Supreme Court of the United States
BERNARD L. BILSKI and RAND A. WARSAW,
JOHN DOLL, Acting Under Secretary of Commerce
for Intellectual Property and Acting Director,
Patent and Trademark Office, Respondent.
ON WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
BRIEF AMICI CURIAE OF 20 LAW AND BUSINESS
PROFESSORS IN SUPPORT OF NEITHER PARTY
MARK A. LEMLEY
WEST VIRGINIA UNIVERSITY
Counsel of Record
COLLEGE OF LAW
STANFORD LAW SCHOOL
P.O. Box 6130
559 Nathan Abbott Way
Morgantown, WV 26506
Stanford, CA 94305
R. POLK WAGNER
UNIVERSITY OF PENNSYLVANIA
UNIVERSITY OF SAN DIEGO
3400 Chestnut Street
Philadelphia, PA 19104
5998 Alcalá Park
San Diego, CA 92110
Attorneys for Amici Curiae
(800) 274-3321 • (800) 359-6859
TABLE OF CONTENTS
TABLE OF CITED AUTHORITIES . . . . . . . . .
STATEMENT OF INTEREST OF
AMICUS CURIAE . . . . . . . . . . . . . . . . . . . . . . .
SUMMARY OF ARGUMENT . . . . . . . . . . . . . . .
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
The Statute and this Court’s Precedents
Properly Establish a Flexible, Technology-
Neutral Approach to Patentable Subject
Matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
A. The Patent Act and Precedent
Establish that Patentable Subject
Matter Accommodates the Emergence
of New Technologies . . . . . . . . . . . . . .
B. The Court’s Limitations on Patentable
Subject Matter Distinguish Between
Applied and Abstract Inventions . . .
C. The Federal Circuit Has Improperly
Converted a Flexible, Adaptable
Approach Into a Hard-and-Fast
Rule . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
II. Arbitrarily Narrow Limits on Patentable
Subject Matter Will Reduce Incentives to
Produce Valuable Inventions . . . . . . . . . . .
A. The Flexible Applied/Abstract
Doctrine Promotes Innovation . . . . .
B. The Federal Circuit’s Rule Will Harm
Innovation . . . . . . . . . . . . . . . . . . . . . . .
III. Existing Patent Doctrines Can Deal With
the Problems Bad Patent Applications
Create . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
A. The Patent Act Provides the Tools to
Bar Bad Patents . . . . . . . . . . . . . . . . . .
B. Other Doctrines Limit the Harm
from Weak Patents . . . . . . . . . . . . . . . .
IV. Bilski’s Application Fails This Court’s
Applied/Abstract Test . . . . . . . . . . . . . . . . .
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
APPENDIX . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
ABLE OF CITED AUTHORITIES
Baker v. Selden,
101 U.S. 99 (1879) . . . . . . . . . . . . . . . . . . . . . . . . .
Cochrane v. Deener,
94 U.S. 780 (1877) . . . . . . . . . . . . . . . . . . . . . . . . .
Corning v. Burden,
56 U.S. 252 (1854) . . . . . . . . . . . . . . . . . . . . . . . . .
Diamond v. Chakrabarty,
447 U.S. 303 (1980) . . . . . . . . . . . . . . . . . . . . . passim
Diamond v. Diehr,
450 U.S. 175 (1981) . . . . . . . . . . . . . . . . . . . . . passim
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) . . . . . . . . . . . . . . . . . . . . 4, 15, 30
Ex parte Bilski,
Appeal No. 2002-2257 (Sept. 26, 2006) . . . . . .
Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd.,
535 U.S. 722 (2002) . . . . . . . . . . . . . . . . . . . . . . .
Funk Bros. Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127 (1948) . . . . . . . . . . . . . . . . . . . . 8, 13, 17
Gottschalk v. Benson,
409 U.S. 63 (1972) . . . . . . . . . . . . . . . . . . . . . . . passim
In re Alappat,
33 F.3d 1526 (Fed. Cir. 1994) . . . . . . . . . . . . . . .
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) . . . . . . . . . . . . . passim
In re Schrader,
22 F.3d 290 (Fed. Cir. 1994) . . . . . . . . . . . . . . . . 6, 28
In re Seagate Tech., LLC,
497 F.3d 1360 (Fed. Cir. 2007) . . . . . . . . . . . . . . 4, 29
J.E.M. Ag Supply, Inc.
v. Pioneer Hi-Bred Int’l, Inc.,
534 U.S. 124 (2002) . . . . . . . . . . . . . . . . . . . . . . .
Jacobs v. Baker,
74 U.S. 295 (1868) . . . . . . . . . . . . . . . . . . . . . . . . .
KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727 (2007) . . . . . . . . . . . . . . . . . . . . .
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) . . . . . . . . . . . . . . . . . . . . . 2, 4, 15
Le Roy v. Tatham,
14 How. 156 (1853) . . . . . . . . . . . . . . . . . . . . . . . .
Mackay Radio & Tel. Co. v. Radio Corp. of Am.,
306 U.S. 86 (1939) . . . . . . . . . . . . . . . . . . . . . . . . .
MedImmune, Inc. v. Genentech, Inc.,
549 U.S. 118 (2007) . . . . . . . . . . . . . . . . . . . . . . 15, 29
O’Reilly v. Morse,
56 U.S. 62 (1854) . . . . . . . . . . . . . . . . . 9, 10, 11, 29, 32
Parke Davis & Co. v. H.K. Mulford & Co.,
189 F. 95 (S.D.N.Y. 1911) . . . . . . . . . . . . . . . . . .
Parker v. Flook,
437 U.S. 584 (1978) . . . . . . . . . . . . . . . . . . . . . passim
Randall v. Loftsgaarden,
478 U.S. 647 (1986) . . . . . . . . . . . . . . . . . . . . . . .
State Street Bank & Trust Co.
v. Signature Financial Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998) . . . . . . . . . . . . . .
W.L. Gore & Assoc., Inc., v. Garlock, Inc.,
721 F. 2d 1540 (Fed. Cir. 1983) . . . . . . . . . . . . . .
35 U.S.C. § 100(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . 5, 21
35 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
35 U.S.C. § 112 . . . . . . . . . . . . . . . . . . . . . . . . . 14, 28, 29
Christopher Todd Abernethy, Note, Cruel Hand
of Bilski: Culminating the Shortsighted
Crusade for Marginalization of the ‘Process’
Patent, available at http://papers.ssrn.com/
sol3/ papers.cfm?abstract_ id=1420205 . . . . .
