Bilski v. Doll: Reconsidering Patentable Subject Matter

Bilski v. Doll (Supreme Court 2009)

The Supreme Court has granted certiorari in an important case challenging the scope of patentable subject matter. [Order]

Questions Presented:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Prior Coverage of the Case:

Documents:

Amicus Support:

  • According to the Supreme Court rule, the petitioner (here Bilski) now has 45 days to file its opening brief on the merits. The respondent's brief is ordinarily due within thirty days of that date. Any amicus brief would be due 7 days after the filing of the brief for the party being supported. This pushes the deadline for the first round of amicus briefs to the week of July 20.

294 thoughts on “Bilski v. Doll: Reconsidering Patentable Subject Matter

  1. “If you could articulate just once in precise, clear terms what you are driving at with your ridicluous “printed matter” obsession, I would be glad to respond. I predict you are not up to the task, however.”

    Your prediction, like much of what you put up would be wrong.

    You have run so many times and avoided the Printed Matter Doctrine challenge that it will take some time to find the original. I will find it and you will run again.

    As for product-by-process claims, I don’t see an answer from you on the questions I posed at the Patent Prospector. Like your pal 6, you also miss the fact that I state at the beginning of the discourse that I do not have experience with PBP. To say that my discourse is not honest lacks the credibility that your posts generally do.

    Where is the integrity of using arguments that you KNOW you cannot back up? So get off your high falutin “honest and integrity” soapbox and answer my questions to you (or regarding the hypo’s on PBP) “honestly”. Or would you rather have the integrity of sexual acts with dead presidents?

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  2. Big Guy says: “your unprogrammed programmable machine is not “capable” of making your sweet-tart-based hamburgers (or whatever) until it’s programmed, at which point it has become a different machine”

    I agree.

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  3. 6 says “Your claim is then anticipated it seems. Unless of course you’ve put some fancy stuff in the spec dealing with the means.”

    You are improperly ignoring the function part of a MPF element.

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  4. “Software is patentable because the PTO saw (and perhaps still sees) software patents as a source of profit.”

    Diamond, Gottschalk, and Parker were all commissioners of PTO. In each case, the PTO rejected attempts to patent computer related inventions. How do you reach the conclusion that the PTO wanted to issue software patents?

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  5. 6 wrote:

    “I cannot think of any CAFC opinions which Beauregards can thank for its extended viability, since Beauregards have no viability to begin with.”

    Really? Beauregard claims have no viability? Hmm.

    Results of Search in US Patent Collection db for:
    ACLM/”computer-readable medium”: 19680 patents.

    Or did you mean “have no viability according to my particular IP philosophy, which, sadly, no one else seems to adopt?”

    – David Stein

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  6. “Your claim is then anticipated it seems. Unless of course you’ve put some fancy stuff in the spec dealing with the means.”

    No, but it’s probably obvious, if I understand your factual assumptions. But we’re really just wasting bandwidth even discussing this, as your current “functional” argument is just a slightly disguised version of your old “programming does not impart structure” argument.

    Your argument is premised on your refusal to accept that two differently programmed computers are two different apparatus (which is the current state of the law, whether or not it should be, and whether or not you or Malcolm like it). In fact, your unprogrammed programmable machine is not “capable” of making your sweet-tart-based hamburgers (or whatever) until it’s programmed, at which point it has become a different machine. It may be obvious to program it that way (i.e., to make that different machine), given the prior availability of sweet-tart-based hamburger assembly techniques, but you don’t have anticipation.

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  7. David “before we had decent OCR technology that can read and accept software from printed source code, we had punched cards.”

    Show me a single patent ever granted on a unique punch card that differed from previous punch cards only by the location of holes.

    Just one.

    “somehow, the Beauregard claim is about to celebrate its fifteenth birthday”

    You speak as if it’s a mystery, David. But it’s not. I explained to you the reason why such claims continue to be granted. The reason has nothing to do with patent law, nothing at all.

    And Noise Above Law, you revealed your inability to engage in honest discourse once and for all with your incoherent, pointless defense of product-by-process claims (here and elsewhere). If you could articulate just once in precise, clear terms what you are driving at with your ridicluous “printed matter” obsession, I would be glad to respond. I predict you are not up to the task, however.

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  8. Nice claim, but I was thinking more along the lines of making a hamburger with a bun and all, with a beef patty, and having pop rocks on top of the beef patty, and also having sweet tarts and compound x on top of the beef patty.

    But making the hamburger patty itself with all that in it is a fine example too.

    What happens when we find the prior art reference talking about a machine which comprises a bowl, a mixer attached thereto and one of those bags with a nozzle on the end usually used to squirt icing on a cake? Where all these features are part of one device. Furthermore, all these features are controlled by automation which can be programmed to mix and distribute compositions. And, furthermore, it appears that it would be capable of putting out the patty you desire if someone were to tell it to and give it raw materialss.

    Your claim is then anticipated it seems. Unless of course you’ve put some fancy stuff in the spec dealing with the means.

    I like your claim, but I don’t understand how it relates to our discussion about how the software imparts patentability to the old machine. Unless there is fancy footwork in the no doubt extensive spec. My lack of understanding being because certainly you realize the means you’ve recited would likely only cover the machine, and not the ingredients going in or the mixing, or indeed any of the method at all.

    As an aside, I get the feeling you’re a software patent prosecutor with little exp in claiming actual apparatii. Pretty close?

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  9. 6, or maybe a claim which talks about a machine comprising a supply of sweet tarts, a supply of pop rocks and a supply of compound X, a mixing chamber, a first valve to release one gram of sweet tarts into the mixing chamber, etc.

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  10. 6, what do you think?

    A machine comprising:

    means for mixing sweet tarts, pop rocks and compound x into a mixture;

    means for forming the mixture into a patty the size of a dime.

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  11. I’m presuming it for the sake of the hypothetical. I actually cannot comment on whether or not such processes are in reality subject to patenting or if courts would uphold them. Even if the burger included compound x and cured cancer. However, I would presume that they are, so long as you can get by 102/103. That would likely be very hard to do in order to patent a burger that anyone would buy.

    Alright, so your position is not that the software per se is claimable. That is at least a starting point. Let us proceed beyond the 101 inquiry then.

    Let’s go one step further Mary. Let us presume that the machine itself was old hat. Only the method on which the software is based is new, and thus the software is new. Should the machine then be patentable? Should it be patentable purely for its functional features (which is how we finagle method step limitations into product/apparatus claims)? If yes to both of the above, how does the yes to the later square with fact that the machine itself was capable of performing that function before being programmed, and the fact that machines which are capable of performing a function are taken to be meeting such functional limitations in an analysis under 102/103? That is, all one needed to do was to come along and program the machine, i.e. use the machine, and the function could then be performed. How does the second yes square with that? Specifically the question is, how does the machine, which was capable of performing the function before being programmed by a specific alleged infringer (all it needs is for someone to tell it to do the function, i.e. use it for that function, before the alleged infringer right?) escape the rule on functional claiming which has been in place since time immemorial?

    Most specifically, how does the machine, which was capable of performing the function before being programmed, avoid the 102 ref which addresses the machine itself?

    As an aside, how does the sheet with instructions get by that same age old functional limitations interpretation method which is exersized in prosecution and litigations alike?

    “every single challenge by software patent opponents who characterize it as a violation of the printed matter exception. ”

    That would be because it isn’t a violation of the printed matter exception since the courts have chosen to narrowly construe said exception. Although, it may have always been narrowly construed since the beg. of its inception, I am not aware whether it was or not.

    “And ironically, the Beauregard claim has recent CAFC opinions thank for its extended viability, ”

    I think you have a typo in there somewhere, but I cannot think of any CAFC opinions which Beauregards can thank for its extended viability, since Beauregards have no viability to begin with.

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  12. “Nice job of projection, since I have not been beaten back at all.”

    Malcolm, Malcolm, Malcolm

    Honestly, how can you say that with any integrity? (hint: the answer is that you cannot)

    PRINTED MATTER DOCTRINE (sort of like BOO!)

    Now run Malcolm, run (since you won’t man up).

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  13. “I love to bring up the computer that reads ‘software’ in the form of pieces of colorful paper.”

    Sure, before we had decent OCR technology that can read and accept software from printed source code, we had punched cards.

    And yet, somehow, the Beauregard claim is about to celebrate its fifteenth birthday – having survived every single challenge by software patent opponents who characterize it as a violation of the printed matter exception. (And ironically, the Beauregard claim has recent CAFC opinions thank for its extended viability, as both Nuijten and Bilski have limited or at least complicated the patenting of software by other claim types.)

    – David Stein

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  14. 6 says that the method of making hamburgers is patentable.

    In which case, IMHO (and I know that I am in the minority) a hamburger making machine programmed to carry out this method is patentable; a controller programmed to control the hamburger making machine to carry out that process is patentable; and beauregard “software” claims are patentable.

    And, Malcolm, a sheet with the instructions written on it (a “recipe”) would also be patentable, assuming that the hamburger making machine could somehow “read” those instructions and be controlled by them.

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  15. “And yes MM, that kind of is the point, but she’s not going to ever going to get so far as to get that point, so let’s stick to the smaller ones ok? ”

    Baby steps. Maybe hand puppets would help.

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  16. “So the method of making the hamburgers is patentable, 6?”

    That would likely depend on how I claim it what with Bilski and all, but let us presume that yes, there is some form of claim which could make the method of making the hamburgers patentable. At least so far as getting it issued goes.

    And yes MM, that kind of is the point, but she’s not going to ever going to get so far as to get that point, so let’s stick to the smaller ones ok?

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  17. So the method of making the hamburgers is patentable, 6?

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  18. MP “Dear 6: It looks like your “inventions” should be shot down on 103 grounds.”

    Actually on 102(b) grounds, Mary. And that’s sort of the point.

    NWPA: “When you beat him back, he just comes back with the same arguments later on.”

    Nice job of projection, since I have not been beaten back at all. On the contrary, when the subject comes up it’s only a question of time before someone arguing the patentability of software says something like “Software is an invention that people USE” and the house of cards quickly comes tumbling down.

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  19. Dear Mary, we’re not discussing 103. Care to discuss 101?

    I’ll note for you though that my real concern lies in the later “invention” so let us focus there. Let us assume that my hamburgers and more importantly, the methods of making them, are novel and non-obvious. My burgers include, inter alia, sweet tarts, pop rocks, a patty the size of a dime, and compound x, which functions as a cure for every form of cancer 100% of the time. My methods of producing these burgers comprise steps of providing all of the above. That is to say, you’re never going to find a combination of ref’s to cover all elements of the software steps. Should the software be patentable? Should the programmed machine running the software be patentable?

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  20. Dear 6: It looks like your “inventions” should be shot down on 103 grounds.

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  21. “Malcolm — are you returning to your recipe analogy. It has been many months, I missed it.”

    Well idk about MM, but I love to bring up the computer that reads “software” in the form of pieces of colorful paper.

    I wonder though Mary, if I were to create a programming language which would mirror exactly human language where you could just tell the computer what to do and there was no special syntax involved, would you feel the same about software patents?

    What if I were to create a machine which merely read recipes and produced, let us say, hamburgers. Should that “software” be patentable?

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  22. I have to applaud Malcolm Mooney groping his way cautiously to the line of reasoning adopted by the EPO in its classic VICOM decision. But then our law in Europe is more restricted than that in the US.

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  23. “I suspect that MM is a artifical intelligence agent created by an anti-software patent hacker.”

    OMG, a Malcolm Moonbot? This could lead to a Terminator: Rise of the Machines / Robocop type future, where swing patents are the least of our worries.

    “DROP THE CRAP PATENT, HUMAN. YOU HAVE 5 SECONDS TO COMPLY. 1-2-BLAMBLAMBLAM”

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  24. Malcolm stated “…data processing is not OK when the data processing is merely converting one set of numbers (say, an amount of money) into another set (your profits, sir), regardless of whether these amounts are displayed or not, and regardless of the format in which they are displayed.”

    What is the difference between “converting” and “transforming”?

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  25. Mary prosecutor wrote:
    >>Malcolm — are you returning to your recipe >>analogy. It has been many months, I missed it.

    He cycles through his arguments. When you beat him back, he just comes back with the same arguments later on.

    I suspect that MM is a artifical intelligence agent created by an anti-software patent hacker.

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  26. Malcolm,

    Looks like you need another butt-whooping. If you are goning to use that discredited recipe argument, let’s see you man up to the Printed Matter Doctrine first. M’OK?

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  27. Actual Inventor,

    You asked “Why do you feel software deserves patent protection but other written artistic works do not, such as language, novels, poems, songs, etc.?”

    May I point you to two items you may want to peruse?
    – The first is Gene Quinn’s blog called IP Watchdog. Gene has had a series of articles dealing with this question. A recent post that has comments touching on your question is here: link to ipwatchdog.com
    – The second has to do with a concept called Printed Matter Doctrine. This touches upon key differences in intellectual property protection based upon the subject matter.

    I would welcome your perspective after you peruse this area as this board has seen some colorful interplay on this concept and I wonder where your thoughts would lay.

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  28. “Interestingly, Sotomayor’s ex-husband Kevin Noonan, a partner at the Chicago firm McDonnell Boehnen Hulbert & Berghoff, is a critic of the Federal Circuit’s Bilski ruling. On the Patent Docs blog, he wrote in January that Bilski is “spreading like a stain” to mar a broad range of patents”

    Smart man!

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  29. I think its about time SCOTUS clarified their own conflicting subject matter precedent (as masterfully noted by Judge Rader).

    I seem to recall the ever woefully out of touch Mooney predicting against this self-evident turn of events. So much for the puppet show.

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  30. Me? Mute? Nah. There’s always something to comment about. Take this for example:

    ————————–
    link to law.com

    For her part Sotomayor had extensive experience in private practice at Pavia & Harcourt in New York defending intellectual property rights, noted Randy Lipsitz of Kramer Levin Naftalis & Frankel. “She started as a trademark litigator” for clients in the fashion industry, leaving her with at least a strong interest in intellectual property cases.

    As a district court judge in 1997 she ruled in Tasini v. New York Times for the print publishers in a copyright dispute with freelancers. The Supreme Court ultimately ruled against the publishers.

    Interestingly, Sotomayor’s ex-husband Kevin Noonan, a partner at the Chicago firm McDonnell Boehnen Hulbert & Berghoff, is a critic of the Federal Circuit’s Bilski ruling. On the Patent Docs blog, he wrote in January that Bilski is “spreading like a stain” to mar a broad range of patents.
    ——————————–

    Of course, I think Noonan is dead wrong and Bilski is cleaning up a stain left by applicants who can’t help themselves when they see a buffet table loaded with cocktail weiners.

