The Patent Act of 1952 was sold on the floor of Congress as a "codification bill," and in committee hearings it was made clear that the Act was not meant to change the law with respect to subject matter eligibility, only to clarify it.
The Examiner has investigated this topic because legislative intent has been figuring prominently in patent case law recently, including the First Inventor Defense Act of 1999's unintended impact on the Supreme Court's Bilski decision (see pages 10-11 of Justice Kennedy's opinion and pages 34-38 of the concurrence by Justice Stevens). Software patent proponents and the Court of Appeals for the Federal Circuit (CAFC) have generally argued that the Act broadened subject matter eligibility. In doing so, they often invoke legislative intent and history. The potential manipulation of legislative intent also poses hidden danger to patent reform efforts.
The Patent Act of 1952 and its subsequent history is a case study in the manipulation of legislative intent
While software patent advocates often claim that the Act was meant to expand subject matter eligibility, the record shows a more complicated situation. While the patent-bar certainly wished to expand subject matter eligibility, and while their representative Giles Rich was key in drafting the legislation, they also knew that any legislative provision to actually broaden subject matter eligibility would be controversial and might doom the bill.
Indeed, language to clearly expand subject matter eligibility was proposed and then withdrawn because it was considered too controversial for legislative approval. Furthermore, on the floor of Congress, the Bill was unequivocally sold to Congress as not changing the law in any way; it was just a codification bill.
In Committee, there was recognition that the nature of functional claiming might be changing, and that the standard of what was "novel" was changing. But the hearings also made it crystal clear that the law with respect to patentable subject matter was being clarified, not changed.
After the bill became law, some people began to change how they represented the Act's meaning and purpose. This may well have been planned. To begin we look at the comments of Giles Rich, who later became Chief Judge on what would become the Court of Appeals for the Federal Circuit (CAFC, which handles patent appeals).
Judge Giles Rich on how the Patent Act of 1952 was passed
Lets look at Neil A. Smith's report of Judge Rich's comments about the passage of the Act. This is taken from Remembrances and Memorial: Judge Giles S. Rich. In it, Mr. Smith cites Rich's comments in 1957 on acceptance of the New Jersey Patent Law Association's Jefferson Medal of Honor:
In accepting the Jefferson Medal, Judge Rich explained how the Patent Act, which he and Pat Federico had drafted in 1952, came into being. The Codification Counsel to the Coordination Subcommittee of the Judiciary Committee of the House, Charlie Zinn, 'had worked on several codifications for the Judiciary Committee.' As Judge Rich said of the committee: 'When it got a law all written up and approved it liked to see it enacted, and Charlie knew how you got it done. You got it on a Consent Calendar at the appropriate moment, and that meant no floor debate. It was because of this little technique that you got a new patent statute when you did.' (Emphasis added).
As Judge Rich put it: 'And that is the way you got a lot of your laws. It is a great way of conserving hot air. Can you imagine what debates on the floor of the House or Senate about most of the cardinal points of patent law would sound like?' (Emphasis added).
Judge Rich continued, '[t]he New Patent Act went through both houses on consent calendars, and those houses relied on the unanimous recommendations of their respective committees, and when Truman signed the bill, we got the new law.'
So it appears that Judge Rich was proud of having gotten something through Congress without debate on the floor. The comments also reveal a degree of contempt for the legislative branch of government and the democratic process. This contempt manifested itself later in relation to the Supreme Court of the United States, with In re Bergy being the prime example.
How was the bill represented in order to be put on the consent calendar and avoid floor debate?
The Examiner investigated how the floor votes were arrived at and found the following: Senate Record Codification of Patent Laws - Bill Placed at the Foot of the Calendar: (Page 9097)
Mr. Wiley: '...The bill simply constitutes a restatement of the patent laws of the United States."
Similarly, from Revision and Codification of Laws Relating to Patents: (Page 9323, same document as previous link)
I am not a patent lawyer, but I know patents are a very technical subject. Does the bill change the law in any way or codify the present patent laws?
It codifies the present patent laws. It passed the House, and it was approved by the Judiciary Committee of the Senate.
So, clearly this bill was sold for floor vote as a simple codification bill. Turning back to Smith and Judge Rich:
Judge Giles Rich on providing legislative intent after enactment
'Legislative intent was provided later, as Judge Rich explained, in the form of the Reviser's Notes, included with the Bill, which were written by Pat Federico in consultation with Giles Rich.'
So, in addition to being happy that floor debate was circumvented, Judge Rich also seemed happy that the intent of the legislation was memorialized after the legislation was enacted. Why?
What is "legislative intent" and why might somebody want to write it after a bill has been enacted?
Legislative intent is a means by which courts sometimes decipher the meaning of statutory texts. Most typically this occurs when the language itself is considered to be unclear. However, it has even extended itself to situations where the text is not considered ambiguous.
Critics, Justice Scalia chief among them, have noted that parties to the legislation often attempt to change what the legislation means after the fact, or to move the law more in the direction they prefer, but knew they could get enacted democratically. A famous example is this piece of legislative history dug up by Justice Scalia in his partial concurrence in United States v. Taylor (487 US 326, 1988).
Justice Scalia, commenting on the negative impact such efforts were having, lambasted the abuse:
… a legal culture in which the following statement could be made – taken from a portion of the floor debate alluded to in the Court’s opinion
(here he goes on to quote Mr. Dennis from the Congressional Record of the legislative proceedings):
'I have an amendment here in my hand which could be offered, but if we can make up some legislative history which would do the same thing, I am willing to do it.' 120 Cong. Rec. 41795 (1974).