American Heritage Dictionary (4th ed. 2009),
available at http://dictionary.reference.com/
search?q=process . . . . . . . . . . . . . . . . . . . . . . . .
http://minoxidil.us/history.htm . . . . . . . . . . . . . . . .
Mark A. Lemley & Bhaven Sampat, Is the Patent
Office a Rubber Stamp?, 58 Emory L.J. 181
(2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Robert P. Merges, As Many as Six Impossible
Patents Before Breakfast: Property Rights for
Business Concepts and Patent System
Reform, 14 Berkeley Tech. L.J. 577 (1999) . . . .
Kristen Osenga, Ants, Elephant Guns, and
Statutory Subject Matter, 39 Ariz. St. L.J.
1087 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Patent Act of 1836, Ch. 357, 5 Stat. 117, § 6
(July 4, 1836) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Patent No. 1700, Improvement in the
Mathematical Operation of Drawing Lottery
(July 18, 1840) . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Pharmaceutical Research and Manufacturers of
America, Why Do Prescription Drugs Cost So
Much . . . , http://www. phrma.org/
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Random House Dictionary (2009) . . . . . . . . . . . . .
H.R. Rep. No. 1923, 82nd Cong., 2nd Sess. 6
(1952) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 7
S. Rep. No. 1979, 82nd Cong., 2nd Sess. 5 (1952)
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 7
Michael Risch, Everything is Patentable,
75 Tenn. L. Rev. 591 (2008) . . . . . . . . . . . . . . . .
U.S. Pat. No. 4,877,805 (Oct. 31, 1989) . . . . . . . .
STATEMENT OF INTEREST
OF AMICUS CURIAE
Amici are professors who teach and write about
patent law at law and business schools throughout the
United States and Canada. A complete list of signatories
is attached as Appendix A. We are interested in seeing
that patent law develops in a way that continues to
encourage innovation in all fields of endeavor.1
SUMMARY OF ARGUMENT
Both the language of Section 101 of the Patent Act
and the legislative history surrounding its enactment
are expansive, permitting patent protection for
“anything under the sun that is made by man.” 35 U.S.C.
§ 101 (“Whoever invents or discovers any new and useful
process… or any new and useful improvement thereof
. . . .”) (emphasis added); Diamond v. Chakrabarty, 447
U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82nd
Cong., 2nd Sess. 5 (1952); H.R. Rep. No. 1923, 82nd
Cong., 2nd Sess. 6 (1952)). That expansive scope reflects
a wise policy judgment not to discourage innovation in
new and unforeseen areas of technology by imposing
arbitrary, inflexible limits on the scope of patent
protection. Since this Court last addressed the scope of
patentable subject matter nearly three decades ago,
1. Amici have no financial interest in the outcome of this
case. 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 amici made a monetary contribution to
its preparation or submission. The parties have consented to
the filing of this brief.
technology has changed in unforeseeable ways. Indeed,
novelty is an essential requirement to receive a patent.
Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(unpredictability is important in obvious analysis). A rule
that freezes the definition of patentable subject matter
in time will hobble new areas of innovation.
Unfortunately, the Federal Circuit created just such
a static rule via its so-called “machine or transformation”
test. It purported to draw from this Court’s precedent
a detailed series of requirements for patentability, but
it missed the forest for the trees. This Court’s
precedents do not stand for the proposition that only
certain classes of traditional technologies are eligible
for patent protection. Instead, they reflect a broad,
flexible approach to patentable subject matter, limited
only by traditional exceptions for abstract ideas, natural
phenomena, and laws of nature.
This flexible approach, tempered by a stable set of
exceptions, is sound policy. The Federal Circuit in this
case imposed new—and as we show below, essentially
arbitrary—limits on the patentability of particular types
of inventions. This turn by the Federal Circuit interferes
with the core purposes of the patent laws in two
First, new and nonobvious processes do not arise
only in fields of endeavor denominated “technological.”
Nor do they always involve the “physical transformation”
of matter or reside in a specific type of “machine.” If
patent law is to play its fundamental role in spurring
invention, then patentable subject matter must include
any sort of new and nonobvious invention, however it is
embodied, subject only to the limitations designed to
prevent the patenting of abstract ideas, laws of nature,
and natural phenomena.
Second, even when the embodiment of an invention
transforms matter or resides in a machine, the new and
nonobvious contribution often resides in the inventor’s
insight that an existing transformation or machine could
have an unexpected property. Limiting patent
protection to physical transformations and specific
machines would have problematic consequences for a
variety of industries, including not only software but
also pharmaceuticals and biotechnology. In these
research-intensive industries, invention often consists
not merely of making a new thing, but of harnessing a
scientific principle or fact about the world to a new and
useful end. New and nonobvious insights into which
molecular structure might cure cancer, what ratio of
measured chemicals in the human body indicates disease,
and which form of an algorithm will properly measure
the risk inherent in a debt instrument, should be
patentable so long as they involve the practical
application of the idea or discovery. By contrast, the
scientific principle or fact itself should not be patentable,
because it is merely an abstract idea, law of nature, or
We recognize there are legitimate concerns that
certain business method and software patents, even
those tied to a practical application, can present
problems for society by walling off fundamental
principles from other researchers and engineers. But
the solution to the problem of bad patents in the
software and business method fields (as in any area of
innovation) is not the creation of new dogmatic rules
against patentability, but the application of traditional
doctrines, coupled with the reform of other doctrines
that encourage litigation abuse. Recent decisions,
including KSR, eBay, and Seagate, give the courts many
of the tools they need to both weed out bad patents and
limit the use of patents to hold up an industry. Indeed,
one of the lessons of prior attempts to restrict subject
matter was that the primary effect was not to prevent
the patenting of software, but—in response to patent
attorneys’ creative efforts to draft around these
essentially arbitrary limitations—to make it more
difficult for the Patent & Trademark Office (“Patent
Office”) and courts to identify and weed out questionable
This Court should reaffirm its precedent allowing
the patentability of “anything under the sun that is
made by man,” subject to the well-established exceptions
incorporated by the abstract idea, law of nature, and
natural phenomenon doctrines. Where an idea is claimed
as applied, it is eligible for patentability, but if it is
claimed merely in the abstract it is not.
This test provides ample basis to weed out those
patents that attempt to mark not a practical application,
but instead a fundamental principle, such as the patent
at issue in this case. Bilski and Warsaw claim a broad
principle of doing business, without tying it to any
specific application. For this reason, their claims are
merely “abstract ideas” and should be unpatentable. But
this Court should take care not to sweep away
protection for true innovations in an effort to prevent
the grant of a patent in this case.
