Guest Post: Ten Reasons the Supreme Court Should Take In re Bilski

Erika Arner is the co-author of the Bilski petition for certiorari challenging the Federal Circuit’s limits on the patentability of method claims. She handles patent prosecution and litigation at Finnegan Henderson in DC. I asked Ms Arner to write this post.

The Time Has Come – Nearly thirty years have passed since the Supreme Court addressed patentable subject matter.  The “BFD” casesGottschalk v. Benson (1972), Parker v. Flook (1978), and Diamond v. Diehr (1981)represent modern doctrine on the scope of patentable processes under 35 U.S.C. § 101.  Yet these cases were handed down before the Internet and personal computer fundamentally changed the way Americans live, work, and innovate.  In their struggle to apply the BFD cases to cutting-edge inventions, the PTO and courts have whittled away at the scope of section 101.  The time has come for the Court to reaffirm that the broad, flexible approach to section 101 set forth in the BFD cases applies with equal force in today’s information age. 

Third Time’s The Charm – The Supreme Court declined its last two opportunities to update its jurisprudence on section 101 and process claims.  In 1999, the Court denied cert. in State Street Bank, which applied the “useful, concrete, and tangible result” test to determine when a claim contains a patent-eligible practical application of a fundamental principle.  That same year, the Court declined to review AT&T v. Excel, but indicated that the section 101 issue had garnered at least some interest on the Court.  Justice Stevens filed a statement on the denial of cert. in AT&T v. Excel, noting that “[t]he importance of the question presented” made it appropriate to reiterate that a denial of cert. is not a ruling on the merits. 

Justice Stevens Is Not Alone – In addition to the statement filed in AT&T v. Excel, several justices have found opportunities to express interest in section 101 issues.  When the Court dismissed cert. in LabCorp v. Metabolite, Justice Breyer dissented, joined by Justices Stevens and Souter.  In the dissenting opinion, Justice Breyer called into question the “useful, concrete, and tangible result” test for patentable processes, arguing that “if taken literally” the test would conflict with Benson and Flook.  These three justices were joined by Justice Kennedy in a concurrence filed in eBay v. MercExchange(2006), criticizing the “potential vagueness and suspect validity” of business method patents.  Clearly, there is interest among at least some of the justices in the state of section 101. 

The PTO Picked Bilski - When the PTO began examining Mr. Bilski’s patent application, prosecution progressed as usual.  Prior art was searched and applied, claims were amended, new prior art was cited, and several claims were allowed.  Then suddenly, the examiner changed position, withdrawing the remaining prior art rejections and the claim allowances and instead rejecting all of the claims under the now-obsolete “technological arts” test for section 101.  An expanded panel of the PTO Board affirmed the rejection in a 70-page “informative” opinion setting forth a version of the machine-or-transformation test.  The PTO seemingly chose Bilski as the vehicle to reverse its position set forth in the prior year’s “precedential” decision in Ex parte Lundgren, which allowed business method claims with no tie to a computer or physical transformation. 

The Federal Circuit Picked Bilski - At the Federal Circuit, Mr. Bilski’s case progressed normally at first.  Briefs were filed; oral arguments were held.  But before the panel rendered its decision, the court ordered that the appeal would be heard en banc “in a long-overdue effort to resolve primal questions on the metes and bounds of statutory subject matter” according to Judge Mayer.  In its en banc Order, the court invited briefing from the parties and the public on five questions ranging from whether Bilski’s claims were patent-eligible under section 101 to what standard should govern the patent-eligibility of a process.  The court also took the extraordinary step of inviting two representatives of amicus parties to participate in the en banc oral arguments.  Clearly, the court decided that Bilski was the case to resolve the very “primal” question of when a process is patentable under section 101. 

The Patent Community Picked Bilski - When invited to file amicus curiae briefs to the en banc Federal Circuit in In re Bilski, the patent community and the public at large responded in force.  Thirty-eight briefs were filed representing wildly different points of view on the proper interpretation of section 101.  Briefs were filed by large organizations and small, by teams of academics and by individuals, by corporate patent owners and patent practitioners, and by industry groups ranging from software and biotechnology to the ACLU.  These assorted parties with their divergent points of view seem to agree on one thing: In re Bilski presents the perfect vehicle to address the proper scope of section 101. 

The En Banc Bilski Decision Is the Closest We Get to a Patent Circuit Split – Three dissents and a concurrence accompanied the 9-judge majority opinion.  Regarding the majority’s machine-or-transformation test, the dissenting opinions varied just as widely as the amicus briefs had.  Judge Mayer argued that the court should go farther to restrict section 101 and overrule State Street Bank andAT&T.  At the other extreme, Judges Newman and Rader filed separate dissents arguing for a broad, flexible application of section 101 to accommodate the innovations of today’s knowledge economy.  The divergence of opinions on the en banc court is akin to the “circuit split” that often signals the need for the Supreme Court to step in. 

The Issue in Bilski is Fundamental to the Patent System and the U.S. Economy - The proper scope of patentable subject matter under § 101 is not only important to the nation’s economy, it is “one of the broadest, most sweeping issues in patent law,” according to Judge Moore in her dissent from en banc rehearing in In re Comiskey (2009).  The importance of this issue is highlighted by the filing of nine amicus curiae briefs in support of the petition for cert.  This level of amicussupport at the cert. stage is the highest in a patent case since Festo, where nine briefs were filed at the cert. stage.  For example, only three briefs were filed in support of the petition for cert. in KSR and six were filed at the cert. stage in eBay.   

The Machine-or-Transformation Test Conflicts with Supreme Court Precedent - Although the Supreme Court has twice expressly declined to hold that the machine-or-transformation test is the “only test” for patentable processes under § 101, the Bilski court did just that.  Indeed, the court acknowledged some doubt about its interpretation of Supreme Court precedent and recognized that the Supreme Court “may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies.”  In re Bilski

The Supreme Court Does Not Like Rigid Tests for Patents When the Supreme Court has set forth a flexible approach to interpreting the Patent Act, they are prone to overruling attempts to define a rigid “bright line” test.  Festo and KSR are two examples of the high Court reversing an attempt by the Federal Circuit to establish a bright line test when the flexible approach of earlier Supreme Court cases was difficult to apply.  In those cases, the Court instructed the Federal Circuit to return to the flexible, case-by-case analysis required by its precedent.  The Federal Circuit’s “definitive” machine-or-transformation test should meet the same fate.

138 thoughts on “Guest Post: Ten Reasons the Supreme Court Should Take In re Bilski

  1. If Bilski goes to the supreme court, it will be because the Supreme Court thought the Federal Circuit did not go far enough.

  2. ” … , let us hope we see no more post from Actual patent Attorneys and alleged Patent Examiners for that matter, claiming business methods are not patentable, …”

    I share your hope, Actual. Let us also hope that we see no more posts from alleged Patent Examiners accusing me of striking small, ignorant children.

  3. Here, let me be the first – As an actual patent attorney, I hereby face up to the fact that the SCOTUS has recognized industrial processes as patentable. (In fact, it did so in Diamond v. Diehr, in 1981.) Now, what was your point?

    Actually Mr. Bloom Diehr was simply the last time the SCOTUS reaffirmed its long held belief that industrial processes are patentable. The rulings go back many, many years. As an “Actual Patent Attorney” I am sure you have some degree of familiarity with the cases. Now that this fact has been established, let us hope we see no more post from Actual patent Attorneys and alleged Patent Examiners for that matter, claiming business methods are not patentable, or not defined by a court of law.

  4. “That’s rather bold, 6. Telling Bloom off for being “not very nice” but then reporting to us all that Actual “obviously doesn’t know wtf is going on”.”

    Telling the small child they don’t know wtf is going on is not being as mean as hitting them for their ignorance. Sorry if my language is too gruff for your circles.

    “I’m pretty sure that’s equivalent to outlawing that something. ”

    “And “outlawing” business methods ** has nothing to do with not allowing business method and or software patents which is what was proposed way up the thread.”

    my typo, my bad. I only have so much time to waste rereading what will amount to nothing but a junk post in response to other junk posts.

  5. “Bloom there’s no need to get smart with the guy when he obviously doesn’t know wtf is going on in this thread. It’s like hitting a small child for being ignorant. That’s just not very nice.”

    by 6, can be applied to 6, and will be known as the Right to Post in Ignorance Postulate.

    Also in the same statement the tortured thread of logic of “you don’t seem to understand that what is being proposed is a change to that statute” and blah blah blah nothing to do with “outlawing” business method patents. Hmm, if you are proposing a change to a statute to not allow something, I’m pretty sure that’s equivalent to outlawing that something.

    6, please try writing your thoughts down, thinking about them, reviewing them, having a sane person review them and only then contemplate posting rather than your current method of instantly spewing diarrhea.

  6. That’s rather bold, 6. Telling Bloom off for being “not very nice” but then reporting to us all that Actual “obviously doesn’t know wtf is going on”. I’ve already suffered Actual criticism for in effect leaving out, of what I reported that he wrote, the apparently decisively important words “in effect”. If he’s got any time left after composing a tirade aimed in effect in your direction, perhaps Actual could in effect help me to see wtf difference “in effect” makes, to what he was in effect trying to tell us. Boy, that took a long time to write.