    But that’s not what’s interesting about the article. ;) I just hope that Kevin doesn’t go nuts dealing with sleaze artists and muckrakers angling for some nonsense that might make Sotomayor’s appointment something other than the smooth ride it ought to be.

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  31. AI, Curious – Here’s one of those plot element applications, courtesy of Greg Aharonian.

    link to freshpatents.com

    Maybe we’ll get lucky and the SC will arbitrarily declare all methods to be unpatentable. No more business methods, software methods, female sperm plots, etc. Of course, the cat exercising industry would be crushed, but on a positive note, Malcolm would be rendered effectively mute as he would have nothing left to comment about.

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  32. BigGuy “they were only making a point about the transformation test, and a fairly positive point at that: data processing is OK, as long as the data processing is directed to a real-world (physical) problem”

    If I might take this one step further: data processing is not OK when the data processing is merely converting one set of numbers (say, an amount of money) into another set (your profits, sir), regardless of whether these amounts are displayed or not, and regardless of the format in which they are displayed.

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  33. “If it weren’t for that transformation of data, the fact that the claim was ‘tied’ to ‘a computed tomography scanner’ would not have been sufficient. So sayeth the Bilski court, by emphasizing that the data transformation is what made the claim patentable.”

    As the Great Communicator would say, “There you go again.” That’s not what the Bilski court said. That’s what YOU said.

    Here’s what the Bilski court ACTUALLY said about the X-ray data claim:
    “[W]e held one of Abele’s dependent claims to be drawn to patent-eligible subject matter where it specified that “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” Abele, 684 F.2d at 908-09. This data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.”

    That was pretty much it. And this discussion was primarily to contrast claim 6 (patentable) to a claim that recited only abstract data (not patentable). The Bilski court did not “sayeth” that the claim would not or could not pass the “machine” prong of their test. They didn’t care – they were only making a point about the transformation test, and a fairly positive point at that: data processing is OK, as long as the data processing is directed to a real-world (physical) problem.

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  34. Malcolm — are you returning to your recipe analogy. It has been many months, I missed it.

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  35. Software is patentable because the PTO saw (and perhaps still sees) software patents as a source of profit. Any other explanation misses the point and also obscures any attempts to understand the bizarre tension observed online between the PTO (which is exceptionally generous to software applicants) and software applicants (who seem to complain about the PTO 24/7).

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  36. Stein “Software is an invention that people USE”

    Actually, computers use software. Sort of like a chef uses a recipe on a piece of paper.

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  37. David Stein “That’s like confusing a film projector with the contents of the movie that it’s capable of projecting for you. The output is copyrightable”

    So is the input. But you knew that.

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  38. Actual Inventor wrote:

    “However Abele further limits the claim to a computed tomography scanner and therefore it is statutory under Bilski because it requires a particular machine or apparatus { as opposed to a general purpose machine} in order to complete the process steps.”

    No, that’s not what made it allowable. Read Bilski – what made it allowable was that this machine performed a transformation of data representing a real-world article. (I know that “tissue” isn’t listed in the claim, but the Bilski court makes it clear that “tissue” is implicit here. Anyway, that’s not my point.)

    If it weren’t for that transformation of data, the fact that the claim was “tied” to “a computed tomography scanner” would not have been sufficient. So sayeth the Bilski court, by emphasizing that the data transformation is what made the claim patentable.

    ===

    “Why do you feel software deserves patent protection but other written artistic works do not, such as language, novels, poems, songs, etc.?”

    Happy to indulge you here.

    Warning: Pendantic ranting ahead…

    I don’t know who started the nonsensical conflation of software as an “artistic work,” but I’d like to find that person and beat him over the head with my hardcover copy of Tannenbaum’s “Modern Operating Systems.” I’m not a violent person by nature… but here, I will make an exception!

    Is software an artistic work? Sure, to the same extent that ANY field of engineering is artistic. A machine can be beautifully designed – aesthetically, ingeniously, a model of efficiency or whatever. But you never hear anyone calling a machine a “work of art.”

    What about cars? From headlight to tailpipe, probably thousands of features of any car are patented. And yet, auto enthusiasts drool all over them as works of art, right? If an automobile is just a machine, why are auto magazines mostly filled with glossy photos and prettily worded articles, rather than pages and pages of metrics and factual minutiae? There’s certainly a lot more “car porn” in your typical Auto Nut magazine than in a Dr. Dobbs’ Journal.

    But did you EVER hear anyone say, “Gee, I wonder why they allow patents on cars, and not copyrights, since they’re primarily works of art?” Of course not – it even sounds absurd, right? Because no matter how much people drool over a Ferrari, it is (in theory) first and foremost a functional machine.

    And so it is with software. When’s the last time you downloaded some software, and couldn’t wait to tear open the executable and drool over the source code, the assembly manifest, the installer package…? Open-source wonks aside, who does that? Nobody. They simply execute the software – they run it as intended – and they make great use of the FUNCTIONS implemented by the software.

    (Oh, and don’t confuse the output of the software, such as rendered graphics, with the software itself. That’s like confusing a film projector with the contents of the movie that it’s capable of projecting for you. The output is copyrightable, but the functional mechanism for producing that output is patentable.)

    So you ask me how I feel about software vs. “other written artistic works?” I feel that it’s comparing apples and sledgehammers. Software is an invention that people USE, while artistic works are APPRECIATED.

    And that’s really how I feel: Software should not, in most cases, be copyrightable, because it is not a work of art.

    The long and twisted path that we took to reach our nonsensical position today – where software is predominantly protected by copyright, not patent – is another long story that I don’t feel like telling today.

    I’ll just suffice to state that software was shoehorned into the copyright field by publishers who wanted cheap, no-fuss protection. Plus, a very simple point by a federal court that “software CAN be a form of expression, and MAY BE deserving of copyright if so” was distorted and conflated into “ALL software is indisputably copyrightable.” Thanks to a horrid twisting of legislative intent and judicial precedent, software is categorically mischaracterized… to the detriment of the entire field.

    – David Stein

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  39. Actual Inventor — there actually were attempts years ago to get patents on storylines. link to plotpatents.com

    I don’t know the current status of those applications.

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  40. Mr. David Stein wrote: “Hmm – how do you read claim 6, which explicitly works on a tissue sample, scans it with a very specific device, and renders the output on a display, to be performed without any of these objects?

    To be clear: That is not a rhetorical question – and I’m eager to read your answer, Inventor. I suspect that you and I are using the term “tying” in different ways.”

    Okay let’s look at claim 6 as you originally presented it:
    6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.”

    Again, keeping in mind I have not read the spec, and going by just what you have written, I don’t see any explicit claim of the mechanical functioning of the CT scanner. There is no mention of tissue, tissue sample scanning, or any broad terminology that would indicate the claim is for tissue and/or limited to the operation of a CT Scan. What I do see is “wherein said data is X-ray attenuation data produced.” So on first read Claim 5 is limited to and therefore tied to X-ray attenuation data, mere information. However Abele further limits the claim to a computed tomography scanner and therefore it is statutory under Bilski because it requires a particular machine or apparatus { as opposed to a general purpose machine} in order to complete the process steps.
    I believe the reason the CAFC emphasized the transformational aspect of the data is because the machine was for manipulating data. Perhaps if the machine had been performing some other type of work, a robotic arm for removing a body part for emphasis, it would have been statutory without a transformational requirement.

    Now, I think you said you are a software guy right? Well, I am curios about something. Why do you feel software deserves patent protection but other written artistic works do not, such as language, novels, poems, songs, etc.? Oh, I am not for or against software patents. Its not my business and I don’t write software. So I don’t mind that you software guys get patents. Just wondering why software gets special treatment and the other language and visual arts protected by copyrights do not.

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  41. “The Bilski majority admitted that future work was needed *in a few select areas*…”

    See, this is where you and I differ. I simply don’t see how you get from “issues specific to the machine implementation part of the test are not before us today” to “future work is needed in a few select areas.” I was taught that the only law that you can take away from a case is that which was necessary to reach the court’s conclusion. Everything else is chatter (dicta). Yes, there’s a lot of that chatter in Bilski, but it’s meaningless. So it simply makes no sense to me to make guesses as to what Bilski might mean for the machine prong. All we know is that there is one, and that it presumably is compatible with all Supreme Court precedent in this area.

    In re Bilski did not invalidate a computer-implemented claim. Bilski thus has almost nothing to do with computer-implemented claims, except that we know that the “machine-or-transformation test” (whatever that is) will be used in future cases. The BPAI has not applied Bilski in a way that seems inconsistent with Supreme Court precedent. So I’m also confident that your specialty is OK, for a little while, at least until your customers (and mine) figure out that they’re throwing money into a broken, perhaps irreperable, system. And that realization will have little to do with Bilski.

    re frantic – I didn’t intend to suggest that you had an agenda. Rather, I meant only to suggest that your writing style in addressing this issue is, well, frantic.

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  42. BigGuy wrote:

    “If your claim is tied to a machine (including a computer) in a meaningful way (e.g., not just for insignificant post-solution activity), and is not merely a computerized implementation of an abstract idea or algorithm, then you’re OK. I’ve had no trouble getting this past the 101-challenged examiners I’ve encountered so far, and this is completely consistent with what the BPAI has done, post Bilski.”

    I’m seeing a big split between the CAFC/BPAI and the examining corps over the requisite threshold of “particularity” in the “particular machine”… which, for software patents, is probably THE critical issue of Bilski.

    The standard applied by the CAFC and BPAI appears to be very stringent and difficult to meet, but examiners are applying a more lax standard (marginally higher than under State Street, but fully in line with In re Alappat.)

    – David Stein

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  43. BigGuy wrote:

    “I agree that Bilski as a whole is logically flawed, but that’s all the more reason NOT to draw any unwarranted conclusions about the machine prong.”

    (1) How are these “unwarranted?” The Bilski majority admitted that future work was needed *in a few select areas*… but it certainly charted a specific course for where the CAFC’s definition of “method” ought to go. What’s wrong with evaluating the (many, many) logical and practical errors in that well-defined course of action?

    (2) Policy refinement is a stepwise process. The courts have now made five attempts in this arena (Gottschalk, Diehr, Freeman-Walter-Abele, State Street, and Bilski.) Each attempt had flaws. If we’re going to talk about what might or should replace Bilski (either abstractly or by SCOTUS’s review), it helps to review how the CAFC attempted to solve this problem, and the resulting deficiencies.

    BTW – “frantic extraction?” I admit that I’m fascinated by the messy “sausage-making” procedure by which this area of law is being transformed. But I’m not desperate to see it go in any particular direction. For many reasons, I’m confident that my specialty (software patenting) is secure for the long-term future.

    – David Stein

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  44. “I simply raised these ‘open questions’ simply to highlight the badly written, poorly rationalized, and desperately inapplicable nature of the Bilski majority opinion.”

    Hmmm… It seems to me that you’ve devoted a few thousand words to a frantic extraction of implications from Bilski for the “particular machine” prong of the machine-or-transformation test, when the court actually said:

    “…As a result, issues specific to the machine implementation part of the test are not before us today. We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.
    We will, however, consider some of our past cases to gain insight into the TRANSFORMATION part of the test.”

    Therefore, the CAFC’s analysis of the Abele case says nothing about the machine prong. I agree that Bilski as a whole is logically flawed, but that’s all the more reason NOT to draw any unwarranted conclusions about the machine prong. If your claim is tied to a machine (including a computer) in a meaningful way (e.g., not just for insignificant post-solution activity), and is not merely a computerized implementation of an abstract idea or algorithm, then you’re OK. I’ve had no trouble getting this past the 101-challenged examiners I’ve encountered so far, and this is completely consistent with what the BPAI has done, post Bilski.

    Reply
  45. Paul: “Malcolm, the point about the order is that you only have to make the judgment for the inventions that are meritorious but difficult, and can deal with the other alleged inventions on conventional and less controversial grounds.”

    I guess it depends on your definition of “controversial.” But I don’t believe that most of these inventions that are getting Bilski’d are “difficult” from a Bilski perspective or any other perspective. They’re just trivial inventions or non-inventions and that is precisely the reason that they are poorly described and poorly claimed. An Examiner or a judge or a blog commenter can scratch his/her head and say, “Well that could be arguably tied to a physical device if you blah blah blah” but the better way to approach 101 is to ask: what is the invention? Because if all I invented was a new way of thinking about the best time to scratch my butt, it doesn’t matter if I recite a step of entering data into a computer or driving a car or shaving my turtle. My invention isn’t patentable subject matter.

    I agree with Stein, by the way, that the PTO seems to be doing some different than what the CAFC set forth in Bilski, but (as we recognize is a recurring problem) they don’t appear to be doing anything with much consistency. Granted, I’m looking at what’s coming out the back end but based on that it seems to be more of the same old same old. One can only imagine what the *worst* stuff looks like (or I suppose one could wade into the depressing mountain of published apps) when one sees what still manages to get issued in the post-Bilski era. So I remain doubtful that the PTO is taking a more **narrow** view of what constitutes eligible subject matter than that defined by the CAFC in Bilski.

    Reply
  46. “Actual Inventor”–

    The only thing your comments merit is ad hominem.

    Get with it.

    Get an education.

    Get a life.

    Get lost.

    Reply
  47. I am far from convinced that ANY bright line rule about patent-elegible subject matter is either necessary or desirable.

    Of course, nothing can override the limited constitutional power of promoting science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries [note the dual meaning of this term as covering both a scientific discovery and a disclosure in a written specification and drawings submitted by an inventor, the latter meaning following the pattern for "writings" used in relation to the work of authors].

    The Jefferson question, capable of being resolved on a case-by-case basis is: “Is this invention worth the invonvenience to the public of a patent?” Should that not be judged on a case by case basis and is there a need for more?

    Why needlessly turn categories of meritorious inventors into exiles from the patent system if there is any way of avoiding doing so?

    And Malcolm, the point about the order is that you only have to make the judgment for the inventions that are meritorious but difficult, and can deal with the other alleged inventions on conventional and less controversial grounds.

    Reply
  48. “Actual Inventor”–

    How’s mom’s basement working out for you?

    Reply
  49. BigGuy wrote:

    “broje, that sounds reasonable to me, and completely consistent with what the CAFC said in Bilski. But isn’t Mr. Stein’s ‘the sky is falling’ interpretation far more exciting?”

    I really don’t think the sky is falling. I don’t think even the CAFC wants to cut patentable method down to the bone, or scrap long-allowed types of claims, such as new uses of known articles.

    I simply raised these “open questions” simply to highlight the badly written, poorly rationalized, and desperately inapplicable nature of the Bilski majority opinion.

    – David Stein

    Reply
  50. Actual Inventor wrote:

    “David, does Bilski literally say the display device in Abele was not sufficiently tied to the process? Or is this your own interpretation?