I. The Statute and this Court’s Precedents Properly
Establish a Flexible, Technology-Neutral Approach
to Patentable Subject Matter
A. The Patent Act and Precedent Establish that
Patentable Subject Matter Accommodates the
Emergence of New Technologies
We begin with the simple observation that Congress
intended patentable subject matter to be broad. The
statute provides protection for “any new and useful
process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101 (emphasis added). The statutory
definition of the term “process” has a wide sweep: “the
term ‘process’ means process, art, or method, and
includes a new use of a known process, machine,
manufacture, composition of matter, or material.” 2
35 U.S.C. § 100(b). The ordinary meaning of “process”—
a series of definite steps taken to achieve some end3—is
quite general as well. Further, the term “process” was
written into the statute as a substitute for the term
“art.” See Diamond v. Diehr, 450 U.S. 175, 182-84 (1981)
2. The Federal Circuit expressly disregards this statutory
definition in a footnote with virtually no analysis. In re Bilski,
545 F.3d 943, 951 n.3 (Fed. Cir. 2008). Of course, consideration of
the term “process” must necessarily begin with the statute.
Randall v. Loftsgaarden, 478 U.S. 647, 656 (1986) (“Here, as in
other contexts, the starting point in construing a statute is the
language of the statute itself.”).
3. See Random House Dictionary (2009) and American
Heritage Dictionary (4th ed. 2009), available at http://
(“In the language of the patent law, [a process] is an
art”). In turn, “art,” as used in this context, was
historically considered anything that did not fit into one
of the other categories, another very broad definition.4
Jacobs v. Baker, 74 U.S. 295, 298 (1868).
We acknowledge that an overly narrow reading of
some early case law might well limit processes to physical
transformations. See, e.g., Cochrane v. Deener, 94 U.S.
780, 788 (1877) (“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.”). But a non-physical process was not before the
Court in Cochrane, which affirmed patentability of a
physically transformative method.5 94 U.S. at 791. As
such, the discussion in Cochrane should not be read as
limiting “processes” to physical transformations, but
instead as an example of a type of process that is
4. Jacobs also implies that “useful arts,” a separate, but
related, requirement of Section 101, are not limited to
“technological arts,” further confirming the statute’s breadth.
Id.; see also Corning v. Burden, 56 U.S. 252, 267 (1854) (finding
that “useful art” is a general term); Baker v. Selden, 101 U.S. 99,
102 (1879) (ruling that copyright cannot protect bookkeeping
forms because bookkeeping is a “useful art”).
5. See also In re Schrader, 22 F.3d 290, 295 n.12 (“subject
matter” in Cochrane was not limited to physical transformation,
and transformation of “intangibles” is also statutory subject
matter, or else the method used by the telephone would not
have been patentable).
This Court’s modern precedent has continued to
recognize a flexible definition of patentable subject
matter. In 1980, it recognized that the statute is
expansive, permitting patent protection for “anything
under the sun that is made by man.” Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep.
No. 1979, 82nd Cong., 2nd Sess. 5 (1952); H.R. Rep. No.
1923, 82nd Cong., 2nd Sess. 6 (1952)).
A year later, the Court refused to limit the scope of
protectable patents to the kinds of processes that
existed in the 19th century. As explained in Diamond v.
Chakrabarty, “[a] rule that unanticipated inventions are
without protection would conflict with the core concept
of the patent law that anticipation undermines
patentability.” 447 U.S. at 316.
Finally, as important as what the Court has done
with respect to interpreting patent eligibility is what it
has not done. The Court has been careful to recognize
the need for flexibility even as it has denied patentability
to abstract mathematical algorithms; thus, it did so
based on grounds other than a narrow interpretation
of “process” or a focus on the form of the technology
involved. For example, in Gottschalk v. Benson the Court
rejected a form of the rigid “machine-or-transformation”
test imposed by the Federal Circuit here:
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.
409 U.S. 63, 71 (1972). Six years later, in Parker v. Flook,
the Court was even more explicit, making clear that a
“physical transformation” was not a limitation:
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’ . . . . we assume that a valid process
patent may issue even if it does not meet one
of these qualifications of our earlier
437 U.S. 584, 589 (1978) (emphasis supplied).
Both the statute and this Court’s interpretation reflect
an unbroken chain of broad, flexible patent eligibility.
B. The Court’s Limitations on Patentable
Subject Matter Distinguish Between Applied
and Abstract Inventions
Nonetheless, patentable subject matter is not
unlimited. See, e.g., Diamond v. Diehr, 450 U.S. 173, 185;
see also Parker v. Flook, 437 U.S. 584 (1978); Gottschalk
v. Benson, 409 U.S. 63, 67 (1972); Funk Bros. Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127, 130 (1948).
Yet, when limiting eligibility, this Court has not
focused on the technology, form, or “physicality” of the
claimed invention—the critical mistake made by the
Federal Circuit in the instant case. Rather, the Court
has uniformly recognized that the key to eligible subject
matter is ascertaining whether an idea is claimed as
applied—in which case it is eligible for patentability
(assuming it is not a natural phenomenon or product of
nature6)—or merely in the abstract—in which case it is
In establishing this applied/abstract distinction, the
Court has not resorted to quixotic attempts to categorize
types of technology or discern the transformative
properties of inventions, but has instead harmonized
Section 101 with the long-standing requirement that a
patent claim must “enable” a person of ordinary skill in
the art to make and use the claimed invention. Indeed,
the subject matter and enablement requirements were
formerly part of the same statutory section. Patent Act
of 1836, Ch. 357, 5 Stat. 117, § 6 (July 4, 1836).
This Court’s applied/abstract doctrine is more than
150 years old, emerging in Morse. There, the Court
invalidated a claim to all communication by electrical
signal as “abstract,” but allowed a claim to the
application of the communications method to stand.
O’Reilly v. Morse, 56 U.S. 62, 112-21 (1854). Importantly,
in Morse, it was clear that the inventor’s attempt to
claim an idea (communication by electrical signals) in
the abstract was prohibited in large measure because
he could not adequately describe its boundaries. See id.,
6. See Chakrabarty, 447 U.S. at 309-310.
at 112-21 (“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.”).
