Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject Matter

Bilski v. Doll (on petition for certiorari)

In Bilski, the Court of Appeals for the Federal Circuit applied the “machine-or-transformation test” as the only test to be used in determining whether a claimed process is eligible for patenting under § 101. The decision holds that a claimed process either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.

Bilski’s claimed method of hedging the risk of bad weather through commodities trading had been rejected by the USPTO as lacking patentable subject matter. On appeal, the Federal Circuit affirmed – finding that the method failed the machine-or-transformation test.

Now, Bilski has petitioned the Supreme Court for a writ of certiorari — asking the high court to determine whether the new test of patentable subject matter is the correct test.

The petition asks two questions:

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 … 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.

Under Supreme Court rules, any amici brief in support of the petitioner (Bilski) would be due within thirty days (Feb 27). Those in support of the respondent (PTO) would be due the dame day, but the PTO will likely seek an extension.

Notes

84 thoughts on “Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject Matter

  1. Malcolm, if it’s pending cases we’re talking about, I wouldn’t be so confident that the justices are accepting private commentary from “quite a few friends”. In my experience, judges and justices are very careful about avoiding such things. Yes, it’s happened, I’m sure, but I think it is far less common than you imagine.

    Reply
  2. MM said, “broje ” If putting the software into concrete form is insufficient post solution activity, then so is building the airplane.”

    No. Writing the instructions for building an airplane on a piece of paper is insufficient post solution activity, as recognized by the PTO and everyone else. Building an airplane is a patentable process under 101. No questions.”

    Your analogy is misleading for several reasons. Your analogy is misleading in part because it seeks to invoke the printed matter exception when I specifically called you out on your position that machine instructions encoded in a non-human readable medium are unpatentable. The other reasons why your analogy is misleading can best be demonstrated by my posing of a more apt analogy. A more apt analogy would be instructions encoded on a machine-only readable medium that, when connected to an electro-mechanical computing machine, cause the computing machine to transform into the new and non-obvious airplane. Given such a computing machine, encoding such instructions on such a medium does place the new and non-obvious airplane into a concrete and tangible form.

    It is like a dehydrated invention. Just add water. And being written on paper would not make it not concrete and tangible. It makes it subject to the printed matter exception, which is a special carve out for otherwise patentable subject matter.

    And that is why new and non-obvious software encoded on a machine-only readable medium is in a concrete and tangible form. Just add the general purpose computer, and the computer transforms into the new and non-obvious, particular machine embodied by the software on the machine-only readable medium.

    Reply
  3. “Some friends are more biased and credible than others.”

    No doubt. And of course only the Supremes get to decide who those entities are. We can also rest assured that each of the nine has quite a few friends who anonymously provide them with all kinds of thoughts, e.g., over dinner at a nice quiet restaurant or in someone’s home.

    I can see why a court would ignore anonymous briefs that otherwise met the requirements for submission, but I don’t see the harm in preventing folks from filing them so they are put into the permanent public record.

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  4. Malcolm, see Supreme Court Rule 37.6:

    Except for briefs presented on behalf of amicus curiae listed in Rule 37.4, a brief filed under this Rule shall indicate whether counsel for a party authored the brief in whole or in part and whether such counsel or a party made a monetary contribution intended to fund the preparation or submission of the brief, and shall identify every person other than the amicus curiae, its members, or its counsel, who made such a monetary contribution.

    —–
    The court wants to know if an amicus really cares about the case enough to write its own brief and pay for the cost of its preparation. If a petitioner pays a bunch of amici to declare that the sky will fall if the court doesn’t grant cert., the court reasonably wants to know about such payments.

    Beyond that, the court wants to know who is giving it friendly advice. Some friends are more biased and credible than others.

    Reply
  5. Mooney notusing his brain again said:
    “‘If the arguments were solid and compelling and the evidence was correct, then what difference would it make who came up with them?’

    What an easy way to get around the page limit requirements — let’s brief a part of the issues in our ‘real brief’ and then brief other issues in the anonymous brief.
    [ad hominem attack deleted.]”

    I’ve sometimes wondered if that doesn’t happen from time to time with actual amicus briefs. I don’t have first hand knowledge and would like to hear comments from anybody who does. But what would prevent counsel for a party and counsel for amicus to engage in such a division of labor? (In fact, Rule 3.3 of the Rules of Profesional Conduct, Candor Toward the Tribunal, don’t appear to prohibit this practice.)

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  6. Hey, dudes, it was just a question. Federal agencies accept anonymous input all the time.

