision in Bilski should be vacated in view of this
Court’s general statutory interpretation precedent,
and remanded for further proceedings.
Respectfully submitted,
Jennifer C. Kuhn, Esq.
Counsel of Record
5003 Timberline Drive
Austin, Texas 78746
(512) 731-1847
Counsel for Amicus Curiae
Austin Intellectual Property
Law Association
August 6, 2009
Austin 52789v2