Conversely, where Morse did describe and claim
practical applications of the same idea—for example a
“system of signs, consisting of dots and spaces, and of
dots, spaces, and horizontal lines, for numerals, letters,
words, or sentences, substantially as herein set forth
and illustrated, for telegraphic purposes” —the Court
viewed it as clearly patentable. Id. at 121. That is, where
Morse narrowed his claim to a specific application of the
idea of electronic communication, matching the scope
of his disclosure, the invention was eligible for
Importantly for present purposes, we note the
Morse’s valid “system of signs” claim is not significantly
different from many of the applied software and other
processes claimed by today’s inventors. That claim is
neither “tied to a particular machine” nor transforms
anything other than data, so it would fail the Federal
Circuit’s Bilski test. Nonetheless, the Morse Court held
7. The claim in Morse is not alone. In addition to the life
insurance plans, lottery-prize distribution, and railway-ticket
checking patents discussed in Judge Newman’s dissent below,
545 F.3d at 989, patents covering applied—but non-
transformative—processes have traditionally been patentable.
One example is Patent No. 1700, Improvement in the
Mathematical Operation of Drawing Lottery (July 18, 1840),
which claims a method for the random selection of lottery
The applied/abstract distinction continued to play a
key role in Mackay Radio & Tel. Co. v. Radio Corp.
of Am., 306 U.S. 86 (1939). There, a well-known
mathematical principle regarding the reception of radio
waves was directly implemented into the patented
antenna. Id. at 92-3. The Court recognized that “the
use of the formula in practice presupposes the use of a
wire whose length is a multiple of half wave lengths”
and that the “formula expressed a scientific truth.”
Despite the direct and simple use of the formula, the
Court upheld the antenna as patentable subject matter:
“While a scientific truth, or the mathematical expression
of it, is not patentable invention, a novel and useful
structure created with the aid of knowledge of scientific
truth may be.” Id. at 94
This applied/abstract distinction was also central to
Gottschalk v. Benson, 409 U.S. 63 (1972), where the
Court considered a patent directed to the mathematical
conversion of “binary coded decimals” into pure binary
format, a conversion that was known and could be done
by pencil and paper. Id. at 66-67. While Benson is often
cited for the notion that “pure mathematical algorithms”
are unpatentable subject matter, the Court was in fact
more concerned with the inventor’s inability to describe
the process in such a way that it was clear that the
applicant actually invented the claimed invention:
Here the ‘process’ claim is so abstract and
sweeping as to cover both known and unknown
uses of the BCD to pure binary conversion.
The end use may (1) vary from the operation
of a train to verification of drivers’ licenses to
researching the law books for precedents and
(2) be performed through any existing
machinery or future-devised machinery or
without any apparatus.
Id. at 68; see also id. at at 69-70 (discussing other cases
in terms of definiteness). Again, the Court ruled that
applied principles are patentable, but abstractions are
In its most recent treatment of Section 101, the
Court brought the same applied/abstract approach to
bear in upholding the claims in Diamond v. Diehr, 450
U.S. 175 (1981): “The respondents’ claims were not
directed to a mathematical algorithm or an improved
method of calculation but rather recited an improved
process for molding rubber articles by solving a
practical problem which had arisen in the molding of
rubber products.” Id. at 181 (emphasis added). The
Court noted, after surveying precedents, that:
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. . . . Arrhenius’
equation is not patentable in isolation, but
when a process for curing rubber is devised
which incorporates in it a more efficient
solution of the equation, that process is at the
least not barred at the threshold by §101.
Id. at 187-88 (emphasis in original).
We also think that the essence of this Court’s
applied/abstract doctrine can be seen in Section 101’s
prohibition against patenting products of nature.
Here, the Court has repeatedly emphasized that
the patent law is designed to protect applications of
human ingenuity, not simply “nature’s handiwork.”
See Chakrabarty, 447 U.S., at 310; see also Funk Brothers
Seed, 333 U.S., at 131. Thus, while a man-made organism
is eligible for patentability, see Chakrabarty, 447 U.S.,
at 310, a natural bacterium is not, see Funk Brothers,
333 U.S., at 131. The boundary is neither the form of
the invention nor its ability to “transform” nature;
instead the analysis turns on whether the patent claims
describe the application of human knowledge to a
practical end, rather than merely identification of the
existence of useful properties. In this way, a claim to an
abstract idea is like a claim to a product of nature:
unmoored to real-world applications of human
inventiveness, and thus ineligible for patenting. “A
principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as
no one can claim in either of them an exclusive right.”
Le Roy v. Tatham, 14 How. 156, 175 (1853); see also Diehr,
450 U.S. 185 (quoting Le Roy), Chakrabarty, 447 U.S.,
Finally, we note that the applied/abstract doctrine
usefully harmonizes Section 101’s analysis for patentable
subject matter with Section 112’s requirement that
patentable inventions be “enabled”—that is, contain a
“written description of the invention, and of the manner
and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled
in the art to which it pertains, or with which it is most
nearly connected, to make and use the same . . . .” 35 U.S.C.
§ 112. Much like Section 101, Section 112 safeguards the
essential function of the patent system: the dissemination
of real-world, practical human knowledge. Claims to
abstract mathematical concepts (like claims to natural
products or physical phenomena) violate this tenet, by
failing to demonstrate that the inventor is adding to the
storehouse of useful, practical human accomplishment.
In short, this Court’s precedents properly establish
the appropriate test for whether claims fall within the
patentable subject matter requirement of Section 101:
those claims which are drawn to the practical application
of human ingenuity or of discoveries are eligible for
C. The Federal Circuit Has Improperly Converted
a Flexible, Adaptable Approach Into a Hard-
There is no principled basis to categorically exclude a
particular technology, such as a business method or a
mathematical algorithm, from the “process” category.
Unfortunately, the Federal Circuit’s decision below creates
just such a hard-and-fast rule. In essence, the Federal
Circuit held that a process is unpatentable under Section
101 unless it is (1) tied to a particular machine or
(2) transforms an article into another state or thing. Bilski,
545 F.3d at 961-2. Even if a process meets this test, it is
nonetheless unpatentable if the machine or transformation
is merely incidental pre- or post-solution activity or if the
process would effectively preempt all use of an idea, natural
phenomenon, mental process, or algorithm, even in a
particular field of use. Id.
The Federal Circuit purported to draw this rigid rule
from the Court’s decisions in Benson, Flook, and Diehr,
but it ignored the language noted above making clear
that characteristics such as particular machines and
physical transformations were relevant considerations—
not absolute requirements—for patentable subject
matter. In its zeal for constructing bright-line rules,8 the
Federal Circuit has missed the texture and nuance of
this Court’s opinions.