    As for the jackxss comment at 1:29, what’s “superficial” is the thinking that if an entity wanted arguments put before the Supremes but didn’t want those arguments to be associated with its name, that it couldn’t easily be done under the current system. Or that it hasn’t already been done many many times before.

    The great irony of course is that the commenter who shot off his mouth made up a new name just for that purpose. That, my friends, is pathetic.

    Reply
  7. Malcolm,
    Please see my earlier post for my point. You never responded to the argument – just the examples.

    Reply
  8. “If the arguments were solid and compelling and the evidence was correct, then what difference would it make who came up with them?”

    What an easy way to get around the page limit requirements — let’s brief a part of the issues in our “real brief” and then brief other issues in the anonymous brief.

    Thinking on a superficial level, the hallmark of MM.

    Reply
  9. MM said-
    “Andrew: “That’s a pretty humorous concept: anonymous amicus curiae. I won’t say who I am, but trust me — I really am a friend of the court.”

    People accept gifts from strangers all the time.

    If the arguments were solid and compelling and the evidence was correct, then what difference would it make who came up with them?”

    From the real world of an appellate law clerk, I seriously doubt, even assuming the court would allow an anonymous amicus brief, that anybody would read it. So even if the brief were full of good arguments, it would almost certainly go to waste. Judges and clerks have enough on their dockets already, especially on courts hearing appeals of right.

    Reply
  10. Andrew: “That’s a pretty humorous concept: anonymous amicus curiae. I won’t say who I am, but trust me — I really am a friend of the court.”

    People accept gifts from strangers all the time.

    If the arguments were solid and compelling and the evidence was correct, then what difference would it make who came up with them?

    Reply
  11. broje ” If putting the software into concrete form is insufficient post solution activity, then so is building the airplane.”

    No. Writing the instructions for building an airplane on a piece of paper is insufficient post solution activity, as recognized by the PTO and everyone else. Building an airplane is a patentable process under 101. No questions.

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  12. “Good point. Bad example. What about a new and useful method for arranging layers of soil with directed irrigation for improved growing of crops?”

    Same deal as the building. Field with old soil layers transformed into new soil layers plus irrigation. No question that it’s a transformation. No question that it leads to a useful, concrete, tangible result (if it works). No question that it’s a process and no question that it’s not mental stepping bogusness.

    I’m not sure why any of this isn’t totally obvious. What were you thinking when you asked, Matthew?

    Reply
  13. Europe uses “technical” as its touchstone of process patentability. Two things about it that appeal to me are 1) it “fits” with the “all fields of technology” in GATT-TRIPS and 2) it “fits” with what the public thinks patents are for. For the US jurisdiction, the corresponding current touchstone seems to be “transformation” which, to my mind, has neither of those two merits, and in practice doesn’t exclude anything. How can “transformation” do a better day to day job than Europe’s “technical” of sorting thousands of patentable sheep from thousands of unpatentable goats. This question is addressed specifically to Greg Aharonian.

    Reply
  14. Night Writer, I agree with your characterization of “abstract”. That is in agreement with virtually all dictionary-provided definitions of “abstract idea”: an idea with no reference to a physical object or process — e.g., love, e=mc2, etc. In that sense, Bilski’s claims are clearly not directed to abstract ideas. While long, Judge Newman’s dissent in Bilski is a good read relative to this concept.

    Reply
  15. An observation about the word abstract:

    MIT’s introductory course for electrical engineering teaches that the key to solving PRACTICAL problems is picking the right level of abstract.

    In fact, that is generally how engineers are taught to think about problems. So, using a definition that a problem solution is abstract does not mean that it is not practical in engineering. What it means is that you pick the level of abstraction to focus on so that you can get to the problem and not the details.

    Many of these claim terms appear to be abstract to a non-engineer, but a well-educated engineer would say they are not abstract, but rather focusing on a particular level of the problem. The question becomes whether the level of abstract is enabled.

    This method of thinking is what is taught at the top engineering schools in the U.S.A. I have attened two of the top 5 engineering schools in the U.S.A. and both of them taught me this.

    Reply
  16. “…blah, blah, Now if you want to claim… blah, blah, … sad joke, … garbage, … crap, …baloney, …screwed, …similar crap, …boatload, ”

    Oh gemeny cricket cripes on a crackbat, did someone leave the door to the Turret’s ward open again…

    Reply
  17. JAOI said:

    “Don’t cha’ know that the source of the “spin” is informative as is the spin itself?
    That’s why, of course, Cisco’s covert “Troll Tracker” fraud was illegal and immoral Lobbying.”