  7. “”To outlaw business methods would in effect be to outlaw capitalism.”"

    Slick, I don’t think you get it. Your statement has nothing to do with “outlawing” business method PATENTS. And “outlawing” business method patents has nothing to do with not allowing business method and or software patents which is what was proposed way up the thread.

    Also, you don’t seem to understand that what is being proposed is a change to the statute. They are proposing changing the statute to not allow business method and or software patents.

    Bloom there’s no need to get smart with the guy when he obviously doesn’t know wtf is going on in this thread. It’s like hitting a small child for being ignorant. That’s just not very nice.

  8. “Nice evasion Mr. Bloom. Who said anything about denying??? Let me repeat my statement, no “Actual Patent Attorney” in this thread has ever faced up to the fact that the SCOTUS, has recognized industrial processes as patentable.”

    I’m sorry I was too subtle for you, Actual. Here, let me be the first – As an actual patent attorney, I hereby face up to the fact that the SCOTUS has recognized industrial processes as patentable. (In fact, it did so in Diamond v. Diehr, in 1981.) Now, what was your point?

  9. Mr. MaxDrei

    Are you an experienced litigator, or just an attorney that writes patent applications? I ask because you have a pattern of making poor, and blatantly illogical arguments, at least when responding to my posts. Permit me to point out a few of your more obvious mistakes.

    First of all you completely evaded the point of my post which is simply,

    “business methods are industrial processes, a definition upheld by the Supreme Court. ”

    Now I understand if you are incapable of dealing with this statement since you may be a European Patent Attorney, however that is no excuse for what you did next. Which is to cut and paste my statement out of context and to take out an actual word while indicating it was still my exact quote! Here is what I typed:

    “To outlaw business methods would in effect be to outlaw capitalism.”

    Please, in the future refrain from editing my statements and attributing them to me as exact quotes. Also please in the future, kindly refrain from making any assumptions of any kind about me, my possible inventions, patents, or applications. Its obvious since you can’t focus on the argument you are trying to focus on the person, and frankly, in that regard you don’t know what you are talking about.

  10. Nice evasion Mr. Bloom. Who said anything about denying??? Let me repeat my statement, no “Actual Patent Attorney” in this thread has ever faced up to the fact that the SCOTUS, has recognized industrial processes as patentable.”

    Until an “Actual Patent Attorney” admits or recognizes this fact, the record stands and my point is made. And yes, my curiosity remains.

  11. “I am curious why no “Actual Patent Attorney” in this thread has ever faced up to the fact that the SCOTUS, has recognized industrial processes as patentable.”

    Actual, perhaps it’s because we don’t understand your point. Congress is not bound by SCOTUS’s pronouncements on subject matter – SCOTUS is interpreting the Patent Act, not the Constitution.

    I don’t think that any Actual Patent Attorney on this board has actually denied that industrial processes are patentable subject matter.

  12. But I want to learn what American patent attorneys think, rather than what an actual “inventor” ……

    As an “Actual Inventor” I am curious why no “Actual Patent Attorney” in this thread has ever faced up to the fact that the SCOTUS, has recognized industrial processes as patentable. Do I really need to start citing case law to “Actual Patent Attorneys” ???

  13. “Ridiculing self-evident assertions like “To outlaw business methods would be to outlaw capitalism” will get you accused of being a socialist.”

    …which is, of course, the worst thing ever.

    [rolls eyes]

  14. Thanks Leo. I take it from your thinking, and from the heated debate here in Europe between the mainland and the British Isles, that (because of Binding Precedent) the continental European (and TRIPS) touchstone of patentability “technical” can be seen in civil law Europe as “simple” but all the while “not simple at all” in common law countries.

  15. Max, the question was whether we could simply make software patents and “biz methods” unpatentable. My answer was intended to be “perhaps, but not simply.”

    No, I don’t think there’s anything in TRIPS that prevents a wider subject area for patent protection, provided that the rules are non-discriminatory with respect to foreign nationals. But TRIPS does put a limit on what a Member can exclude from patent protection. For those who define software patents and business method patents as “any patent that, with the benefit of hindsight, looks really simple to me,” that might present an obstacle to “outlawing” software and business method patents. Like I’ve said before, I haven’t yet seen a definition for either “software patent” or “business method patent” that looks definite enough to serve as the basis for excluding legislation.

  16. Thanks for the warning Leo. I’m by now used to being told that, over here in Europe, we are irredeemably socialist. Mind you, our all-seeing accusers also kindly draw it to our attention that we are still feudal serfs of the ruling monarch. I’m still trying to work out how the monarch can own everything, except for all the property owned by the socialist State. But your TRIPS point interests me. I know that patentability for all fields of technology is obligatory, but is there anything in TRIPS that would prevent a country (China, the USA) going further than the 18th century “useful arts” (ie technology) and enacting a wider definition of patentability, wide enough to include business methods, film script patents, tax mitigation patents, golf swing patents, methods of practice as a patent attorney, etc.

  17. “Bravo. That’s the sort of revealing remark that keeps me tuned in.”

    Careful, Max. Ridiculing self-evident assertions like “To outlaw business methods would be to outlaw capitalism” will get you accused of being a socialist.

    Of course, the real answer to ‘why can’t we just make biz methods unpatentable’ is that we can, if (a) someone can figure out a way to make doing so profitable for our esteemed members of Congress and (b) if we can figure out a definition of ‘business method’ that works and that is compliant with Article 27 of TRIPS.

  18. “To outlaw business methods would be to outlaw capitalism”.

    Bravo. That’s the sort of revealing remark that keeps me tuned in.

    How about patents on methods for use by members of a team, to work together more effectively, to achieve more lucrative success? Think of international competition, between rival teams. The opposing team, from somewhere else in the world, could then be enjoined, and America could win, and harvest more $$$. So, whether to recognise patents on the ways members of a team can work together looks like a no-brainer.

    Will you start by enjoining a Canadian ice hockey team, perhaps?

    But I want to learn what American patent attorneys think, rather than what an actual “inventor” who has an actual “biz method” app pending thinks he is “thinking”.

  19. “And why can’t we just make software and biz methods unpatentable and be done with it?

    Because business methods are industrial processes, a definition upheld by the Supreme Court. To outlaw business methods would in effect be to outlaw capitalism.

  20. “It takes more than my fingers and toes to count the number of crack lawyers I’ve bested time and again. ”

    By “besting” them, you mean writing “Applicant’s arguments were found to be unconvincing,” then copying and pasting your last bad rejection into an office action? WAHOO.

  21. “That is, if the claim can be tanked for any reason without the preamble, but arguably can survive with the preamble, the preamble breathes life to the claim and thus needs to be considered.”

    Thank you for explaining why the case law regarding preamble interpretation is a farce.

  22. 6,

    I’m sorry but I am not able to follow your line of thought. I think that I lean to an opposite view, but I am not sure what your view is.

    I would think that in cases in prosecution (no presumption of validity), a preamble would more likely breathe life to claim if the claim cannot “do without” the preamble. That is, if the claim can be tanked for any reason without the preamble, but arguably can survive with the preamble, the preamble breathes life to the claim and thus needs to be considered.

    I do not see the distinction you are drawing between real caselaw’s focus on “meaning” as opposed to a focus on “validity” as itself meaningful if “purpose” or “meaning” is achieved, but the claim is tanked on “validity”. In the situation you propose, there is no presumption of validity, so I don’t see how you can depend on logic that requires that view.

  23. “Asked you about suitability of leaving 102 analysis as-is, thereby leaving Gleave with method claims, where 103 issues can be argued fruitfully.”

    It is what it is.

    “I’m not a chemical guy, but have you ever seen a 102 rejection where a racemic mixture was disclosed in the prior art and a component enantiomer claimed later?”

    I haven’t prosecuted such a claim myself but based on Gleave if the enantiomer (for whatever reason) is readily isolated then the mixture should anticipate.

  24. Mooney–

    I was struck that in Sanofi there was no 102 rejection. I’m not a chemical guy, but have you ever seen a 102 rejection where a racemic mixture was disclosed in the prior art and a component enantiomer claimed later?

    And somehow, an earlier post of mine failed to post.

    Agreed with you on “readily envisagable” 102 grief, and analogized “inherency”. Agreed on more appropriate analysis through 103 with meaningful rebuttal opportunity.

    Asked you about suitability of leaving 102 analysis as-is, thereby leaving Gleave with method claims, where 103 issues can be argued fruitfully.

  25. ibp: “Could you explain further what you mean by a super-rejection of anticipation/obviousness?”

    I said “super-obviousness”. By that I mean a fact pattern where a suggestion to make a genus is sufficient to *anticipate* an undisclosed species within that genus because the manufacture of the species was “readily envisigable” by a skilled artisan.

    I think everyone would agree that the art disclosing the genus is an excellent basis for an obviousness rejection of the species. However, it’s always been understood that you at least have the chance of rebutting the obviousness finding by showing that your species has profoundly great and unexpected properties that justify a patent.

