In re Bergy
United States Court of Customs and Patent Appeals
596 F.2d 952 (CCPA 1979)

Rich, Judge.

Introduction

These appeals are from decisions of the Board of Appeals (board) of the PTO by dissatisfied applicants for patents. We reverse.

These two cases come before us for the second time under the circumstances hereinafter detailed. Since our first decisions, they have been to the United States Supreme Court and back without any decision by that Court. The question before us is a limited one of statutory construction, not whether appellants have made and disclosed patentable inventions. The real question before us is whether appellants are to be allowed to define their inventions in a certain way in claims pursuant to 35 U.S.C. § 112. This question, which is the same in each case, involves the construction and application of 35 U.S.C. § 101, more particularly the meaning to be given to the word "manufacture" in that section. The sole issue, as the PTO chooses to view it, is whether an invention [of bacteria], otherwise patentable under the statute, is excluded from the categories of subject matter which may be patented, set forth in § 101, because it is "alive." First, however, we review the history of this litigation to show the posture of the cases as they are now before us again.

Procedural Background

In re Bergy, 563 F.2d 1031 (CCPA 1977), vacated sub nom. Parker v. Bergy, 438 U.S. 932 (1978), was decided by us Oct. 6, 1977. We reversed a decision of the board, which affirmed the final rejection by the PTO examiner of claim 5 of Bergy's application for patent. A petition for a writ of certiorari in Bergy was filed in the Supreme Court by the Solicitor General on behalf of the Acting Commissioner of Patents and Trademarks. The Court granted the petition June 26, 1978, and on the same day issued the following order:

It is ordered and adjudged by this Court that the judgment of the CCPA in this cause is vacated; and that this cause is remanded to the CCPA for further consideration in light of Parker v. Flook, 437 U.S. 584 (1978).

Flook was a case from this court involving a computerized method of updating alarm limits by application of a mathematical formula. It was decided by the Supreme Court, four days before the date of the foregoing order in Bergy. The Court gave no intimation of what bearing it thought Flook has on the single issue in these appeals, except as it may be gleaned from the Flook opinion.

Clearly, our assigned task is first to determine the bearing of Flook, if any, on these two appeals. This requires, as we see it, consideration not only of what was decided in Flook but examination of everything that was said in the opinion. Preliminary to that consideration, however, and laying the groundwork therefor, we will examine the Constitutional basis for the patent system and the anatomy of the statutes Congress has enacted insofar as they are relevant to the problem before us.

The Constitution

The grant of power to Congress to establish a patent system is in these familiar words of Art. I, § 8, cl. 8 and cl. 18:

The Congress shall have Power ... [8] 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; ... And [18] To make all Laws which shall be necessary and proper for carrying into Execution the foregoing Powers....

Scholars who have studied this provision, its origins, and its subsequent history, have, from time to time, pointed out that it [cl. 8] is really two grants of power rolled into one; first, to establish a copyright system and, second, to establish a patent system. Their conclusions have been that the constitutionally stated purpose of granting patent rights to inventors for their discoveries is the promotion of progress in the "useful Arts," rather than in "Science." In enacting the 1952 Patent Act, both houses of Congress adopted in their reports this construction of the Constitution in identical words, as follows:

The background, the balanced construction, and the usage current then and later, indicate that the constitutional provision is really two provisions merged into one. The purpose of the first provision is to promote the progress of science by securing for limited times to authors the exclusive right to their writings, the word "science" in this connection hav ing the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries. The first patent law and all patent laws up to a much later period were entitled "Acts to promote the progress of useful arts."

It is to be observed that the Constitutional clause under consideration neither gave to nor preserved in inventors (or authors) any rights and set no standards for the patentability of individual inventions; it merely empowered Congress, if it elected to do so, to secure to inventors an "exclusive right" for an unstated "limited" time for the stated purpose of promoting useful arts. We have previously pointed out that the present day equivalent of the term "useful arts" employed by the Founding Fathers is "technological arts." The only restraints placed on Congress pertained to the means by which it could promote useful arts, namely, through the device of securing "exclusive rights" which were required to be limited in time, a device known to governments for centuries. The conditions to be imposed on the granting of such rights, which have varied through the years, were left to Congress to devise.

