A Critique of Bilski’s Textual Analysis

The majority in Bilski rightly decided not to categorically exclude business methods from patent-eligibility under § 101. However, in my view, the majority?s “textual” analysis of § 101 is at best strains credulity, and weakens considerably the legitimacy of their strongest argument (and therefore the opinion as a whole), which is that the case should be decided based on the Court's prior decisions in Benson, Flook, and Diehr.

According to the majority, the “Court has more than once cautioned that courts should not read into the patent laws limitations and conditions which the legislature has not expressed.”1 However, the Court has, on more than one occasion, disregarded its own admonition. Perhaps the most egregious example of this was in Gandy v. Main Belting Co.,2 in which the Court read into the patent laws the limitation that any invalidating use or sale must be “in this country.”3 In 1892, at the time of the decision, the law allowed a patent for any invention “not in public use or on sale for more than two years prior to his application.”4 The Court conceded that “the language of this section contains no restriction as to the place or country wherein the public use is made of the invention,” but nevertheless held that an invalidating use or sale must be in this country.5

A more recent example of the Court reading limitations into the patent laws is Pfaff v. Wells Electronics, Inc.,6 in which the Court rejected the petitioner?s “nontextual argument” that the on-sale bar applies only after the invention is reduced to practice, but then proceeded to provide a similarly nontextual interpretation that the on-sale bar applies as soon as the invention is “ready for patenting.”7

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