    Actually, that hits the nail on the head! Bravo!

    Don’t inventor’s come up with some pretty good stuff?

    Reply
  18. Matthew Henderson wrote to Mooney “I respectfully disagree”

    LOL

    Reply
  19. Malcolm,
    Good point. Bad example. What about a new and useful method for arranging layers of soil with directed irrigation for improved growing of crops?

    Reply
  20. “From a technical perspective, these distinctions are wholly arbitrary. The SAME EXACT LOGIC is used to achieve the same solution to the same problem in every one. The particular details are in the implementation… and are irrelevant to the type of problem solved or the manner of achieving the solution.”

    Before you go getting all in a tizzy about holding your superiors feet to a fire how about first you take your own walk across some?

    Let’s start out with how you account for the fact that the particular details being irrelevant to the type of problem solved or the manner of achieving the solution is completely irrelevant to the issue of 101 compliance. The devil, so to speak, can most certainly be in the details with 101.

    Then let’s mosey on over to where on your (admittedly fairly nice) list a

    * A general-purpose computer executing the concept of the “software as a concept”

    that we would under bilski so often see claimed sits. Let’s not forget that we would so often see these because that is the only truly valuable aspect of the whole “invention”.

    Reply
  21. That’s a pretty humorous concept: anonymous amicus curiae. I won’t say who I am, but trust me — I really am a friend of the court.

    Reply
  22. @David Stein,

    Thanks for the response. So, it would seem then that apparatus claims for software patent applications would have a better chance than method claims for meeting the 101 requirements, if properly drafted.

    Reply
  23. What about the question of whether business methods such as those performed by Bilski do indeed transform something, for example by making money? If a business method transforms its inventor from poor to a rich, I’d say that’s a pretty good and useful transformation!

    Reply
  24. The Federal Circuit’s Bilski decision went through pains to arrive at a test in line with its and the SCt’s precedence. And the test is workable and massage-able. Cert denied.

    Reply
  25. Lowly Patent Agent wrote:

    “OK, so what, if any, is the difference in patentability between software on disk accessed by the apparatus and software on ROM chips that are soldered to and accessed by the apparatus?”

    An excellent question. In fact, I draw the spectrum like this:

    * Software as a concept (problem + solution)
    * A particular algorithm for implementing the solution
    * A source code or compiled binary that implements the algorithm
    * A signal encoding the source code or binary
    * A memory or tangible medium storing the source code or binary
    * A general-purpose computer connected to a memory or tangible medium storing the source code or binary
    * A general-purpose computer executing the source code or binary
    * A general-purpose computer connected to a writable flash ROM containing the source code or binary
    * A general-purpose computer connected to an FPGA programmed according to the source code or binary
    * A general-purpose computer connected to a permanently, statically programmed ROM containing the source code or binary
    * A general-purpose computer connected to a circuit designed by a CASE tool according to the source code or binary
    * A circuit designed by a CASE tool according to the source code or binary

    Those are twelve steps that gradually implement software in a steadily more “physical” form. And there’s plenty of gray room – between any two steps are many other, finer shades of gray.

    From a technical perspective, these distinctions are wholly arbitrary. The SAME EXACT LOGIC is used to achieve the same solution to the same problem in every one. The particular details are in the implementation… and are irrelevant to the type of problem solved or the manner of achieving the solution.

    If SCOTUS accepts cert, hopefully someone will hold its feet to the fire on this issue.

    – David Stein

    Reply
  26. OK, so what, if any, is the difference in patentability between software on disk accessed by the apparatus and software on ROM chips that are soldered to and accessed by the apparatus?

    Reply
  27. Patent Agent wrote:

    “I am proposing that software patent claims be written as apparatus claims, not method claims. While the patentability of software method claims are under dispute, I’ve not seen or heard anyone any opinion as to whether or not software claimed as an apparatus would be statutory subject matter.”

    The BPAI has already indicated that it intends to apply Bilski to the contents of a medium formulated as a Beauregard claim. It’s probably an even smaller leap to extend Bilski to apparatuses. And the same logic will apply: if the apparatus does not recite a “particular machine” – i.e., not just a processor and memory tied to some boxes indicating (software-based) components of the algorithm – then it doesn’t pass the first prong of Diehr.

    – David Stein

    Reply
  28. MM said, “Huh? I think you’ve got your commenters mixed up. I agree that the result is ridiculous, but it’s not my reasoning. It’s yours, or somebody else’s.”