In so doing, the Federal Circuit’s test raises a host
of problems and questions that are not only unanswered,
but probably unanswerable. Is a general purpose
computer a “specific machine”? Does the movement of
a physical object from one place to another “transform”
that object or its environment? Does the collection and
analysis of, for example, blood transform an object, or is
it merely “insignificant pre-solution activity”? When is
data “representative of a physical thing”? Many of these
8. This is not the first time this Court has reviewed the
Federal Circuit’s conversion of a flexible standard into a bright-
line rule. In KSR v. Teleflex, 550 U.S. 398 (2007), this Court
rejected the Federal Circuit’s “teaching-suggestion-
motivation” test as the exclusive test for obviousness. In
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), this
Court rejected the Federal Circuit’s “reasonable apprehension
of imminent suit” test as the exclusive test for declaratory
judgment jurisdiction in patent cases. In eBay, Inc. v.
MercExchange LLC, 547 U.S. 388 (2006), this Court rejected
the Federal Circuit’s rule that successful patentees are always
entitled to injunctive relief in favor of a more flexible, four-
factor test. And in Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 535 U.S. 722 (2002), this Court rejected the
Federal Circuit’s absolute approach to prosecution history
estoppel in favor of a more flexible approach.
questions reflect close cases involving the patentability
of medical diagnostic processes, software, and
putatively “non-technological” processes. But rather
than evaluate those questions on their individual merits,
as it has been wont to do in other areas of patent law,
the Federal Circuit would willy-nilly apply a single, hard-
and-fast rule cobbled together from out-of-context
quotations and myopic renderings of this Court’s
II. Arbitrarily Narrow Limits on Patentable Subject
Matter Will Reduce Incentives to Produce
The core mission of the patent law is to create
incentives for the production, disclosure, and
commercialization of socially valuable inventions. The
flexibility of the patentable subject matter requirement
is particularly important given the rapidly changing
nature of technology. This Court last considered the
scope of patentable subject matter in 1981, based on
inventions made nearly a decade earlier.9 At the time
those inventions were made, the biotechnology industry
was in its infancy. There was no such thing as a personal
computer or a cell phone, and the Internet was
something used by only a few computer scientists at
universities. Had the Court created an inflexible rule in
1981 governing the patentability of software or
9. This Court did decide the patentability of plants under
Section 101 in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l,
Inc., 534 U.S. 124 (2002), but that case involved the interaction
between that statute and another, not the scope of Section 101
per se. Id., at 127. Even so, the Court opted for a broad definition
of patentable subject matter. Id., at 131, 145-46.
communications technologies, that rule could have had
a range of unintended consequences, preventing the
patenting of important new inventions in a wide range
of fields. For example, Benson involved a claim to an
abstract mathematical algorithm—which was thus
unpatentable—but misreading of the opinion led many
to a fundamental misapprehension that all software
programs consisted of “abstract algorithms.” Software
does indeed consist of algorithms, but they are anything
but abstract. Software programs accomplish specific
results. And modern software patents mostly cover, not
abstract mathematical concepts, but detailed
engineering implementations of ideas that happen to
be expressed in the language of mathematics. These
implementations appear in many industries, from
automotive to yarn making. Quite simply, innovation in
industry must necessarily include innovation in applied
processes. The patent application in Benson may have
locked up all uses of an abstract idea, but it does not
follow that all or even very many software patents pose
a similar risk.
This Court has long recognized that Section 101’s
limitation on patentable subject matter plays a role in
this mission, by placing beyond the realm of patentability
certain limited classes of subject matter—classically
described as “laws of nature, natural phenomena, and
abstract ideas.” See, e.g., Diamond v. Chakrabarty, 447
U.S. 303, 309 (1980); Diamond v. Diehr, 450 U.S. 175,
182 (1981). The worry is that to allow patentability for
these “manifestations of . . . nature, free to all men and
reserved exclusively to none,” Chakrabarty, supra, at
309 (quoting Funk Bros. Seed Co. v. Kalo Inoculants
Co., 333 U.S. 127, 130 (1948)), would upset the delicate
balance between patentees and the public.
At the same time, however, limitations on patentable
subject matter are a blunt instrument, because they
deny patentability to a range of subject matter
regardless of how innovative it might be. Expanding
these categorical denials of patentability beyond this
well-established core of exceptions would work a harm
of unpredictable magnitude on the incentives to
innovate in the United States.
For this reason, bright-line tests that attempt to
exclude specific types of technologies are problematic.
There is no clear dividing line between “software”
and “non-software” patents, or a computer system
that implements a “business method” and one that
implements some other type of process, or between
“technological” and “non-technological” inventions.
More importantly, new and nonobvious innovations do
not occur only on one side of any of these lines. Any of
these tests, proposed decades ago, would have missed
important new and non-abstract inventions.
A. The Flexible Applied/Abstract Doctrine
This Court has recognized that allowing patenting
of mathematical algorithms in the abstract would harm
innovation by allowing patent-holders to “wholly
preempt the mathematical formula,” and thus
encompass every conceivable use of a fundamental
principle. See, e.g., Benson, 409 U.S. 63, 71-72; see also
Diehr, 450 U.S. at 188.
At the same time, the law recognizes that in many
cases it will be the recognition and implementation of
the practical utility of an algorithm that is an innovation:
the use of the Arrhenius equation to determine cure
time in rubber, the use of basic geometric principles to
guide the intensity of pixel display on a screen, or
perhaps the use of accounting principles in an automated
hub-and-spoke arrangement among mutual funds.
See Diehr, 450 U.S. at 178-79; In re Alappat, 33 F.3d
1526, 1538-39 (Fed. Cir. 1994); State Street Bank & Trust
Co. v. Signature Financial Group, Inc., 149 F.3d 1368,
1371-72 (Fed. Cir. 1998).
The right balance, then, is one that prevents the
patenting of subject matter that, because of its abstract
nature, properly belongs in the commons upon which
future innovations can be built, “free to all men and
reserved exclusively to none,” but permits patenting
inventions that build upon that commons to implement
an idea, law of nature, or natural phenomena in a new
and nonobvious practical application. This was, we think,
exactly the balance struck by the Court (and, indeed,
the Federal Circuit itself) before the Federal Circuit’s
recent misadventure in Bilski.
B. The Federal Circuit’s Rule Will Harm
The Federal Circuit’s conclusion in this case—that
“processes” cannot be patented unless they involve an
unmistakable physical or mechanical component—would
alter the line between patentable and unpatentable
subject matter from one that merely requires a practical
application of an algorithm to one that requires some
form of physical manifestation or transformation.