That is most certainly the legal culture we live in, and patent law is no exception.
What is a Codification Bill?
Essentially, a codification bill is a bill that attempts to modernize and streamline law. Over time, as amendments and bills are passed, the text of the law hangs together less well and is harder to read. A codification attempts to streamline the text, and where possible, it can incorporate important case law.
Why is that significant? In a codification bill, there is a judicial presumption that the new text was intended to follow the text of the existing statute in meaning and to leave precedent intact - so rephrased passages should not be interpreted as substantively altering the law.
Bill sponsor and other Congressmen indicate no change in the law with respect to eligible subject matter intended - the testimony of I.J. Fellner
On the floor of Congress, quick passage without debate was sold using the argument that the bill simply restated or "codified" the patent law. So how was the bill sold at the committee level? The Examiner found the testimony of Mr. Fellner interesting. A fuller description of the testimony can be found in our related Examiner article.
The testimony took place at the Patent Law Codification and Revision, Friday, June 15, 1951 - House of Representatives Subcommittee on the Judiciary. I.J. Fellner was the manager of the patent department of Dr. Salsbury's Laboratories.
The testimony record clearly shows that both the bill sponsor and another Congressman stated that no change in the law was intended (with respect to eligible subject matter). The discussion revolved around earlier proposed language that had been removed precisely for the reason that it would have been considered controversial and might have changed the law rather than clarify it. Specifically, Mr. Fellner objected to the removal of a phrase from section 101 of an earlier version of the bill (H.R. 9133). The removed phrase read:
An invention in the nature of a discovery as embodied in a new and useful art, machine, manufacture or composition of matter, or new and useful improvements thereof may be patented.
Mr. Fellner stated:
I feel that the deletion of this paragraph in the old version might give rise to certain implications, namely, that the invention in any event must be in the nature of some kind of mechanical structure, but that the discovery, for instance, of a new principle of nature which can be embodied in some useful art, machine, or composition of matter that such discovery might not be patentable.
....In other words, the case where the heart of the invention just resides in the discovery, but the practical application thereof suggests itself and does not call for any inventive genius is not conclusively covered. In other words, if the essence of the invention is merely a discovery of a law of nature it would seem from the Supreme Court decision that it might be construed as not being an invention."
...Well I thought you were satisfied with the present law, and that your only objection was that the new bill did not embody, that is, the language in H.R. 9133 was omitted, that was your quarrel with the pending bill? (Emphasis added).
A little later, Mr. Fellner.
...I have grave doubts whether the new language even used in connection with the definition under under section 100 (a) would take care of that, because the definition alone might give rise to differing interpretations. The old section provides a clarifying statement, the old section in H.R. 9133, I mean. (Emphasis added).
There is no intention to change the law as it is presently written: the purpose is just to make it clearer. (Emphasis added).
I understand that, Mr. Chairman. I merely think that the original wording as set out in H.R. 9133 is very much clearer- I might say, modifies the bare definition in the pending bills by making unequivocal that which might now be merely inferrible.
Mr. Willis went on to claim that this was not the purpose of the bill and that any changes could be handled separately.
PJ Federico's comments change after the bill was enacted
Although nuanced, the co-author of the legislation, and Giles Rich's "custodian" of legislative history, PJ Federico, made comments that were more circumspect prior to enactment. Given Judge Rich's statements about legislative history, and the long pedigree of that technique, Mr. Federico's testimony after enactment should be looked at with a critical eye. As evidence, we can take four statements cited by Chief Judge Rader in his concurring-in-part, dissenting-in-part opinion in CLS v Alice:
Before enactment (page 7 of Rader's opinion):
the 'definition of 'process' has been added... to clarify the present law as to certain types of methods as to which some doubts have been expressed...'
This statement was definitely more circumspect then the next three statements. Chief Judge Rader does not mention it, but all three of the following statements occurred after enactment. Chief Judge Rader takes the statements and wraps them around his arguments - so these are quotes of Judge Rader citing PJ Federico.
After - in P.J. Federico's "commentary" (page 6 of Rader's opinion):
' Remarks have appeared in a few decisions and elsewhere that new uses are not patentable... [I]f such remarks are interpreted to mean that a new use or application of an old machine, manufacture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law.'"
After - Here Judge Rader inserts another quote into an argument (page 7 or Rader's opinion):
The 'primary significance' of adding Section 100(b) was to make clear that a method was not 'vulnerable to attack, on the ground of not being within the field of patentable subject matter, merely because it may recite steps conventional from a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process.'
After - also from the "commentary", but here Federico himself cites his "Reviser's Notes" (legislative history) (page 7 of Rader's opinion):
The...definition 'clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions of patentability are satisfied.'
Claims that Section 101 challenges to software patents subvert the will of Congress should be viewed with skepticism
As we have demonstrated, the Patent Act of 1952 was sold the general Congress as a codification bill and nothing more. Furthermore, in committee, when speaking of patentable subject matter, the sponsor and another Congressman involved in running the hearing stated that the goal was to clarify the law, not to change it. And finally, there is some evidence of a concerted effort to manipulate legislative history and intent.
Patent reformers should also be wary of this use of legislative intent. It could be used to subvert their hard-won victories.