    The discussion of Abele in Bilski skips over the “tying” aspect… but in a very telling way.

    Here is the relevant section of the Bilski majority:

    “…we held one of Abele’s dependent claims to be drawn to patent-eligible subject matter where it specified that ‘said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.’ Abele, 684 F.2d at 908-09. This data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.”

    Here’s how I read this. The CAFC looked at the claim, which ties into the method: (1) a representation of a physical article (the human subject), (2) a very specific first apparatus (the scanner), and (3) a more general but still specific second apparatus (the display.)

    However, the CAFC did not stop there and write, “OK, there is plenty of tying here; that satisfies the first prong.” Instead, the CAFC emphasized that what makes this claim patentable is that these elements, tied together in the method, transform the data in a significant way.

    In other words – patentability here does not stem from the use of the elements in the claim, but from the specific transformation. If there were no transformation, then the claim would not be patentable.

    ===

    “However from reading the claim as you represented it above, Abele simply appears to be asking for a patent on a method of calculating and publishing the results. There is no machine or apparatus that is required for such a process, thus it’s not tied.”

    Hmm – how do you read claim 6, which explicitly works on a tissue sample, scans it with a very specific device, and renders the output on a display, to be performed without any of these objects?

    To be clear: That is not a rhetorical question – and I’m eager to read your answer, Inventor. I suspect that you and I are using the term “tying” in different ways.

    ===

    “You feel the PTO is applying Bilski even more narrowly than the CAFC and you are perhaps concerned the SCOTUS will make those practices force of law.”

    Not quite. Actually, I really approve of the way that the software examining corps is examining software cases these days. But I believe this is because the examining corps is NOT applying Bilski, but a homegrown standard that’s much more pragmatic.

    OK, let’s start from this premise: If read and applied rigorously, almost NO software method would qualify under Bilski, because the requisite “particularity” of the “machine” can be construed as hyper-specific. (See Ex parte Cornea-Hasegen for an example of the extreme lengths to which this can be taken.)

    Now, in the last eight months, I’ve only encountered a few citations of Bilski in OAs. And when I spoke with the examiners about how I’d like to restructure the claims (grounded much more squarely as software executing on a machine), they were fine with it.

    Here’s the interesting part. The OAs that I’ve encountered did not apply, or even mention, the machine-or-transformation test of Bilski – they simply rejected under 101 under Bilski! Neither were the new claims subjected to the Bilski test – yet the examiners approved the form of the claim as, in their view, satisfying Bilski.

    So what’s going on here?

    I think the software examining corps is walking a middle ground. They have some ideas as to what types of claims they want to allow. Unfortunately, the Bilski test has nothing to do with those types of claims.

    Instead, examiners are using Bilski as the “big stick” in the arsenal. I think examiners are applying an informal, gut-reaction standard of patentability: does this claim make sense from a software perspective? is it sufficiently specific, and pragmatically drawn to a specific problem, etc.? If an applicant is savvy and fair about these issues, Bilski will not be mentioned. But if the applicant is overly aggressive, overly broad, or simply a clumsy drafter, Bilski will be hauled out of the arsenal to smack down all of the claims. (This tactic is especially strong because the BPAI has been rabidly applying Bilski all over the place; what are the chances that the BPAI will apply Bilski LESS rigorously than the examiner?)

    My evidence is purely anecdotal. But the non-Bilski standard that the corps is applying is consistent with the types of claims that several examiners told me, last September, that they hoped Bilski would require. It seems too coincidental that Bilski is being used in practice to compel applicants to submit exactly those types of claims.

    ===

    “I believed you inferred that the PTO now has a new definition of a machine that is limited to an automated electronic device.”

    Oh – I suggested no such thing! The time-honored definition of “machine” long predates technical uses of electricity. And many of the first patents (in the U.S. as well as in precursor patent systems in the UK, Venice, etc.) were for mechanical machines.

    Rather, my argument was that what distinguishes “machine” (a/k/a “apparatus”) from non-“machine” is automation. This automation can be achieved mechanically through moving parts, electrically through a circuit, or in many other ways (the fields of biochemistry, genetics, and MEMS/NEMS really start pushing the envelope here.)

    Again, to recap – I was contrasting this with a non-“apparatus” golf club, which has an exquisitely crafted structure, but not an ounce of automation.

    – David Stein

    Reply
  51. Who can file an amicus brief? Can anyone file one? A law student? Do you need special permission or anything? How much does it cost?

    Reply
  52. Znutar-
    LOL at your comments. I think though that there will be a single unanimous opinion similar to your first scenario: “smack down Machine or Transformation as too narrow, and won’t enunciate any new test, asserting instead that the numerous quotes from precedent have long made clear what is patentable subject matter, and why do we have to keep explaining it?”

    And of course Bilski will be sent home without his patent.

    Sort of like KSR v. Teleflex all over again.

    Reply
  53. “I predict the court’s decision will provide as much confusion as it does clarity.”

    Indeed, MrBellie. I expect at least three opinions. The majority opinion will quote heavily from past cases on 101, will smack down Machine or Transformation as too narrow, and won’t enunciate any new test, asserting instead that the numerous quotes from precedent have long made clear what is patentable subject matter, and why do we have to keep explaining it? And Bilski will be sent home without a patent. I expect one opinion will concur that MoT is too narrow, but dissent in the decision that Bilski goes home empty. Another opinion will concur that Bilski loses, but dissent that MoT is the proper limit on patentability. We could see yet another opinion that concurs in the result and the determination that MoT is too narrow, but that goes further to present a new test that is wholly unworkable. No opinion gets more than four votes.

    Reply
  54. “Therefore, as far as what constitutes ‘tying’ a process to a machine under Bilski, I think that it must be construed so broadly as to include a new use for a known article or composition.”

    broje, that sounds reasonable to me, and completely consistent with what the CAFC said in Bilski. But isn’t Mr. Stein’s “the sky is falling” interpretation far more exciting?

    Reply
  55. “If I, as an “Actual Inventor” know this”

    *yawn*

    Reply
  56. Actual Inventor: “I would not know for sure if claim 5 is tied to the display device unless I read the actual app/spec.”

    An interesting admission. Thank you, AI.

    Reply
  57. NWPA: “MM: All I can say is that you have sunken low. I should look back several months ago when I predicted that SCOTUS would take Bilski. I seem to remember a post from you filled with your usual pleasantries.”

    Like this one?

    “Andrew, I agree. I suppose Bilski has one advantage over LabCorp in that the relevant issue was actually briefed all the way up. But the subject matter in LabCorp was so much more mundane and easy to discuss than Bilski’s insane mumbo jumbo. The Supremes are simply not interested in explaining to anybody how a proper claim for manipulating hedge funds should be drafted. Frankly, I don’t anybody is interested in the answer to THAT question, including Bilski. And that’s why it’s not going to be taken up.”

    Gosh, NWPA, it doesn’t seem very unpleasant to me. Moreover, I’ll gladly admit that I was wrong (along with a lot of folks who I often disagree with here), although I doubt the ultimate outcome will disappoint me.

    What’s interesting in those threads is that most unpleasant commenter by far is a certain SmalLPeeingGuy who, you might recall, eventually went off the deep end and was last sighted over at the Patent Prospector trying to convince the professional trolls there that I was Dennis. But I don’t recall you wringing your hands and weeping over that nutball’s attempts to hijack and ruin every comment thread for about half a year (funny that he disappeared right about the time that pds did). Perhaps, NWPA, this failure of yours was an oversight. Or it could be that you’re something of a hypocrite. Just some food for thought.

    Reply
  58. Mr. David Stein Wrote: “However, it’s become clear that the examining corps is applying a significantly different standard of patentability than the CAFC has crafted.”

    Ahhh, okay I think i finally understand where you are coming from. You feel the PTO is applying Bilski even more narrowly than the CAFC and you are perhaps concerned the SCOTUS will make those practices force of law.

    Well, I would be interested in any objective evidence you have that the PTO is indeed narrowly applying Bilski. And even if thats true why cant you Patent Attorneys simply cite the CAFC Bilksi case and get such objections overturned?

    For, example, I believed you inferred that the PTO now has a new definition of a machine that is limited to an automated electronic device. Well such a definition has never been made by the SCOTUS and certainly is not in Bilski. If I, as an “Actual Inventor” know this, then surely “Actual Patent Attorneys do and can overcome such rejections.

    Reply
  59. Mr. David Stein Wrote: “Here are the relevant claims from Abele:
    “5. A method of displaying data in a field comprising the steps of:
    1. calculating [blah blah blah], and
    displaying [blah blah blah] in a picture which corresponds to said data point.

    The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.”

    Clearly, claim 5 is “tied to” a display device of some sort, and claim 6 is “tied to” a CT scanner. Yet, this “tying” wasn’t sufficient for Bilski; rather, these components were simply USED IN the invention. The invention didn’t really relate to them, but was a manipulation of the scanning data.”

    David, does Bilski literally say the display device in Abele was not sufficiently tied to the process? Or is this your own interpretation?
    I would not know for sure if claim 5 is tied to the display device unless I read the actual app/spec. However from reading the claim as you represented it above, Abele simply appears to be asking for a patent on a method of calculating and publishing the results. There is no machine or apparatus that is required for such a process, thus it’s not tied. Same goes for claim 6, if it is dependent on claim 5.

    Reply
  60. 6: I doubt that you have ever been trusted to manage anyone but yourself (at least anyone who has a college degree.)

    MM: All I can say is that you have sunken low. I should look back several months ago when I predicted that SCOTUS would take Bilski. I seem to remember a post from you filled with your usual pleasantries.

    But really, you two, grow up. Being little trolls on a blog should not be your life’s aspiration. 6: stop taking lessons from MM. You are better than that. MM: walk to a mirror and slap yourself in the face and repeat, “I will be someone someday, if I can just stop being a troll.”

    Reply
  61. From Landis, 6-21, “… new uses have long been patentable as methods; in fact many method claims inherently involve new uses for old materials. Since 1952, the statute (35 U.S.C. § 200(b)) has expressly covered this by stating that the word “process” includes “a new use of a known process, machine, manufacture, composition of matter, or material.”

    In other words, Congress did expressly define that “process” under 101 includes a new use for a known article or composition.

    Therefore, as far as what constitutes “tying” a process to a machine under Bilski, I think that it must be construed so broadly as to include a new use for a known article or composition.

    Malcolm, you stated above that a process “ought” to be tied to a new article or composition in order to be patentable. However, I think that even you must confess that such is not the expressed intent of Congress. And when you gripe about functional limitations in claims, I perceive that you know that you are advocating for a change in the existing law, even though you often present your opinion as if it were the current law.

    Now, I think there is room for debating what Congress meant by “new” use. If “new” means “novelty” under 102, then why not have said “new and non-obvious use?” Why include the word unnecessarily, since analysis under 101 and 102 are separate? Why did they not just say a “use of a known process, machine, manufacture, composition of matter, or material?”

    Could it be that “new” use means something besides “novel?” For example, might it mean a use different in kind, such as “using a computer as a hammer,” as opposed to “programming it with some novel, nonobvious software?” But isn’t that just another way of saying it has to be extremely non-obvious? So I think there is some circular reasoning going down that path.

    In view of the above, I think the statute must mean that any use of something in a patentable subject matter category is also patentable subject matter under 101, and that analysis may next proceed to novelty under 102 and obviousness under 103.

    Applying that patentable category to the case of business methods, I think that we are often talking about a new use for a known process that is a known use for a known article or articles. The known process is exchange of goods and services, and the articles are the goods and services. In order for the new use to be patentable subject matter, the known process must be patentable subject matter under 101 only (not 101, 102, and 103). In order for the known process to be patentable subject matter under 101 only, the known goods and services must be patentable subject matter under 101 only (not 101, 102, and 103). The problem lies in that many goods and services are patentable subject matter under 101, but we cannot be sure without defining the goods and services in question.

    I think that tension is what Bilski is trying to get at. Similarly, I see this issue being illuminated in other Court decisions regarding a “general purpose computer” not qualifying as a “particular machine,” and Court decisions requiring that the claim define what the information being processed by the computer represents.

    Anyway, that is how I see the real issue being defined. The intent of Congress is fairly clear, and the Courts have been unwilling to consistently work within those parameters.

    Of course, the Supreme Court can do anything it wants with any issue that arrives before it. Even if Congress passes new laws in response, the Justices can continue to say that yellow is blue all day long. The only way they can be defeated is for Congress to increase the number of members of the Court and for the President to pack it with Justices selected for their willingness to rule the other way on the issue. I don’t think that’s even been threatened since just before the Civil War, when Lincoln and Congress brought the Supremes to heel on the issue of slavery.

    But, I digress. The bottom line is that a software or business method is properly patentable at least as a new use of a known process, machine, manufacture, composition of matter, or material. So far, the Courts have declined to hold otherwise. I don’t expect the Supremes to do away with these types of patents, so song as the known machine, manufacture, composition of matter, or material used by the new process (or used by the known process that is used by the new process) is clearly identifiable, by limiting language in the claims, as patentable subject matter.

    Reply
  62. NWPA “I have worked in big business. I worked for a huge corporation. Here is what I noticed: That if you wanted to fix your business or improve it that you hired one of the business consulting groups”

    Or you could hire an accounting service to work some magic on your “bottom line.” The banks were pretty good at that. It worked out wonderfully for everybody, didn’t it? Yes, America really need more patents so our banks can create another pile of fake money and set it on fire. Don’t forget to file your amicus brief. I’m sure the Supremes will be interested in this brilliant patent-based solution to fixing the economy.

    Reply
  63. Paul: “What the above discussion shows is the power and importance of the standard requirements for adequate disclosure, novelty and inventive step. These matters should be considered first. Only then should eligible subject matter be considered.”

    Why? What difference does it make? I guarantee you that neither the Supremes or the Federal Circuit is going to create a test mandating that such considerations be made a particular order.

    But you’re on the right track, at least, when you recognize that all of these considerations are interrelated and form a rather seamless web (even more seamless now that product-by-process claims are knee-dcapped).

    Reply
  64. A child upthread quoted from his patent primer: “Everything under the sun made by man.”

    This is easily the most abused dicta in the history of patent case law. And it’s worthless, of course, mainly because it contradicts the text of 101 and other patent statutes.

    By the way, I just read that Kevin Noonan is Judge Sotomayor’s ex-husband…? Interesting, to say the least.

    Reply
  65. “One more comment:

    I have worked in big business. I worked for a huge corporation. Here is what I noticed:

    That if you wanted to fix your business or improve it that you hired one of the business consulting groups that then essentially sold you a service of analyzing your business methods and then suggesting how to improve your business method. The business consultants essentially keep their business methods secret and wanted to sell you a service to get them to disclose their business method.”