    Compare Gleave with the Sanofi Synthelab case. The prior art in that case was a patent describing a racemic mixture of two molecules and a statement that either enantiomer could be isolated by techniques known skilled in the art. This was a mixture that actually existed and there was no question that the EXACT structure of the claimed enantiomer was disclosed. And yet the purified enantiomer was held not to be anticipated AND to be non-obvious because (1) it had great properties and (2) it was allegedly “expensive” to figure out how to isolate (but was in act isolated according to an old method).

    The art in Gleave did not describe thousands of oligos that had actually been synthesized, nor did it list the particular structure of the claimed oligos (all of the oligos in Gleave were 15-mers; some of the claims were drawn to 20-mers). Yet in Gleave the prior art was anticipated and there was no opportunity to present data regarding the unexpected properties of, say, the most strikingly effective or bizarrely stable antisense molecule that the applicant had discovered.

    If you’re a company trying to patent simple (e.g., unmodified, perfectly complementary) antisense compositions, the dicta in Gleave is a bullet flying through the air and aimed directly between your eyes.

  26. Jules–

    I think there is a place in patent law for rejections based upon some concept of “obviousness”.

    But I also believe that valuable pioneering work should be rewarded through the patent system, over and above those rewards that may or may not be conferred by the market, like the benefits that come with being the first market entrant.

    I think that such reward is possible in many cases, if you have a good patent attorney working with you.

    Hypothetical–let’s say an inventor makes a very useful and new, but simple, mechanical device that is composed simply of existing hardware-store components. If I drafted a claim directed not to the composition (which you would find obvious), but to “a method of using a nut, a bolt, bar stock steel, a flat washer, a nylon bushing (etc), the method comprising pivotally engaging the bar stock steel using the nut, bolt, and washer, etc. etc.”, how would you go about conducting an obviousness analysis?

    Would it be reductionist, identifying individual claim elements, finding examples of the same components cooperating in the same way with the same result, for each claim element? What about grouping elements into “functional groups” and conducting the analysis at that level? Or at the macro level, where an applicant presents a single claim directed to a method of using the various components to perform the ultimate function of the article?

  27. Mooney–

    Gleave seems to me like a rather straightforward application of anticipation case law. I think Gleave knew that this is how the law of anticipation would shake out in his case, which is why he expressly presented a policy argument to the court.

    Could you explain further what you mean by a super-rejection of anticipation/obviousness?

    The application contained composition claims, method of making claims, and method of using claims. Only the composition claims were initially rejected by the examiner, the rejection being upheld at BPAI and CAFC.

    I haven’t read the file history–what happened to the other claims? Were they rejected on other grounds and the rejection not appealed to the BPAI? Do they remain intact and allowable? I’d like to know how valuable Gleave finds them to be, relative to the invalid composition claims.

  28. This is kind of late, but the patent community didn’t exactly “pick” Bilski. Once the Federal Circuit decides to take a case en banc, the amicus briefs usually follow.

  29. “In your stated problem, you indicate that the preamble is indeed necessary to breathe life into the claim (else the claim dies a Bilski death) and thus the preamble needs to be considered. ”

    I did seem to recall it having been put forward before. Then the question innevitably arises however, in view of the recent split between cases issued (enjoying the presumption of validity and thus “life” in a sense) and cases in prosecution (currently enjoying no such presumption) does that not mean that preambles should pretty much never be limiting in prosecution?

    And that is assuming we take the word “life” to mean that the claim is valid rather than invalid under some particular statute. The real caselaw used the word “life” to mean “purpose” or “meaning” as in the preamble had to be considered in order for the claim to have any meaning. This is why if the antecedent basis is found in the preamble then the preamble is often considered having breathed life into the claim.

    Overall, this preamble is not required to breath that kind of life into the claim, it is only required to breath the former into it. And I’m not too sure about this whole thing. I guess I’ll ask mah spe and see what he thinks.

  30. “In other news and in all seriousness, 6 has a problem. If the thing in a claim that makes the claim pass bilski muster is in the preamble, but there is otherwise no reason to consider the preamble limiting does the claim pass bilski or does it not?”

    6,

    This question was expressed on a previous thread, although I do not recall which thread that was, and the question was slightly different as I recall.

    The question was put as to whether the preamble was indeed limiting or not. The answer was that the preamble is only limiting if the preamble is necessary to breathe life or meaning into the claim.

    In your stated problem, you indicate that the preamble is indeed necessary to breathe life into the claim (else the claim dies a Bilski death) and thus the preamble needs to be considered.

    SPOILER ALERT – You do not indicate whether the preamble traps the applicant into a prior art situation, but I would not be surprised to see that aspect in an upcoming post.

    Likewise, You also do not provide an indication as to if the preamble is part of a superfluous limitation, in which case, the preamble is not truly breathing life into the claim (the claim would still die a Bilski death) and need not be considered. It appears that you are heading down this path as you indicate that the preamble is NOT tied to other claim elements with “otherwise no reason to consider the preamble”. Likewise, I would not be surprised to see that aspect in an upcoming post.

  31. The CAFC Bilski legal opinion deserves eventual Sup. Ct. review, but why anyone would want to take those particularly unappealing “mental process” application claims to the Sup. Ct. [expressly not even limited to software or computers] is beyond me.
    Let;s hope they deny cert, so that a more appealing and software-based invention can be found to appeal.

  32. “All the pieces are in position for dismantling the Beauregard paradigm.”

    I’m pis sed. If they keep things up at this rate they’re goint to beat me to the punch it looks like. Daggon applicant in my test case is taking his sweet time to respond. And even once he does I still have to go through a lot, probably even going so far as to have to wait on him to file the DIV and hope I get it. In the alternative I’ll have to try to get his method claims into condition for allowance on this RCE and etc etc rejoinder blah blah blah. And then at the end of all that, he has to have the balls to not just cancel the claims and tuck his legs between his tail and not appeal. That final step is likely going to be impossible to ever get accomplished, I’m just too persuasive irl. Maybe I should tone down my persuasiveness until the examiner’s answer? Suggestions on the quickest way to get a case with B claims restricted from an elected method claims group to the board with respect to the B claims?

    Offer to rejoin them and pay his 1k$ if he wins?

    In other news and in all seriousness, 6 has a problem. If the thing in a claim that makes the claim pass bilski muster is in the preamble, but there is otherwise no reason to consider the preamble limiting does the claim pass bilski or does it not?

  33. From recent CAFC decision In re Bryan:

    “While Mr. Bryan asserts that the printed matter is functionally related because, for example, it allows the cards to be “collected, traded, and drawn” during game play, these types of arguments do not pertain to what he claims and seeks to patent–the structure of the game apparatus. Rather, these arguments pertain to the patentability of methods or processes of playing the game, which are irrelevant to the apparatus claims at issue. Indeed, if we were to accept Mr. Bryan’s arguments, it seems anyone could patent the structure of a pre-existing game simply by changing the game’s theme without changing its structure. See Ngai, 367 F.3d at 1339 (“If we were to adopt [the applicant's] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”).”

    All the pieces are in position for dismantling the Beauregard paradigm.

  34. “What about crowded arts where everything really is just a variation of something else?”

    It’s this attitude that has crippled innovation in the paperweight arts.

  35. inviting: “Then you end up in a camp that is similar to the generally discredited “everything is obvious” camp.”

    Care to elaborate on this? I really am genuinely interested. Were you referring to certain judges, examiners, a general feeling of the current state of patents …? What about crowded arts where everything really is just a variation of something else?

    I mean, when something truly appears obvious based on the prior art of record, what are you supposed to do? Lay down and grant a patent so the client doesn’t feel like they wasted their money?

  36. “And that result is…a narrower claim. Are you even a patent lawyer?”

    That’s the whole point mor on, are you a patent lawyer? Are you even a human being that graduated highschool? Take your flames elsewhere, especially when you’re proving the other side’s point with your assertion.

    “If it works, and assuming you meet the other 35 USC requirements, you get a patent.”

    Since it won’t, there goes your “axiom” or well settled law or whatever. If it does work then he ck, nothing we’re talking about will matter anymore, we’ll have “free” energy and can proceed directly into utopia. BTW, stop relying on soundbytes.

    “A claim directed to a floppy diskette alone would read on both the floppy diskette alone and the floppy diskette attached to the perpetual motion machine. That is, lots of stuff. Broad.

    The claim directed to the floppy diskette attached to the perpetual motion machine would not read on the floppy by itself, but only on the floppy attached to the perpetual motion machine. That is, not much stuff. Narrow.

    I love the lawyerly reasoning here. This is why you guys fail so very often. You go on and on about irrelevant sht. Seriously, half of my responses to Arguments are: That is irrelevant to your point. Usually it is followed up by a statement of how their argument supports my position instead of theirs.

    “They simply do not understand basic patent law concepts like “broader” and “narrower.” ”

    Riiiiight.

    Thanks for the lessons in dealing with software covering claims though man, I’ve never dealt with them, nor do I ever intend to deal with them if at all possible.

    “Recipes and other “instructions” SHOULD be patentable, because they CAN have all the attributes of property.”

    You just invited a body punch.

    “I don’t see any rational basis for limiting the property rights attributable to processes to solely those associated with copyright.”

    Maybe because that was why copyright was created and the patent system was created for a different purpose? Come on man.

