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Bilski - What It Means, Part 3 - The Mayer Dissent and Some Intangibility Questions

By Pamela Jones et al.

Continuing our series on the In Re Bilski ruling [PDF], here is Judge Mayer's dissenting opinion as text, the one that points out how utterly damaging all business methods patents are. Also, a reader sent me this link to what I agree is the best overview of the ruling that we've seen yet, by the law firm of Ladas & Parry. It sticks to what the ruling says, as opposed to predictions of what it might mean. Here's how they paraphrase Judge Mayer's dissent:

The decision is too complicated. State Street should have been over-ruled and patents confined to technological inventions.

Clear and simple. And if I might be allowed, Amen. But that might be a little too simplified. Here's a more substantive taste of Mayer's dissenting opinion, in his own words:

The en banc order in this case asked: "Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?" I would answer that question with an emphatic "yes." The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw ("Bilski") is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT&T should be overruled....

There is nothing in the early patent statutes to indicate that Congress intended business methods to constitute patentable subject matter....In passing the 1952 Act, Congress re-enacted statutory language that had long existed, thus signaling its intent to carry forward the body of case law that had developed under prior versions of the statute. Because there is nothing in the language of the 1952 Act, or its legislative history, to indicate that Congress intended to modify the rule against patenting business methods, we must presume that no change in the rule was intended. See, e.g., Astoria Fed. Sav. & Loan Ass'n v. Solimino ... ("[W]here a common-law principle is well established . . . the courts may take it as given that Congress has legislated with an expectation that the principle will apply except when a statutory purpose to the contrary is evident."

Also clear and simple, but as you see, it isn't just State Street, that Judge Mayer feels should be overruled, but also AT&T, which I highly recommend you read, but not if you have high blood pressure and are a programmer. It was about methods patents, but also about whether or not one could patent a mathematical algorithm. Here's a quote for you:

Because 101 includes processes as a category of patentable subject matter, the judicially-defined proscription against patenting of a "mathematical algorithm," to the extent such a proscription still exists, is narrowly limited to mathematical algorithms in the abstract.

I know. It takes us into OMG territory. It's what Bilski was trying to address. The AT&T decision built on and depended on State Street, and Judge Mayer is saying that State Street came out of the blue, contradicting prior common law and the patent statutes, and it really needs to be clearly killed off and buried, along with any of its children, because it was a mistake, one that launched what he calls "a legal tsunami" of regrettable patents on what ought to be the unpatentable.

Full post as published by Groklaw on November 09, 2008 (boomark / email).