    I have one more comment. I have worked in big business. I worked for a huge corporation. Here’s what I noticed from NWPA post:
    If you want to fix your business and you’re too stupd to do it yourself, you hire a consulting agency comprising people more smart than yourself, and probably better at running a business than you, to fix it.

    Astonishing, I know.

    Reply
  66. “Just try to remember that information takes space to represent and energy to transform.”

    So what if it does rere? Just try to remember that human thought takes space to represent and energy to transform. Obviously human thoughts are made by man and exist under the sun. Shall they now be patentable? GTFO eh?

    Reply
  67. “The EE people don’t understand information processing as both engineering and science. ”

    But but but you just don’t don’t don’t understand! You don’t understand us! We should have our stuff be patentable!

    “I don’t have the cites on hand, but there are aritcles in academic journals that discuss how the failure of the courts to understand information processing has warped the patenting of software.”

    I don’t have cites on hand but there are decisions which illustrate that courts understand information processing and how it attempted to warp patenting to allow software in.

    Reply
  68. Dear Boss,

    Re: “I don’t know how relevant my comment is.”

    So what else is new?
    That’s not a first for you, is it now?

    Reply
  69. Dear Night Writer Patent Attorney,

    Boy, 127 comments so far and still going strong —

    Your comment reminded me of one of my mentors and good friend, Peter, now deceased. Near the end of his career, which produced a number of game-changing inventions, he was retained by a Swedish conglomerate which own 30 separate and diverse businesses. Peter discovered that the large majority of the 30 businesses were operating without any business plan, without any clear direction or leadership — they were just “coasting along.” He analyzed each business in turn and provided a business plan where one was lacking.

    I don’t know how relevant my comment is.

    Reply
  70. Just try to remember that information takes space to represent and energy to transform.

    Reply
  71. I predict the court’s decision will provide as much confusion
    as it does clarity. It will rule in favor of innovation in general
    and against a strict application of the machine or transformation
    test. It will then be up to everyone else to figure out how to
    implement a decision that will undoubtedly require speculation
    to interpret. Everyone will anxiously await the PTO implementation
    as well as the CAFC’s. Same as usual.

    Reply
  72. >>You don’t need a PhD in information science to >>decide what The Constitution meant by “useful >>arts” and what the Patent Statute means (in >>context) by “process”.

    Well, burn the straw man then and then re-read what I wrote.

    Reply
  73. I beg to differ. You don’t need a PhD in information science to decide what The Constitution meant by “useful arts” and what the Patent Statute means (in context) by “process”. Neither do you need such a PhD to grasp what the likes of Accenture would want to patent if they could. Just read the Sobon Amicus Brief to the EBA. Neither do you need one to decide whether it is in the national interest of the USA to give Accenture what it wants. What was it they used to say “What’s good for General Motors is good for the USA”?

    I recall that when Judge Rader and friends descended on Munich last year, to tell us how to handle 101 issues, we were told we were still back in the steam age, with our pragmatic “technical character” test (that looks to me quite like “machine or transformation”). Soon we shall see the respective Supreme authority delivering a definitive 101 test, on both sides of the Atlantic. That’s going to be fun.

    Reply
  74. One more comment:

    I have worked in big business. I worked for a huge corporation. Here is what I noticed:

    That if you wanted to fix your business or improve it that you hired one of the business consulting groups that then essentially sold you a service of analyzing your business methods and then suggesting how to improve your business method. The business consultants essentially keep their business methods secret and wanted to sell you a service to get them to disclose their business method.

    One could not go out and buy a business method. Probably because there were eggheads that made a living off of publishing nonsense and people that wanted to sell you personal services, but no one was going to make any money by creating a business method that would fix your business.

    I am not convinced at all that business method patents are a bad idea. I also wonder if any of the people on this blog who regularly mouth off have ever been a business person involved in setting up business methods and worked with the big business consultants.

    Reply
  75. To: Davdid Stein. I think you are exactly right about the problems that come from EE people writing and prosecuting software patents. I see them all the time where the EE person simply misses the point. But, it is so easy.

    The opinion in Benson came from a patent attorney who was an EE. The EE people don’t understand information processing as both engineering and science. There is definately a war between EE and CS people in patent law.

    I don’t have the cites on hand, but there are aritcles in academic journals that discuss how the failure of the courts to understand information processing has warped the patenting of software.

    Reply
  76. The only thing we can hope for is that the SCOTUS takes some science courses so that they can understand information processing.

    But the hopes of iron age Stevens ever figuring out information processing are near zero. Stevens says: “I think that anyting that processes information is one of them there mathematical algorithms that are like laws of nature.”

    Here’s to hoping that Stevens retires.

    Reply
  77. I hate to rain on this fine parade of legal scholars and practitioners extraordinaire, but that part of Bilski dealing with being “tied to a particular machine” is pure dicta. It is not law. There are no facts in Bilski (as far as we know from the CAFC decision) about performing the method “on” a particular machine or with the aid of any physical device. A first year law student would have seen that.

    Reply
  78. Curious wrote:
    >>FedCir wrote a TSM test into 103. SupCt did >>not like that. FedCir wrote a machine or >>transformation test into 101. I don’t think >>that the SupCt will like that either.

    Ding, ding, ding. I think that is exactly why the SCOTUS took the case.

    Everything under the sun made by man. (as long as the Fed. Cir. machine or transformation test applies. I don’t think so.)

    Reply
  79. Can that really be you Paul, at 02.15am? How about claims to new, enabled and not obvious subject matter that is a process for performing a mental act? Would it promote the progress of useful arts, to issue such claims?

    Reply
  80. Malcolm writes “Actual Inventurd”.

    You are getting more clever every day, Mr. Mooney

    Reply
  81. What the above discussion shows is the power and importance of the standard requirements for adequate disclosure, novelty and inventive step. These matters should be considered first. Only then should eligible subject matter be considered.

    If that procedure is adopted, you only have meritorious inventions to consider, and it is unattractive to refuse protection for a meritorious invention on a mere technicality. Using that procedure, if Bilski solves a genuine problem in an unobvious way, is indeed an invention of merit in the sense that it is something beyond the routine skill of the relevant art, we would know about it.

    Reply
  82. Malcolm=goatse. He’s in it for the shock value. Why do people argue with him?

    Reply
  83. Actual Inventurd “I made no claims, hypothetical or otherwise. ADHD?”

    So was it a namestealer who posted the 4 claims at 4:40 pm June 1?

    Reply
  84. pka wrote:

    “In my art unit, I get method of use claims all the time, e.g., claims to a novel/nonobvious catalyst composition and a second set of ‘method of use’ claims wherein the method itself is very old but uses the novel/nonobvious catalyst – guess what? that method is patentable. Section 101 isn’t even an issue, but just to be safe, the catalyst ‘transforms’ the feed material into ‘a different state or thing’ (i.e. the end product).”

    Good to know. Thanks for the info.

    However, it’s become clear that the examining corps is applying a significantly different standard of patentability than the CAFC has crafted.

    In most of the software cases that I’ve prosecuted in the last eight months, the examiner was fully satisfied with Bilski if the method was claimed as “A method of [objective] on a computer having a processor, the method comprising: executing on the processor instructions configured to do [stuff],” or some variation on that theme. It seems that software corps examiners are just sick of software inventions being claimed as “fairy dust” – as some very high-level and abstract method, with a big black box labeled “COMPUTER” jammed into a figure somewhere.

    (And the blame for these lousy claims lays at the feet of some software practitioners who simply don’t “get” software. They’re EEs or physics guys who try to switch hit in the field of software, thinking it’s just applied math. But they find that the invention doesn’t make sense to them, so they bog down the spec with generic boilerplate – “communications component 968 may be a network adapter, or a modem, or an RS/232 adapter, or a serial or parallel connection, or…” – thinking they’ve done a good job. It’s deplorable.)

    On the other hand – as long as the spec particularly describes the software (e.g., architecture, protocols, various real-world scenarios, etc.) and a software PHOSITA could hack it, it’s OK. And guess what – I think that’s a fine test! Because I’m a long-time software guy at heart – been writing software for 30 years in my spare time – and I can meet this burden pretty easily. (By contrast, if the invention looks like software mumbo-jumbo to me, then I go back to my client and tell them to keep working. Fortunately, this has only happened twice in my practice.)

    – David Stein

    Reply
  85. “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”

    Machine or apparatus.

    Why isn’t a golf club an “apparatus”?

    Reply
  86. @ David “the limitations that were present under State Street were the most consistent interpretation of 35 USC and the Constitution that we’ve had yet. The Supremes should go back to that.”

    Makes sense to me.

    Reply
  87. Mr. David Stein wrote: The core of Bilski is not a “machine-or-transformation-OR-USE” test. There is no indication that “tying” to an “article” is sufficient under Bilski. Indeed, several cases discussed in Bilski involved claims that were clearly “tied” to something physical, or at least “used” something physical, yet were found lacking.

    If a claim is tied, meaning cites a machine or article but could be performed without said machine or article then it preempts the use of the underlying principle on which it is based. This is how the CAFC chose to deal with abstract ideas. Going back to the CAFC Gall Bladder surgery example, since the surgeon could not perform the surgery without a scalpel, the claim was tied to an article, and was therefore statutory. I honestly don’t see what your problem is here.

    Reply
  88. Actual Inventor wrote:

    “Then how do you reconcile your above definitions with the PTO’s argument during Bilski in which Chen admitted a method for removing a gall bladder that did not include a machine would be statutory because it would require an “apparatus” ?”

    I reconcile it by noting that the PTO and SCOTUS are far from consistent or clear in their use of terminology.

    Consider the “useful, concrete, and tangible” test of State Street… “useful” is well-defined (and age-old), but “concrete” and “tangible” are ill-defined and used interchangeably! Those terms, weighty and significant as they seem, are as devoid of meaning as the “algorithm” test of Freeman-Walter-Abele.

    In the eleven-year reign of State Street, was a single claim ever rejected for being inadequately “concrete” or “tangible?” Wasn’t it always just held to be either “useful” or “abstract,” etc.?

    However – as best I can tell, “apparatus” is USUALLY synonymous with “machine.” Regardless, I don’t think this delineation is really determinative of our discussion here, so I’ll let this point go if you like.

    ===

    “But if what was being claimed was a process for using an x ray machine and display then there is nothing under Bilski that I have seen that says the machines themselves must be transformations. Again I would have to see the actual claims.”

    Here are the relevant claims from Abele:

    “5. A method of displaying data in a field comprising the steps of:

    calculating [blah blah blah], and

    displaying [blah blah blah] in a picture which corresponds to said data point.

    6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.”

    Clearly, claim 5 is “tied to” a display device of some sort, and claim 6 is “tied to” a CT scanner. Yet, this “tying” wasn’t sufficient for Bilski; rather, these components were simply USED IN the invention. The invention didn’t really relate to them, but was a manipulation of the scanning data.

    Instead, the CAFC in Bilski reconciled Abele by noting the “transformation” of the data representing an article. This prong of the analysis was only necessary because the “tying” was inadequate.

    And that’s my point: Machines may be included in a claim – maybe even specifically and essentially – yet may still not count as sufficient “tying.” I argue that the same is true of the golf club in the swinging method, and in the other claims that you proposed.

    ===

    “…this is why I requested you provide a direct a quote from the CAFC Bilski that says processes/methods tied to a machine or apparatus must also be transformations. It’s just not there.”

    I never stated that BOTH a tying AND a transformation are necessary. It’s either/or. However, as Abele, Benson, and several other cases indicate, “tying” is a much higher test than simply “a physical item featured, perhaps essentially, in the claim.”

    – David Stein

    Reply
  89. Anybody wrote:

    “You don’t play golf, do you?”

    Heh. Well, I took a class in golf during my undergrad days at Ohio State for some easy phys ed credit. “Class” involved standing in a mesh enclosure with a a nine-foot canvas target positioned eight feet in front of me, with a bucket of balls at my feet, and an instruction to “hit that thing.”

    During ten weeks of hacking, I managed to come close, um, twice. Most miserable experience of my life. Still, I think I got an A, so I guess that qualifies me as a golfer…?

    ===

    “…a golf club can be a very finely tuned piece of equipment whose efficient operation is highly dependent upon the manner in which it is used.”

    Fine, but that doesn’t make it an “apparatus,” a/k/a a “machine.” A “machine” is typically a device with interactive component – e.g., interoperating moving parts, or solid-state electronic components wired together. Also, a “machine” as some sort of automation aspect: given correct resources and power, it can perform something all by itself.

    A golf club, as exquisitely crafted as it may be, is a single, solid body. There is nothing interactive about it, except maybe for a few well-selected physical properties (e.g., as you pointed out, the flexion of the shaft may be responsive to a particular type of swinging.) And it is in no way automated: it does not achieve any additional function, beyond that which the user directly provides.

    ===

    “it is likely that the same technique may have no applicability to a stick or baseball bat.”

    Sure. And Benson’s method of shifting numbers in BCD shift registers had no applicability on machines that didn’t have such shift registers. The method was specially crafted for the “tied” machine; indeed, it likely has no applicability to *any* modern architecture. And yet, Benson’s claim was not “tied” in the right way. The claim did not really relate to the machine; rather, the machine was simply used as one conduit for performing the “fundamental principle.”

    Again – it’s difficult for me to tell you what I consider adequate “tying” for an apparatus, because there is absolutely no precedent here. I strongly suspect it’s just CAFC window-dressing, for the reasons mentioned above.

    ===

    “Although State Street is now dead, I think it came up with a ‘useful’ test (pun intended).”

    You, I, and Randall Rader agree. And Newman, too. Let’s hope that a plurality of the nine are with us. (BTW, Malcolm, that’s a reference to the justices of the Supreme Court.)

    ===

    “Getting back to one of my original questions … what overarching principles would SCOTUS rely upon to place a limitation of certain types of subject matter?”

    Which ones they “would” (i.e., “will”) choose are anyone’s guess. The predictors are all over the map.

    Which ones they “should” choose… I’d go with:

    (1) the ordinary definitions of the (plainly broad and expansive) terms “method” and “invention” (as previously held, i.e., “anything under the sun”);

    (2) the centuries-old exception for unpatentable “abstract” concepts, including scientific discoveries and natural phenomena, and the printed matter doctrine; and

    (3) the tacit approval in 35 USC for the patentability of both business methods and “medical actions,” both of which are improperly culled under the CAFC’s restrictive test.

    In other words – the limitations that were present under State Street were the most consistent interpretation of 35 USC and the Constitution that we’ve had yet. The Supremes should go back to that.