    You’re right. NAL was replying to AM. AM just sounded so much like you, MM, I got confused. I mean, you have said before that the software is unpatentable per se, so putting it on a computer readable medium, even one that is not human readable, will not be patentable. Am I wrong? Isn’t that why you advocate an end to Beauregard claims? It’s the same logic. If putting the software into concrete form is insufficient post solution activity, then so is building the airplane.

    Reply
  29. @Malcolm:

    “Who asserted that all software is just a series of mental steps?”

    Alan McDonald. Of course, grown-ups would already have known that because they take the time to read the whole thread before making comments.

    I am proposing that software patent claims be written as apparatus claims, not method claims. While the patentability of software method claims are under dispute, I’ve not seen or heard anyone any opinion as to whether or not software claimed as an apparatus would be statutory subject matter.

    Reply
  30. “Cisco’s covert “Troll Tracker” fraud was illegal”

    Is lying illegal? or just immoral?

    Reply
  31. Hello Malcolm,

    Re: “Why can’t amicus briefs be filed anonymously?”

    I have not been following Patently-O today, but was this a serious question?

    What kind of a jerk would ask that?

    Don’t cha’ know that the source of the “spin” is informative as is the spin itself?

    That’s why, of course, Cisco’s covert “Troll Tracker” fraud was illegal and immoral Lobbying.

    Reply
  32. Matthew: “One can spend years of research and time and money trying to build a better building, but if the building is not tied to a particular machine or apparatus or transformed into a different state or thing,”

    Did you actually read what you wrote here? No offense, but it appears as if you’ve completely lost all sense of perspective.

    Nobody, ever, anywhere, is going to win an argument that a WELL-DRAFTED claim to a novel method of constructing a building from a plurality of bricks is unpatentable under 101. The pile of bricks is transformed into the building. Period, end of discussion. Useful. Concrete Tangible. End of discussion.

    Now, if you want to claim:

    A method for building a better building, comprising obtaining data about building features; determining an analysis window for said building features, wherein said analysis includes feature-oriented active object parameters; inputting said active object parameters into a building fault correction system dataset; and displaying said fault correction system dataset.

    then you’re screwed. And you should be screwed, because that claim is a sad joke (but it’s got more substance than a lot of similar crap that gets filed by the boatload every week).

    Reply
  33. “So, someone please tell me why one should be patentable but the other not.”

    Show me the claims. It’s all about the claims. Without the claims, no answers can be provided.

    “Also, the assertion that all software is just a series of mental steps is not necessarily relevant.”

    Who asserted that all software is just a series of mental steps?

    “There are some things that could be carried out mentally, in theory, but are impractical due to the time required.”

    And that’s why every software or computer-implemented claim includes a limitation about how quickly the recited method is carried out, right? Not.

    And if software patent prosecuters were truly serious about their alleged “inventions” they’d spend time explaining in their specification why their particular method of achieving that goal is unexpectedly fast, in light of the state of the art of computing at the time of filing.

    This is how grown-ups prosecute real inventions.

    Reply
  34. Malcolm,
    You may be correct, but I respectfully disagree. The CAFC held that “The issue before us involves what the term ‘process’ in section 101 means, . . . and how to determine whether a given claim is a ‘new and useful process.'” I would agree that new and useful fall by the wayside under the novelty and non-obviousness analyses, leaving the Court to determine whether this is a process. The CAFC held that “Applicants’ claim fails [the machine-or-transformation] test so it is not drawn to a ‘process’ under § 101 as that term has been interpreted.” The Court disregards Congress’s definition of a “process” as “unhelpful,” and it should not be so lightly disregarded.

    Reading Sections 100 and 101 together, Congress has established that “Whoever invents or discovers any new and useful method . . . may obtain a patent therefor, subject to the conditions and requirements of this title.”

    The issue is not “so what” if the decision renders many business method patents invalid, but “so what” if the decision renders many business method patents invalid at the stage of defining a process because they do not meet the CAFC’s definition of process, even though they do meet the definition of process established by Congress.

    Now the answer to the “so what” question is self-evident. The machine-or-transformation test is an unnecessary hurdle created by the judiciary outside of its Constitutional authority.

    While I have used business methods in my example, the analysis applies to any method. For example, if someone invents a new and useful way of constructing buildings to make them stronger or more resistant to hurricanes or earthquakes, can the method be protected under Bilski? One can spend years of research and time and money trying to build a better building, but if the building is not tied to a particular machine or apparatus or transformed into a different state or thing, under Bilski it does not even pass the definition of a process under Section 101. This is contrary to what Congress set forth in the statute.