    “The appearance of new technologies should present no new types of problems to a well-understood and coherent paradigm of patent law.”

    It didn’t, you attorneys made some up and bamboozled some folks for awhile. Congrats to you.

    “Cause you’re obviously far, far wiser and more experienced than the crack patent teams they already have on staff and retainer.”

    It takes more than my fingers and toes to count the number of crack lawyers I’ve bested time and again. And I mean verifiably, and not counting pds/jd etc from here on PO. Counting those times, the total is probably in the high thousands/ low millions by now. MM doing so is no feat.

    “I was incorrect. ”

    The only question is: why didn’t you see that blatant little problem at the outset? You presumed the perpetual motion machine functioned, where MM specifically choose to make sure that you couldn’t make that presumption and you should have realized that at the outset.

    But, but, it is well settled law!

    Bilski just took a big gigantic crp on your well settled law.

  37. And on a related point, every machine fashionable is a combination of the 5 simple machines. If people come up with new and non-obvious arrangements of those 5 simple machines, one could apply the inherency argument used with saiftware and other processes to say that the utility of the new machine is inherent from that combination. And with motivation to combine being anything as simple as “for the fun of it,” we arrive at a situation in which no new machine is patentable subject matter. I find it telling that the arguments people make against the patentability of software can be equally applied to machinery or any other item generally viewed as patentable subject matter.

  38. “Will patent law ever see the day where patentability will lie only with the results of chaotic systems, and situations where there has been significant “teaching away”?”

    News flash: biotech patent law is certainly been right there for a few years, at least, and is now moving beyond even that.

    One could argue based on dicta in the recent In re Gleave decision that the Federal Circuit has merged anticipation and obviousness, at least for antisense compositions, creating some sort of “super-obvious” rejection where the suggestion to make a genus of molecules in the prior art is sufficient to *anticipate* a subsequent claim to a species. According to the dicta in Gleave, it doesn’t matter if you found a species in a vaguely described genus with unexpected and highly desirable properties. You can’t get a claim to the composition because, based on the prior art, anyone could have “envisaged” how to make all the species.

    You may, however, still be entitled to a method claim (emphasis on “may”) drawn to the administering of the species.

  39. Software–

    If your reasoning is taken to an extreme, no chemical reaction, series of reactions, or end product would be patentable, because they would all be “laws of nature”.

    Taken to a yet further extreme, you would end up with the situation where everything was a “law of nature”, as long as you continued to believe in a particular degree of determinism in the universe. After all, if one is sufficiently reductionist, one can characterize basically anything as a composition of previously-known elements that are brought together in a particular manner (the “conditions” under which they co-operate).

    Then you end up in a camp that is similar to the generally discredited “everything is obvious” camp.

    You first said that “The fact they they MAY is a law of nature.”. You then modified that to say that “The law of nature is: If those conditions exist, the reaction happens.” Your second, narrower version might be more acceptable as far as patent law is concerned, but I would never describe it as a “law” because of the lack of generalizability of the statement. And if you accept the earlier premise that the reaction is statutory subject-matter, that would negate its aceptability in patent law.

    The situation could be much better characterized by referring to more generalizable and hence more “fundamental” laws.

    Will patent law ever see the day where patentability will lie only with the results of chaotic systems, and situations where there has been significant “teaching away”?

  40. “And they’re all patentable subject matter according to MM, SCOTUS, and Congress as codified in 35 USC 101.”

    You’re ignoring the main point of my argument. There are “tangible computer readable mediums” that are clearly not statutory, using my examiner definition for “tangible”.

  41. “The fact they they MAY [react to form H2O] is a law of nature.”

    This is a fine point, but actually there are no “Laws of Nature”. Mother Nature does not come down from the mountain top with a bunch of tablets proclaiming her “laws” to us humans. She is both deaf and mute. It is we humans who make up these “laws” because we believe they describe how Mother Nature will behave. Accordingly, “Laws of Nature” are actually our abstract ideas about how we currently believe Mother Nature does and will behave. We have been proven wrong many times. (That doesn’t mean we are wrong this time. It doesn’t mean we are right either.) Just a fine point here.

  42. MM and 6, I hope you are having fun spewing inflammatory drivel. It certainly looks like fun. If you decide to do something boring, such as actually address the issue raised about the floppy disc, you might try something like this:

    The claim to the floppy disc is a claim to a new and useful structure and therefore patentable.

    The claim to the instructions on the floppy disc are a claim to a new and useful algorithm that is placed on a well-known floppy disc. But placing the algorithm on the floppy disc is merely insignificant post solution activity. The new and useful algorithm is still an algorithm per se, and ideas and algorithms are not patentable. Only new and useful applications of those ideas or algorithms are patentable. But don’t make the mistake of trying to patent an idea or algorithm that has only one known useful application. Precluding all known uses means you claimed the idea or algorithm, per se. And, who knows, if there are only two known useful applications, and you file separate patents on each of them, maybe both your patents will be invalid for making the mistake of, taken together, precluding all known uses of the idea or algorithm. These tests for patentable subject matter are intuitive and and easy to understand. Everyone must agree that they make so much sense and are clearly correct.

  43. “My perpetual motion machine is powered by the earth’s rotation.”

    If your machine draws power from an external source then it is by definition not a perpetual motion machine.

  44. I’m gonna disagree with inviting body punches here on this statement:
    “2M of H and 1M of O MAY combine to form water, under appropriate conditions and system boundaries.

    The fact that they MAY is not a law of nature, it is one possible outcome based upon a particular application of the laws of nature.”

    The fact they they MAY is a law of nature. A human may try to set up the right conditions to make the reaction happen, and the human may discover what conditions tend to make the reaction happen, or happen faster, or whatever . . .

    The law of nature has nothing to do w/ setting up the condition. The law of nature is: If those conditions exist, the reaction happens. Nothing we can do can change this.

    Agreed, no need for confusion.

  45. Funny story: A client insisted he was close to completing a perpetual motion machine (PMM), and was only waiting on funds to buy the final parts. I explained that a PMM is impossible, but he insisted, and, hey, what do I know anyway? So I patented his PMM (which, of course, never quite worked even once he had all the necessary parts). The keys to patenting a PMM are (1) call it a “generator” rather than a PMM, and (2) instead of claiming “greater than 100% efficiency”, claim “at least 95% efficiency”. No alarms will go off at the PTO, and your client will get his patent. The moral of this story is that the patentability of a thing – in every regard, including subject matter – is all in how you claim it.

  46. Argues–

    Even squishy bogs can be successfully navigated with good tools and techniques.

    2M of H and 1M of O MAY combine to form water, under appropriate conditions and system boundaries.

    The fact that they MAY is not a law of nature, it is one possible outcome based upon a particular application of the laws of nature.

    Also, it is not a law of nature that warm water vapor results from combination+spark. Again, just one possible outcome of many, depending on conditions and system boundaries.

    There is no need for confusion in this area. Anybody who has done anything at a reasonably high level of inquiry in basic science or mathematics understands what axioms, laws, principles, postulates, hypotheses, etc. are.

    I hope I’m not sounding like a you-know-what, but I don’t know what level you’re at in all this, anonymous posts and all.

  47. I wrote:
    “BTW, a perpetual motion machine — if you could prove that it works as described in your specification — would be patentable under 101 as a machine. However, you would have a tough 112 enablement argument at the PTO.”

    I was incorrect. Although your invention describes a machine, you would have to overcome a 101 utility rejection for inoperativeness. The PTO may require a working model to overcome their prima facie case of inoperativeness. If it works, and assuming you meet the other 35 USC requirements, you get a patent.

  48. “It is a law of nature that if *****you put**** them in the same volume and add a spark, ****you get***** warm water vapor.”

    And therein lies the solution to your “paradox.”

    No pun intended.

  49. inviting,

    I agree that it should be (and is) a statutory process, my only point was that “laws of nature” etc. (i.e., fund. principles) is a squishy term.

    In other words, it is a law of nature that two moles of hydrogen combined with one mole of oxygen (yes, I typo-ed originally) can combine to form water.

    It is a law of nature that if you put them in the same volume and add a spark, you get warm water vapor. Moreover, it has happened on its own somewhere in the universe more than a few times — it is a natural phenomenon.

    Yet the claim recites a statutory process…

  50. Hi Malcolm,

    My perpetual motion machine is powered by the earth’s rotation (©¿®).

  51. a. A new god, wherein said god is all-powerful and runs on virgin sacrifices.

    b. A floppy disk, wherein said floppy disk is attached to a new god.

    c. The god of claim 1, wherein said god is attached to a floppy disk.

    So let me get this straight. According to “Argues” (man, what a dumb username), (a) and (c) are non-statutory under 101 but (b) is statutory because it’s just a “narrower” version of a statutory claim.

    Real deep thinking there. Again: when determining patentability under 101, there is no prohibition against ignoring formalities. Changing the order of words is not going to save you. If you are claiming a method of manipulating information that does not result in a non-trivial transformation, it doesn’t matter how much old statutory junk you toss on top of it.

  52. “BTW, a perpetual motion machine — if you could prove that it works as described in your specification — would be patentable under 101 as a machine.”