Confusion persisted, however. We turn now to a consideration of how Congress has implemented the power delegated to it.

Anatomy of the Patent Statute

The reason for our consideration of the statutory scheme in relation to its Constitutional purpose is that we have been directed to review our prior decisions in the light of Flook and we find in Flook an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in  101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103. The confusion creeps in through such phrases as "eligible for patent protection," "patentable process," "new and useful," "inventive application," "inventive concept," and "patentable invention." The last mentioned term is perhaps one of the most difficult to deal with unless it is used exclusively with reference to an invention which complies with every condition of the patent statutes so that a valid patent may be issued on it.

The problem of accurate, unambiguous expression is exacerbated by the fact that prior to the Patent Act of 1952 the words "invention," "inventive," and "invent" had distinct legal implications related to the concept of patentability which they have not had for the past quarter century. Prior to 1952, and for sometime thereafter, they were used by courts as imputing patentability. Statements in the older cases must be handled with care lest the terms used in their reasoning clash with the reformed terminology of the present statute; lack of meticulous care may lead to distorted legal conclusions.

The transition made in 1952 was with respect to the old term "invention," imputing patentability, which term was replaced by a new statutory provision, § 103, requiring nonobviousness, as is well explained and approved in Graham v. John Deere Co. Graham states that there are three explicit conditions, novelty, utility, and nonobviousness, which is true, but there is a fourth requirement, which, alone, is involved here. This was also the sole requirement involved in Flook.

The Revised Statutes of 1874, which contained the primary patent statutes revised and codified in 1952, lumped most of the conditions for patentability in a single section, § 4886, as did all of the prior statutes back to the first one of 1790. The 1952 Act divided that statute up into its logical components and added the nonobviousness requirement, which until then had been imposed only by court decisions. This attempt at a clear-cut statement to replace what had been a hodgepodge of separate enactments resulted in a new and official Title 35 in the United States Code with three main divisions. Part II, here involved, covers patentability of inventions and the grant of patents.

These cases involve only § 101, as did Flook. Achieving the ultimate goal of a patent under those statutory provisions involves, to use an analogy, having the separate keys to open in succession the three doors of sections 101, 102, and 103, the last two guarding the public interest by assuring that patents are not granted which would take from the public that which it already enjoys (matters already within its knowledge whether in actual use or not) or potentially enjoys by reason of obviousness from knowledge which it already has.

Inventors of patentable inventions, as a class, are those who bridge the chasm between the known and the obvious on the one side and that which promotes progress in useful arts or technology on the other.

The first door which must be opened on the difficult path to patentability is § 101 (augmented by the § 100 definitions). The person approaching that door is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words "Whoever invents or discovers," and since 1790 the patent statutes have always said substantially that. Being an inventor or having an invention, however, is no guarantee of opening even the first door. What kind of an invention or discovery is it? In dealing with the question of kind, as distinguished from the qualitative conditions which make the invention patentable, § 101 is broad and general; its language is: "any...process, machine, manufacture, or composition of matter, or any...improvement thereof." Section 100(b) further expands "process" to include "art or method, and ... a new use of a known process, machine, manufacture, composition of matter, or material." If the invention, as the inventor defines it in his claims (pursuant to § 112, second paragraph), falls into any one of the named categories, he is allowed to pass through to the second door, which is § 102; "novelty and loss of right to patent" is the sign on it. Notwithstanding the words "new and useful" in § 101, the invention is not examined under that statute for novelty because that is not the statutory scheme of things or the long-established administrative practice.

Section 101 states three requirements: novelty, utility, and statutory subject matter. The understanding that these three requirements are separate and distinct is long-standing and has been universally accepted. The text writers are all in accord and treat these requirements under separate chapters and headings. Thus, the questions of whether a particular invention is novel or useful are questions wholly apart from whether the invention falls into a category of statutory subject matter. Of the three requirements stated in § 101, only two, utility and statutory subject matter, are applied under § 101. As we shall show, in 1952 Congress voiced its intent to consider the novelty of an invention under § 102 where it is first made clear what the statute means by "new", notwithstanding the fact that this requirement is first named in § 101.

