In Re Bilski

dissenting.

The court today acts en banc to impose a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system. The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today’s electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today’s Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

This exclusion is imposed at the threshold, before it is determined whether the excluded process is new, non-obvious, enabled, described, particularly claimed, etc.; that is, before the new process is examined for patentability. For example, we do not know whether the Bilski process would be found patentable under the statutory criteria, for they were never applied.

The innovations of the “knowledge economy” — of “digital prosperity” — have been dominant contributors to today’s economic *977growth and societal change. Revision of the commercial structure affecting major aspects of today’s industry should be approached with care, for there has been significant reliance on the law as it has existed, as many amici curiae pointed out. Indeed, the full reach of today’s change of law is not clear, and the majority opinion states that many existing situations may require reassessment under the new criteria.

Uncertainty is the enemy of innovation. These new uncertainties not only diminish the incentives available to new enterprise, but disrupt the settled expectations of those who relied on the law as it existed. I respectfully dissent.

DISCUSSION

The court’s exclusion of specified process inventions from access to the patent system is achieved by redefining the word “process” in the patent statute. However, the court’s redefinition is contrary to statute and to explicit rulings of the Supreme Court and this court. I start with the statute:

Section 101 is the statement of statutory eligibility

From the first United States patent act in 1790, the subject matter of the “useful arts” has been stated broadly, lest advance restraints inhibit the unknown future. The nature of patent-eligible subject matter has received judicial attention over the years, as new issues arose with advances in science and technology. The Supreme Court has consistently confirmed the constitutional and legislative purpose of providing a broadly applicable incentive to commerce and creativity, through this system of limited exclusivity. Concurrently, the Court early explained the limits of patentable subject matter, in that “fundamental truths” were not intended to be included in a system of exclusive rights, for they are the general foundations of knowledge. Thus laws of nature, natural phenomena, and abstract ideas are not subject to patenting. Several rulings of the Court have reviewed patent eligibility in light of these fundamentals. However, the Court explicitly negated today’s restrictions. My colleagues in the majority are mistaken in finding that decisions of the Court require the per se limits to patent eligibility that the Federal Circuit today imposes. The patent statute and the Court’s decisions neither establish nor support the exclusionary criteria now adopted.

The court today holds that any process that does not transform physical matter or require performance by machine is not within the definition of “process” in any of the patent statutes since 1790. All of the statutes contained a broad definition of patent-eligible subject matter, like that in the current Patent Act of 1952:

35 U.S.C § 101 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.

In Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) the Court explained that Section 101 is not an independent condition of patentability, but a general statement of subject matter eligibility. The Court stated:

Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for pat-entability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart *978from whether the invention falls in a category of statutory subject matter.”

Id. at 189-90, 101 S.Ct. 1048 (footnote omitted) (quoting In re Bergy, 596 F.2d 952, 961 (C.C.P.A.1979)).

“Process” is defined in the 1952 statute as follows:

35 U.S.C. § 100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

The 1952 Patent Act replaced the word “art” in prior statutes with the word “process,” while the rest of Section 101 was unchanged from earlier statutes. The legislative history for the 1952 Act explained that “art” had been “interpreted by courts to be practically synonymous with process or method.” S.Rep. No. 82-1979 (1952), reprinted in 1952 U.S.C.C.A.N. 2394, 2398, 2409-10. In Diehr the Court explained that a process “has historically enjoyed patent protection because it was considered a form of ‘art’ as that term was used in the 1793 Act.” 450 U.S. at 182, 101 S.Ct. 1048.

The definition of “process” provided at 35 U.S.C. § 100(b) is not “unhelpful,” as this court now states, maj. op. at 951 n. 3, but rather points up the errors in the court’s new statutory interpretation. Section 100(b) incorporates the prior usage “art” and the term “method,” and places no restriction on the definition. This court’s redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

The breadth of Section 101 and its predecessor provisions reflects the legislative intention to accommodate not only known fields of creativity, but also the unknown future. The Court has consistently refrained from imposing unwarranted restrictions on statutory eligibility, and for computer-implemented processes the Court has explicitly rejected the direction now taken. Nonetheless, this court now adopts a redefinition of “process” in Section 101 that excludes forms of information-based and software-implemented inventions arising from new technological capabilities, stating that this result is required by the Court’s computer-related cases, starting with Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). However, the Court in Benson rejected the restriction that is imposed today:

This court’s new definition of “process” was rejected in Gottschalk v. Benson

In Benson the claimed invention was a mathematical process for converting binary-coded decimal numerals into pure binary numbers. The Court explained that a mathematical formula unlimited to a specific use was simply an abstract idea of the nature of “fundamental truths,” “phenomena of nature,” and “abstract intellectual concepts,” as have traditionally been outside of patent systems. 409 U.S. at 67, 93 S.Ct. 253. However, the Court explicitly declined to limit patent-eligible processes in the manner now adopted by this court, stating:

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. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

Id. at 71, 93 S.Ct. 253. The Court explained that “the requirements of our prior precedents” did not preclude patents on computer programs, despite the statement *979drawn from Cochrane v. Deener, 94 U.S. 780, 787-88, 24 L.Ed. 139 (1876), that “[transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” Benson, 409 U.S. at 70, 93 S.Ct. 253. Although this same statement is now relied upon by this court as requiring its present ruling, maj. op at 956 & n. 11, the Court in Benson was explicit that: “We do not hold that no process patent could ever qualify if it did not meet [the Court’s] prior precedents.” The Court recognized that Coch-rane’s statement was made in the context of a mechanical process and a past era, and protested:

It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.

Benson, 409 U.S. at 71, 93 S.Ct. 253. Instead, the Court made clear that it was not barring patents on computer programs, and rejected the “argu[ment] 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’ ” in order to satisfy Section 101. Id. Although my colleagues now describe these statements as “equivocal,” maj. op. at 956, there is nothing equivocal about “We do not so hold.” Benson, 409 U.S. at 71, 93 S.Ct. 253. Nonetheless, this court now so holds.

In Parker v. Flook the Court again rejected today’s restrictions

The eligibility of mathematical processes next reached the Court in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978), where the Court held that the “process” category of Section 101 was not met by a claim to a mathematical formula for calculation of alarm limits for use in connection with catalytic conversion of hydrocarbons and, as in Benson, the claim was essentially for the mathematical formula. The Court later summarized its Flook holding, stating in Diamond v. Diehr that:

The [Flook] application, however, did not purport to explain how these other variables were to be determined, nor did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of the process variables, nor the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.”

Diehr, 450 U.S. at 186-87, 101 S.Ct. 1048 (quoting Flook, 437 U.S. at 586, 98 S.Ct. 2522).

The Court explained in Flook that a field-of-use restriction to catalytic conversion did not distinguish Flook’s mathematical process from that in Benson. However, the Court reiterated that patent eligibility of computer-directed processes is not controlled by the “qualifications of our earlier precedents,” again negating any limiting effect of the usages of the past, on which this court now places heavy reliance. The Court stated: *980Flook, 437 U.S. at 589 n. 9, 98 S.Ct. 2522 (quoting Cochrane, 94 U.S. at 787). This statement directly contravenes this court’s new requirement that all processes must meet the court’s “machine-or-transformation test” or be barred from access to the patent system.

*979The 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.” As in Benson, we assume that a valid process patent may issue even if it does not meet one of these qualifications of our earlier precedents[1]

*980The Court in Flook discussed that abstractions and fundamental principles have never been subject to patenting, but recognized the “unclear line” between an abstract principle and the application of such principle:

The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “conception^] of the mind, seen only by [their] effects when being executed or performed.”

Flook, 437 U.S. at 589, 98 S.Ct. 2522 (alterations in original) (quoting Tilghman v. Proctor, 102 U.S. 707, 728, 26 L.Ed. 279 (1880)).

The decision in Flook has been recognized as a step in the evolution of the Court’s thinking about computers. See Arrhythmia Res. Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1057 n. 4 (Fed.Cir. 1992) (“it appears to be generally agreed that these decisions represent evolving views of the Court”) (citing R.L. Gable & J.B. Leaheey, The Strength of Patent Protection for Computer Products, 17 Rutgers Computer & Tech. L.J. 87 (1991); D. Chi-sum, The Patentability of Algorithms, 47 U. Pitt. L.Rev. 959 (1986)). That Flook does not support today’s per se exclusion of forms of process inventions from access to the patent system is reinforced in the next Section 101 case decided by the Court:

In Diamond v. Chakrabarty the Court again rejected per se exclusions of subject matter from Section 101

In Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980), the scope of Section 101 was challenged as applied to the new fields of biotechnology and genetic engineering, with respect to the patent eligibility of a new bacterial “life form.” The Court explained the reason for the broad terms of Section 101:

The subject-matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting “the Progress of Science and the useful Arts” with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms.