    Reply
  35. “Why can’t amicus briefs be filed anonymously?”

    Probably to prevent glib, uninformed, blog posters from passing off their usual pablum as legitimate legal analysis in a forum that actually matters.

    Reply
  36. Alan McDonald said:

    “What you are missing is that eventually software won’t be patentable no matter how it is claimed (obvious to program a computer (machine) with any given software and the software itself being nothing more than mental steps and unpatentable under 101) so you will be wasting your client’s money filing at all.”

    Alan, I think you missed my point. My question is that if a dedicated circuit that performs a desired function is patentable, then why wouldn’t the software that performs the same function be equivalent to the dedicated circuit and also patentable?
    What is the difference? When the apparatus is being operated, there is no functional difference between the two embodiments.

    For example:

    In one embodiment a PC becomes the claimed apparatus when the software is run. In a second embodiment, everything is hard wired.
    Put the two embodiments each into separate, closed boxes, side by side, so that only the display devices and input devices of each embodiment are accessible. A user would have no way of telling which was which without opening the box to see.

    So, someone please tell me why one should be patentable but the other not.

    Also, the assertion that all software is just a series of mental steps is not necessarily relevant. There are some things that could be carried out mentally, in theory, but are impractical due to the time required. Computers are capable of performing an astronomical number of “mental steps” in a relatively short span of time that a single human could not complete in an entire lifetime. To rule all software as unpatentable merely because it “could” be done as a series of mental steps, without taking into account the complexity of the task, is ridiculous.

    Reply
  37. 6, the word “amicus” means “friend of the court”…do you qualify?

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  38. “The ridiculous result of your reasoning, MM, is that nothing is patentable.”

    Huh? I think you’ve got your commenters mixed up. I agree that the result is ridiculous, but it’s not my reasoning. It’s yours, or somebody else’s.

    Reply
  39. MM said, “NAL “so software is nothing more than mental steps – I guess the same conclusion can be reached for all categories of patentable subject matter in so far as the contemplation of the idea is nothing more than mental steps.”

    The obvious difference, NAL, is that a well-drafted method claim recites physical actions, not “determining” “identifying” and/or “sorting” numbers.

    Eventually you’ll figure this out.”

    The idea for, the design of, and the steps for constructing the airplane first existed in the minds of the Write brothers. After that, it was obvious how to construct it. So the concrete construction of the airplane is merely insignificant post solution activity, where ideas are not patentable, the design in the mind is an unpatentable abstract idea, and the steps of constructing it are all unpatentable mental steps. And the same can be said of anything. The ridiculous result of your reasoning, MM, is that nothing is patentable.

    Here is a giant QFT for everything Noise Above Law has ever posted.*

    *that I’ve read up ’til now.

    Reply
  40. “What I really need to know is though, are there any office rules etc. prohibiting me saying something. I haven’t reviewed the whole rigamarole about ‘validity opinion’ etc. in a long time but I don’t think it says anything about sending in an Amici brief that doesn’t discuss the actual application at hand per se.”

    Why don’t you file your brief and find out. I’m sure the PTO will let you know during your exit interview.

    LOL

    Reply
  41. “All I am saying is that it should clear the 101 definitional hurdle of “process” because Congress has so provided.”

    I think Bilski has cleared that definitional hurdle, Matthew. The argument is not that Bilski hasn’t claimed a “process”. The argument is that Bilski’s claimed process is not patentable under 101.

    Whether Bilski renders “many business methods” unpatentable is irrelevant. KSR rendered “many business methods” unpatentable. Every precedential Federal Circuit decision that upholds a patent’s invalidity renders “many business methods” unpatentable.

    So what?

    Reply
  42. What I really need to know is though, are there any office rules etc. prohibiting me saying something. I haven’t reviewed the whole rigamarole about “validity opinion” etc. in a long time but I don’t think it says anything about sending in an Amici brief that doesn’t discuss the actual application at hand per se.

    Reply
  43. “What’s a business method?”
    A “method,” however you want to define it (see, e.g., American Heritage Dictionary), is a subset of the definition of “process.” 35 U.S.C. 100. Subject to other conditions of patentability, a “process” is patentable under 35 U.S.C. 101. I know there are plenty of reasons the Bilski application may not otherwise be patentable. All I am saying is that it should clear the 101 definitional hurdle of “process” because Congress has so provided.