The PTO, in administering the patent laws, has, for the most part, consistently applied § 102 in making rejections for lack of novelty. To provide the option of making such a rejection under either § 101 or § 102 is confusing and therefore bad law. Our research has disclosed only two instances in which rejections for lack of novelty were made by the PTO under § 101, In re Bergstrom, 427 F.2d 1394 (CCPA 1970); In re Seaborg, 328 F.2d 996 (CCPA 1964). In In re Bergstrom we in effect treated the rejection as if it had been made under § 102, observing in the process that "the word 'new' in § 101 is to be construed in accordance with the provisions of § 102."

The second door then, as we have already seen, is § 102 pursuant to which the inventor's claims are examined for novelty, requiring, for the first time in the examination process, comparison with the prior art which, up to this point, has therefore been irrelevant.

An invention may be in a statutory category and not patentable for want of novelty, or it may be novel and still not be patentable because it must meet yet another condition existing in the law since 1850 when Hotchkiss v. Greenwood, 11 How. 248, was decided. This condition developed in the ensuing century into the "requirement for invention." See Graham v. John Deere Co. The third door, under the 1952 Act, is § 103 which was enacted to take the place of the requirement for "invention." We need not examine this requirement in detail for it is not involved in the present appeals, and was not involved in Flook.

If the inventor holds the three different keys to the three doors, his invention (here assumed to be "useful") qualifies for a patent, otherwise ot; but he, as inventor, must meet still other statutory requirements in the preparation and prosecution of his patent application. We need not here consider the latter because appellants have not been faulted by the PTO in their paperwork or behavior. The point not to be forgotten is that being an inventor and having made an invention is not changed by the fact that one or more or all of the conditions for patentability cannot be met. Year in and year out this court turns away the majority of the inventors who appeal here because their inventions do not qualify for patents. They remain inventions nevertheless. It is time to settle the point that the terms invent, inventor, inventive, and the like are unrelated to deciding whether the statutory requirements for patentability under the 1952 Act have been met. There is always an invention; the issue is its patentability. Terms like "inventive application" and "inventive concept" no longer have any useful place in deciding questions under the 1952 Act, notwithstanding their universal use in cases from the last century and the first half of this one. As Mr. Justice Holmes said in Towne v. Eisner, 245 U.S. 418, 425 (1918), "A word...may vary greatly in color and content according to the circumstances and the time in which it is used." And Mr. Justice Frankfurter said in Shapiro v. United States, 335 U.S. 1, 56 (1948), "It is the part of wisdom, particularly for judges, not to be victimized by words."

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, "turns entirely on the proper construction of § 101," badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of "invention." This they do by basing argument on the opening words of § 101, "Whoever invents or discovers," thereby importing into the discussion of compliance with § 101 a requirement for "invention" in a patentability sense. But there has not been a requirement for "invention" in the patentability sense in the laws since 1952 the requirement was replaced by the § 103 requirement for nonobviousness. Graham v. John Deere Co.

Furthermore, when one has only compliance with § 101 to consider, the sole question, aside from utility, is whether the invention falls into a named category, not whether it is patentable. Falling into a category does not involve considerations of novelty or nonobviousness and only those two considerations involve comparison with prior art or inquiry as to whether all or any part of the invention is or is not in, or assumed to be in, the prior art or the public domain. Prior art is irrelevant to the determination of statutory subject matter under § 101. An invention can be statutory subject matter and be 100% old, devoid of any utility, or entirely obvious. This is our understanding of the statute and the basis on which we proceed to the further consideration of these appeals.

The error of the line of argument pursued in the Solicitor General's briefs in Flook is sufficiently illustrated by quoting from the summation of that argument in the opening paragraphs of the Reply Brief for the Petitioner:

1. Respondent errs in asserting that our argument confuses the standard of nonobviousness prescribed in 35 U.S.C. § 103 and the requirement of statutory subject matter under 35 U.S.C. § 101. As respondent recognizes, the patent examiner's sole ground for rejection of the claims at issue was that they did not cover statutory subject matter under 35 U.S.C. § 101. We do not contend that respondent's particular algorithm for computing updated alarm-limits is not novel or is obvious within the meaning of 35 U.S.C. §§ 102 or 103. We simply contend that the subject matter he seeks to patent is unpatentable under 35 U.S.C. § 101, because it is not an "[invention] or [discovery]" within the meaning of that Section.