We addressed the statutory and practical problems with
a physical transformation requirement above. Here, we
address a different concern with the Federal Circuit’s
newly minted test—namely, the suggestion that not only
must an invention include some physical embodiment
or material transformation, but that the physical or
material aspect of the claimed invention itself must be
the “point of novelty” in the invention rather than an
“insignificant” part of the invention. Bilski, 545 F.3d at
Such an approach would return the law to the oft
misunderstood dicta of Parker v. Flook, 437 U.S. 584
(1978), which was clarified a mere three years later by
this Court in Diamond v. Diehr, 450 U.S. 175, 185 (1981)
(“Our recent holdings in Gottschalk v. Benson  and
Parker v. Flook … stand for no more than these long-
established principles [that abstract ideas are not
patentable]”). The Federal Circuit’s approach would not
merely exclude “mental” processes standing alone from
patentability, but would effectively exclude even ideas
or algorithms that have a definite practical application
by requiring that the physical embodiment—not the
idea or process itself—be new and nonobvious.
The problem with excluding new ideas from
consideration in the novelty and nonobviousness inquiry
is that doing so would exclude many of our most
important inventions from patentability despite
unmistakable statutory language to the contrary. Take,
for example, new uses of existing chemicals. If a drug
company discovers that an existing chemical can be used
to treat depression by selectively inhibiting the uptake
of serotonin in the human brain, the physical step that
follows—putting that chemical into pill form and
prescribing it to patients—is straightforward and
obvious. The real inventive work is in the discovery of
the new use for the chemical.10
That discovery, standing alone, may be an abstract
idea, or merely the identification of a natural
phenomenon—but it would be unwise in the extreme to
bar patentability for the practical application of this
discovery to a new and useful end merely because that
practical application was the result of a discovery. The
pharmaceutical industry relies on patent protection to
recoup the hundreds of millions of dollars it invests in
developing and testing new drugs. See Pharmaceutical
Research and Manufacturers of America, Why Do
Prescription Drugs Cost So Much . . . , http://www.
questions/. And pharmaceutical compositions—even
those based on natural products—have been patentable
for years. See 35 U.S.C. § 100(b) (stating that a “process”
includes “a new use of a known process, machine,
manufacture, composition of matter, or material”).
Other examples involve DNA patents or computer
programs. There are literally thousands of patents on
isolated or chimeric human DNA sequences that serve
an identified purpose. These gene sequences are not,
10. For example, note the history of minoxodil, which was
originally marketed as a drug to treat high blood pressure, and is
now better known for its success in treating hair loss (as Rogaine).
See http://minoxidil.us/history.htm. See also U.S. Pat. No. 4,877,805
(Oct. 31, 1989) (“Methods for treating sundamaged human skin
with retinoids”) (new use of Retin-A).
of course, patentable as they exist in the human body,
but they should be considered patentable when they are
altered from their natural state in a way that achieves a
practical result, such as moving that gene sequence into
a new bacterium to change the behavior of that
bacterium. See Diamond v. Chakrabarty, 447 U.S. 303
(1980); see also Parke Davis & Co. v. H.K. Mulford &
Co., 189 F. 95 (S.D.N.Y. 1911) (L. Hand, J.) (“[W]hile it is
of course possible logically to call this a purification of
the principle, it became for every practical purpose a
new thing commercially and therapeutically. That was a
good ground for a patent.”). But it is not the isolation of
the DNA sequence itself that makes the invention
socially valuable; it is the identification of the function
of the particular gene that is critical to the practical use
of that sequence. Under the Federal Circuit’s strained
reading of Flook, though, courts would be forced to
disregard the important discovery of the function of the
gene, since it was a discovery of a natural principle, and
could ask only whether the physical isolation of that
particular gene was nonobvious given the isolation of
thousands of similar genes in the past.
The same is true of software: the value of a new
program is often not the transformation of a physical
object such as a computer but the fact that information
is processed differently by the new program or that the
program generates new information as results. An
invention that doubles the speed at which a computer
starts up, for instance, does not necessarily transform
anything physical, but it is a valuable improvement that
makes it easier to use a computer. Yet again, under the
Federal Circuit’s inflexible test – one expressly rejected
in Diehr,11 that would not matter—it is only the incidental
change to the physical environment that would determine
patentability of the new algorithm or program.
It is true that some would celebrate the effective
elimination of software and DNA patents, and perhaps
even the elimination of drug patents. But that decision
should be made, if at all, by Congress. And we think it
unlikely in the extreme that Congress would or should
adopt such a restrictive view of patentable subject
matter. Pharmaceutical and biotechnology patents are
critical to encouraging innovation in those industries.
And while there is more controversy over the net benefits
of software patents, Congress has not seen fit to abolish
or restrict them. Indeed, no one has introduced a bill
doing so despite intensive Congressional consideration
of patent reform over the past four years.
The risk of a limited conception of patentable subject
matter is broader than the damage that might be done
to existing industries that rely on patent protection.
11. Specifically, the Court stated:
In determining the eligibility of respondents’
claimed process for patent protection under § 101,
their claims must be considered as a whole. It is
inappropriate to dissect the claims into old and new
elements and then to ignore the presence of the old
elements in the analysis. This is particularly true in
a process claim because a new combination of steps
in a process may be patentable even though all the
constituents of the combination were well known
and in common use before the combination was
450 U.S., at 188.
A broad eligibility requirement enables the patent
system to respond flexibly to the development of new
technologies. See Chakrabarty, 447 U.S. at 316 (“A rule
that unanticipated inventions are without protection
would conflict with the core concept of the patent law
that anticipation undermines patentability. . . . Congress
employed broad general language in drafting § 101
precisely because such inventions are often
unforeseeable.”). If patentable subject matter is
restricted to nonobvious physical embodiments, some
new and as-yet-unforeseen field of invention may not
qualify for patent protection. A rule that applies modern
understandings of what constitutes technology to new
fields of endeavor deprives patent law of the flexibility
it needs to provide effective protection to new
We respectfully suggest, therefore, that the proper
approach to patentable subject matter is articulated in
this Court’s decisions in Diamond v. Diehr and
Diamond v. Chakrabarty, not the Federal Circuit’s
overly narrow reading of Parker v. Flook – a reading
rejected by this Court. The question of whether an
invention is patentable subject matter should be
answered by looking at the claimed invention as a whole,
not by dissecting it into its parts and disregarding some
of those parts.
The Federal Circuit paid lip service to this principle,
announcing that it would not require that the physical
implementation as opposed to the invention as a whole
be the novel and nonobvious feature of the invention.