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  44. “To practice my briefing skills, first I’ll send an amicus brief to the Federal Circuit regarding Tafas vs. Dudas. Featured prominently will be this recent case where the Supremes smack down the Federal Circuit for failing to provide proper Chevron deference to an agency determination:

    ://www.supremecourtus.gov/opinions/08pdf/07-1059.pdf

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLO”

    ^ not me

    Reply
  45. “There can be no doubt that if Bilski is upheld by the Supreme Court that every major web-based technology company will be immediately replaced by low-rent thiefs practicing the discoveries previously owned by those companies.”

    Yes, there can.

    Reply
  46. “EG, I’m actually not very optimistic that a better standard would emerge from Supreme Court review in Bilski. But I see a strong need for clarity on 101, and only the Supreme Court can provide it.”

    Or more appropriately, the Congress. I too have given up on anything logical and useful appearing in a SCOTUS opinion in the realm of patent law. KSR was an abomination, but then again, so was Warner-Jenkinson (oh, we forgot that amendments can relate to 112 issues too).

    Probably the most important thing I learned about Con Law in law school was that Supreme Court decisions are much more about politics than they are about stare decisis, logic or anything else.

    Accordingly, politics (Microsoft) dictates that Bilski be affirmed.

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  47. “Perhaps those opposed to business method patents should be petitioning Congress to change the law, rather than trying to do so through the courts?”

    What’s a business method?

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  48. I heard a rumor that some software startup was already taking and implementing all the inventions in Google’s patent specifications without any regard for future infringement. There can be no doubt that if Bilski is upheld by the Supreme Court that every major web-based technology company will be immediately replaced by low-rent thiefs practicing the discoveries previously owned by those companies.

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  49. A crazy thought, but how can the CAFC ignore what Congress enacted in 35 U.S.C. 273? I see this as a fundamental problem, perhaps even the ultimate question. Can the judiciary usurp the legislative role? They can trump a law with the Constitution, but I have not seen that here. Perhaps those opposed to business method patents should be petitioning Congress to change the law, rather than trying to do so through the courts? Won’t Scalia, Thomas, Roberts, and Alito question the CAFC’s ability to ignore 35 U.S.C. 273?

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  50. If the software bar is so concerned about the current and future validity of its claims, does that mean there will be, or are, a rash of narrowing reissue applications? For instance, there was an analysis by Professor Duffy that suggested all of Google’s patent claims are invalid.

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  51. EG, I’m actually not very optimistic that a better standard would emerge from Supreme Court review in Bilski. But I see a strong need for clarity on 101, and only the Supreme Court can provide it.

    The CAFC opinion in Bilski is a journey of necessity through several Supreme Court decisions, some of which are hard to reconcile with others. It might be the best the CAFC could do on its own. Only the Supreme Court has the power to limit or overrule its own precedents in this area, and I think that will be necessary if we’re going to see any sensible, clear standard.

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  52. “The 101 issues in that string of comments range from the near-metaphysical to the gritty stuff of writing claims”

    People comment here all the time on writing claims, Babel Boy. As for the “near-metaphysical” stuff, I’m sure that I am not missing anything. I hope Bilski gets into “near-metaphysical” stuff before the Supremes. They really enjoy metaphysics. That’s why they jumped on that “signal claim” garbage case.

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  53. If you go back to Gottschalk v Benson, the improper fundamental principle is “mental process” not “mental step.” There is an incredible difference between these two phrases: The first refers to how we think; the second refers to what we think. Based on a policy of furthering the useful arts, denying patentability for “mental process” makes sense while “mental step” does not. There are other policy considerations for “mental step” such as enforcement of rights and privacy, not the typical policies underlying patent law.

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  54. NAL “so software is nothing more than mental steps – I guess the same conclusion can be reached for all categories of patentable subject matter in so far as the contemplation of the idea is nothing more than mental steps.”

    The obvious difference, NAL, is that a well-drafted method claim recites physical actions, not “determining” “identifying” and/or “sorting” numbers.

    Eventually you’ll figure this out.

    Reply
  55. Seems to me the discussion generated on PatObv in response to Bilski has been uncharacteristically civil, fascinating, and informative. I especially recommend reviewing the comments to the Nov01.08 post linked to above “Drafting Software Claims Under Bilski.”

    The 101 issues in that string of comments range from the near-metaphysical to the gritty stuff of writing claims — without the argumentum ad hominem that has become the prevailing characteristic of PatObv commentary.

    Although it is entirely coincidental, another unusual aspect of those comments is that neither Moonbeam nor IQ=6 checked in until the very end, and then for only 1 (quite civilized) comment each.

