Bilski v. Kappos
Breyer Concurrence

Summary of Bilski:

After a lapse of almost thirty years, the Supreme Court once again considered the issue of patentable subject matter in its June 2010 Bilski v. Kappos decision. This page describes and contains the Breyer Concurrence, which starts below. The majority opinion and the Stevens concurrence are found on separate pages.

This decision overturned the Federal Circuit's In re Bilski holding that the sole test for determining the patent eligibility of processes was the whether the process "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The majority opinion written by Justice Kennedy held that the machine-or-transformation test is not the sole test for determining patent eligibility for processes, but is instead "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101." Without indicating whether it was applying this tool, the majority held that the Bilski invention was unpatentable as an abstract idea.

In the concurrence written by Justice Stevens, justices Stevens, Ginsburg, Breyer, and Sotomayor agreed with the decision that the Bilski invention was unpatentable. However, rather than rejecting the invention as an abstract idea, these four justices would exclude all business methods from patent protection. Stevens believed that when properly interpreted, the protection provided under the patent statute to "processes" does not include any protection for business methods.

Justice Breyer wrote the below concurrence for the express purpose of "highlight[ing] the substantial agreement among many Members of the Court on many of the fundamental issues of patent law raised by this case." Justice Breyer identified four points that are "consistent" with both the majority opinion and the Stevens concurrence:

1. There is a limit to patentable subject matter. In particular, "phenomena of nature, mental processes, and abstract intellectual concepts" are not patentable.
2. The machine-or-transformation test is "the clue" to the patentability of process claims.
3. The Federal Circuit was wrong in holding that the machine-or-transformation test was the "sole test" for determining patentability for process claims.
4. The Supreme Court is not resurrecting the "useful, concrete, and tangible result" test of the Federal Circuit's State Street Bank decision.

Note that while Justice Breyer and Justice Scalia found these four points consistent with the two other opinions, none of the other seven justices joined in this express statement.

BERNARD L. BILSKI AND RAND A. WARSAW, PETITIONERS,
v.
DAVID J. KAPPOS, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE.

No. 08-964.

Supreme Court of United States.

Argued November 9, 2009. Decided June 28, 2010.

JUSTICE BREYER, with whom JUSTICE SCALIA joins as to Part II, concurring in the judgment.

I

I agree with JUSTICE STEVENS that a "general method of engaging in business transactions" is not a patentable "process" within the meaning of 35 U. S. C. §101. Ante, at 2 (STEVENS, J., concurring in judgment). This Court has never before held that so-called "business methods" are patentable, and, in my view, the text, history, and purposes of the Patent Act make clear that they are not. Ante, at 10-47. I would therefore decide this case on that ground, and I join JUSTICE STEVENS' opinion in full.

I write separately, however, in order to highlight the substantial agreement among many Members of the Court on many of the fundamental issues of patent law raised by this case. In light of the need for clarity and settled law in this highly technical area, I think it appropriate to do so.

II

In addition to the Court's unanimous agreement that the claims at issue here are unpatentable abstract ideas, it is my view that the following four points are consistent with both the opinion of the Court and JUSTICE STEVENS' opinion concurring in the judgment:

First, although the text of §101 is broad, it is not without limit. See ante, at 4-5 (opinion of the Court); ante, at 10 (STEVENS, J., concurring in judgment). "[T]he underlying policy of the patent system [is] that `the things which are worth to the public the embarrassment of an exclusive patent,' . . . must outweigh the restrictive effect of the limited patent monopoly." Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 10-11 (1966) (quoting Letter from Thomas Jefferson to Isaac McPherson (Aug. 13, 1813), in 6 Writings of Thomas Jefferson 181 (H. Washington ed.)). The Court has thus been careful in interpreting the Patent Act to "determine not only what is protected, but also what is free for all to use." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151 (1989). In particular, the Court has long held that "[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable" under §101, since allowing individuals to patent these fundamental principles would "wholly pre-empt" the public's access to the "basic tools of scientific and technological work." Gottschalk v. Benson, 409 U. S. 63, 67, 72 (1972); see also, e.g., Diamond v. Diehr, 450 U. S. 175, 185 (1981); Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980).

Second, in a series of cases that extend back over a century, the Court has stated that "[t]ransformation 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." Diehr, supra, at 184 (emphasis added; internal quotation marks omitted); see also, e.g., Benson, supra, at 70; Parker v. Flook, 437 U. S. 584, 588, n. 9 (1978); Cochrane v. Deener, 94 U. S. 780, 788 (1877). Application of this test, the so-called "machine-ortransformation test," has thus repeatedly helped the Court to determine what is "a patentable `process.'" Flook, supra, at 589.

Third, while the machine-or-transformation test has always been a "useful and important clue," it has never been the "sole test" for determining patentability. Ante, at 8; see also ante, at 1 (STEVENS, J., concurring in judgment); Benson, supra, at 71 (rejecting the argument that "no process patent could ever qualify" for protection under §101 "if it did not meet the [machine-or-transformation] requirements"). Rather, the Court has emphasized that a process claim meets the requirements of §101 when, "considered as a whole," it "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)." Diehr, supra, at 192. The machine-or-transformation test is thus an important example of how a court can determine patentability under §101, but the Federal Circuit erred in this case by treating it as the exclusive test.

Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a "`useful, concrete, and tangible result,'" State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), is patentable. "[T]his Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary." Laboratory Corp. of America Holdings v. Metabo lite Laboratories, Inc., 548 U. S. 124, 136 (2006) (BREYER, J., dissenting from dismissal of certiorari as improvidently granted); see also, e.g., O'Reilly v. Morse, 15 How. 62, 117 (1854); Flook, supra, at 590. Indeed, the introduction of the "useful, concrete, and tangible result" approach to patentability, associated with the Federal Circuit's State Street decision, preceded the granting of patents that "ranged from the somewhat ridiculous to the truly absurd." In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a "method of training janitors to dust and vacuum using video displays," a "system for toilet reservations," and a "method of using color-coded bracelets to designate dating status in order to limit `the embarrassment of rejection'"); see also Brief for Respondent 40-41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit's decision in this case rejected that approach, nothing in today's decision should be taken as disapproving of that determination. See ante, at 16; ante, at 2, n. 1 (STEVENS, J., concurring in judgment).

In sum, it is my view that, in reemphasizing that the "machine-or-transformation" test is not necessarily the sole test of patentability, the Court intends neither to deemphasize the test's usefulness nor to suggest that many patentable processes lie beyond its reach.

III

With these observations, I concur in the Court's judgment.