The plain language of § 101 requires that the application of a mathematical algorithm involve invention or discovery for it to be patentable. It states that patents may issue only to one who "invents or discovers any ... process, machine, manufacture, or composition of matter" (emphasis supplied). This language dates from the original Patent Act of 1790. In none of the subsequent amendments to the patent statute has Congress altered this basic requirement.

Yet respondent would have the courts ignore this explicit language and adopt a new rule that would allow patents to issue to anyone who "[applies for a patent on] any...process, machine, manufacture, or composition of matter,...subject to the conditions and requirements of this title." Congress could have changed the language of § 101 to broaden the statutory standards of patentability, but it did not; indeed, respondent agrees that in the 1952 Patent Act revision, Congress intended to codify the existing judicial precedents regarding the standard of patentability.

It is transparently clear that the above argument makes the opening words of § 101, "Whoever invents or discovers," into a requirement for compliance with § 103, the 1952 replacement for the old requirement for "invention"; one must get through the third door in order to get past the first one! That is not the statutory scheme.

The statement that respondent Flook was asking for a rule under which "anyone who [applies for a patent on] any..." of the § 101 named categories should have a patent "issue" to him is subversive nonsense. There is no issuance without examination for novelty and nonobviousness.

The statement that "Congress could have changed the language of § 101 to broaden the statutory standards of patentability, but it did not" is wholly beside the point because §101 was never intended to be a "standard of patentability"; the standards, or conditions as the statute calls them, are in § 102 and § 103. The naming of the categories of inventions that may be patented, in whatever statute appearing, has never supplied a standard. The question here, as it always has been, is: are the inventions claimed of a kind contemplated by Congress as possibly patentable if they turn out to be new, useful, and unobvious within the meaning of those terms as used in the statute.

Before explaining the Bergy and Chakrabarty inventions, we shall state our understanding of the views expressed by the Supreme Court in the Flook opinion and the light shed thereby on the problems before us. We are redeciding these appeals, as directed, "in light of Parker v. Flook." The parties were given the opportunity in briefs and oral argument to tell us what bearing Flook has on these appeals. As might have been foreseen, the results are not helpful.

The PTO says the fact of remand should mandate affirmance and be "taken to buttress the positions taken by the dissenting judges." The only specific thing seized upon, as a launching pad for argument, is a rhetorical passage quoted from Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 512 (1972), about looking for a signal from Congress before changing well-established law, a situation in no way involved here as will be discussed later. As everyone has conceded, we are dealing with appeals raising an issue of first impression in the courts, the effect on compliance with § 101 of the fact of being "alive."

The only thing we see in common in these appeals and in Flook is that they all involve § 101. Flook was a review of one of the many appeals we have heard involving the general theme of the patentability of computer programs. The only way to claim a program is as a programmed "machine" or as a "process" or "method." The Flook invention was claimed as a "process" under § 101. That was the second case of its kind from this court reviewed by the Supreme Court, the first being Gottschalk v. Benson, 409 U.S. 63 (1972), which involved two method claims. Method and process claims are equivalents. Flook appears to have been decided on the authority of Benson. No method or process claim is here involved. In fact, the PTO has allowed (all three doors, §§ 101-102-103, passed) Bergy's method claims 1 through 4 and Chakrabarty's process claims 27 through 29, thereby holding that the process aspects of their inventions are not only subject matter within § 101 but also new and unobvious under § 102 and § 103, therefore patentable. Flook was concerned only with the question of what is a "process" under § 101, in the context of computer program protection. No such issue is presented in either of these appeals.

There is no better authority on what the Supreme Court has decided in a case than the Court itself and we are fortunate to have its own summary of what it decided in Flook. It appears at the end of footnote 18, 437 U.S. at 595, as follows: "Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101."

We do not venture to elaborate. The appeals here involve no method of calculation, and the Flook holding appears to have no bearing.

As indicated earlier, we deem it our duty to seek whatever additional light there may be in the Court's opinion on the meaning of § 101, without restricting ourselves to the holding. It is stated to be well established in patent law that the following are not within the statutory categories of subject matter enumerated in § 101 and its predecessor statutes as interpreted through the years: principles, laws of nature, mental processes, intellectual concepts, ideas, natural phenomena, mathematical formulae, methods of calculation, fundamental truths, original causes, motives, the Pythagorean theorem, and the computer-implementable method claims of Benson. The present appeals do not involve an attempt to patent any of these things and the Court's review of this hornbook law is, therefore, inapplicable to the issue before us, which involves only the construction of the terms "manufacture, or composition of matter."

