Oral Argument of Parker v. Flook

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].

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