In re Ferguson (Answers to Frequently Asked Questions FAQ)

Scott Harris is the attorney who prosecuted, briefed, and argued in re Ferguson at the Federal Circuit. Harris is a former Fish & Richardson partner and is now in solo practice. He is also listed as a co-inventor on the patent application in dispute here as well as 40 other patents and 100+ pending applications. I asked him to provide his perspective on the case. In response, Harris provided the following FAQ.

What is Ferguson’s holding?

In order for a claim to be patentable under 35 USC 101, that claim must recite either a machine, or recite something that is tied to a machine; or the claim must transform some physical thing. The machine or the physical thing being transformed cannot be a paradigm, cannot be a corporation, and cannot be a legal obligation. 35 USC 101 requires that you must be able to “touch” the machine or the thing being transformed.

How does Ferguson differ from Bilski?

The patent application of In re Bilski, 545, F.3d 943 (Fed Cir 2008) related to an improved mathematical way in which hedged commodities were analyzed and managed. Like many of the previous “preemption” cases that had been decided by the Supreme Court and by the Federal Circuit, Bilski’s claims recited a mathematical algorithm. The Federal Circuit holding announced a new test – requiring the claim combination to be either tied to a “machine” (e.g. a computer) , or claiming a transformation of an object. Since there was no “machine” or “transformation”, the court concluded that Bilski’s claims would “preempt” one specific mathematical form of hedging, effectively stopping anyone else from using these mathematical formulas in the same way. The machine/transformation cannot be peripheral to the claim – which means that the machine or transformation cannot be related to data gathering or “mere” post solution activity.

Unlike the “preemption” cases relied on by the Bilski court, Ferguson had no mathematical calculation at all. The Federal Circuit chose to extend the Bilski test beyond the confines of “preemption” to defeat patentability of Ferguson’s pure business method. Ferguson holds that Bilski’s “machine or transformation” test is the sole and exclusive test for determining patentable subject matter, with or without a mathematical calculation.

Ferguson also held

- that the machine prong of the Bilski test must be a physical thing that one must be able to touch, and

- that the “article” to be changed into a different state or thing cannot be a legal obligation – and presumably likewise must be something that can be touched.

What was the Ferguson patent application about?

In a nutshell – software written by the little guy that was marketed and supported as though it had been written by the big guy. We believed that institutions would simply refuse to adopt or purchase any software unless it was supported by a credible company. Someone in their basement could write the best word processor or drawing program ever – but no one would ever know, because few would ever adopt it.

The patent application claimed a way to support a very small software developer or writer – who had the skills to write the software, but did not have the skills or resources to market and support the software. Ferguson claimed a shared marketing force that took a share of the income or profit from the software in return for doing this marketing and support.   

Why did you write claims to a “paradigm”?

In 1999, new forms of patents and claims were erupting. The patent office had decided to accept as statutory Beauregard claims, which recited a sequence of instructions on a readable computer media. I was excited by the prospect of writing a whole new claim form for the business method genre.

I had originally filed Ferguson’s patent application with many claims reciting a “paradigm”, a way in which a business organization would carry out a specific business task. Other claims defined a process of doing that business task. Ferguson was about selling computer software, and that was not something that would normally be carried out on a computer.   

Based on everything I knew at that time, business methods should be patentable. I wanted to see if we could get the patent office to accept a wholly new form of claim adapted to the business method. I called this a paradigm, which Kuhn, in The Structure of Scientific Revolutions defined as “an accepted model or pattern, . . . Paradigms gain their status because they are more successful than their competitors in solving a few problems that the group of practitioners has come to recognize as acute.” A paradigm in this sense, therefore, referred to the successful way in which a problem is solved.

Why did you think you get claims like this?

I believed the Supreme Court when they said that 35 USC §101 allows you to patent “anything under the sun that is made by man”. Diamond v Chakrabarty, 447 US 303, 308 (1980).

I believed the Federal Circuit, when they said that “business methods” were patentable. State Street Bank and Trust v Signature Financial Group Inc., 149 F.3d 1368 (Fed Cir 1998).

I did not believe there was any prior art defeating patentability, and indeed, the patent office never found any.

Are Business Methods still patentable after Bilski/Ferguson?

Bilski expressly did not overrule the part of State Street Bank and Trust v Signature Financial Group Inc., 149 F.3d 1368 (Fed Cir 1998), which held that business methods were NOT per se unpatentable.

However, I define a business method as a novel and unobvious way that a business carries out a new business function.

The holdings in Bilski and Ferguson make any such business method unpatentable, unless tied to a machine, or operated to transform a physical object. Therefore, some ways of carrying out the business method may be patentable under Bilski / Ferguson. I do not believe any pure business method could be patented under the holdings of Bilski/Ferguson.

What’s your take away from Ferguson?

Disclose (and claim) interaction with a computer in every patent application that is not a pure mechanical device.

Don’t get your hopes up about the patent office accepting an innovative claim form.

28 thoughts on “In re Ferguson (Answers to Frequently Asked Questions FAQ)

  1. “his money and talents would have been better spent on Capitol Hill”

    Please don’t give the man any ideas.

  2. This decision by the Federal Circuit was a non-event at the time, and still is a non-event. Harris’ claim is even more baseless than Bilski’s. There is no “there” there. Why are you devoting so much ink to it? Mind you I am all in favor of the broadest possible scope of §101. But if Harris really wants this type of claim to be patentable, his money and talents would have been better spent on Capitol Hill than in the Federal Courts.

  3. “I have to say I feel sorry for Harris in that light. I mean seriously, what kind of employer is Fish?”

