Formalism at the Federal Circuit

concept, would be eligible for patenting. By collapsing the statutory subject matter test into a more lenient utility requirement, State Street Bank opened the patent system to inventions from the entire range of human endeavor. The rule that a patent-eligible invention need only achieve a “useful, concrete and tangible result” has a lot of adjectives, but it is essentially a blunt test that has supplanted a more complex scheme of predecessor principles. In keeping with this approach, other exclusionary principles besides the business methods exception are approaching abrogation or have already met their demise. The printed matter doctrine stands on “questionable legal and logical footing,” the Federal Circuit has explained, and little, if anything is left of Freeman-Walter-Abele. Following State Street Bank, the Federal Circuit has admitted that “virtually anything is patentable.” It is difficult to imagine a more simple rule governing patent-eligible subject matter. Although the stated reasoning of the State Street Bank decision does not track the dialogue of rules and standards, the perceived attractions of adjudicative rule formalism nonetheless played a role in the Federal Circuit’s evolving stance on statutory subject matter. The text of the State Street Bank opinion focused upon the judicial, statutory and administrative precedent that governed the subject matter appropriate for patenting. Yet earlier cases made the court 31 U.S.P.Q.2d (BNA) 1545, 1557 (Fed. Cir. 1994)). 108. See id., 47 U.S.P.Q.2d (BNA) at 1602 (noting that this criteria is determinative “even if the useful result is expressed in numbers”). 109. See Thomas, The Patenting of the Liberal Professions, supra note 2; see also Arti Rai, Addressing the Patent Gold Rush: The Role of Deference to PTO Patent Denials, WASH. U. J.L. & POL’Y 199, 211 (2000) (noting that the number of patents and patent filings on methods of doing business over the Internet rose dramatically after State Street). 110. See Rai, supra note 109 (arguing that the State Street decision “essentially collapsed the patentable subject matter requirement into the utility requirement”); see also John R. Thomas, The Post-Industrial Patent System, 10 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 3, 21 (1999) (describing the physicality requirement of the old Freeman-Walter-Abele test as “little more than a charade”). 111. In re Gulack, 703 F.2d 1381, 1385 n.8, 217 U.S.P.Q.2d (BNA) 401, 404 n.8 (Fed. Cir. 1983). 112. See id. (explaining that “the description of an element of an invention as printed matter tells nothing about the differences between the invention and prior art . . . .”). 113. See AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1359-60, 50 U.S.P.Q.2d (BNA) 1447, 1452-53 (Fed. Cir. 1999) (eliminating conclusively the “physical limitations” requirement of the Freeman-Walter-Abele test). 114. Hughes Aircraft Co. v. United States, 148 F.3d 1384, 1385, 47 U.S.P.Q.2d (BNA) 1542, 1544 (Fed. Cir. 1998) (Clevenger, J., dissenting from the Order declining the suggestion for rehearing en banc). 115. See State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373-77, 47 U.S.P.Q.2d (BNA) 1596, 1600-04 (Fed. Cir. 1998) (surveying the language of Section 101 itself, as well as the administrative and judicial precedent FINALTHOMASA.PRINTER.DOC 8/15/2003 1:43 PM 2003] FORMALISM AT THE FEDERAL CIRCUIT 789 painfully aware that patent applicants often resorted to contorted claim-drafting techniques in order to avoid the exclusionary rules of patent eligibility. The Federal Circuit analogized these rules as the byzantine strands forming a Gordian knot, finding them easier to sever than to untie. Simpler rules were perceived as being easier for Patent Office examiners to apply and likely to result in patent instruments that were more readily understood, while working few effective changes upon the subject matter a persistent applicant could patent. As with its other recent doctrinal shifts in patent law, the Federal Circuit’s move to a streamlined, porous standard of patent eligibility reflected the perceived benefits of adjudicative rule formalism.