But it then undermined that principle by reading Diehr
and Flook incorrectly to reach the conclusion that
physical activity must be “significant.” This Court did
point out in Diehr, 450 U.S. at 191-92, that an applicant
could not avoid the abstract ideas limitation by adding
a trivial physical embodiment to a claim covering an
abstract idea. But the point of that test, properly
understood, is to prevent strategic behavior from
undermining the limitation on patenting abstract ideas.
The Federal Circuit erred by reifying that practical limit
into a requirement that there must always be a physical
transformation or mechanical implementation of an
invention that is itself “significant.” The right question
is whether the claim as a whole is being used as a vehicle
to lock up the unpatentable principle, not whether the
particular application of that principle being patented
is or is not physical or “significant.”
III. Existing Patent Doctrines Can Deal With the
Problems Bad Patent Applications Create
We acknowledge that there are problems with
software and so-called “business method” patents. The
Patent Office has doubtless issued many patents it
should not have, the uncertainties of claim construction
and other doctrines may allow plaintiffs to overclaim even
valid patents, and aspects of damages rules may lead
some to seek to capture more than the economic value
of their invention. But existing patent doctrines of
novelty, obviousness, enablement, claim construction,
and remedies are better suited to address bad patents
and the problems they create.
A. The Patent Act Provides the Tools to Bar Bad
There are very few, if any, questionable patents—
including the Bilski application—that might be barred
on subject matter grounds that could not also be barred
by other patentability criteria. The Board of Patent
Appeals and Interferences (BPAI) recognized this point
in this case, rejecting the patent on subject matter
grounds, and only subject matter grounds, to ensure
that the Federal Circuit would actually see an appeal on
such grounds. See Ex parte Bilski, Appeal No. 2002-
2257 (Sept. 26, 2006). For that reason, a holding that
Bilski’s application claims patentable subject matter
would not necessarily mean that the invention at issue
is patentable. In fact, we strongly suspect that Bilski’s
application could easily be rejected on novelty and
In general, there are many options for barring bad
patents, including improperly issued “business methods”
patents and “mental steps” claims:
(1) Novelty and Obviousness. One recurring
criticism, especially for software and business methods
patents, has been that the Patent Office has granted
claims for old and obvious methods. This is not a problem
of subject matter but of application; after this Court’s
recent decision in KSR, it is much easier for lower courts
to reject or invalidate specious claims. KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727 (2007). Additionally, the
Patent Office has more strictly applied patentability
criteria and the grant rate in the “business method”
class has fallen dramatically. See Mark A. Lemley &
Bhaven Sampat, Is the Patent Office a Rubber Stamp?,
58 Emory L.J. 181 (2008) (finding that only 15% of
applications in Class 705, business methods, had been
approved 7½ years after filing).
Another concern with business method patents is
that they protect methods that are widely practiced, but
undiscoverable by patent examiners in order to use as
“prior art” to reject patents.12 This, too, is not an issue
of subject matter; patent law has never barred patents
because others have used methods secretly. W.L. Gore
& Assoc., Inc. v. Garlock, Inc., 721 F. 2d 1540, 1550 (Fed.
Cir. 1983). Instead, it reflects a concern, not that existing
rules are inadequate, but that they are not always
applied in the Patent Office with enough care. In fact,
as examiners have gained more experience with such
patents and with searching public databases for
information about them, they have rejected more
patents. See Mark A. Lemley & Bhaven Sampat, supra.
Indeed, complaints about examiner difficulty in
finding publicly disclosed methods in patents and similar
prior art are quite ironic, for they are in part a product
of pre-Diehr uncertainty about software patents. The
perceived inability to patent software-related inventions
drove such inventions “underground” into trade secrecy
or into disguise as non-software inventions, making
them more difficult to find and apply to invalidate
12. Robert P. Merges, As Many as Six Impossible Patents
Before Breakfast: Property Rights for Business Concepts and
Patent System Reform, 14 Berkeley Tech. L.J. 577, 589 (1999).
patents today. That was a mistake that should not be
repeated—the business methods applications of the
past decade or more, whether issued as patents or not,
will provide a wealth of publicly available prior art for
future filings. Forcing companies to keep such methods
secret or disguise them as other technologies will only
further deplete the prior art pool.
(2) Utility. Part of the Section 101 analysis includes
determining whether a claimed invention has utility. See
35 U.S.C. § 101 (“Whoever invents or discovers any new
and useful process . . . .”) (emphasis added). The
traditional test for utility is “practical,” not
“technological” utility. Practical utility requirements
serve to bar otherwise abstract ideas and algorithms.
For example, a standalone mathematical algorithm would
not be patentable because it does not have practical
utility, even if the algorithm is a process under Section
101. While such an algorithm may allow for new, faster,
or more accurate computation of real world effects, it
does not “do” anything unless coupled to some useful
process or device, and practical utility requires some
contribution beyond the possibility of calculation.
See In re Schrader, 22 F.3d 290, 295 (Fed. Cir. 1994) (some
sort of practical effect is required, even if not a physical
(3) Specification and Claiming. A primary
concern with any effort to deny patentability to claims
that are solely composed of “mental steps” is that human
intervention fails the definiteness, written description,
and enablement tests under 35 U.S.C. § 112, because—
as a species of “abstract ideas”—they allow for claims
that are far broader than the applicant has disclosed.
Indeed, we showed earlier how this Court has historically
used the enablement standard of Section 112 to determine
whether a claimed invention is an “abstract idea.”
By limiting a patentee to what he has actually taught one
of ordinary skill in the art to make and use, the enablement
doctrine prevents just the sort of sweeping claims to
abstract ideas with which this Court’s Section 101 cases
have been concerned. Indeed, the claim invalidated in
Morse was suspect in large part due to lack of enablement.
56 U.S., at 112-21.
In this regard, we think it is essentially impossible to
draw a principled boundary around claims that are
completely “mental.” By contrast, a rule that permits
patenting so long as the mental step is one that is claimed
only in connection with a practical application of the idea—
which requires that a claim be enabled by the patent’s
disclosure—avoids such a problem.
B. Other Doctrines Limit the Harm from Weak
To the extent that the traditional statutory
patentability criteria do not weed out bad patents, recent
changes in the law will reduce the harm caused by those
weak patents. For example, in MedImmune, Inc. v.
Genentech, Inc., 549 U.S. 118 (2007), this Court loosened
the standards for declaratory judgment of patent invalidity,
making it easier for potential defendants to seek to
invalidate patents. Similarly, the Federal Circuit’s recent
determination in In re Seagate Tech., LLC, 497 F.3d 1360,
1371 (Fed. Cir. 2007) (en banc), that willful infringement
requires objective recklessness reduces the risks
associated with reviewing patents in any given subject area.
