Intellectual Property

Remembering Justice John Paul Stevens: Patent Edition

From his patent and copyright record, his commitment to upholding the Constitutional rationale for intellectual property is obvious.

By  
on

Justice John Paul Stevens (Photo by Allison Shelley/Getty Images)

In last week’s column, I wrote about two significant copyright opinions penned by Justice John Paul Stevens — one a significant majority opinion in favor of fair use, one a dissent bemoaning copyright term extension. Today, I turn to Justice Stevens’s impact on patents, particularly software patents.

During his tenure, Justice Stevens wrote a significant majority opinion, a significant dissent, and an important dissent, all related to discussions over what is still an ongoing fight over patent eligibility for software.

First, in 1978, Justice Stevens, writing for a six-justice majority in Parker v. Flook, rejected an attempt by patent applicants to end-run an earlier SCOTUS ruling in Gottschalk v. Benson. Gottshchalk v. Benson, decided prior to Justice Stevens’s elevation to SCOTUS, rejected mathematical algorithms as patentable subject matter because they represent basic tools of science and technology. In Parker v. Flook, the patent applicant tried to obtain a patent on a method for computing an “alarm limit” with the supposed additional “post-solution” activity of adjusting the alarm limit according to the computed formula. Justice Stevens rejected this theory, noting:

The notion that post-solution activity, no matter how convention or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.

Ultimately, as the Flook majority concluded, an improved method of calculation, even if tied to a specific end use or activity, is insufficient for patentability.

Just three years later, Justice Stevens had the opportunity to revisit computer-related patentability issues, this time writing for a four-justice dissent. In Diamond v. Diehr, the majority upheld patentability in a case involving the execution of a physical process by running a computer program. Some critics suggested that Diehr overruled Flook, and Justice Stevens’s dissent argues that the lower court “trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions.”   Justice Stevens asserts:

Sponsored

The Court misapplies Parker v. Flook because, like the Court of Customs and Patent Appeals, it fails to understand or completely disregards the distinction between the subject matter of what the inventor claims to have discovered – the §101 issue – and the question whether that claimed discovery is in fact novel – the §102 issue. If there is not even a claim that anything constituting patentable subject matter has been discovered, there is no occasion to address the novelty issue.

Presciently, Justice Stevens predicted that the majority’s opinion in Diehr would give way to confusion and “do[es] not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable.” Instead, Justice Stevens would have preferred bright line rules: “(1) an unequivocal holding that no program-related invention is a patentable process under §101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term ‘algorithm’ as used in this case, as in Benson and Flook is synonymous with the term ‘computer program.’”

Finally, in one of the last cases decided before he retired, Justice Stevens wrote a concurring opinion for the otherwise unanimous Court’s judgment in Bilski v. Kappos. The Court in Bilski held that the “machine-or-transformation” test is simply a useful tool and not determinative in determining patent eligibility under Section 101. Once again, Justice Stevens warns that the majority opinion, “if misunderstood, could result in confusion or upset settled areas of law” and begins his concurrence with the statement, “[i]n the area of patents, it is especially important that the law remain stable and clear.” Justice Stevens also cautions that the majority opinion’s suggestion that a series of steps is not an abstract idea and could be considered a “process” for patentability purposes “can only cause mischief.” He advocates instead for a bright-line statement that business methods are not a “process” and not patent eligible.

After an extensive review of English and early American patent law and the meanings of the words used in the Patent Act, Justice Stevens turns to the question of whether the particular patents-at-issue, namely business method patents, are necessary to “promote progress” or spur innovation. Ultimately, Justice Stevens raises serious doubts as to business method patents’ role in “promoting progress” — the Constitutional rationale for the patent system — and instead suggests that such patents could stifle innovation and competition. Justice Stevens would conclude that Bilski’s claim “is not a ‘process’ within the meaning of §101 because methods of doing business are not, in themselves, covered by statute. In my view, acknowledging as much would be a far more sensible and restrained way to resolve this case. Accordingly, while I concur in the judgment, I strongly disagree with the Court’s disposition of this case.”

Justice Stevens made clear in each opinion he wrote — whether a majority, dissent, or concurrence — that he was suspicious of claims directed to abstract ideas and formulas. Additionally, Justice Stevens favored bright-line rules in the patent realm, to assure that future patent applicants (and litigants) would have a clear idea of what is and is not patent eligible under Section 101. From his patent and copyright record, his commitment to upholding the Constitutional rationale for intellectual property — “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” — is obvious.

Sponsored

Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at kristay@gmail.com.

Topics

, , , , ,