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Brenner v. Manson was decided by the US Supreme Court in 1966.  The case dealt with whether a method claim to produce a product is patentable when the putative inventor knew of no use for the produced product.  The Supreme Court decided that the method claim did not satisfy 35 USC section 101 under those circumstances.

This oral argument* is primarily of interest in regard to Bilski v. Kappos for the policy arguments that are made in regard to the purpose of section 101.  Interestingly, Justice Fortas, in writing for the majority, concluded the opinion with this final sentence: “[A] patent system must be related to the world of commerce, rather than to the realm of philosophy. . . .”  One might find that statement useful when considering whether 35 USC section 101 was intended to cover business methods.

Finally, in the Court’s opinion there is one interesting line that seems particularly apt for a patent case even though the Court was dealing with statutory construction rather than claim construction.  Justice Fortas wrote “[A] simple, everyday word can be pregnant with ambiguity when applied to the facts of life. . . .”

You can listen to the oral argument Here.

You can read the opinion Here.

*I believe this is the only place on the Internet where you can currently listen to this oral argument.  I ordered it from the Supreme Court archives.

Mark your calendar.  The oral argument for Bilski v. Kappos before the United States Supreme Court has been set for Monday, November 9, 2009.  You can view the entire docket sheet [Here].

Following Gottschalk v. Benson in 1972 and Parker v. Flook in 1978, the U.S. Supreme Court again had the opportunity to consider 35 USC section 101 in Diamond v. Chakrabarty in 1980.  The Court held that a patent claim for a live, human-made microorganism is patentable subject matter as either a manufacture or composition of matter under 35 USC section 101. 

The counsel for the patent applicant argued, in part, that because the USPTO had recognized microorganisms as a unique subclassification in its classification system and had issued at least 60 patents for microorganisms that the PTO had already recognized microorganisms as being patentable.  You can hear part of that argument [here]. 

Interestingly, the USPTO just recently published a PowerPoint presentation on business methods.  It is available [here].  In this presentation, the USPTO recognizes that it issued 1600 business methods in 2008.  Assuming the PTO issues roughly 157,800 patents every year, the 1600 patents accounted for only 1.0% of all patents issued by the USPTO. 

You can listen to the entire oral argument in Diamond v. Chakrabarty [here].

You can read the Court’s opinion [here].

Parker v. Flook was the U.S. Supreme Court’s second chance to assess 35 USC section 101 in the context of a computer related claim.  The opinion was written by Justice Stevens and he was joined by Justices Brennan, White, Marshall, Blackmun, and Powell.  A dissenting opinion was filed by Justice Stewart, Chief Justice Burger, and Justice Rehnquist.  A few years later in Diamond v. Diehr, Justices White and Powell would switch sides and join Justice Stewart, Chief Justice Burger, and Justice Rehnquist (i.e., the dissent in Flook), leaving Justices Stevens, Brennan, Marshall, and Blackmun as the dissent.  Notably, Justice Stevens is the only member still serving on the Court.  He joined Justice Breyer and Justice Souter in dissenting in the dismissal of the Labcorp v. Metabolite case in 2006.

As a patent attorney who admittedly favors patent protection for software and business methods, it is difficult to read the Parker v. Flook decision and find any logic in it.  The opinion tries to inject elements of 35 USC section 103 into the 35 USC section 101 analysis.  The Court and the public would be better-served to let sections 102, 103, and 112 serve their intended purposes rather than trying to make a complete analysis of patentability under 35 USC section 101.  With the Court’s recent decision in KSR v. Teleflex there are ample constraints on claiming obvious uses of a natural phenomenon.  And, with the Federal Circuit’s cases concerning section 112, there is ample protection against overbreadth in claiming.  One would hope that the Court will take the opportunity with the Bilski v. Doll case to clarify the law by expressly overruling Parker v. Flook. 

You can listen to the Parker v. Flook oral argument here [Listen].  You can read the decision here [Read].