    Folks, we’ve got a live one.

    Do any of the creationists lurking here want to chime in?

  53. MM: “I don’t care how many “magic words” you try to bury your dummass “invention” in.”

    Easy there, sidewinder…it’s one of Google’s.

    But hey; I’m sure they’d find your incisive professional analysis and expert, thoughtful commentary and suggestions oh so worthwhile and appreciated.

    You know. Like virtually everyone else here does.

    Cause you’re obviously far, far wiser and more experienced than the crack patent teams they already have on staff and retainer.

    Maybe you ought to give ‘em a call…or better yet, just stop by their place for a friendly sit down discussion, a hot cup of joe, and a relaxing Google back rub.

    And who knows, MM? Doing so might actually raise your abilities to a whole new and truly logical, facts-based; why…even useful level…in the least, it certainly couldn’t hurt your mean and nasty disposition.

  54. Anonymous–

    “So reciting “A method of making water comprisising combining two parts hydrogen gas by volume with two parts oxygen gas by volume and adding heat.” is statutory subject matter.

    Sorry, but that’s a fundamental principle in my book.”

    Time for a new book. It is a process that makes use of fundamental principles, not a fundamental principle itself.

    For instance, “heat” may properly be construed as a “fundamental principle”.

    A workable ground of rejection could be novelty.

  55. Policy argument coming…

    Recipes and other “instructions” SHOULD be patentable, because they CAN have all the attributes of property.

    The concept of property is central to our current form of social organization, especially the privatization of rights associated with that property.

    I don’t see any rational basis for limiting the property rights attributable to processes to solely those associated with copyright.

    All processes should be statutory, and the basic grounds of invalidity like novelty, anticipation, and obviousness should be applied more consistently and coherently so that those tests could be cleaned up and made workable.

    The development of patent law seems to me to have been so piecemeal that in its current state it is incoherent and internally inconsistent. There has been no co-ordinated effort, and no consistent outcome.

    The appearance of new technologies should present no new types of problems to a well-understood and coherent paradigm of patent law.

    It’s not very interesting for me as an attorney to play around within a set of rules, without having my field of endeavor advance as a whole. And by “advance”, I don’t mean simply “change”.

  56. I think I understand why 6, MM, show me, bobo and others just can’t understand 101.

    They simply do not understand basic patent law concepts like “broader” and “narrower.”

    They just feel in their hearts that some amorphous concept like “software” is not patentable.

    6, go back to any rejection you (or one of your co-workers) have written with the words “software per se.” The claims often have “modules” as elements, and the spec says “modules may be implemented in hardware and/or software.”

    What do you say there? Something to the effect of “although applicants claims might read on embodiments including hardware, the claims cover software-only implementations and are thus rejected as software per se.”

    Why do you say that? Because unless the scope of the claim is *narrowed* to exclude embodiments reading on non-statutory implementations — the claim is not statutory. We don’t care that it also reads on statutory embodiments.

    The converse is why Diehr could recited a non-statutory algorithm in a statutory claim. Diehr’s other elements narrowed the claim from encompassing all uses of the Arrenhius (sp?) equation to only those uses for curing rubber as recited in his claim.

    Thus, although Bilski’s and Comiskey’s claims might read on statutory implementations involving specific machines, their claims (at least Comiskey’s independent claims) were nonstatutory.

    Comiskey’s dependent claims were sent back to the PTO to determine if the additional limitations narrowed the claims to cover only statutory subject matter (i.e., is the internet a particular machine).

    And lastly, 6, this is why after you reject the base claim under 101 you must examine each dependent claim for 101. They might be narrow enough to recite only statutory subject matter.

  57. No, MM, you just posted more sound and fury, signifying nothing.

    Take any claim that you consider statutory, add on your perpetual motion machine — same result.

    And that result is…a narrower claim. Are you even a patent lawyer?

    A claim directed to a floppy diskette alone would read on both the floppy diskette alone and the floppy diskette attached to the perpetual motion machine. That is, lots of stuff. Broad.

    The claim directed to the floppy diskette attached to the perpetual motion machine would not read on the floppy by itself, but only on the floppy attached to the perpetual motion machine. That is, not much stuff. Narrow.

    BTW, a perpetual motion machine — if you could prove that it works as described in your specification — would be patentable under 101 as a machine. However, you would have a tough 112 enablement argument at the PTO.

    I think that was covered in Day 1 of Patents for Dummies.

  58. “Rofls. Imma stop arguing with you now, you’re beyond helping if you can’t see through your own bs.”

    Yet another reason why 6 and Malcolm belong in the same camp (hmmm – perhaps ARE in the same camp).

    6, please attend the class on
    Printed Matter Doctrine
    with Malcolm since you do not get that concept either (focus on the word “functional”).
    bobo the clown, you are enrolled as well.

  59. “The claims are directed and limited to a computer readable medium, usually defined in the spec. as a floppy disk, hard drive, etc.”

    With a scanner and functioning driver (software which would do the OCR and then compiling or interpreting) wouldn’t paper with text be a “computer readable medium”?

  60. “(1) A new floppy disk, wherein said floppy disk is attached to a perpetual motion machine.”

    If you can convincingly prove that you actually have a perpetual motion machine then you should get the claim.

  61. The fundamental problem here is that when we are talking about software we are talking about (at least) two different things that are semantically difficult to separate.

    The purveyors of software that you run on your PC, for reasons of their own, don’t want it to be protected by patents. This really comes down to being more worried about infringing than interested in getting their own patent protection, however they try to dress it up.

    The electronics industry, OTOH, are going increasingly digital, and increasingly using identical (or at least functionally interchangeable) hardware for multiple purposes, with the difference being in the code. Loss of patent protection in this area would be a really bad outcome.

    Their ‘machine’ may be an off the shelf microcontroller, which may not be held as specific under Bilski, and the transformation may be only of signals that a judge or other layman may not consider to be physical, although of course they are to anyone who has actually taken a physics class. This is a problem.

    In between these extremes, what of ‘system’ software? Even if the software industry don’t want to worry about infringing when they write their shrinkwrapped goodies, what of the software that makes a complex system work? In it’s way, code that controls multiple servers or interaction between them is as much a substitute for hardware as the code that operates a microcontroller.

    I would be happy, or relatively happy, to take end user software applications out of the patent system, as this is what those that write it seem to want, as long as we could protect microcode and system software. I don’t think we are anywhere near achieving that, or that there is even any consensus that this is the right objective. Instead, we seem to be on the road to more missteps.

    As for certain biochemists, or whoever he is, gloating about the baby being thrown out with the bathwater in Bilski, I think the gloating is just because he is jealous that there has been more work for EEs and computer types in patent law.

  62. “Thus, if the claim with the additional limitation (narrower) is nonstatutory, what remains (after removing the limitation – i.e., broader) must also be nonstatutory.”

    Rofls. Imma stop arguing with you now, you’re beyond helping if you can’t see through your own bs.

  63. Any decision on Bilski would have to be in the abstract since the patent itself is such a piece of garbage that any time spent discussing the actual specifics of the patent is a waste of time.

  64. “And why can’t we just make software and biz methods unpatentable and be done with it? Doing that solves a big problem and avoids unintended consequences.”

    Posted by: me | Apr 01, 2009 at 10:58 AM

    We can’t make biz methods unpatentable because business methods are industrial processes, the foundation of our capitalist system. It somewhat amazes me so many patent attorneys do not understand this. But, then again, I am an “Actual Inventor”

  65. I almost never claim computer programs as such because of the irrational bias against them. Instead, whenever possible (which is almost always), I characterize them as methods – which is broader anyway because it encompasses hardware, firmware, and software implementations.

    Mooney is correct that Beauregard claims are a transparent farce. But the problem isn’t with practitioners who use them, its with the courts for making practitioners use them. The patent system is supposed to encourage useful innovation; software is as important a component in modern society as hardware, so why would anyone want to discourage innovation in software? And software, which inherently requires hardware to run, is less of an unpatentable algorithm than a naked “process”.

  66. “Sorry, that answer conflicts with settled law. If claim reads on nonstatutory subject matter, the claim is nonstatutory.”

    Why is that that? 35 USC 101 only states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” There isn’t any explicit requirement that the invention ONLY be directed to a “process, machine, manufacture, or composition of matter.”

    You show me a claim (try to keep it fairly short), and I’ll show how that claim also covers subject matter that doesn’t meet the requirements of 35 USC 101.

  67. “if the claim with the additional limitation (narrower) is nonstatutory, what remains (after removing the limitation – i.e., broader) must also be nonstatutory.”

    Consider the following claims:

    (1) A new floppy disk, wherein said floppy disk is attached to a perpetual motion machine.

    (2) A new floppy disk.

    I just destroyed your axiom.

  68. “Thus, if the claim with the additional limitation (narrower) is nonstatutory, what remains (after removing the limitation – i.e., broader) must also be nonstatutory.”

    No. For the billionth time, 101 isn’t about “magic words” that turn bad claims into good claims. It’s about “magic words” that turn good claims into crap.

  69. (a) the claim to a diskette having software recorded thereon is broader than a claim to the diskette with no further limitations,

    The claim to the disk with software written on it is not “broader.” It’s a non-statutory invention.

