In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124
(2001), the Court described Section 101 as a “dynamic provision designed to
encompass new and unforeseen inventions,” id. at 135, that case arising in the context
of eligibility of newly developed plant varieties for patenting. The Court stated: “As in
Chakrabarty, we decline to narrow the reach of §101 where Congress has given us no
indication that it intends this result.” Id. at 145-46. The Court reiterated that “Congress
plainly contemplated that the patent laws would be given wide scope,” id. at 130
(quoting Chakrabarty, 447 U.S. at 308), and that the language of Section 101 is
“extremely broad,” id. This is not language of restriction, and it reflects the statutory
policy and purpose of inclusion, not exclusion, in Section 101.
The Court’s decisions of an earlier age do not support this court’s restrictions of
Section 101
My colleagues also find support for their restrictions on patent-eligible “process”
inventions in the pre-Section 101 decisions O’Reilly v. Morse, 56 U.S. (15 How.) 62
(1853), Cochrane v. Deener, 94 U.S. 780 (1876), and Tilghman v. Proctor, 102 U.S. 707
(1880). Although the Court in Benson and in Flook took care to state that these early
decisions do not require the restrictions that the Court was rejecting, this court now
places heavy reliance on these early decisions, which this court describes as
“consistent with the machine-or-transformation test later articulated in Benson and
reaffirmed in Diehr.” Maj. op. at 12. As I have discussed, no such test was “articulated
in Benson” and “reaffirmed in Diehr.”
However, these early cases do show, contrary to the majority opinion, that a
“process” has always been a distinct category of patentable invention, and not tied to
either apparatus or transformation, as this court now holds. For example, in Tilghman v.
2007-1130
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