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  56. “the software itself being nothing more than mental steps and unpatentable under 101″

    …so software is nothing more than mental steps – I guess the same conclusion can be reached for all categories of patentable subject matter in so far as the contemplation of the idea is nothing more than mental steps…

    Logically, this path leads to “Nothing is Patentable”

    Actual implementation is quite another thing.

    Further, if we look at the written matter doctrine and realize that there is indeed functionality involved directly between software and the object of the invention, we come to a very different logical conclusion.

    Alan, your desired conclusion (no software patents) seems to constrain your logic a bit too much. The required contortion to make the logic fit 101 is endemic to those who push their agenda to ursup the Law and make it meet their desire rather than simply apply the Law as they should. The Office is NOT in the make-the-Law business – no matter how much they desire to be. They waste in inordinate amount of resources in their folly, resources that if applied to doing their job right would make a huge difference in the backlog and correcting the general public perception of an Office incapable of acting in a consistently timely and quality manner.

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  57. “It’s been 28 years since Diamond v. Diehr. It’s time for the Supreme Court to take this up.”

    Andrew,

    I don’t disagree with your statement above. SCOTUS has created this archaic, out-of-date view of what should be patentable subject matter under 35 USC 101. I’m just afraid the messy claims in Bilski will lend fuel to Justice Kennedy’s atrocious concurrence in eBay that “business method” patents should be considered with a jaundiced eye, and that whatever SCOTUS rules will create unnecessary collateral damage that will adversely impact what should be patentable subject matter under 35 USC 101.

    You may have a more optimistic view of SCOTUS in the patent area. I frankly don’t. Whatever the foibles of the Federal Circuit, cases like KSR International, eBay, MedImmune, and even the distorted view of how software works in Microsoft v. AT&T give me no confidence that the technologically and patent law-challenged SCOTUS knows how to render order in our area of the law. I also take Scalia’s comment that TSM was “gobbledgook” at face value as expressing ignorance and disdain by SCOTUS for our area of the law.

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  58. What you are missing is that eventually software won’t be patentable no matter how it is claimed (obvious to program a computer (machine) with any given software and the software itself being nothing more than mental steps and unpatentable under 101) so you will be wasting your client’s money filing at all.

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  59. I’ve been following these decisions on software patents with interest, because I have been recently working on one. In light of the questionable nature of method claims to software, I disclosed both a method and a specific apparatus for implementing the method (i.e., the software), but I only filed claims to the apparatus in the original filing.

    My reasoning behind this was the fact that when a computer accesses and executes machine readable code from a computer readable medium, the computer is then transformed into a specific machine that carries out the disclosed process.

    As I was thinking about how to draft the claims, it occurred to me that there is essentially no difference between a machine that has hard-wired modules that perform the same functionality as the software program and a machine running the program. So, I included a description in the disclosure of the software modules that mentioned that they could be hard-wired (i.e. ROM chips) or stored on computer readable media. I also included the object code of the modules as a non-published appendix, for enablement purposes.

    If the software modules of the apparatus were embodied on pre-programmed ROM chips, wouldn’t that be an example of a specific machine? So, since there is no substantial functional difference between pre-programmed ROM chips and software on a removable media such as a CD-ROM, then claims to the apparatus comprising (among other essential components of a computer) distinct software modules that perform the disclosed functions should be patentable, right?

    Or am I missing something?

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  60. “Did I just break your concentration”

    Mom calling from the kitchen: “Mooney are you playing on the computer again…” “I need your help with this cake, get in here, NOW”

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  61. Contrary to what some seem to be thinking, Bilski might not be such a bad test case – precisely because it is such a bad patent.

    Arguments that 102, 103, and/or 112 are adequate to handle this bad boy may be made with much greater force and effect against this dud. SCOTUS may not be able to speak clearly or helpfully on pure 101 issues, but they would probably have no problem wrapping their heads around a statutory scheme and recognizing that 102, 103, and 112 are better (or at least, more straightforward / easily applied) tools to use here. It would be much easier to remand for a art grounds of rejection than produce a coherent opinion on 101.

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  62. My claims are NOT insane mumbo jumbo – they represented the state of the art of claim drafting at the time they were prepared. You, my friend, are a m0r0n.

    Now I encourage you to find another pursuit. However, if you’d like (and you probably would), I will give you a wedgie in front of the entire playground so you can go running home to mommy, who will then let you help her bake a cake in the kitchen by reading the recipes.