    You are presenting a false dilemna. I rebuke the puzzle.

  70. MM, have you looked up my Shakespeare allusion and realized who told the tale?

    There’s nowhere to hide on this one. You wimped out and let 6 go first. Now it is your turn.

    Your position reduces to (a) or (b).

    So let’s hear it, oh teller of tales full of sound and fury, is it:

    (a) the claim to a diskette having software recorded thereon is broader than a claim to the diskette with no further limitations,

    or

    (b) that the narrower claim (diskette with software) recites nonstatutory subject matter while the broader claim somehow does not?

  71. 6 (I assume it was the real 6) wrote:

    “MM’s answer is b as it must be.”

    Sorry, that answer conflicts with settled law. If claim reads on nonstatutory subject matter, the claim is nonstatutory.

    Thus, if the claim with the additional limitation (narrower) is nonstatutory, what remains (after removing the limitation – i.e., broader) must also be nonstatutory.

  72. Easy.

    1) Crap
    2) Crap
    3) Crap

    Identifying a match?

    That isn’t a transformation. I don’t care how many “magic words” you try to bury your dummass “invention” in. It’s unpatentable crap.

  73. Malcolm,

    Why don’t you stick to commenting on chemical and biotech cases as you continue to demonstrate that you have no knowledge of patent law application outside those areas.

  74. 1 outlook not so good

    12 you may rely upon it

    18 concentrate (i.e. rewrite this claim to make it make sense, there has never and never will be instrutions operable to do anything but instruct) and ask again

  75. “Do you have a claim that troubles you? Post it here and I will let you know.”

    Here you go, MM (all from #11/836,011):

    1. A method of presenting an advertisement, the method comprising: associating a label with an advertisement; receiving input from a user, wherein the received input comprises one or more labels; identifying a match between the label associated with the advertisement and the received input; and presenting the advertisement to the user.

    12. A system for presenting an advertisement, the system comprising processor electronics configured to perform operations comprising: associating a label with an advertisement; receiving input from a user, wherein the received input comprises one or more labels; identifying a match between the label associated with the advertisement and the received input; and presenting the advertisement to the user.

    18. An article of manufacture comprising machine-readable instructions for presenting an advertisement, the machine-readable instructions being operable to perform operations comprising: associating a label with an advertisement; receiving input from a user, wherein the received input comprises one or more labels; identifying a match between the label associated with the advertisement and the received input; and presenting the advertisement to the user.

  76. So, MM, are you asserting that

    (a) the claim to a diskette having software recorded thereon is broader than a claim to the diskette with no further limitations,

    or

    (b) that the narrower claim (diskette with software) recites nonstatutory subject matter while the broader claims somehow does not?

    Take your pick, hiding behind stories involving crying children is just a smokescreen.

  77. “But none of those positions imply that a claim directed to the floppy diskette itself — the storage medium — would not be statutory subject matter under 101. After all, the above claim is narrower than a claim to the diskette itself.”

    *sigh*

    No it’s not because Judge Patel is correctly piercing through the veil of baloney thrown on top of the recited algorithm.

    A “new floppy disk” is certainly patentable, if properly claimed. And no, this reality doesn’t “create problems” or “contradict” the fact that Beauregard claims are crap. Please stop pretending that it does. Judge Patel wasn’t fooled. I’m not fooled. Really, nobody is fooled. The kid at the amusement park knows that the horsie is only made of plastic and he can’t ride it forever. Yet, when the merry-go-round stops, he bawls and bawls until his mommy buys him a cheap shiny object or piece of candy ot fill the void.

  78. “Any Judge who uses the word “tangible” when referring to computer readable mediums needs to be slapped in the face. I mean, gases and liquids (humid air, water, all transmission mediums) could be argued as tangible computer readable mediums for Christ’s sake.”

    And they’re all patentable subject matter according to MM, SCOTUS, and Congress as codified in 35 USC 101.

    So if you arrange any of them to contain computer instructions, they’re still patentable under 101 — in fact, they recite narrower subject matter.

  79. “And why can’t we just make software and biz methods unpatentable and be done with it?”

    Clearly articulate to me, as an examiner, how to identify a “software” claim. I’m in a AU that examines a residual class. 25% of the stuff we see is clearly software, 25% is clearly hardware, and 50% is a confusing conglomeration of stuff that could, or could not be, a combination of the two.

    After Bilski, I’m rejecting probably 75% of all method claims coming across my desk.

    Any Judge who uses the word “tangible” when referring to computer readable mediums needs to be slapped in the face. I mean, gases and liquids (humid air, water, all transmission mediums) could be argued as tangible computer readable mediums for Christ’s sake.

  80. “The same would be true of tanking software patents, which are written instructions that computers read. Easy to destroy.”

    I disagree.

    First, you have the problem that we used to have 15+ or so years ago. You could claim a black box that did certain things. One embodiment might be a general purpose computer programmed in a certain way, and another, circuitry. From the outside of the black box, there would be no difference. Is it patentable under 101? If you say no, then what happens if you just disclose the circuitry implementation? Or describe it extensively, and then point out that it could also be implemented in software? That is what we used to have to do, and it made no sense. You could have a nice circuit that did something, but then someone implemented it in software, and it somehow was non-infringing.

    Which brings me to my second point. Yes, there are things that realistically cannot be implemented in hardware, due to the complexity and the number of transistors that would be required. But there are a large number of inventions that cross over. Worse though, they cross over in the lifetime of products. For example, a product may initially be implemented fully in software. Then, it maybe moved into firmware in a programmable logic device. In the case of FPGAs, this doesn’t mean actual instructions, but rather the connections between logic functions are programmed as open or closed. Then, when the product is in full production, it may be moved fully to custom ICs.

  81. very dull. let’s grammar check posts. here’s one: “…reestablished my faith in the judiciary with respect to reigning in the chicanery of hordes of misguided lawyers”

  82. Could this be any more boring?

    Are we having a competition with the Tax attorneys to see who is less interesting?

  83. Rewriting the novel Leo? That’s stepping over the line. You can not alter the definition of “quixotic” by rewriting a document from the 17th century.

  84. in my previous post, the parenthetical “(any method steps)” show go after “comprising” in the example claim.

  85. “But Beauregard claims aren’t compositions. They are descriptions of algorithms, sets of instructions for computers to read. Instructions aren’t patentable.”

    Bzzzt. Wrong answer. They are alternatively (articles of) manufacture or machines.

    The claims are directed and limited to a computer readable medium, usually defined in the spec. as a floppy disk, hard drive, etc.

    A narrow Beauregard claim would read:

    A floppy diskette having stored thereon computer exectuable instructions that when executed by a computer cause the computer to perform a method comprising: .

    The claim reads only on a floppy diskette configured to have the required instructions.

    I know your position is that such a claim is not patentable under 101, MM. Judge Patel would agree, or rather, the judge would apparently require that the recited method itself be patentable.

    But of those positions imply that a claim directed to the floppy diskette itself — the storage medium — would not be statutory subject matter under 101. After all, the above claim is narrower than a claim to the diskette itself.

    For at least that reason, your position is incoherent.

  86. “Hardly ‘quixotic,’ in that case.”

    Oh, I don’t know about that. Even if Don Quixote had succeeded in knocking down a windmill or two, his quest still would have been quixotic. Beauregard claims are pretty close to pointless, and eliminating them entirely would do little to address anybody’s concerns with software or business method patents.

  87. New software is a new use for a computer. Congress made it clear that new uses are patentable subject matter. However, I do admit that not all new uses for computers are patentable subject matter. For example, smashing the computer with a hammer as performance art is the sort of thing that is not useful. It is artistic expression. But it passes the machine or transformation test. And that is just one indicator of just how far off the courts are in all of these 101 tests. It is time to get back to first principles and start viewing patentable subject matter in terms of the idea/expression dichotomy.

  88. In November 2008, the BPAI got rid of the “useful, concrete and tangible result” inquiry. See Ex Parte Bo Li (88 U.S.P.Q.2d 1695, November 06, 2008).”

    Actually, the Court of Appeals for the Federal Circuit “got rid of” the “useful, concrete and tangible result” inquiry in October 2008. The BPAI never had the authority to get rid of it.

  89. “It’s a bit early to declare victory in your quixotic quest against Beauregard claims. They may yet go down”

    Hardly “quixotic,” in that case.

  90. “Do you have a claim that troubles you? Post it here and I will let you know.”

    You mean that you will give your opinion.

  91. “IMHO they clearly meet 101″

    Is there a composition of matter that doesn’t meet 101 in your opinion?

  92. Lazy Commenter with Lazy Name: “So, patentable subject matter hinges on whether an industry is created around it?”

    Nice strawman. Learn to read, please.

  93. “Right now, no one knows what’s statutory”

    I think it’s more clear than ever what’s statutory. Do you have a claim that troubles you? Post it here and I will let you know.

  94. “But Beauregard claims aren’t compositions. They are descriptions of algorithms, sets of instructions for computers to read. Instructions aren’t patentable. Whether you want to tank under 101 or 103, doesn’t matter.”

    IMHO they clearly meet 101; whether they meet 103 needs to be decided on a case-by-case basis.