    However, if they’re hell-bent on imposing limits on the term “method,” without inventing such limits out of whole cloth… they could bring resurrect State Street but impose a heightened “useful, concrete, and tangible” requirement, where the invention must relate to a solution of a real-world problem. (Again, this should be suggested expansively – e.g., memory management algorithms might seem abstract, but they result in faster computers.)

    – David Stein

    Reply
  90. Just to be sure I went back and read In re Bilski agains, and it says ” Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article.”

    No where in the case does it say tied to a particular machine that is transforming. Mr. David Stein is wrong on this issue.

    And Mr. Macolm is….well, Malcom.

    Reply
  91. “Well, it’s certainly an open question, isn’t it?”

    Your argument only makes since in the truly “abstract” areas, i.e. business methods, thankfully I don’t work in that area. In my art unit, I get method of use claims all the time, e.g., claims to a novel/nonobvious catalyst composition and a second set of “method of use” claims wherein the method itself is very old but uses the novel/nonobvious catalyst – guess what? that method is patentable. Section 101 isn’t even an issue, but just to be safe, the catalyst “transforms” the feed material into “a different state or thing” (i.e. the end product).

    Reply
  92. Mr. Malcom wrote: “I think it was your bizarre hypothetical claims, all of which are unpatentable subject matter under 101 as written, with or without Bilski.”

    I made no claims, hypothetical or otherwise. ADHD?

    Sorry Mr. Buzz

    Reply
  93. Mr. David Stein wrote:
    Then how do you reconcile your above definitions with the PTO’s argument during Bilski in which Chen admitted a method for removing a gall bladder that did not include a machine would be statutory because it would require an “apparatus” ? This is on tape from the oral arguments by the way.

    Presumably, the scalpel, which you would classify as an article, is a machine OR apparatus according to the PTO. And since the CAFC proffered the example they must agree as well.

    Mr. David Stein wrote:“An even stronger example: In re Abele. The claims here are tied to TWO “apparatuses” (an X-ray scanner and a display) AND an article (a human bone.) And the method can’t be performed without them, right? But that wasn’t sufficient; it only passed (re-)review under Bilski because the data generated thereby was “transformed” into a visual depiction. If the raw X-ray data were simply displayed without this “transformation,” Abele would not have passed muster, despite its “ties.”

    Well, it all depends on the claims now doesn’t it? If what was being claimed was the data then yes there needs to be a transformation under Bilski.

    But if what was being claimed was a process for using an x ray machine and display then there is nothing under Bilski that I have seen that says the machines themselves must be transformations. Again I would have to see the actual claims.

    As much as I appreciate your fine case analysis and inferences, this is why I requested you provide a direct a quote from the CAFC Bilski that says processes/methods tied to a machine or apparatus must also be transformations. It’s just not there.

    Reply
  94. “How about that golf club? Let’s say you have “a method of swinging a golf club,” such that you’re torquing it in a particular way to get some more power. The claim isn’t really *about* the golf club (or the ball), is it? It merely *uses* the club to generate power through a slightly different swing. The same principle could likely be accomplished with a stick, a baseball bat, etc.”

    You don’t play golf, do you? I’m no scratch golfer, but a golf club can be a very finely tuned piece of equipment whose efficient operation is highly dependent upon the manner in which it is used. For example, the flex of the golf club should be matched with the speed at whih the golf club is swung.

    Regardless, if you developed a swing that “torqued” the club in a particular way to develop additional power, it is likely that the same technique may have no applicability to a stick or baseball bat.

    Although State Street is now dead, I think it came up with a “useful” test (pun intended). Absent claims not directed to laws of nature or abstract ideas, how can one determine that the claimed inventive method was actually performed? That answer is whether it produces a tangible result. If the result is not tangible (i.e., unidentifiable), then the method is too abstract to be patentable. Additionally, if you are unable to determine whether the method is performed (i.e., for lack of a tangible result), how can you know whether or not there is infringement?

    Getting back to one of my original questions … what overarching principles would SCOTUS rely upon to place a limitation of certain types of subject matter?

    Reply
  95. “Okay let’s do a quick analysis.

    1. A method of driving tied to a particular automobile, where the physical article is the automobile.”

    Analysis complete. Result: I feel truly sorry for examiners with pro se applicants.

    Reply
  96. “Claiming the software as new imprinting on an old disk doesn’t change the analysis.

    Posted by: Malcolm Mooney | Jun 01, 2009 at 02:01 PM”

    and

    “It’s about engaging commenters with ideas which, whether correct or incorrect, are articulated coherently and defended with some semblance of honesty and credibility.
    Posted by: Malcolm Mooney | Jun 01, 2009 at 03:01 PM

    Malcolm, Malcolm, Malcolm,

    Don’t you know that you cannot slip the discredited argument in and not be noticed?

    Do you honestly think that the way you run from my challenge leaves you any credibility?

    Printed Matter Doctrine – ’nuff said. Now run Malcom run.

    Reply
  97. pka wrote:

    “So you’re saying that method of use claims, any method of use claims, are no longer valid under Bilski???”

    Well, it’s certainly an open question, isn’t it? Bilski broadly redefines the statutory class of “method.”

    The core of Bilski is not a “machine-or-transformation-OR-USE” test. There is no indication that “tying” to an “article” is sufficient under Bilski. Indeed, several cases discussed in Bilski involved claims that were clearly “tied” to something physical, or at least “used” something physical, yet were found lacking.

    Look – every method that isn’t wholly “abstract,” that doesn’t merely involve numbers and concepts, uses SOMETHING physical, right? If the jurisprudence were that easy, Bilski wouldn’t have been needed; any method not “abstract” would be patentable. (Indeed, that is Rader’s dissent.) Bilski surely does more than that.

    (I suspect that there might be a patentability difference between “using an article in a brand-new way,” and “using an article in a more-or-less routine way to achieve a new result.” The former *might*, in some circumstances, survive Bilski analysis. The latter almost never will. But I’m guessing at this point; there is no precedent about this point within or after Bilski.)

    – David Stein

    Reply
  98. David Stein “The claim isn’t really *about* the golf club (or the ball), is it?”

    It’s not about anything which is just one of many reasons that the hypo stinks.

    Reply
  99. AI “With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations”

    What makes you think the requirement would have to be found in Bilski? If a method/process does not result in a non-trivial transformation, then what is its patent-worthy utility under 101? Perhaps swinging the golf club could be used to entertain a cat? Odd, I think, that such a utility would be deemed substantial for patentability when cat food supplements are deemed insubstantial for patentability purposes. Where are the howls of protest from those whose loathing of contradictions was so acute less than two weeks ago?

    Reply
  100. “The claim isn’t really *about* the golf club (or the ball), is it? It merely *uses* the club to generate power through a slightly different swing.”

    So you’re saying that method of use claims, any method of use claims, are no longer valid under Bilski???

    Reply
  101. In a progressive world valuable and in need of protection should be the standard for granting patents.Basing exclusion on antique rulings before the invention of new patenting concepts is retartive.We have the opertunity in granting patents to establish the most potentially perfected society possible.

    Reply
  102. “Mr. Malcolm Mooney “AI, is it your position that any claim that recites a “physical object” is safe under Bilski? ”

    Umm..No. And what could have possible made you reach that conclusion?”

    I think it was your bizarre hypothetical claims, all of which are unpatentable subject matter under 101 as written, with or without Bilski. But I understand that in your universe it might be difficult or impossible to accept such a conclusion. Perhaps you can try to write a better hypothetical claim or — even better still — come up with some good examples of important inventions that could not be claimed under Bilski. You know, sort of like how Newman in her dissent in Abbott presented a bunch of important compositions that couldn’t be claimed without product-by-process claims. Oh, except she didn’t. Never mind.

    Reply
  103. David Stein and Malcolm Mooney, I look forward to your responses to Actual Inventor’s questions.

    Reply
  104. Anybody wrote: “TSM is still alive and well. In fact, it is preferred by many examiners who have being using it for quite some time. KSR stands for the concept that TSM isn’t the only test.”

    That’s entirely possible and fair. (I haven’t seen it, though, and the few examiners that I’ve spoken with about KSR, e.g., at AIPLA meetings), tell me that they don’t imagine ever using it again.)

    ===

    Actual Inventor wrote:

    “With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations?”

    (1) An “apparatus” is not “aka physical article.” An “apparatus” is “aka a machine,” but an “article” is basically any physical object – including compositions of matter.

    (2) Clearly, there’s a difference between “tying to” and “using.”

    The CAFC in Bilski discussed Gottschalk v. Benson, and even admitted that the claim was “tied to” a computer – indeed, couldn’t be performed without one! And yet: “the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue had no utility other than operating on a digital computer.”

    An even stronger example: In re Abele. The claims here are tied to TWO “apparatuses” (an X-ray scanner and a display) AND an article (a human bone.) And the method can’t be performed without them, right? But that wasn’t sufficient; it only passed (re-)review under Bilski because the data generated thereby was “transformed” into a visual depiction. If the raw X-ray data were simply displayed without this “transformation,” Abele would not have passed muster, despite its “ties.”

    How about that golf club? Let’s say you have “a method of swinging a golf club,” such that you’re torquing it in a particular way to get some more power. The claim isn’t really *about* the golf club (or the ball), is it? It merely *uses* the club to generate power through a slightly different swing. The same principle could likely be accomplished with a stick, a baseball bat, etc. Same thing with exercising a cat: how about a flashlight, or a light reflector with a focusing element…?

    So what constitutes “tying” a method to an apparatus other than a machine? Honestly, I don’t know. Almost all discussion of “tying” (in Bilski and after) involves “tying” software to a machine. There is almost no discussion of “tying” a method to a non-machine apparatus (if your definition of “apparatus” stretches this broadly!)

    – David Stein

    Reply
  105. Mr. Malcolm Mooney “AI, is it your position that any claim that recites a “physical object” is safe under Bilski? ”

    Umm..No. And what could have possible made you reach that conclusion? Is English a second langauge for you or do you have some type of reading/learning disorder? I am being serious here.

    Reply
  106. Actual Inventor wrote:

    “Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter.”

    Mr. David Stein wrote: “These are not “physical articles” under Bilski because there is no transformation.”

    With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations? It is my understanding that the Bilski rule is simply that processes – methods must be tied to a particular machine/apparatus, OR transform a particular article to a different state or thing.

    Reply
  107. Yeah I use TSM quite often and I get some guys come back arguing some KSR nonsense about needing a rational and all this that and the other when I use TSM, I simply recite the part about capturing a helpful insight into the obviousness inquiry and call it a day or give them the motivation rewritten as a rationale in the response to arguments. Haven’t had to do any second action nonfinals over that so far.

    Reply
  108. “Arguing that KSR didn’t abolish TSM is like arguing that the CAFC Bilski decision didn’t kill business methods.”

    Not even close to be right. TSM is still alive and well. In fact, it is preferred by many examiners who have being using it for quite some time. KSR stands for the concept that TSM isn’t the only test.

    On the contrary, the USPTO is using Bilski almost exclusively to kill both methods and devices.

    Reply
  109. Just visiting, I meant it did not got far enough (in narrowing patentable subject matter) that I think the holding of Bilski dictates that “a process comprising converting hydrogen to helium by nuclear fusion” passes 101. Thus, far from going far enough, it went too far in the wrong direction.

    I agree that, as a practical matter, if the case ever came up they’d probably find a way to weasel out of saying my claim is patentable. But whatever way they find would be pretty unconvincing. How much more of a “transformation of matter” can you get than explicitly reciting a transformation of hydrogen to helium? If this claim does not recite a transformation, nothing does.

    Reply
  110. “a process comprising converting hydrogen to helium by nuclear fusion”

    I think the only thing we disaree on is the logical conclusion of Bilski. I don’t believe that claims reciting the above are in any danger of passing muster under 101 under the CAFC’s interpretation of Bilski. Neither the patent office nor the FC is going to allow them.

    I was really trying to probe what kind of things you were getting at when you said Bilski did not go far enough. I still cannot figure out what kinds of things you were referring to. Maybe I should have asked that directly.

    Reply
  111. The Supremes should ask “where in 101 is there a transformation requirement?”

    Reply
  112. Just visiting, I don’t think we disagree much on what the law is after Bilski. For example, I agree that a claim that requires, (1) flying a space shuttle to a star, and (2) initiating nuclear fusion in that star, is perfectly patentable. This was the case before and after Bilski.

    But a claim that simply said: “a process comprising converting hydrogen to helium by nuclear fusion” would be unpatentable under 101 prior to Bilski, because it encompassed a natural phenomenon. After Bilski, it is unquestionably a transformation of matter, and the logical conclusion is that this claim is patentable. The problem, of course, is that it runs straight into the Supreme Court cases that you had mentioned earlier saying that such a claim is not, in fact, patentable subject-matter. So this seems a straightforward “expansion” of 101 to me.

    Reply
  113. Actual Inventor wrote:

    “Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter.”

    These are not “physical articles” under Bilski because there is no transformation.

    – David Stein

    Reply
  114. “Unless you can explain to me why the physical articles described above are not physical articles under Bilski”

    AI, is it your position that any claim that recites a “physical object” is safe under Bilski? That seems to be a rather extreme and untenable position. I’m not surprised, therefore, that you’d adopt it.

    As written, of course, your claims are unpatentable under 101 pre-Bilski. Do you know why? Show me you’ve got a working neuron in that brain of yours.

    Reply
  115. David Stein wrote:

    “Of course, an applicant might circumvent that problem, e.g., by claiming a computer that is programmed to perform the method of driving. But then it is no longer a business method – it is a software method.”

    Didn’t the CAFC make it clear in Bilski that an invention requiring physical acts is not reason to make a process non statutory? If so, then there is no need to substitute a computer for an actual driver to get a patent on a method of driving an automobile.

    Reply
  116. David Stein wrote:

    However – a method of “driving” is likely not patentable under Bilski. Nor would a method of swinging a club, exercising a cat, or swinging on a swing. these are exactly the types of “business methods” to which the CAFC paid lip service by refusing to withhold patentability. Yet, any method claims to these activities would be found lacking a “physical article,” and therefore do not qualify as a “method” under Bilski.

    Okay let’s do a quick analysis.

    1. A method of driving tied to a particular automobile, where the physical article is the automobile.

    2. A method of swinging a club tied to a golf club, where the physical article is the golf club.

    3. A method of swinging on a swing, tied to a particular swing, where the physical article is the swing.

    4. A method of exercising a cat, tied to a laser pointer, where the physical article in the laser pointer.

    Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter.

    Reply
  117. “Just visiting, Bilski is not silent about laws of nature. It explicitly includes laws of nature in its category of “fundamental principles” subject exclusively to the machine or transformation test.”