Another principle stated in Flook is that a "mathematical algorithm" or formula is like a law of nature in that it is one of the "basic tools of scientific and technological work" and as such must be deemed to be "a familiar part of the prior art," even when it was not familiar, was not prior, was discovered by the applicant for patent, was novel at the time he discovered it, and was useful. This gives to the term "prior art," which is a very important term of art in patent law, particularly in the application of § 103, an entirely new dimension with consequences of unforeseeable magnitude.

Insofar as the present appeals are concerned, the foregoing novel principle has no applicability whatever since, as we have said, no formula, algorithm, or law of nature is involved, and there has been no rejection on prior art of any kind in either application. In each, both the examiner and the Board of Appeals expressly stated that no references evidencing prior art have been relied on or applied.

Insofar as the general patent law is concerned, however, the above-stated novel Flook doctrine may have an unintended impact in putting an untimely and unjustifiable end to the long-standing proposition of law that patentability may be predicated on discovering the cause of a problem even though, once that cause is known, the solution is brought about by obvious means. Such causes may often be classed as laws of nature or their effects. For example, see Eibel Process Co. v. Minnesota & Ontario Paper Co., 261U.S. 45, 67-69 (1922). The potential for great harm to the incentives of the patent system is apparent.

It is one thing to say that a principle, natural cause, or formula, per se, is not within the categories of § 101, but quite another to say it is "prior art" in determining the nonobviousness of an invention predicated on it even though the inventor discovered it.

One final matter with respect to Flook remains. In the PTO supplemental brief on remand, the solicitor places great emphasis on part of a passage which Flook quoted from the opinion of Mr. Justice White for the majority in Deepsouth Packing Co. v. Laitram Corp.:

We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than the courts had previously thought. No such signal legitimizes respondent's position in this litigation.

While the PTO solicitor believes that the entire opinion in Flook is relevant to the issue here, he says "the above quotation from Deepsouth reaches the heart of the matter." We disagree. We cannot find in this passage any clear direction signal unless we wrench it out of the context in which it belongs and use it in a manner unwarranted by the situaion which spawned it.

When we examine the portion of the paragraph in Deepsouth (also quoted in Flook) just preceding the solicitor-quoted passage, its meaning becomes clear. The Court stated: "It follows that we should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language." The issue in Deepsouth was whether petitioner infringed by selling the unassembled parts of machines embodying patented combinations to foreign buyers who assembled and used them abroad. The relevant statutory provision, 35 U.S.C. § 271, defines infringement by defining the infringer as anyone who "without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor." In deciding the case, the Court pointed out that a long line of judicial authority had established the meaning of the term "makes" contrary to the meaning urged by the respondent, with the result that the petitioner's sales of the parts to foreign buyers were not sales of "any patented invention" which was "made" in the United States, and, thus, were not acts of infringement.

It is in this context that the Court made the quoted statement. The respondent in Deepsouth was asking the Court to expand established patent rights territorially, or to treat making parts of a machine as making the machine, by modifying prior cases construing the patent statutes. The Court refused, producing the quoted passage in the process.

We do not find the quoted passage to have any bearing on our problem. We are not faced with a litigant urging upon us a construction of § 101 which is at odds with established precedent. Rather, we deal with a case of first impression. Not having been asked to make a change in existing law or to overrule or modify any case or to expand any right given by Congress, we need in this case no signal from that body.

To conclude on the light Flook sheds on these cases, very simply, for the reasons we have stated, we find none.

[The court then held the bacteria claimed by the applicants to be patentable as manufactures or compositions of matter.]

Notes

1. The author of the Bergy opinion was, in 1952, the member of the private patent bar most influential in securing revision and passage of the 1952 recodification of the patent laws, until then uncodified parts of the Revised Statutes. He was subsequently appointed to the CCPA and played an important role in formulation of that court's (and later the CAFC's) interpretation of the 1952 act. How is that relevant?

2. Compare the following two passages from the CCPA opinion, both apparently directed to the same § 101 - § 103 issue:

[W]e find in Flook an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103.