  95. Tom Knight,

    That isn’t the first case, just one more in a long line. IIRC, they go back to at least 2007.

    Anyway, the machine or transformation test became the official “law” of the PTO on May 15, 2008 at the very latest.

    link to uspto.gov

  96. “The same would be true of tanking software patents, which are written instructions that computers read. Easy to destroy.”

    Malcolm, get your track shoes on and get ready to run away once again.

    Do I really need to get out and reprint the quote from the Written Matter Doctrine discussion that you simply refuse to man up too?

    Why do you persist in using stale arguments that you refuse to (and cannot) defend?

  97. Malcolm Monney says:

    “The reason that ESTs are not patentable but the world doesn’t come to an end is that only a modest industry grew up around the potential patent windfall associated with ESTs. That industry was destroyed (good riddance).”

    So, patentable subject matter hinges on whether an industry is created around it? Huh?

    I am sure all the gene chip companies are glad to know Malcolm thinks they died, when in fact they are thriving…

  98. MM blathered: “Thank you for unintentionally highlighting the difference between a real invention and a pile of crap.”

    Perhaps I typed to quickly. That wasn’t unintentional.

    My points were:
    (1) the machine or transformation test is not supported by SCOTUS precedent (beyond the “the test” argument)
    (1a) the machine prong is flawed at its core, as shown by Benson.
    (1b) the transformation prong is not supported beyond transformations of physical objects (i.e., the Abele distinction in Bilski is made of whole cloth)

    and

    (2) This whole fundamental principle thing is internally inconsistent — making water by combining two parts hydrogen with one part oxygen is reciting a fundamental principal as defined by the Fed Cir in Bilski (law of nature and a natural phenomenon), but is clearly patentable under SCOTUS precedent.

    BFD is AFU.

    Whether I believe inventions containing software should be patentable or not doesn’t matter — what does matter is consistent results.

    Right now, no one knows what’s statutory because the state of 101 law is a soup sandwich. If you apply pressure at any point, it squirts out in unpredictable directions.

  99. “Because there is no legal basis for the existence of such claims in the first place, Judge Patel need not worry about ‘invalidating them all.’ She need only point out why she could care less about the fact that the claims are drafted in ‘composition’ format.”

    I suppose it really doesn’t matter to you that Judge Patel’s reasoning regarding the Beauregard claim had nothing to do with whether there is a “legal basis for the the existence of such claims in the first place.” Instead, she made the rather unremarkable assertion that there is not yet any special rule that immunizes Beauregard claims from analysis under Bilski.

    It’s a bit early to declare victory in your quixotic quest against Beauregard claims. They may yet go down, but Bilski isn’t even a flesh wound.

  100. “The BPAI asked, “Have Appellants shown that the Examiner erred in rejecting these claims under §101 as being software per se?” and noted that the independent claims recited “a component executing on a computer” in the body of the claim. The BPAI wrote, “Thus, these claims require execution on a computer to “create” other limitations recited in the claim. Therefore, we conclude that the independent claims and the claims which depend from them, are not software per se.” The examiner was showned to have erred in rejecting the claims and the Examiner’s rejection under 35 U.S.C. § 101 was reverse.”

    Nothing to see here, the claim plainly was not directed to software per se.

    “http://www.ipcommittee.com/wp-content/uploads/2009/03/cybersource.pdf”

    Man what a great decision. That judge surely knows what is what. Boy these last few years have reestablished my faith in the judiciary with respect to reigning in the chicanery of hordes of misguided lawyers. When I first got here I had presumed all to be irrevocably lost from the tune JD et al. were singing.

  101. As “they” say, “Be careful what you ask for because you may very well get it and be none too pleased.”

    Michael S.

    How true with regard to the absurdity of the “machine or transformation” test of Bilski. I’ve got lots of respect for the Chief Judge of the Federal Circuit, but this “machine or transformation” test of Bilski is fundamentally flawed. Not that they were able to write on a clean slate, in view of the nonsense created by SCOTUS’ “we don’t understand what computer programs do even when we see them” as shown by the ludicrous Benson-Flook-Diehr line of cases.

  102. >“Indeed, the patent teaches nothing more than >the idea of using a programmed computer to >implement the process in some way.”

    Judge Patel wrote that. There is no difference between teaching a method on a computer and teaching a method of making a metal. The fact that the method uses a computer does not turn it into an “idea.” Oh brother, the rats are swarming out of the woodwork. Just look at all those MM posts.

  103. MM,

    Once more, your fundamental “cluelessness” of patent law shines through. Cybersource is my “posture child” for why the “machine or transformation” test of Bilski is fundamentally flawed. To have, as Judge Patel did here, split hairs over whether “transformation” includes “manipulation” in this context is absurd, and demonstrates why the Federal Circuit needs to revisit Bilski sooner (rather than later).

  104. “In all fairness to the Fed. Cir., SCOTUS gave them a soup sandwich with the BFD cases. No matter how carefully they took a bite of that crazy thing, they were going get messy and look foolish.

    Anonymous,

    Absolutely correct. SCOTUS is nothing but trouble in this area and Benson-Flook-Diehr line proves it.

  105. “I wouldn’t get too excited, yet. Judge Patel’s statement falls far short of invalidating all Beauregard claims.”

    Because there is no legal basis for the existence of such claims in the first place, Judge Patel need not worry about “invalidating them all.” She need only point out why she could care less about the fact that the claims are drafted in “composition” format.

    But Beauregard claims aren’t compositions. They are descriptions of algorithms, sets of instructions for computers to read. Instructions aren’t patentable. Whether you want to tank under 101 or 103, doesn’t matter.

    It’s over.

  106. “Oh sweet geebus, this is going to be a great year.”

    I wouldn’t get too excited, yet. Judge Patel’s statement falls far short of invalidating all Beauregard claims. Rather, she’s advancing the only logical conclusion, given Bilski – if a method claim is non-statutory, sticking that method claim on a computer readable medium isn’t going to help.

    This case isn’t that radical. As the judge says, “On their face, the claimed methods simply obtain and compare intangible data pertinent to
    business risks.” Pretty close to the facts of Bilski, even if the patentee in this case tried to get by on the “machine” prong of the test.

    It’s also worth nothing that Judge Patel’s ruling falls short of even suggesting that the recitation of “processors” in a method claim is ineffective. Indeed, there were no “processors” in the method claim at issue. The only “processors” in the case were recited in the Beauregard claim, as the processors on which the program instructions would run. It would be hard to get a better recitation of a general purpose computer – the “processors” are otherwise completely unrelated to the other features of the claim.

  107. “Claim 2 claims a process implemented through unspecified program instructions. Indeed, the patent teaches nothing more than the idea of using a programmed computer to implement the process in some way. Claim 2 does
    not claim a combination of printed matter, or anything analogous to printed matter, with the
    “computer readable medium” substrate. Following Bilski, the Board has rightly held that simply
    appending “A computer readable media including program instructions . . .” to an otherwise nonstatutory process claim is insufficient to make it statutory. See Ex parte Cornea-Hasegan, 89 U.S.P.Q.2d 1557, 1561 (B.P.A.I. 2009) (rejecting claim reciting such limitation, under section 101).”

    Get out your Alka-Seltzer, my Beauregard-lovin’ friends. The party’s over.

  108. “Second, even if Beauregard and the USPTO decisions referring to it could be considered to
    set out a legal doctrine, and even if such doctrine survives Bilski, it would not provide a basis for plaintiff to avoid summary judgment. If a “Beauregard claim” is anything, it is an exception to the traditional printed matter rule for computer programs embodied in a tangible medium.”

    BWAHAHAHAHAHAHAHAHAHAHAHAHAH!!!!!!

    Yes, it sure does sound familiar.

  109. “Having reviewed the above tangle of references to “Beauregard” claims and the facts of this
    case, the court reaches two conclusions. First, there is at present no legal doctrine creating a special “Beauregard claim” that would exempt claim 2 of the ‘154 patent from the analysis of Bilski. The USPTO has referred to “Beauregard claims” when assessing computer programs embedded intangible media, but there is no legal support for the view that Beauregard extends the holding of Lowry. Like Auntie Mame’s Uncle Beauregard, the footing of the so-called Beauregard doctrine is anything but sure.”

    Gosh, that sounds so familiar. It’s almost as if Judge Patel were reading my comments here and ignoring the comments of all those m0r0nic trolls.

  110. In the 35 U.S.C. § 101 rejection case of Ex Parte Seshadri et al (BPAI 2008-2854, February 27, 2009),

    link to des.uspto.gov

    the claim body recited “a component executing on a computer.” The Examiner determined that the claims recited “a system that does not contain components defining the physical structure of the system and are considered software per se.”

    The BPAI asked, “Have Appellants shown that the Examiner erred in rejecting these claims under §101 as being software per se?” and noted that the independent claims recited “a component executing on a computer” in the body of the claim. The BPAI wrote, “Thus, these claims require execution on a computer to “create” other limitations recited in the claim. Therefore, we conclude that the independent claims and the claims which depend from them, are not software per se.” The examiner was showned to have erred in rejecting the claims and the Examiner’s rejection under 35 U.S.C. § 101 was reverse.