    Let me restate things more clearly. If a claim recited only the fundamental principle or an algorithm, I don’t believe Bilski makes any change in the patentability of such claims. It’s only when more stuff is recited such that the claim appears to be applying a fundamental principle rather than simply claiming the principle that we need to apply Bilski.

    Cited in Bilski, “The Court declared that while a claim drawn to a fundamental principle is unpatentable, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”

    If your point is that no claim should be patentable if it recites in part, “nuclear fusion in stars” then I agree that Bilksi doesn’t get there. But I don’t believe the decision in Bilski accomplishes *any* expansion in subject matter patentable under 101.

    Reply
  118. curious:
    “FedCir wrote a TSM test into 103. SupCt did not like that. FedCir wrote a machine or transformation test into 101. I don’t think that the SupCt will like that either.”

    Lionel Hutz:
    “The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again.”

    I think you are probably right for the reasons you stated.

    But also I think there’s a non-negligible chance the Supremes might dismiss as improvidently granted. (ht West Coast Guy)

    The problem with the Supremes deciding this case on the merits is first, they have shown a tendency to pontificate in broad, useless generalities when called on to resolve important patent law issues. (KSR is a prime example. The morass of 101 law up til now is another. Just one person please explain how Diamond v. Diehr is honestly consistent with Parker v. Flook.) Second, Bilski’s app should have been rejected on grounds of 103. Let’s hope the Supremes don’t conflate 101 and 103. The law is confused enough already.

    Reply
  119. Actual Inventor wrote:

    “Or a baking/cooking method, surgical/medical method, production method, driving method, farming method, sewing method, massage method, and on and on…”

    Baking, cooking, driving, farming, and sewing are all methods of manufacturing. And they’re patentable under Bilski because they involve a physical article.

    “Surgical/medical” and “massaging” methods are therapeutic methods. Bilski might have nixed these, if not for 35 USC 287(c), which tacitly affirms the patentability of “medical activities” (while at the same time knocking out most of the enforcement teeth of such patents.)

    However – a method of “driving” is likely not patentable under Bilski. Nor would a method of swinging a club, exercising a cat, or swinging on a swing. these are exactly the types of “business methods” to which the CAFC paid lip service by refusing to withhold patentability. Yet, any method claims to these activities would be found lacking a “physical article,” and therefore do not qualify as a “method” under Bilski.

    Of course, an applicant might circumvent that problem, e.g., by claiming a computer that is programmed to perform the method of driving. But then it is no longer a business method – it is a software method.

    – David Stein

    Reply
  120. Mr. Macolm Mooney wrote:

    “In reality, all inventors need not be concerned”

    Excuse me but are you an “Actual Inventor?” Have you every invented anything? If not then don’t presuppose to speak for us “Actual Inventors” This IS a serious case that could limit the rights and extinguish the flame of innovation for inventors everywhere. And send an already fragile economy further down the drain at a time when innovation is desperately needed.

    Yes indeed inventors need to be concerned. In fact everyone in the USA better be. Thousands of application hang in the balance and many more that have been granted are in peril. People have worked their entire lives to build a business around a patent and prove a concept. Now it could be rendered invalid causing a collapse of the businesses and risking thousand maybe millions of jobs.

    Yes we ALL better be concerned. Our economy, nation, indeed are very lives hang in the balance.

    Reply
  121. FedCir wrote a TSM test into 103. SupCt did not like that. FedCir wrote a machine or transformation test into 101. I don’t think that the SupCt will like that either.

    Reply
  122. The trouble with taking Bilski to the Supremes is that Bilkski had disclaimed any requirement for using a computer, i.e., Bilski broadly claims a naked business method that could cover pencil & paper usage, or whatever. Not only is that a less appealing case for the Supremes [even without subjective sub rosa 103 obviousness questions], it means that the far more important issues of software or computer-implimented patenting, which were thus able to be “waffled” by the CAFC in In re Bilski, could also be waffled by the Sup. Ct. That is, the Bilksi claims could be re-rejected on old Sup. Ct. grounds without clairifying any software or computer-implimented patenting issues.
    But at least CAFC has set this case up for the Supremes to do a better job of reconciling some of its own prior 101 scope decisions, if they want to.

    Reply
  123. Just visiting, Bilski is not silent about laws of nature. It explicitly includes laws of nature in its category of “fundamental principles” subject exclusively to the machine or transformation test.

    anon, there would be no physics textbooks in 1945 that described what you say. That is why I specified 1945. Whether modern physics textbooks is enabling depends on the claim, since we can produce uncontrolled fusion but controlled fusion is more complicated.

    A claim on fusion that doesn’t read on the sun is pretty simple: “nuclear fusion in a man-made reactor.”

    Moreover, infringement is pretty simple, and very extreme. Say I claim the process of nuclear fusion including in stars. Section 271(g) includes as infringement everything made by a patented process, which is pretty much all matter in the universe. Sure, 271(g)(1) exempts materials that are substantially changed by a subsequent process. But enough to say that a patent on nuclear fusion would have lots of potential infringers.

    Reply
  124. The wording of the questions presented seem to indicate that at least some on the Court find the CAFC test too restrictive and favor a broader view of patentable subject matter. But I don’t buy it. Between the 4 judges who dissented to the Lab Corp cert withdrawal, and the well-known attitudes of several of the justices on this topic, Bilski’s claims stand no chance.

    That said, why grant cert? Because, as many have pointed out, the Supremes don’t like anyone propounding tests other than themselves. So they’ll have some other test. But I’ll have to disagree with many posters who see this as a positive development.

    My prediction is that they’ll offer up some loosey-goosey, (ironically) abstract standard that is just more words. What is an “abstract idea”? Why, it’s a “purely mental construct.” Okay, what is a “purely mental construct”? Why, it’s a “concept held only in the mind.” Okay, what do you mean by “concept” and what does it mean to be “held” in the mind? Etc. You get my point. A “know it when you see it” approach is just unhelpful and useless b/c it’ll just be argued around and be inconsistently applied.

    This is just a difficult area in which to draw rules. CAFC made one stab at it. SCOTUS will make another. But anyone who expects miraculous clarity from SCOTUS is likely to be disappointed.

    Reply
  125. And btw, decent work on that article Mark. I agree that such a change would indeed seem to be in the cards of our future except for the fact that there are so many vested interests in the current system. They could concievably prop up the current system (or at least a close approximation thereof) for another 50 years. Even so, I do imagine some rather large changes will take place.

    Reply
  126. “all inventors need to be concerned”

    So sayeth the concern troll.

    In reality, all inventors need not be concerned. My claims have not changed in light of Bilski because my clients are not filing on abstract result-oriented computer-implemented crap described in purely functional terms. This is true of many prosecutors, probably the majority of prosecutors, in fact, though maybe not the majority of those prosecutors who spend most of their time whining on blogs about how awful the PTO is or how KSR rendered everything unpatentable.

    Reply
  127. “Bilski’s claim will fail and the test will be worse than that proposed by the Federal Circuit because the Supreme’s will make it clear that the mere inclusion of magic words isn’t enough to turn a claim to a pile of unpatentable money-churning or vague result-oriented crap into patentable subject matter.”

    It is like reading the future before it happens.

    “The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again. ”

    You are absolutely right, the CAFC didn’t go far enough, as MM stated above.

    Reply
  128. “Ivory Glower, say that I file a patent application claiming nuclear fusion in the sun in 1945″

    TJ,

    I think the 102 argument is off base, but so is the original observation that claims to laws of nature are allowable under Bilski.

    At most Bilksi is silent about claims drawn specifically to laws of nature, but there’s plenty of other law out there saying you cannot have such claims.

    Reply
  129. Mr. David Stein wrote:

    “Sure, the CAFC expressly refused to exempt business methods from patentability… but then it imposed requirements on the entire field of “methods” that are impossible to meet by any “business method.” (i.e., if your claim has sufficient limitations to satisfy CAFC’s Bilski, then it is a software method, or a manufacturing method, etc. … it is no longer a business method.)”

    Or a baking/cooking method, surgical/medical method, production method, driving method, farming method, sewing method, massage method, and on and on… The point is all the above methods and processes are business methods. So I don’t understand what your argument is based on. Sure maybe you can’t get a patent on a new way to organize your reps to market computer software, but you can still get meaningful business method patents under Bilski. The CAFC just narrowed the scope they didn’t by any means make it impossible. But the SCOTUS, could and that is something all inventors need to be concerned about.

    Reply
  130. David Stein wrote:
    “Nice interview”

    Thanks. It was fun working with Ms. Surran. Very enthusiastic person.

    Reply
  131. Malcolm,

    This cert grant has nothing to do with Bilski and the decision will almost certainly be vacated rather than reversed.

    The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again.

    Reply
  132. TJ,

    Any 102/3 reference teaching that nuclear fusion occurs in the sun (e.g., many phyisics textbooks). The reference’s subject material does not have to be in this country.

    (a) BTW, who/how infringe? Make, use, sell, import the sun?

    (b) In your world, could you claim nuclear fusion of a properly disclosed (enabled, wd, etc.) fusion reactor?

    (c) How do you differentiate — i.e., isn’t the sun itself a nuclear fusion reactor, and if the spec somehow properly disclosed how to build a star, would the inventor of the star-making invention not be entitled to protection? Or does it matter whether the inventor invents how to make something that occurs in nature? (sticking to claiming the process, not the product).

    Reply
  133. I was going to post what I thought might happen, but David Stein did it more eloquently than I would have in his response to MM at 2:12.

    Reply
  134. Malcolm Mooney,

    “What’s a “business method,” David?”

    Using the vernacular of Congress, it is a method of doing or conducting business.

    Reply
  135. Ivory Glower, say that I file a patent application claiming nuclear fusion in the sun in 1945. What 102 reference are you going to use to reject it? The sun is not “in public use in this country”; and no printed reference is enabling.

    Reply
  136. Note to Actual Inventor: it’s not being “backed into corner.” It’s about engaging commenters with ideas which, whether correct or incorrect, are articulated coherently and defended with some semblance of honesty and credibility. Eventually you might get there, tho probably not this week.

    Reply
  137. David Stein: “Arguing that KSR didn’t abolish TSM is like arguing that the CAFC Bilski decision didn’t kill business methods.”

    What’s a “business method,” David?

    Reply
  138. David “KSR issued in 2007, when businesses still looked just fine.”

    I’m sorry, David, but are you suggesting that KSR would have been decidedly differently if it was being heard today? Is that what you are suggesting? And that somehow overturning the Federal Circuit in Bilski is going to help the economy? How does that work? Can you provide some evidence that granting patents on methods such as Bilski’s will help the economy?

    “I really don’t care about Bilski’s patent. …Whether it survives will depend on the test that the Supremes adopt. That’s the most that anyone can predict at this stage.”

    Uh, no. I can predict that Bilski’s patent will not survive regardless of what happens here. Breyer is going to be driving this train and the decision is going to include at least 7 justices in the majority. Bilski’s claim will fail and the test will be worse than that proposed by the Federal Circuit because the Supreme’s will make it clear that the mere inclusion of magic words isn’t enough to turn a claim to a pile of unpatentable money-churning or vague result-oriented crap into patentable subject matter.

    Reply
  139. TJ writes: “Under Bilski, you could draft a claim on most things that recited a transformation of matter, including nuclear fusion in the sun, photosynthesis in plants, and mitosis in cells.”

    But under 102 & 103 – you couldn’t get a patent with those claims. Why continue to conflate 101 with 102 and 103?

    By the way – how are you coming on that paper about each claim amendment resetting the filing date?

    Reply
  140. Mr. Malcolm clipped of or omitted from his quote the following .. “according to the statute and Supreme Court precedent.” then typed…”LOL”

    Malcolm why you do always lash out or simply type LOL when backed into a corner with references to law? You claim to be an Actual Patent attorney right? One would think you could respond with some reference to the law, especially when that is what you asked for.

    Reply
  141. Great observation, justapatentprosecutor — Justice Sotomayor could very well be the decisive vote here if the court can’t find some vague new standard on which all justices agree. If we get into the sort of 5-4 fight we had in the old 101 cases, the new justice might make all of the difference.

    Justice Souter’s eBay concurrence and dissent from the dismissal in LabCorp v. Metabolite established him as firmly in Stevens’s camp on narrowing the scope of 101. Justice Sotomayor really couldn’t be any more hostile from an inventor’s perspective, and she might prove to be friendly (anyone’s guess).

    Reply
  142. Anybody wrote:

    “SCOTUS didn’t abolish TSM. All SCOTUS said was TSM isn’t the only test, and BTW, we think this is obvious for rationales we’ve described in all of these past cases.”

    Arguing that KSR didn’t abolish TSM is like arguing that the CAFC Bilski decision didn’t kill business methods.

    Sure, the CAFC expressly refused to exempt business methods from patentability… but then it imposed requirements on the entire field of “methods” that are impossible to meet by any “business method.” (i.e., if your claim has sufficient limitations to satisfy CAFC’s Bilski, then it is a software method, or a manufacturing method, etc. … it is no longer a business method.)

    This is extreme judicial passive-aggressiveness. Put another way: “Our business does not discriminate by race! We only discriminate based on music: we give huge hiring preferences to fans of the symphony and country music, and we refuse to hire fans of rap or R&B.”

    Same thing with TSM – the Supremes essentially wrote: “Well, we’re not going to kill this high standard of proof… we’re just going to make it optional. Examiners can go ahead and meet it if they want, or they can use a much easier argument if they prefer.”

    I’d LOVE to see metrics of reliance by examiners on the TSM test after KSR. I’m guessing it has been almost entirely replaced with “well, *I* think it’s obvious to combine these refs” arguments.

    – David Stein

    Reply
  143. Malcolm Mooney wrote: “Business methods” are not defined and the term is meaningless by itself.

    Business methods are industrial processes and have always existed. No one can rebutt this fact. Case closed. Next?

    Malcolm Mooney wrote “Making money is not manufacturing, nor is it a transformation of matter. It is an abstract idea, regardless of the field in which the money is being made.”

    From my understanding of the case Bilski did not ask for a patent on “making money” per se. Making money may have been the underlying principle of his patent but its the application of that principle to which Mr. Bilski seeks his patent. Next?

    Malcolm Mooney wrote: “Also, a new composition or apparatus for advertising may be patentable, but a method for advertising that utilizes an old composition or apparatus to sell something should not be patentable.”

    Umm says who? The above scenario is patentable even under the current CAFC Bilski ruling.

    Reply
  144. “What are the chances that the Court – the 75%-same-as-Bush-v-Gore-Court Court – will say to itself, ‘Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?'”

    I think there is a big difference between the gut reaction anybody has when looking at an invention, looking at the prior art, and says … “that’s obvious” versus determining whether to foreclose certain subject matter from being patentable.