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  63. Wow — scotusblog.com is covering the filing of the Bilski cert. petition. They rarely cover a case at this early stage. Among other things, contributor Lyle Denniston mentions…our comments!

    link to scotusblog.com

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  64. I find the first presented question to be out of place. In following Gottschalk v Benson, the Federal Circuit found the following: If a claim is drawn to a fundamental principle — mathematical formula, abstract idea, mental process — then one must go to the next level of inquiry. That level is whether there is an adequate limitation on the fundamental principle to ensure narrow claim scope. The machine or transformation test comes in at that point. The Federal Circuit in Bilski simply skipped the first question. There was never an adequate determination as to whether the Bilski claims are drawn to a fundamental principle.

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  65. To practice my briefing skills, first I’ll send an amicus brief to the Federal Circuit regarding Tafas vs. Dudas. Featured prominently will be this recent case where the Supremes smack down the Federal Circuit for failing to provide proper Chevron deference to an agency determination:

    ://www.supremecourtus.gov/opinions/08pdf/07-1059.pdf

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

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  66. clarifying the first sentence: — I agree that you can see the frustration in the dissent from the DIG order. ;)

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  67. 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.

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  68. Well, Malcolm, I think they’ll take the case. Then again, I thought they’d take mine.

    I was at oral argument for LabCorp v. Metabolite. Justices Breyer, Stevens and Souter seemed delighted to finally have a 101 case (and for Stevens, his first since DvD in 1981). You can see their palpable frustration in their dissent from the DIG order.

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  69. “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 … 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.”

    Nice try, Bilski. The hilarious thing is that you can be 100% certain that Bilski didn’t file an amicus brief supporting getting rid of strict TSM, when that test was even more plainly an effort (far worse than the CAFC’s effort in Bilski) to translate broad statutory language into a “test”.

    “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.””

    Lame. Very lame. “Many business methods”? Can you get more hand-wavey than that? It’s meaningless. What’s many? Twelve? Hundred? Nobody knows. But here’s what you can be certain of: the number of method claims that are not foreclosed is infinitely greater, including those methods that can by used by businesses.

    This is dead on arrival. Andrew, what do you think?

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  70. I respectfully disagree, EG. The claims at issue in Bilski present an adequate vehicle for bringing greater clarity to 101. More important, we have the CAFC’s thorough en banc opinion with equally thorough dissents. Of course, the CAFC decision overruled State Street Bank and AT&T (practically, though not expressly).

    It’s been 28 years since Diamond v. Diehr. It’s time for the Supreme Court to take this up.

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  71. Bilski is not the case for SCOTUS to hear. The Bilski brief is correct that “business methods” are recognized by Congress (via 35 USC 273) as subject matter potentially qualifying under 35 USC 101. But Bilski’s claims are loaded with issues (and problems) for resolving what the appropriate test is for subject matter qualifying under 35 USC 101. Admittedly, Bilski’s “machine or transformation” is not the correct/best test, and certainly shouldn’t be the only test for 35 USC 101. But letting SCOTUS get the Bilski case, and potentially undoing the “good” that was done in Diamond v. Diehr (which reined in the nonsense and disaster created by Gottschalk v. Benson and Parker v. Flook) is too great a risk to take for a case as factually troublesome as this one is. We frankly need a more egregious application of the “machine or transformation” test (to subject matter that would have clearly qualified under 35 USC 101 prior to this test) before bringing in the technologically and patent law-challenged SCOTUS. Also, I still have hope that the Federal Circuit can render order out of chaos in the 35 USC 101 area before it gets completely out of control. I’ve got no confidence whatsoever that SCOTUS is capable or even interested in doing so.

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  72. Dennis, the 30 days for amici runs from the docketing date. If the petition was filed today, my guess is that it will be docketed tomorrow or Friday, which will push the amicus deadline (for those supporting Bilski) to Monday, March 2nd. Amici also need to give notice of their intent to file 10 days before then, Friday, Feb. 20th. See Supreme Court Rule 37. link to supremecourtus.gov

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  73. It is quite reassuring to know that at last someone has made note of 273(a)(3).

    Personally, I believe the facts in this case are fine as a matter of law to raise the issue, but do have some trepidation if they are fine as a practical matter in light of remarks from the Bench during the KSR argument before the Supreme Court. “Gobbledygook” and “bicycle pedals” are a bit worrisome.

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  74. Will the Supremes use this case to get rid of business method patents once and for all (hope, hope, hope).

    This could be a case of bad facts make great law.

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  75. “Can I file an amici brief?”

    Please do. I could use some lulz.

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  76. “bad facts make bad law” — this is a terrible test case (for those who favor patents) for the Supremes to rule on this issue.

    Reply

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