As such, Seagate will allow potential defendants to read
patents and decide whether to design around or challenge
weak patents rather than simply close their eyes to the
existence of weak patents.
Finally, in eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388 (2006), this Court held that lower courts have discretion
to deny injunctive relief in accordance with the principles
of equity. District courts can use this discretion to deny
injunctions in cases in which the owner of a valid patent
seeks to “hold up” a defendant by threatening to shut down
a large, multi-component product because of infringement
of a small piece of that product.13
In sum, the courts have a combination of statutory
and doctrinal tools available to reject, invalidate, or narrow
patents that might otherwise be considered problematic.
Congress is actively considering further changes to the
patent system designed to improve the scrutiny of patent
applications and reduce abuse of bad patents. Those tools
are far better suited toward limiting the social harm from
inappropriate claims than any “subject matter” test will
ever be. And they pose less risk of categorically denying
important new inventions the benefits of patent protection.
As such, these other doctrines should be used whenever
possible in lieu of difficult-to-enforce subject matter bars.
See Kristen Osenga, Ants, Elephant Guns, and Statutory
Subject Matter, 39 Ariz. St. L.J. 1087 (2007); Michael
Risch, Everything is Patentable, 75 Tenn. L. Rev. 591, 606-
7 (2008); Christopher Todd Abernethy, Note, Cruel Hand
of Bilski: Culminating the Shortsighted Crusade for
Marginalization of the ‘Process’ Patent, available at http:/
/papers.ssrn.com/sol3/ papers.cfm?abstract_ id=1420205.
13. These reforms do not end the problem of holdup, of
course, though they reduce it.
IV. Bilski’s Application Fails This Court’s Applied/
Using this Court’s applied/abstract dichotomy, we
believe the Bilski application is unpatentable as an
abstract idea. Bilski, 545 F.3d at 1015 (Rader, J. dissenting).
The representative claim 114 relates to an abstract concept:
a method of hedging by identifying parties with differing
risk profiles. Importantly, the claim is not for a practical
application of hedging; rather, it is so broadly enumerated
as to be a general principle that is non-enabled. For
example, the claim purports to cover every method of
identifying the risk profiles for buyers and sellers of
different types of commodities, while the patent fails to
describe or enable such a broad claim.
14. Claim 1 reads:
A method for managing the consumption risk costs
of a commodity sold by a commodity provider at a
fixed price comprising the steps of: (a) initiating a
series of transactions between said commodity
provider and consumers of said commodity wherein
said consumers purchase said commodity at a fixed
rate based upon historical averages, said fixed rate
corresponding to a risk position of said consumer;
(b) identifying market participants for said
commodity having a counter-risk position to said
consumers; and (c) initiating a series of transactions
between said commodity provider and said market
participants at a second fixed rate such that said
series of market participant transactions balances
the risk position of said series of consumer
The Bilski application is remarkably similar to that of
Morse. The application describes and enables a very
specific application regarding energy that is affected by
weather. The application discloses, among other things,
gathering data about the previous 20 years worth of
transactions and weather; simulating the payoffs and
profits from historical transactions and hypothetical
weather levels, repeating the process until the simulations
yield acceptable profits, and steps to buy and sell options
to hedge against risk. J.A. 16-19.
Like the “system of signs” claim upheld in Morse, this
disclosure might well support a claim relating to the
particular application described, assuming that other
patentability criteria are met. But it does not justify
granting a patent on all forms of hedging risk, just as
Morse’s pioneering invention did not justify his claim to
all electromagnetic communication.
Like the claims of Morse’s patent that this Court upheld
as patentable, the Bilski claim could be made practical in a
number of ways—namely, by limiting it to an enabled
invention either by claiming more specific means to carry
out the method or by more narrowly claiming the steps of
the method.15 Yet, contrary to the Federal Circuit’s position,
none of these paths to patentability turns on the claiming
of a machine or transformation of matter.
15. Even so limited, it is likely that the Bilski application
is unpatentable because it purports to cover technology already
known or obvious to those of skill in the art.
The patent statutes were wisely drafted with an
expansive vision of patentable subject matter. Efforts to
graft judicially created limitations onto that expansive
scope in the past have proven fruitless and indeed
counterproductive. This Court should not impose a
requirement that patentable inventions require a machine
or the physical transformation of some material. It should
instead maintain the rule that patents are available for
“anything under the sun made by man,” including
discoveries of ideas, laws of nature, or natural phenomena
so long as they are implemented in a practical application.
In short, the test should be as it has been: where an idea is
claimed as applied, it is eligible for patentability, but if it is
claimed merely in the abstract it is not.
MARK A. LEMLEY
WEST VIRGINIA UNIVERSITY
Counsel of Record
COLLEGE OF LAW
STANFORD LAW SCHOOL
P.O. Box 6130
559 Nathan Abbott Way
Morgantown, WV 26506
Stanford, CA 94305
R. POLK WAGNER
UNIVERSITY OF PENNSYLVANIA
UNIVERSITY OF SAN DIEGO
3400 Chestnut Street
Philadelphia, PA 19104
5998 Alcalá Park
San Diego, CA 92110
Attorneys for Amici Curiae
List of Signatories1
Professor John R. Allison
McCombs Graduate School of Business
University of Texas at Austin
Professor Dan L. Burk
Chancellor’s Professor of Law
University of California, Irvine School of Law
Professor Daniel R. Cahoy
Smeal College of Business
Penn State University
Professor Michael A. Carrier
Rutgers Law School-Camden
Professor Christopher A. Cotropia
University of Richmond School of Law
Professor Emir Aly Crowne-Mohammed
University of Windsor Law School
Professor Stacey L. Dogan
Boston University School of Law
Professor Thomas G. Field, Jr.
Franklin Pierce Law Center
1. Institutions listed for identification purposes only.
Professor Richard S. Gruner
John Marshall Law School
Professor Chris Holman
UMKC School of Law
Professor Mark A. Lemley
William H. Neukom Professor
Stanford Law School
Professor Michael J. Madison
University of Pittsburgh School of Law
Professor Joseph S. Miller
Lewis & Clark Law School
Professor Stephen McJohn
Suffolk University Law School
Professor Kristen Osenga
University of Richmond School of Law
Professor Lee Petherbridge
Loyola Law School – Los Angeles
Professor Michael Risch
West Virginia University College of Law
Professor Kurt M. Saunders
College of Economics and Business
California State University - Northridge
Professor Ted Sichelman
University of San Diego Law School
Professor R. Polk Wagner
University of Pennsylvania Law School