Forty years of wondering in the wilderness and no closer to the promised land: Bilski's superficial textualism and the missed opportunity to return patent law to its technology mooring.

• Author: Menell, Peter S.
• Position: Symposium

INTRODUCTION I. THE ARC OF PATENTABLE SUBJECT MATTER LIMITATIONS A. The Formative Period B. Evolution of the Scope of Patentable Subject Matter to the Modern Era 1. "Art" 2. Natural principles C. The Patent Act of 1952 D. The Early Modern Patentable Subject Matter Era E. 1981-2010." Wondering in the Patentable Subject Matter Wilderness II. BILSKI V. KAPPOS AND THE TEXTUALIST TURN A. Reducing Two Centuries of Patentable Subject Matter Jurisprudence to a Paragraph B. (Mis)construing the Patent Act 1. The Patent Act of 1952 2. The First Inventor Defense Act of 1999 C. Patentable Subject Matter Incoherence III. THE COSTS OF UNGROUNDED AND INCOHERENT PATENTABLE SUBJECT MATTER JURISPRUDENCE IV. INTEGRATING CONSTITUTIONAL LIMITATIONS, COMMON LAW JURISPRUDENCE, AND STATUTORY INTERPRETATION IN DELINEATING THE BOUNDARIES OF PATENTABLE SUBJECT MATTER CONCLUSION INTRODUCTION

When the Supreme Court granted certiorari in Bilski v. Kappos in the summer of 2009, (1) the patent community was galvanized. In view of the murky and conflicting reasoning of the Benson-Flook-Diehr trilogy (2) from the 1970s and early 1980s and the Supreme Court's inaction on patentable subject matter since that time, it appeared that the Court was poised to clarify one of the most confounding and potentially critical areas of patent law at a crucial juncture in the information age. Why else, in this era of parsimonious certiorari grants, (3) would the Court review the Federal Circuit's rejection of a patent that nearly everyone considered unworthy of protection? The Federal Circuit's fractured en banc resolution of patentable subject matter in In re Bilski presented an opportunity for the Supreme Court to reengage and bring coherence to the boundaries of patentable subject matter.... Or so many hoped.

Throughout industrial history, the advent of major new technological fields has produced controversy over the boundaries of patentable subject matter. The question of whether software-related inventions are patentable emerged forty years ago with the opening of a distinct marketplace for software products. Coming during the first decade of software's ascendancy, the Benson-Flook-Diehr trilogy produced more heat than light in applying century-old patent jurisprudence to an amorphous, rapidly developing field of technology. Benson and Hook saw the exclusion of patents on abstract principles as a significant limitation on the patentability of computer software. Without overtly overruling those decisions, Diehr reversed course and opened the software patent floodgates. The Patent and Trademark Office (]?TO), Federal Circuit, lower courts, and patent community have struggled mightily since that time to make sense of those decisions. (4)

Paralleling the software revolution, biotechnology has also emerged during the past several decades, raising other patentable subject matter controversies. The Supreme Court's Chakrabarty (5) decision approved the patentability of nonnaturally occurring, genetically altered microorganisms, but the Court has yet to confront the patentability of human-isolated, naturally occurring DNA molecules (6) and medical diagnostic tests.

The past forty years of patentable subject matter jurisprudence harkens back to the Israelites' wandering through the wilderness following the exodus from Egypt. (7) But unlike Moses's leadership, which brought the Israelites to the Promised Land by year forty, the Supreme Court's Bilski decision has left the patent community in the wilderness. (8)

Such a disconcerting result was avoidable. Drawing upon historical sources explicating the constitutional and jurisprudential foundation of patentable subject matter, Justice Stevens's concurring opinion pointed the way out of the wilderness, at least with regard to business methods. The fractured five-vote majority instead retreated into a superficial textual wilderness. To some extent, the decision reflects the Roberts Court's tendency toward vague and narrow decisions. (9) But it also reveals a fundamental failing of modern textualism--its inability to account for and integrate the common law jurisprudence explicating centuries-old statutory text.

Unfortunately, the problems posed by "business method" patents will continue to plague the information technology and financial industries. Moreover, the failure of the Bilski majority to elucidate the basis--constitutional, statutory, and/or jurisprudential--for deciphering the boundaries of patentable subject matter leaves other important industries and decisionmakers in the wilderness. (10) What the patent community needed was a coherent manual for navigating the boundaries of patentable subject matter. What it got was noncommittal, hypertextual, incoherent rambling.