Id. at 315, 100 S.Ct. 2204 (quoting U.S. Const., art. I, § 8). The Court referred to the use of “any” in Section 101 (“Whoever invents or discovers any new and useful process ... or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”), and reiterated that the statutory language shows that Congress “plainly contemplated that the patent laws would be given wide scope.” Id. at 308, 100 S.Ct. 2204. The Court referred to the legislative intent to include within the scope of Section 101 “anything under the sun that is made by man,” id. at 309, 100 S.Ct. 2204 (citing S. Rep. 82-1979, at 5, U.S.Code Cong. & Admin.News 1952, pp. 2394, 2399; H.R. Rep. 82-1923, at 6 (1952)), and stated that the unforeseeable future should not be inhibited by judicial restriction of the “broad general language” of Section 101:

A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that anticipation undermines patentability. Mr. Justice Douglas reminded that the *981inventions most benefiting mankind are those that push back the frontiers of chemistry, physics, and the like. Congress employed broad general language in drafting § 101 precisely because such inventions are often unforeseeable.

Id. at 315-16, 100 S.Ct. 2204 (citations and internal quotation marks omitted). The Court emphasized that its precedents did not alter this understanding of Section 101’s breadth, stating that “Flook did not announce a new principle that inventions in areas not contemplated by Congress when the patent laws were enacted are unpatentable per se.” Id. at 315, 100 S.Ct. 2204.

Whether the applications of physics and chemistry that are manifested in advances in computer hardware and software were more or less foreseeable than the advances in biology and biotechnology is debatable, but it is not debatable that these fields of endeavor have become primary contributors to today’s economy and culture, as well as offering an untold potential for future advances. My colleagues offer no reason now to adopt a policy of exclusion of the unknown future from the subject matter now embraced in Section 101.

Soon after Chakrabarty was decided, the Court returned to patentability issues arising from computer capabilities:

In Diamond v. Diehr the Court directly held that computer-implemented processes are included in Section 101

The invention presented to the Court in Diehr was a “physical and chemical process for molding precision synthetic rubber products” where the process steps included using a mathematical formula. The Court held that the invention fit the “process” category of Section 101 although mathematical calculations were involved, and repeated its observation in Chakrabarty that “courts should not read into the patent laws limitations and conditions which the legislature has not expressed.” Diehr, 450 U.S. at 182, 101 S.Ct. 1048 (internal quotation marks omitted) (citing Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204).

The Court distinguished a claim that would cover all uses of a mathematical formula and thus is an abstract construct, as in Benson, from a claim that applies a mathematical calculation for a specified purpose, as in Diehr. The Court stated that “a claim drawn to subject matter otherwise statutory does not become nonstat-utory simply because it uses a mathematical formula, computer program, or digital computer,” id. at 187, 101 S.Ct. 1048, and explained that the line between statutory and nonstatutory processes depends on whether the process is directed to a specific purpose, see id. (“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.” (emphasis in original)). The Court clarified that Flook did not hold that claims may be dissected into old and new parts to assess their patent eligibility. Id. at 189 n. 12, 101 S.Ct. 1048.

However, the Court did not propose the “machine-or-transformation” test that this court now insists was “enunciated” in Diehr as a specific limit to Section 101. Maj. op. at 953-54. In Diehr there was no issue of machine or transformation, for the Diehr process both employed a machine and produced a chemical transformation: the process was conducted in “an openable rubber molding press,” and it cured the rubber. In discussing the known mathematical formula used by Diehr to calculate the relation between temperature and the rate of a chemical reaction, the Court recited the traditional exceptions of “laws of nature, natural phenomena, and abstract ideas,” 450 U.S. at 185, 101 S.Ct. 1048, and explained that the entirety of the process *982must be considered, not an individual mathematical step.

The Court characterized the holdings in Benson and Flook as standing for no more than the continued relevance of these “long-established” judicial exclusions, id., and repeated that a practical application of pure science or mathematics may be patentable, citing Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 59 S.Ct. 427, 83 L.Ed. 506 (1939) (“While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge and scientific truth may be.”). The Court explained that the presence of a mathematical formula does not preclude patentability when the structure or process is performing a function within the scope of the patent system, stating:

[Wjhen a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect {e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

450 U.S. at 192, 101 S.Ct. 1048. This statement’s parenthetical “e.g.” is relied on by the majority for its statement that Diehr requires today’s “machine-or-transformation” test. However, this “e.g.” does not purport to state the only “function which the patent laws were designed to protect.” Id. This “e.g.” indeed describes the process in Diehr, but it does not exclude all other processes from access to patenting.