    Paul Cole described KSR as conservative. I would describe KSR as SCOTUS getting the end result they wanted without upsetting any established law. There isn’t any ground-breaking jurisprudence in KSR. SCOTUS didn’t abolish TSM. All SCOTUS said was TSM isn’t the only test, and BTW, we think this is obvious for rationales we’ve described in all of these past cases.

    On the other hand, Bilski address issues that are more legal and philosophical in nature. However, the Supreme Court could affirm but based upon a Radar’s reasoning (i.e., it is directed to an abstract idea) and treat the machine/transformation test as but one of many possible tests. If so, and SCOTUS doesn’t expound upon their analysis, then we are back to where we began … which is that 101 rejections will continue to be hit and miss.

    Difficult to say what they will do, but it is fun to speculate.

    Reply
  145. Malcolm wrote:

    “I’m addressing the point raised in David’s comment that the same court that ruled in favor of Bush in Bush v. Gore was somehow loathe to issue a ruling that weakens the patents of the world’s most powerful patent owners (i.e., big businesses). KSR shows that the opposite is true.”

    (1) KSR v. Teleflex was two companies dueling over competing business interests, each of which could show immediate harm of a different kind.

    In Bilski v. Doll, the Supremes will see MANY business amici standing up on one side arguing immediate economic harm, vs. the USPTO (and a couple of business amici) on the other arguing more academic concepts and more prophetic, attenuated consequences.

    (2) KSR issued in 2007, when businesses still looked just fine. The justices are likely to be much more sensitive about economic issues today – particularly if a legal issue touches on a large sector of the economy.

    ===

    As for your broader question, Mooney – “does anyone think that Bilski’s claims will survive?”…

    I really don’t care about Bilski’s patent. He isn’t my client, nor are any of the financial companies he might approach for licensing or accuse of infringement. It is a non-issue to me.

    Whether it survives will depend on the test that the Supremes adopt. That’s the most that anyone can predict at this stage.

    – David Stein

    Reply
  146. Maybe the Supreme Court will state that cert was improvidently granted.

    Reply
  147. @ Malcolm “Stop lashing out, mkay? It’s childish.” Especially because Malcolm never lashes out at anyone but treats everyone professionally and with respect on this blog.

    Reply
  148. Malcolm wrote:

    “A truly fantastic strawman, David. Congratulations!”

    It’s not *my* strawman, Malcolm. These are the arguments that the parties will bring to the table: the USPTO will argue “how it should be” and “how this might affect the future,” while the amici will argue “this is hurting us, REAL businesses, NOW, TODAY.”

    The Court has proven very sensitive to such pragmatic considerations this year. Now it has a chance to cast itself as a hero of the economy – that might be a juicy reward that it can’t pass up.

    ===

    “Take a look at the claim at issue here and tell me how denying patentability to that claim or any claim remotely similar to it could effect a ‘blow to our economy.'”

    Malcolm… :sigh:

    OK, let’s review: federal court structure, day one.

    The Supreme Court does not accept cert in order to resolve a particular controversy. (Bush v. Gore is the exception, and it is universally loathed for that reason.) Rather, the Supreme Court accepts cert in order to resolve a murky area of law. The case in controversy is basically an excuse to rule on a Big Issue. Maybe the Court’s opinion will resolve it; maybe not… it’s not really the point.

    For example, SCOTUS’s opinion in Bilski could simply read:

    “For the reasons stated below, the CAFC’s interpretation of Diamond v. Diehr is incorrect. We are imposing a new test of patentability, to wit: [blah blah blah]. The decision of the CAFC is vacated, and the case at bar is remanded for further proceedings not inconsistent with this opinion.”

    Of course, this should be entirely familiar: you surely you must have read many opinions of that nature in your Constitutional Law classes… back when you were in law school… right, Mooney?

    – David Stein

    Reply
  149. “”Also, you forgot to mention KSR in your analysis.”

    You’re mixing apples with oranges again.”

    No, I’m addressing the point raised in David’s comment that the same court that ruled in favor of Bush in Bush v. Gore was somehow loathe to issue a ruling that weakens the patents of the world’s most powerful patent owners (i.e., big businesses). KSR shows that the opposite is true.

    “Whether you accept it or not, there is a distinction between §§ 101 and 103.”

    I’ve never said there wasn’t a difference.

    “When you mix these two, your arguments lack clarity and make you sound like you don’t know what you’re talking about.”

    Sorry, but it’s you who doesn’t know what you’re talking about. Stop lashing out, mkay? It’s childish.

    Reply
  150. “You seem to be assuming that Congressmen have the intelligence to realize that by passing this defense they are indirectly stating business methods are patentable.”

    “Business methods” are not defined and the term is meaningless by itself. But chew on this:

    Making money is not manufacturing, nor is it a transformation of matter. It is an abstract idea, regardless of the field in which the money is being made.

    Also, a new composition or apparatus for advertising may be patentable, but a method for advertising that utilizes an old composition or apparatus to sell something should not be patentable. Software that is functionally described is either an abstract idea or per se obvious. Take your pick. Claiming the software as new imprinting on an old disk doesn’t change the analysis.

    Reply
  151. Malcolm is right to the extent that the real issue with Bilski at the Supreme Court is whether the Court can do anything meaningful to clean up the CAFC’s mess while still clearly denying patentability for Bilski’s specific claims. In my opinion, no way are there 5 justices that will get behind Bilski’s claims. That’s why I still feel that this is the wrong vehicle for this issue. I wouldn’t be surprised to see the Court affirm the result while simultaneously calling out 90% of the CAFC’s opinion as dicta having no basis in law.

    Reply
  152. Malcolm.

    “Also, you forgot to mention KSR in your analysis.”

    You’re mixing apples with oranges again.

    Whether you accept it or not, there is a distinction between §§ 101 and 103. Bilski addresses § 101 (unpatentable subject matter) and KSR addresses § 103 (obviousness). When you mix these two, your arguments lack clarity and make you sound like you don’t know what you’re talking about.

    Reply
  153. The primary purpose of having a Patent is to prevent someone from going into business against you. So as any “Actual Inventor” will tell you, every patent is essentially a business method!

    My question is, will the SCOTUS define business methods as something other than mere industrial processes? Now that would be a neat trick.

    Reply
  154. Actual Inventor: “If that happens the mixing of chemicals..i.e. chemical compositions would no longer be patentable subject matter and there is no way big Pharma would stand for that.”

    I understand that you are completely clueless and probably some sort of unfunny parody troll, but can you at least try to write in comprehensible sentences? Thanks.

    Reply
  155. Acual Inventor: “So if those arguments are correct then Bilski deserves his patent”

    LOL.

    Reply
  156. David Stein: “What are the chances that the Court – the 75%-same-as-Bush-v-Gore-Court Court – will say to itself, “Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?”

    A truly fantastic strawman, David. Congratulations!

    Take a look at the claim at issue here and tell me how denying patentability to that claim or any claim remotely similar to it could effect a “blow to our economy.”

    Also, you forgot to mention KSR in your analysis.

    Reply
  157. If the definition of business method set forth in 35 U.S.C. 273 and reproduced above does not reflect Congressional intent that business methods are to be patentable, what does it mean?

    Congress said it, so the Court has to construe the words to mean something. — what could it be except that business methods are to be patentable?

    It means there were enough Congressman (and the President) to pass this defense. Intent is overrated. You seem to be assuming that Congressmen have the intelligence to realize that by passing this defense they are indirectly stating business methods are patentable.

    Reply
  158. Mr. patent leather wrote “While the Supremes could reverse Bilski (unlikely in my opinion) they could also revive some dicta in the first Comiskey implying that only physical structure counts for patentability.”

    If that happens the mixing of chemicals..i.e. chemical compositions would no longer be patentable subject matter and there is no way big Pharma would stand for that.

    Reply
  159. LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    I think that about sums it up eh?

    Also, on another front, I found what may be the best patent related quote evar.

    “Before the Internet, young men relied on the Patent Office for their …. needs”

    Can you fill in the blank without going to the site?

    link to cracked.com

    Back on topic, I doubt if they will leave Bilski totally unchanged.

    “Dang! This means that 6 will just keep cranking out Bilski-based rejections, knowin that inventors will keep filing RCEs till the Supremes tank Bilski.”

    This is true. Then again, when they get through with Bilski the claim will still likely be rejected. Just a different rationale. One that probably makes more plain sense.

    “Those who didn’t think Bilski went far enough may be happy about this.”

    Mhmmm, I am.

    “Congress said it, so the Court has to construe the words to mean something. — what could it be except that business methods are to be patentable?”

    It could mean that congress isn’t blind and has seen that they have been currently regarded as patentable by the courts in many instances. It is an issue they are leaving up to them since they likely couldn’t get the votes to change the statute either to srictly allow, or disallow them. Furthermore, in the instances where they see the courts allowing them, they felt like the exceptions provided under that statute were important to make.

    “That is my take on the arguments in play. I will sit on the fence and watch.”

    It is rather refreshing to see you catch a subtlety.

    “The machine-or-transformation test is not bad at all from my art perspective (EE/comm) as long people are being realistic. It should be upheld because without it there is too much open/ambiguous/broad/imaginary stuff in modern claims. The problem is the USPTO is probably the only one willing to defend rejections under Bilski.

    From another perspective, anything and everything is patentable. In the information age there’s a lot of publicly available information, which means Bilsi-questionable claims should be handled mostly with 102/103. However, some Bilski-questionable claims are so rediculously absurd that 102/103 becomes difficult to apply. It’s as if aliens are writing these types of claims.”

    One might suspect that Jules was transformed into an examiner.

    Reply
  160. the SC wanted something to drop in the lap of their new colleague, sotomayor.

    welcome to the club, sonia.

    Reply
  161. Mark Nowotarski wrote:

    “One of the fastest growing areas of patents are the new Social Media Patents.

    Care to speculate on how these will fare?”

    First – nice interview. I think you presented yourself well.

    (Side-note – your interviewer was a bit of a bubblehead, wasn’t she? ;) “Wow, it’s a totally different world, isn’t it?” translates directly to: “All of this is foreign and mysterious to me, but I’m afraid to admit that I don’t get it.”)

    Second – how will these fare? They’ll fare just fine if claimed correctly.

    In my experience, examiners seem to be disregarding Bilski. They’re not really rigorously examining claims for “tying to a ‘particular’ machine” or “not preempting the algorithm” or any such nonsense.

    Rather, the test that most seem to be utilizing is simple: “Are you claiming software running on a computer that can solve a particular problem? Or are you claiming some type of fiddling with totally abstract concepts – ‘profiles’ and ‘relationships’ such – and sort of tangentially mentioning that a computer might be involved?”

    If your claims are well-grounded in the technical field of software, and if they claim a specific solution to a problem that you’ve enabled and described well in the spec, the app will probably do OK (when it is eventually examined… circa 2015.)

    – David Stein

    Reply
  162. Jules: “It’s as if aliens are writing these types of claims”

    Or just incredibly greedy and lazy lawyer-cum-inventors trying to game the system.

    Reply
  163. David Stein, exactly which group of “software industry giants” are you predicting will support expanding the patent system? In case you didn’t notice, Microsoft et al. are busily trying to weaken patents, seeing that they are being sued all over the place.

    Count me as one of those “who didn’t think Bilski went far enough” and is happy about this. Under Bilski, you could draft a claim on most things that recited a transformation of matter, including nuclear fusion in the sun, photosynthesis in plants, and mitosis in cells.

    Reply
  164. From where I stand, in Europe, that SCOTUS has taken Bilski, even while the EPO’s Enlarged Board of Appeal (EBA) is addressing “European 101″, is fantastic news. Whereas the world’s default legal system, civil law, sets the 101 bright line incrementally, free from the constraints of Binding Precedent, a common law country has to do it (and get it right) with just one Supreme Court Decision. We see the difficulty when England tries to do it, from a location inside Europe. Now let’s see how SCOTUS does it, with no constraints on it whatsoever, except the Constitution and the Congress.

    Paul Cole is of course right. SCOTUS, not being a specialist patents tribunal, lacks the day to day experience of the EBA members, of hundreds of diverse 101 cases. It needs from wise American patent lawyers all the help it can get.

    I had thought that the CAFC had tried very hard, in its Bilski Decision, to tee the ball up as thoughtfully and visibly as possible, so that SCOTUS could address the ball at length, and then strike it cleanly. So, it seems to me quite right for SCOTUS to have taken the case. Maybe SCOTUS and the CAFC are not at each other’s throats quite as much as some commentators imagine.

    Reply
  165. Mr. Malcom wrote: “Is anyone willing to defend the claim at issue in Bilski as patentable subject matter?”

    Well, I would have to reread all the briefs in the cases in the long Bilski saga to do that. But just going by memory I seem to recall Bilski arguing he should get a patent because of the statute not having any machine or transformation limitations. That’s very powerful stuff to me. Also I seem to recall the Bilski attorney arguing, and citing Deihr that the method of hedging did not preempt an entire field or cover all types of hedging therefore it could not be ruled an abstract idea.

    So if those arguments are correct then Bilski deserves his patent according to the statute and Supreme Court precedent.

    Reply
  166. In an admittedly feeble attempt at humor, perhaps the Court will use the case to better hone its “under the sun” references in Diamond v. Chakrobarty.

    Perhaps a “sliding scale”. “Under the sun” is always patentable. “Even with the sun” is problematic. “Over the sun” is verboten.

    Quite frankly, I haven’t a clue why cert was granted and believe it is an exercise in futility to try and analyze why it did so.

    Reply
  167. Of course the Supremes took it. This Court loves patent issues, and Bilski is the last big one in the pipeline. Plus, many patent issues are heavily burdened with murky and sort of dull considerations (damages calculations, injunction prerequisites, etc.); this issue is plain as day: does “method” include software and business methods?

    My thoughts on this –

    (1) There’s no way that the Supremes will accept the CAFC’s test. “Physicality” was a shaky premise at best, and the two-prong extension to “tied to a machine” and “data representing a real-world article” was a clumsy hack with no basis in the Patent Act, Supreme Court precedent, the CAFC’s own precedent, etc. So regardless of how the Supremes rule, the CAFC’s test is toast.

    (2) I remember seeing some snippy comments in completely unrelated Court opinions about never having affirmed the patentability of software – and maybe a footnote citing a Stanford University Free-Software-Foundation-type study making the case for patents hurting innovation, etc.

    Of course, there’s a world of difference between “haven’t ruled that software is patentable” and “have ruled that software ISN’T patentable.” But these small hints that at least one or two justices are embarking on this journey with a Slashdot mentality is a little disconcerting.

    (3) This Court is extraordinarily pragmatic. In at least three cases this year (Arizona v. Gant, Herring v. U.S., and today’s decision in Montejo v. Louisiana), the Court ruled primarily based on the predicted effects of its decisions. Of course, today’s Court is 75% the same Court that decided Bush v. Gore in ’01, the least “legal” opinion in the 200-year history of the Supreme Court.