This Article critically analyzes the boundaries of patentable subject matter on the basis of the historical record and first principles of statutory construction. Part I traces the history of patentable subject matter jurisprudence. Part II examines the Bilski majority decision, showing how its effort to shoehorn patentable subject matter into a superficial textual mold obfuscates patentable subject matter boundaries. Part III explores the fallout from ungrounded and vague patentable subject matter jurisprudence. Part IV points the way toward a coherent, historically faithful, dynamic, and pragmatic framework for delineating the boundaries of patentable subject matter.

1. THE ARC OF PATENTABLE SUBJECT MATTER LIMITATIONS

   At first blush, the boundaries of patentable subject matter appear straightforward. Section 101 of the Patent Act states that "[w]hoever 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." (11) The text plainly encompasses any invention or discovery of processes, machines, manufactures, and compositions of matter, including previously unrecognized minerals, molecules, and natural laws. Yet the Supreme Court has long held that the Patent Act does not extend to "laws of nature, physical phenomena, and abstract ideas." (12) Hence, fidelity to text and jurisprudence requires forthright explication of history, judicial philosophy, and legislative intent.

   Since the critical language dates back over two hundred years and is intertwined with Congress's constitutional authority, we begin with the nation's formative period and then proceed through the evolution of patentable subject matter in the nineteenth and early twentieth centuries, the conditions leading to the Patent Act of 1952, the Supreme Court jurisprudence in the 1970s and early 1980s, and the thirty-year hiatus leading up to Bilski.

   1. The Formative Period

      Congress's authority to enact patent protection flows from the power "[t]o promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries." (13) The constitutional text and original understanding of the Intellectual Property Clause demonstrate that protection for inventions was limited to the "useful Arts," while protection for writings could extend to all general knowledge, or "Science." (14) The first Congress entitled the initial patent act, "An Act to promote the progress of useful Arts." (15) After the initial act, Congress passed fourteen successive patent acts with titles directed to promoting "useful arts," "useful discoveries," or "useful inventions." (16) Thus, Congress's patent power was originally understood as limited to "useful Arts." (17)

      Although the Framers did not expressly define the term "useful Arts," (18) usage at the time indicates that it related to trades utilizing what we would today call "technology." (19) Just days before the Constitutional Convention of 1787, one delegate gave examples of the "useful arts":

      Under all the disadvantages which have attended manufactures and the useful arts, it must afford the most comfortable reflection to every patriotic mind to observe their progress in the United States and particularly in Pennsylvania.... Permit me however to mention them under their general heads: meal of all kinds, ships and boats, malt and distilled liquors, potash, gunpowder, cordage, loaf-sugar, pasteboard, cards and paper of every kind, books in various languages, snuff, tobacco, starch, cannon, musquets, anchors, nails, and very many other articles of iron, bricks, tiles, potters ware, mill-stones, and other stone work, cabinet work, trunks and Windsor chairs, [and] carriages and harness of all kinds.... (20) Alexander Hamilton praised the patent system as a way of encouraging "[inventions] which relate to machinery" in the United States. (21) These sources support the textual inference that "useful Arts" concerned craft, trade, and industrial activities.

      Historians and patent scholars concur that the phrase "useful Arts," as used and understood circa 1787, related to trades utilizing what we would today call "technology." (22) The phrase "useful Arts" was understood in contradistinction to the eighteenth-century terms "polite," "liberal," and "fine" arts--which related to aesthetic and philosophical pursuits. (23)

   2. Evolution of the Scope of Patentable Subject Matter to the Modern Era

      The modern text delineating the scope of patentable subject matter was largely set by 1793: patents were available for "any new and useful art, machine, manufacture or composition of matter" and improvements thereof. (24) Reflecting the tenor of the era, courts would develop the contours of patentable subject matter in a common law tradition drawing upon English court decisions, treatises, and developing U.S. precedent. Two issues emerged: (1) the scope of "art," and (2) whether natural principles could be patented.

      1. "Art"

         The early treatise writers recognized that U.S. patent law extended to "art" so as to avoid the problem that English courts had in...