How should courts think about interpreting the Patent Act? Although it has one of the more awkward titles I've seen recently, I enjoyed Peter Menell's contribution on this subject to Stanford's Bilski symposium: Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski's Superficial Textualism and the Missed Opportunity To Ground Patent Law Interpretation and Return Patent Law to Its Technology Mooring.* Menell is a professor at Berkeley Law and has a Ph.D. in economics, and much of his research has involved the intersection of copyright and software / computing / the internet (see, e.g., his recent article about copyright and knowledge-preservation efforts like Google Books).
In his Stanford symposium piece, Menell argues that Bilski was a missed opportunity to delineate the confusing boundaries of patentable subject matter. This by itself isn't news: as soon as Bilski came down, the patent blogosphere said it was a vague letdown that offers no clarity. And the opinion fit nicely with Peter Lee's thesis about Supreme Court patent cases raising cognitive burdens for judges. But Menell does not simply critique the Court's fractured majority as vague; he also criticizes its methodology: "In its effort to shoehorn analysis of patentable subject matter into a textualist mold, the Court collapsed the rich historical development of patentable subject matter into three amorphous, static, and ill-defined exceptions [for laws of nature, physical phenomena, and abstract ideas]. The resulting methodology and analysis are incoherent." Although Menell argues against the Supreme Court's "textualist turn," he is still able to wield the tools of textualism more deftly than the Court when criticizing the majority opinion in Part II.
Rather than using textualism, Part IV argues that the Court should "integrate the constitutional and jurisprudential traditions surrounding patentable subject matter with statutory construction principles and forthright recognition of the challenges of applying historic doctrines to unforeseeable technological developments." Specifically, courts should (1) "ascertain whether any constitutional provision constrains legislative or judicial power" and then (2) "determine the appropriate interpretive lens" based on whether the statutory text in question was intended to change prior law—if not, courts should continue the common-law patent tradition.
Applying this framework to Bilski, Menell argues that "[t]he historical record strongly indicates that 'useful Arts' was understood at the time of the Constitutional Convention to limit patents to technological fields," and that "[t]here is no reason to believe that 'business methods' have become a science or technology," so "the Court did not need to reach the statutory question." But if it did consider the statute, the Court should have noted that the 1952 Patent Act "perpetuated" a "functional, common law approach" for patentable subject matter, using "process" not in its 1952 dictionary sense but "based upon the rich jurisprudence of the prior 150 years," which "limited 'process' or 'art' to physical acts that produce a physical or chemical transformation or operate a machine."
It sounds like Menell thinks the Federal Circuit got it right with the machine-or-transformation test, and since he was on the same panel at the Stanford symposium with Mark Lemley, whose paper argued against gatekeeping approaches like machine-or-transformation, it would have been interesting to hear their conversation about this. Any readers who were there want to share any details?
*Nitpicky Bluebook tip of the day: The Bluebook is full of unnecessarily complicated rules (see my classmate James Kwak's critique), but once you have been an articles editor, little mistakes jump out at you. One of the most common mistakes that slips past editors is the capitalization of the word "to," which should be lowercase when used as a preposition (rule 8(a)), but uppercase when used as part of an infinitive verb (as in two of the examples in rule 16.3). So in the title of this article, we have "to the Promised Land" and "to Its Technology Mooring" but "To Ground." (Also note that "Its" should be capitalized, even though it is under five letters, because it is not an article, conjunction, or preposition.) Will "mistakes" like this keep your brilliant article from getting accepted? Of course not. But will lots of Bluebook mistakes signal that you might have been sloppy with more important details? Maybe. (Whether editors should be so worried about the capitalization of "to" is another question...)