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, "turns entirely on the proper construction of § 101," badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of "invention." This they do by basing argument on the opening words of § 101, "Whoever invents or discovers," thereby importing into the discussion of compliance with § 101 a requirement for "invention" in a patentability sense.

Is there any difference between the tone of these two passages? How do you account for it?

3. Consider these three statements:

The person approaching that door [§ 101] is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door.

Terms like "inventive application" and "inventive concept" no longer have any useful place in deciding questions under the 1952 Act, notwithstanding their universal use in cases from the last century and the first half of this one.

It is time to settle the point that the terms invent, inventor, inventive, and the like are unrelated to deciding whether the statutory requirements for patentability under the 1952 Act have been met.

a. On what documentary authority do these assertions rest? Section 100 of the current (1952) patent law contains definitions. Curiously, Congress failed to provide any statutory definition of "inventor," such as "a person who applies for a patent." The term occurs, however, in Art. I, § 8, cl. 8. Congress also defined "invention" only as meaning invention or discovery." The latter term also occurs in Art. I, § 8, cl. 8. Do you draw any inference from those facts? What did Graham v. Deere have to say about this?

b. Even more curiously, the legislative history of the 1952 act includes this episode: Just before the Senate voted on the bill, the Senator in charge of the bill was asked in a floor colloquy whether the bill changed the existing law in any way or just codified the old law. The answer was -- what do you think? See Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 347 n.2 (1961) (concurring opinion of Black, J.).

c. Compare the first quoted passage with this imaginary judicial assertion: "The person seeking to register a claim of copyright is always the author of a writing, or his assignee. There is always authorship and something that is a writing." How does that square with the decisions in Feist, Toro, Magic Marketing, and Taylor Instrument? How would you rephrase the second and third above-quoted passages from Bergy into copyright terms? Would you agree with the rephrasing as a correct statement of law? How would you account for the discrepancy, if any, between proper modes of interpreting the copyright and patent laws?

4. What is the "subversive nonsense" of which the court complains? What has so exercised the court?

5. In Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 974 F.2d 1279 (Fed. Cir. 1992), a majority of the Federal Circuit refused to rehear en banc a decision in which one panel of the court had declined to follow the precedent set by an earlier panel decision, despite a Federal Circuit rule mandating that panel decisions were precedential unless and until overruled en banc. In this case, the panel had announced that the rule must be understood as inapplicable where the panel had "ruled without reference to the Supreme Court's previous cases involving" the issue in question. Four judges filed dissenting opinions. One of them, that of the author of the Bergy opinion, characterized the panel's refusal to follow prior panel precedent in these terms: "[I]t is mutiny. It is heresy. It is illegal." Id. at 1281.

Does Bergy raise any comparable issues? Is it mutiny or heresy? Does Part I of Justice Stevens' dissenting opinion in Diehr raise any comparable issues? What is the institutional difference in the two settings?

6. By now, the outlines of what is now a thirty or more year long institutional struggle have emerged. Three principal institutions are involved, so far: the PTO, the CCPA (subsequently the Federal Circuit), and the Supreme Court, each of the latter two of which has a power to reverse the preceding one(s) in specific matters and a power to state general rules of decision in the course of doing so. (There are other institutions: peripheral ones -- such as the Justice Department and its relevant components -- and subsets -- the PTO examining corps and its supervisors, the PTO's board of appeals, the PTO solicitor's office, and the Commissioner and his subordinates -- so that as an institution the PTO is not monolithic.)

In the Algorithm War over whether (and when) computer software-related inventions are statutory subject matter, as of the date of the Bergy opinion the PTO has resisted granting algorithm-related patents, the CCPA has regularly reversed it, and sporadically the PTO abetted by the Justice Department has sought review in the Supreme Court, which (thus far) regularly (on the rare occasions when it intervened) reversed the CCPA and reinstituted the PTO's decisions.

In this kind of decades-long institutional struggle, which institution do you think gets to have the last word? Should other institutions of government have the last word? Would that be effective? Should software users, software marketers, and programmers get any say in this process? Aren't they given adequate representation by the other institutions? If not, how could they get any say? Do you suppose that they do?

Where, when, and how do you see this process ending?

Link to next part of section A of chapter 8

Return to Table of Contents