  111. From Judge Patel’s excellent decision:

    Perhaps of most interest to patent litigators, the Court also held that “[T]here is at present no legal doctrine creating a special ‘Beauregard claim’ that would exempt [claims] from the analysis of Bilski.” A “Beauregard claim” is a claim drawn to “computer readable media” containing software, rather than the method steps implemented by the software itself. There has been much discussion as to whether a Beauregard claim, which would be considered an article of manufacture rather than a pure method claim, falls outside of the purview of Bilski. That question, it appears, has been answered with a resounding “no”, at least in the Northern District of California.

    ———————-

    Oh sweet geebus, this is going to be a great year.

  112. Merely one man’s opinion, but I have abiding concerns that an affirmal of Bilski and others of similar ilk are outside the reach of Title 35 will almost certainly lead to unintended consequences in areas far removed from Title 35.

    If such “inventions” are deemed to be outside the ambit of Title 35 by their inability to pass through the “101 Door” and undergo substantive examination in accordance with the requirements of 102 and 103, I have not the slightest doubt that “movements” will be undertaken to craft “creative” legislation at both the state and federal level that will likely give advocates of limiting the scope of 101 good reason to question their original support.

    As “they” say, “Be careful what you ask for because you may very well get it and be none too pleased.”

  113. Hey, NWPA, if you keep saying “instructions are the structure of innovation” you know what’s going to happen? The instructions will literally BECOME structures. Then nobody will question their patentability as compositions of matter.

    So keep repeating that phrase. You’re doing a good job today, so far.

  114. >>The same would be true of tanking software >>patents, which are written instructions that >>computers read.
    link to judson.blogs.nytimes.com
    So here we have a discussion in the NY Times about whether computers will become smarter than people. The computer will or will not become smarter by virture of those “instructions.” The instructions are a short hand for an information processing machine. The underlying machine can be implemented in many different ways and while important, the underlying structure may be very simple whereas those “instructions” are not simple.

    The instructions are clearly the structure of innovation.

    Information takes space to represent and time and energy to transform. Information theory plays a major role in physics. Patent law needs to craw its way out of the iron age.

  115. Claims preempt everything in their scope. Saying that the claim preempts all uses of an algorithm is really saying “your claims are too broad.” The Benson Court failed to see that other sections of Title 35 outside of 101 are more useful in rejecting broad claims. Instead it latched onto this terrible algorithm preemption hook, which continues to foul 101 jurisprudence to this day.

  116. anonymous: “So reciting “A method of making water comprisising combining two parts hydrogen gas by volume with two parts oxygen gas by volume and adding heat.” is statutory subject matter. Sorry, but that’s a fundemental principle in my book. Certainly more than shifting a register to the left three times.”

    Thank you for unintentionally highlighting the difference between a real invention and a pile of crap. Enjoy your shited register while I drink my water.

  117. In all fairness to the Fed. Cir., SCOTUS gave them a soup sandwich with the BFD cases. No matter how carefully they took a bite of that crazy thing, they were going get messy and look foolish.

    If you pull the thread on Benson, all of 101 falls apart for electronic cases. Benson claimed a method for using a reentrant shift register–as particular machine as there is in the electronic world. What are we talking about: several dozen transistors carefully arranged into logic gates, the gates carfully arranged into flip flops and then connected together in a loop?

    OK, so Benson’s method (which recited steps such as load the bits, shift left three times, etc.) had no other use except with a reentrant shift register, thus pre-empted all uses of the algorithm. Note that it does not pre-empt all digital BCD conversions, but only ones using a re-entrant shift register in that particular fashion.

    But Diehr’s rubber curing method had no other use except for curing rubber in various rubber curing machine, which unlike a re-entrant shift register is useful only for curing rubber…and which according to the claims, was quite a bit less “particular” than the reentrant shift register of Benson. That pre-empts all uses of his algorithm, too.

    In sum, the “particular machine” part of the test simply makes no sense in light of the BFD trilogy.

    And the Fed. Cir. is way out on a limb with it’s approval of Abele’s methods. Nowhere has the SCOTUS approved of a method based on a transformation of data, even when the data represents physical things like bones and internal organs. SCOTUS’ transformation test only applies to transformations of physical things.

    And isn’t the way a elements and compounds react under heat and pressure the very epitome of natural phenomena? But SCOTUS has clearly said on a number of occasions that if you discover (not invent, but discover) a chemical reaction, that is patentable.

    So reciting “A method of making water comprisising combining two parts hydrogen gas by volume with two parts oxygen gas by volume and adding heat.” is statutory subject matter.

    Sorry, but that’s a fundemental principle in my book. Certainly more than shifting a register to the left three times.

  118. “look what the court did in In Re Fisher where they very arbitrarily drew a line and simply decided ESTs were unpatentable. They could do the same with software. ESTs as unpatentable subject matter, while genes and other DNA elements are PSM is really pretty arbitrary”

    It’s only arbitrary if you have no idea what you’re talking about. Removing ESTs from patentability was a straightforward and not particularly controversial application of 101.

    The same would be true of tanking software patents, which are written instructions that computers read. Easy to destroy.

    The reason that ESTs are not patentable but the world doesn’t come to an end is that only a modest industry grew up around the potential patent windfall associated with ESTs. That industry was destroyed (good riddance). In contrast, because virtually anyone can become a software patent wanker overnight, the business is much more widespread and includes a great many more whining crybabies.

  119. “Highlights
    Co-authored a petition for a writ of certiorari in Bilski v. Doll and co-authored amicus curiae brief to the federal circuit in In re Bilski. ”

    I was going to respond to this post based purely on her being a woman, but then this caught my eye. How exactly does she propose that the SC turn a procedural rule into a substantive one? I should remind her that the USSC isn’t as easily bamboozled as the DC and that her and Bilski would be in for quite a fight.

  120. Software is nothing more than a short hand for an electronic machine–an informatin processing machine.

    Those of us that do business methods/ chip design /chip architecture/ and software know that these are all very tightly bound together.

    It always amazes me that I often easily get a patent for logic embedded in a chip, when similar logic in software is rejected and discredited as junk by the examiner.

    Plus, I wonder what it means in the long term to say that software is not eligible for patentability. Does that mean that with AI advances that if I write a software program that when run on a robot builds says a molecule that is patented that I have not infringed?

    Frankly, I am not sure how this shakes out, but I think that it gets very complicated when you ignore a fundamental truth–software is one of the structures of innovation.

  121. >>they could do the same for software.

    The problem is that software and electronic device are intertwined. Large chip makers like Intel battle out this magical line with EPO.

    Plus, consider A/D converters. Does this mean that I can put something into digital form and do whatever I want with it in software and not infringe?

    Plus, consider, if software is not eligible for patentability does that mean that if I implement an element of a claim with software that I can’t infringe the claim?

    Does that mean that anything that is implemented with software can’t infringe a patent?

  122. Agree that Bilski’s real problem should have been 103.

    I disagree with NighWriter though, look what the court did in In Re Fisher where they very arbitrarily drew a line and simply decided ESTs were unpatentable. They could do the same with software. ESTs as unpatentable subject matter, while genes and other DNA elements are PSM is really pretty arbitrary, they could do the same for software.

  123. “And why can’t we just make software and biz methods unpatentable and be done with it? Doing that solves a big problem and avoids unintended consequences.”

    I think the problem is your solution requires action by Congress. There’s no principled way for the courts to do this given the present statutes. And Congress is hopelessly paralyzed by special interests. (Actually we should hope and pray that Congress is frozen into inaction, because generally any action it takes is harmful.)

    As to the guest column, I actually agree with the author that the Supremes will have to step in to clean up the incoherent mess the Fed. Cir. has made in Bilski. I also expect more airy dribble a la KSR.

    As to Bilski’s claims themselves, my gut reaction has always been they should have been rejected on other grounds, e.g., 103.

  124. >And why can’t we just make software and biz >methods unpatentable and be done with it? Doing >that solves a big problem and avoids unintended >consequences.

    We can’t remove software from 101 without also causing massive troubles to at least electrical patents. The problem is that it is a design decision to implement some things in software and some things in hardware.

    Software is one of the structures of innovation. You can’t exclude one of the structures of innovation without having unintended consequences.

    I suppose I can tell clients that they can merely put into software (e.g. microcode) a claim element and then not worry about infringing?

  125. If logic, reason and reality governed SCOTUS in choosing cases for review, any one or more these reasons would suggest that SCOTUS should review Bilski. But, unfortunately, that’s not what governs how SCOTUS chooses cases for review. So the odds are “slim and none” that SCOTUS will review Bilski unless the following happens: (1) they ask for the U.S. Solicitor General’s view as to whether Bilski should be reviewed; and (2) the U.S. Solicitor General says “yes”. That’s the reality here.

  126. If they take it, we will end up with another overbroad decision that will likely mess it up. Bilski is already having unintended effects far outside computers.

    And why can’t we just make software and biz methods unpatentable and be done with it? Doing that solves a big problem and avoids unintended consequences.

  127. Mr. Crouch,

    It is amusing to note that Ms. Arner chooses to identify the “trilogy” of cases as “BFD”. Surely there is a more appropriate acronym.

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