    When hearing Bilski, this same Court will be faced with two arguments:

    (a) USPTO doomsayers arguing that pure software patents and business method patents will hurt innovation in the long run, and hand-wringing over its own examination incompetencies (“um, we know we’ve had a decade to figure out this process, but we’re still pretty bad at it”); and

    (b) a huge group of software industry giants standing up and saying: “These artificial restraints on patents are hurting our businesses TODAY.”

    What are the chances that the Court – the 75%-same-as-Bush-v-Gore-Court Court – will say to itself, “Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?”

    – David Stein

    Reply
  168. American Cowboy,

    “Congress said it, so the Court has to construe the words to mean something. — what could it be except that business methods are to be patentable?”

    They can give words of § 273 little attention and instead rely wholly on stari decisis. I don’t agree with that practice, but I’ve seen it happen many times where the words of Congress have taken a back seat to the Court’s previous opinions.

    The Court did that recently in the Carlsbad Tech matter — did not even examine for Congressional intent of recently enacted statute which the CAFC discussed in detail.

    My guess…the Court will craft a test other than the “machine-or-transformation” test. Noetheless, the judgment in Bilksi will be affirmed as unpatentable subject matter under § 101.

    Reply
  169. American Cowboy,

    “Congress said it, so the Court has to construe the words to mean something. — what could it be except that business methods are to be patentable?”

    They can give words of § 273 little attention and instead rely wholly on stari decisis. I don’t agree with that practice, but I’ve seen it happen many times where the words of Congress have taken a back seat to the Court’s previous opinions.

    My guess…the Court will craft a test other than the “machine-or-transformation” test. Noetheless, the judgment in Bilksi will be affirmed as unpatentable subject matter under § 101.

    The Court did that recently in the Carlsbad Tech matter — did not even examine for Congressional intent of recently enacted statute which the CAFC discussed in detail.

    Reply
  170. The briefs should provide modern sample claims from all technologies that have been proven questionable under Bilski, with clear and truthful prosecution histories.

    The machine-or-transformation test is not bad at all from my art perspective (EE/comm) as long people are being realistic. It should be upheld because without it there is too much open/ambiguous/broad/imaginary stuff in modern claims. The problem is the USPTO is probably the only one willing to defend rejections under Bilski.

    From another perspective, anything and everything is patentable. In the information age there’s a lot of publicly available information, which means Bilsi-questionable claims should be handled mostly with 102/103. However, some Bilski-questionable claims are so rediculously absurd that 102/103 becomes difficult to apply. It’s as if aliens are writing these types of claims.

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  171. I remember in 1988 there was a newspaper headline that scientists had achieved cold fusion. That experiment turned out not to be repeatable.

    Now, imagine that Congress had immediately passed a law that prevented the performance of cold fusion within 50 feet of a school or hospital. Would Congress’s passage of that law mean that Congress intended for cold fusion to exist? Would it express an intent that they wanted no additional restrictions placed on it, if it does exist?

    From what I understand so far, the hypothetical above is, in some ways, analogous to the circumstances under which Congress passed 273. In other words, Congress was reacting to the announcement that the Supremes had said business methods are patentable. They reacted by placing a limit on business methods.

    So critics of the argument that 273 expresses the intent of Congress that business methods exist will say that 273 only places a limit. They say this limit is on what the Supremes can do regarding the promotion of business method patents, and in no way limits the Supremes’ powers to do away with them.

    That is my take on the arguments in play. I will sit on the fence and watch.

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  172. It’s entirely possible that the Supreme Court hates the CAFC machine-or-transformation test enought to jettison it, yet still deny Bilski a patent on whatever new test SCOTUS devises.

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  173. seems to me by the tone of the questions they are inclined to modify the CAFC’s ruling – I think people will be surprised

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  174. Is anyone willing to defend the claim at issue in Bilski as patentable subject matter?

    I’ve yet to hear a coherent argument explaining why it passes even the prior tests under 101.

    Bilski’s argument seems to be that everything is patentable as long as the claim doesn’t include the word “abstract idea” in the preamble.

    Does anyone think Bilski ends up with a patent after this?

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  175. If the definition of business method set forth in 35 U.S.C. 273 and reproduced above does not reflect Congressional intent that business methods are to be patentable, what does it mean?

    Congress said it, so the Court has to construe the words to mean something. — what could it be except that business methods are to be patentable?

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  176. This is in response to Anybody Interested.

    The speed with which information has appeared on the blog is commendable, and it has been possible to skim the various briefs.

    What is striking is that the petition for certiorari has been allowed i.e. there appears to be at least a preliminary view that the CAFC opinion may be open to question. The supporting briefs from amici also took that view and favoured a generous interpretaion of patent-eligible subject matter. There were indications in earlier decisions that the Supremes thought that patenting in the software and businsess method fields had gone too far. However, if that was the view of the Supremes, why call this decision in: why not simply leave the opinion below to stand and see what develops?

    So it may be that the Supremes are looking for a test which permits a broad range of subject matter, but curbs some of the extremes. The initial “gut-rection” of some commentators including myself may have been over-stated.

    If they take up the themes in KSR, the Supremes could reject the machine or transformation test as too rigid and mandate a common sense approach to what is or what is not patentable. They may well follow Judge Rader in finding a distinction between a patentable process and an abstract idea. They might well consider whether the “useful arts” in the US constitution is broad enough to cover the kind of abstract method sought to be patented here.

    KSR was a conservative carefully drafted decision, as befitted a non-expert court intervening in a specialised field. It seems unlikely that in this case the Supremes will seek to cover methods of testing and they could well be cautious in venturing into the field of computer software.

    But whatever the outcome, as previously mentioned, a good decision may follow good briefs to the court, but is less likely to follow a brief that does not put forward a clear alternative or an amicus brief that only serves a sectional interest. So if you feel strongly, find one of the counsel who has submitted a brief already (they are probably the best ones and an undue multiplication of briefs is not necessarily the best way forward) and put forward your positive suggestions and arguments. When dealing with an unfamiliar sepcialist topic, the Supremes need the help of patent professionals, and that is what we should aim to give.

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  177. “Moonpie … calling Moonpie … your cage is being rattled.”

    I am surprised the Supremes are wasting their time. This isn’t going to turn out well for Bilski.

    Also, how lame is it that the Supremes used the vague-the-point-of-meaningless term “business methods”?

    “Under Bilski, some clever claim drafting can make MOST inventions statutory, except for perhaps “pure” business methods. Thus, Bilski has been a non-issue for me this year.”

    In part, that is because the USPTO remains in the pocket of the computer tech companies and after slapping the worst offenders of our sensibilities on the wrist, it quickly resumed rubber stamping the same old functionally-claimed crap without missing a beat.

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  178. You’re right, Congressional Intent. There was no need for me to be so harsh. I just don’t know how 273 can be interpreted to mean that Congress unequivocally intended for business methods to be patentable. As an advocate for its client, Bilski’s lawyer was correct to throw out as many arguments that it could legitimately throw. But I don’t think anybody truly believes that the 273 argument is going to be the one that carries the day. But crazier things have happened, so who knows. The fact that SCOTUS has decided to hear this case shows you how much I know.

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  179. It will be interesting to see how the Supreme Court reconciles the “intent” of Congress in its acknowledgement business method patents in § 273.

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  180. Regardless of what one’s opinion as to whether or not business methods should be patentable and whether or not software should be patentable (which may or may not get decided), the questions that should be explored is why has SCOTUS granted cert? what does SCOTUS plan to do? and lastly how expansive will the decision be?

    Most people will agree that Bilski, regardless of the outcome, was a poorly written decision. It raised far too many issues than it answered. The decisions coming out of the BPAI is evidence of this. Some applications meet the Bilski test whereas other applications do not while the differences between the subject matter being claimed is seemingly insignificant. Although Bilski was applied to a pure method claim, Bilski is being applied to other types of claims with unpredictable results. The biggest problem I have had with Bilski is that it gave little guidance as to what is OK and what is not. The reasons for this is simple, I think there was a lot of disagreement at the Federal Circuit as to what direction to take, so the ultimate decision was muddled.

    All this being said, I believe that SCOTUS also sees that the Bilski decision needs to be cleaned up. Whether they will affirm and reverse is another question. Unlike KSR, in which the technical facts were not easy for a layperson (i.e., the average Justice) to understand, there is little question as to the type of subject matter being claimed. It is a process that may (or may not) include a computer, and the process is broad enough to cover solely mental steps.

    The question I have is what over arching principles are going to guide a particular Justice’s opinion? Will they be derived from the language of the statute and Congressional intend? Will they be derived from prior case law and what cases? Will they be derived from a sense that you cannot patent speech (or action)? Honestly, I don’t care what other people’s opinions as to what is the correct decision, what I want to know is what do you think SCOTUS will consider important?

    Lastly, will this decision be directed solely to business methods, per se, or will the decision be written broadly enough to influence other statutory subject matter with questions attached thereto, such as software and genetic-based testing?

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  181. I’m worried that the Supremes will make things worse (from a viewpoint of someone who supports the patentability of most things). Under Bilski, some clever claim drafting can make MOST inventions statutory, except for perhaps “pure” business methods. Thus, Bilski has been a non-issue for me this year. While the Supremes could reverse Bilski (unlikely in my opinion) they could also revive some dicta in the first Comiskey implying that only physical structure counts for patentability. Those who didn’t think Bilski went far enough may be happy about this.

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  182. Also, see the cert brief written by the . . . laywers . . . at Finnegan & Henderson, where they argue on page 24 that “Enacting § 273, Congress further recognized that patents protect pure business methods that produce a useful end result . . .”

    link to finnegan.com

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  183. Mr. Catlett (“order of the coitus”) (or whoever it is that’s impersonating Mr. Catlett):

    Instead of saying “Really? Are you a lawyer?,” why not do this: Explain why 35 U.S.C. 273, which states that patentable methods include “a method of doing or conducting business,” weighs against a conclusion that Congress intended patentable subject matter to include business methods.

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  184. It is difficult to see why the Supreme Court has taken this appeal.

    One of the compelling reasons why an appeal should be taken is that there are serious and compelling reasons for thinking that the decision below was wrong, but it is difficult to conceive on the basis of the materials that have emerged into the public domain that Bilski is an application that ought to have matured into a patent. The strong likelihood is that the CAFC decision will be affirmed, and all that will be achieved is some element of fine tuning of reasons underpinning the result achieved.

    The aapparent weakness of the claimed invention and the trend in business method patenting since State Street towards irrational exuberance raises real concerns that the decision that will eventually be handed down will have an anti-patent flavor, to the detriment of more deserving cases.

    It is to be hoped that we will see some quality briefs. In patent matters, the Supreme Court, though an institution whose judges command great respect, is non-expert in the sense that it is not involved on a routine basis with patent issues in the way and with the frequency that it was prior to 1952. Under these circumstances, those who write briefs best serve the public interest by making it easy for the judges to evaluate the issues and providing them with a well-defined set of choices from which to decide. That was done in the Festo case, and the outcome in terms of foreseeability is one that is understandable and can command widespread resoect if not universal agreement. In contract, the briefs in KSR were more confused and ways forward were not clearly suggested, and the court wrote a decision of surprisingly good quality and great conservatism (although that fact is insufficiently appreciated by some commentators). As an example of over-reaction, any institution that feels compelled to re-write its rule book following advice from high judicial authority to use common sense in the decisions that it is reaching faces the question: “What have you been doing up to now?” What is needed is to explain the range of possibilities, the legal arguments for or against each possibility and the range of practical outcomes that may follow. If that is done, we may see a decision that is not as damaging as at present may be feared.

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  185. dwb –

    I agree with you. I just didn’t think the SC would do it.

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  186. I think it is way too premature to say that business method or software patents are gone. If the Bilski Fed. Cir. opinion, together with the broad application it has received by the Board and the district courts, has already done much to put the kibosh on such patents, and if the Supremes agree with this result, why would they then grant cert? To deliver an even more devastating coup de grace to such patents? Maybe, but maybe not. What seems more likely is that the Supreme Court will do two things : (1) overturn the machine or transformation test, and (2) replace that standard with a new one that tries to be more workable than the execrable mess it created with the Flook-Diehr-Benson trilogy.

    One other factor, a potential wild card in a close decision, is Justice Sotomayor (I am assuming she will be confirmed). I have read (I forgot where) that she has shown sympathy to intellectual property rights. Such sympathy may have been limited to struggling artists in copyright cases, but she might view IP rights as a way for individual inventors even in the software and biz method fields of equalizing the playig field with big corps.

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  187. Dang! This means that 6 will just keep cranking out Bilski-based rejections, knowin that inventors will keep filing RCEs till the Supremes tank Bilski.

    At least there are no limits on continuations now – it would be a shame to lose an app while Bilski is still good law, only to have the app become allowable down the road.

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  188. Don’t be crass, business method haters.

    What will happen is that SCOTUS will read 35 USC 273 and say Congress spoke to the matter, said business methods are statutory, so business methods are statutory.

    The two prong test will become a test, but not the test, to determine statutory subject matter.

    We’ll be left with a squishy non-test that ensures lots of “flexibility” for the courts — and thus uncertainty for business. Settlement is discouraged. Litigation ensues.

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  189. One issue in Bilski is whether the CAFC Bilski test is the right test in terms of promoting innovation, etc. (We hear more than enough about that, especially on this site. Yeah, yeah.)

    But another issue (that we don’t hear so much about, I think) is whether Bilski contradicts Congress’ intent. Congress, after all, has stated that business methods are patentable. And, after all, Bilski offers a test for interpreting 35 U.S.C. 101 (which, btw, was enacted into law by Congress), not Article I, Section 8, Clause 8 of the Constitution.

    35 U.S.C. 273 Defense to infringement based on earlier inventor.

    (a) DEFINITIONS.- For purposes of this section-

    (1) the terms “commercially used” and “commercial use” mean use of a method in the United States, so long as such use is in connection with an internal commercial use or an actual arm’s-length sale or other arm’s-length commercial transfer of a useful end result,
    . . .

    (3) the term “method” means a method of doing or conducting business; and . . .

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  190. What is the old saying? … The Supreme Court doesn’t take a case to affirm the decision of a lower court.

    Moonpie … calling Moonpie … your cage is being rattled.

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  191. Why wait for the Fed Cir to apply Bilski, they can see what a mess Bilski is from the BPAI.

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  192. Next to go . . . “But I do it on the INTERNET!”

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  193. I can’t believe they took Bilski!! I was sure they would wait for another case applying Bilski…

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  194. There go business method and software patents. Nice knowing you.

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