It cannot be inferred that the Court intended, by this “e.g.” parenthetical, to require the far-reaching exclusions now attributed to it. To the contrary, the Court in Diehr was explicit that “an application of a law of nature or mathematical formula” may merit patent protection, 450 U.S. at 187, 101 S.Ct. 1048 (emphasis in original), and that the claimed process must be considered as a whole, id. at 188, 101 S.Ct. 1048. The Court recognized that a process claim may combine steps that were separately known, and that abstract ideas such as mathematical formulae may be combined with other steps to produce a patentable process. Id. at 187, 101 S.Ct. 1048. The steps are not to be “dissected]” into new and old steps; it is the entire process that frames the Section 101 inquiry. Id. at 188,101 S.Ct. 1048.

The Diehr Court did not hold, as the majority opinion states, that transformation of physical state is a requirement of eligibility set by Section 101 unless the process is performed by a machine. It cannot be inferred that the Court silently imposed such a rule. See maj. op. at 956 (relying on lack of repetition in Diehr of the Benson and Flook disclaimers of requiring machine or transformation, as an implicit rejection of these disclaimers and tacit adoption of the requirement). There was no issue in Diehr of the need for either machine or transformation, for both were undisputedly present in the process of curing rubber. It cannot be said that the Court “enunciated” today’s “definitive test” in Diehr.2

*983 Subsequent Supreme Court authority reinforced the breadth of Section 101

In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508 (2001), the Court described Section 101 as a “dynamic provision designed to encompass new and unforeseen inventions,” id. at 135, 122 S.Ct. 593, that case arising in the context of eligibility of newly developed plant varieties for patenting. The Court stated: “As in Chakrabarty, we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result.” Id. at 145-46, 122 S.Ct. 593. The Court reiterated that “Congress plainly contemplated that the patent laws would be given wide scope,” id. at 130, 122 S.Ct. 593 (quoting Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204), and that the language of Section 101 is “extremely broad,” id. This is not language of restriction, and it reflects the statutory policy and purpose of inclusion, not exclusion, in Section 101.

The Court’s decisions of an earlier age do not support this court’s restrictions of Section 101

My colleagues also find support for their restrictions on patent-eligible “process” inventions in the pre-Section 101 decisions O’Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601 (1853), Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139 (1876), and Tilghman v. Proctor, 102 U.S. 707, 26 L.Ed. 279 (1880). Although the Court in Benson and in Flook took care to state that these early decisions do not require the restrictions that the Court was rejecting, this court now places heavy reliance on these early decisions, which this court describes as “consistent with the maehine-or-transformation test later articulated in Benson and reaffirmed in Diehr.” Maj. op. at 955. As I have discussed, no such test was “articulated in Benson ” and “reaffirmed in Diehr.”

However, these early cases do show, contrary to the majority opinion, that a “process” has always been a distinct category of patentable invention, and not tied to either apparatus or transformation, as this court now holds. For example, in Tilghman v. Proctor the Court considered a patent on a process for separating fats and oils, and held that the process was not restricted to any particular apparatus. The Court held that a process is an independent category of invention, and stated:

That a patent can be granted for a process, there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture.

102 U.S. at 722; see also Corning v. Burden, 56 U.S. (15 How.) 252, 268, 14 L.Ed. 683 (1853) (“It is for the discovery or invention of some practical method or means of producing a beneficial result or effect, that a patent is granted, and not for the result or effect itself.”) The difference between a process and the other categories of patent-eligible subject matter does not deprive process inventions of the independent status accorded by statute, by precedent, and by logic, all of which negate the court’s new rule that a process must be tied to a particular machine or must transform physical matter.

The majority also relies on O'Reilly v. Morse, citing the Court’s rejection of Morse’s Claim 8 for “the use of the motive power of the electro or galvanic current, which I call electromagnetism, however developed, for making or printing intelligible characters, signs or letters at any distances .... ” The Court explained:

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. The Court *984is of the opinion that the claim is too broad, and not warranted by law.

56 U.S. (15 How.) at 113. However, the claims that were directed to the communication system that was described by Morse were held patentable, although no machine, transformation, or manufacture was required. See Morse’s Claim 5 (“The system of signs, consisting of dots and spaces, and horizontal lines, for numerals, letters, words, or sentences, s