    For what it’s worth, 6, Harris was not an employee of Fish, but a partner. At least that’s what the complaint alleges. I have to say that I’m having trouble understanding the “unlawful” part of Fish’s ownership claim. But then I’m not the #1 patent attorney in the world according to IP Law & Business.

    It is awfully nice that Mr. Harris teaches patent law to kids, though.

  4. “And they are probably as valid today as the day I wrote them since I used my imagination to cover the innovative aspect of the subject matter with resorting to using the words “business” and “method.” Now THAT is what I call an “innovative claim form.”"

    You mean they never were valid? You sir might be getting smarter hanging around me.

  5. “Don’t you owe it to your readers to provide a warning that Mr. Harris will file a defamation suit against you, your readers, and the Easter Bunny if any readers make disparaging remarks about the Ferguson application? ”

    Idk about that, but boy that Harris guy has a nice website!

    link to imapatenttroll.com

  6. “In order for a claim to be patentable under 35 USC 101, that claim must recite either a machine, or recite something that is tied to a machine; or the claim must transform some physical thing. The machine or the physical thing being transformed cannot be a paradigm, cannot be a corporation, and cannot be a legal obligation. 35 USC 101 requires that you must be able to “touch” the machine or the thing being transformed.”

    Man, how did I miss this juicy poast? I wonder if some folks on here will comprehend how this statement from an actual attorney (who is apparently much better than them at judging what the caselaw is saying) might or might not jive with their beliefs on the current state of the lawlol. Probably not, because they are oblivious.

    “Unlike the “preemption” cases relied on by the Bilski court, Ferguson had no mathematical calculation at all. The Federal Circuit chose to extend the Bilski test beyond the confines of “preemption” to defeat patentability of Ferguson’s pure business method. Ferguson holds that Bilski’s “machine or transformation” test is the sole and exclusive test for determining patentable subject matter, with or without a mathematical calculation.”

    Holy hot dmn this man is on fire!

    “Someone in their basement could write the best word processor or drawing program ever – but no one would ever know, because few would ever adopt it.”

    Alright, he put his own fire out. Sure, monkeys could type shakespeare, but it’s not going to happen on this earth and neither is this “guy in his basement” going to beat a legion of programmers.

    “In 1999, new forms of patents and claims were erupting. ”

    I know, it was shameful.

    “The patent office had decided to accept as statutory Beauregard claims, which recited a sequence of instructions on a readable computer media. I was excited by the prospect of writing a whole new claim form for the business method genre.”

    Decided to accept does not equal decided not to fight at that time. Better to marshal your forces and go for the throat in Office friendly court times rather than lose the war during Office unfriendly court times.

    “I had originally filed Ferguson’s patent application with many claims reciting a “paradigm”, a way in which a business organization would carry out a specific business task.”

    The examiner did a word search on “paradigm” and found 0 returns. MUST BE ALLOWABLE!

    “Kuhn, in The Structure of Scientific Revolutions defined as “an accepted model or pattern,”

    Did you cite this in your IDS?

    “Disclose (and claim) interaction with a computer in every patent application that is not a pure mechanical device.

    Don’t get your hopes up about the patent office accepting an innovative claim form.”

    Wise words. Wise words. If you’d like to make sure you actually have a patentable method, you can make that computer a particular one.

    Beauregard souffle anyone?

  7. Thanks for the link to the ICR complaint, Moonbeam. It really deepens this mystery.

    I mean we have a highly paid patent lawyer who “has been involved with teaching patent law to attorneys and technologists” and yet who actually thought he had patentable subject matter with a “paradigm”? (What does it mean to be “involved in teaching” anyway? Is it anything like teaching? Is it like a teacher’s assistant? Maybe Dennis could tell us.)

    I must have a screw loose, but this paradigm thing is like the most ridiculous set of claims I have ever seen.

    Mr. Harris explains: “I believed the Federal Circuit, when they said that “business methods” were patentable. State Street Bank and Trust v Signature Financial Group Inc., 149 F.3d 1368 (Fed Cir 1998).”

    OK, we all did. So what’s that got to do with “paradigm”?

    This reminds me of a Larson Far Side cartoon where two spiders have strung a web across the bottom of a kid’s slide, and one is saying to the other: “If this work’s, we’ll eat like kings.”

    A. Fat chance. B. Waste of everybody’s time.

    The only worthwhile part of this whole Ferguson debacle is Newman’s “concurrence,” which sure didn’t sound like a concurrence to me.

  8. Can someone explain how Bilski raises the patent-eligibility bar relative to State Street? Bilski left open for future case law the precise contours of what is meant by machine implementation, and certainly did not provide much guidance in what constitutes transformation. That means any speculation that the bar has been raised is just that, speculation. Bilski’s leaving-the-door-open rationale allows one to argue Bilski could embrace claims that State Street could not, no? I think assertions that the sky is falling are merely a fuss unwarranted. Here, Harris’ claim fails under State Street, and Ferguson was merely a different analysis obtaining the same result as State Street. What is an example of a claim that would pass muster under State Street, but fail under Bilski? Few, I am beginning to believe. Things have changed, but everything is still the same.

  9. ” 35 USC 101 requires that you must be able to “touch” the machine or the thing being transformed.”

    Didn’t Bilski specifically address the case where one manipulates
    a representation of something physical? Isn’t this within the scope of 101?
    The example in Bilski had something to do with visualizing x-rays.
    Must you actually be able to touch it?

  10. And what exactly is your contribution, Malcolm, besides throwing rocks at cars in the comments of this blog? What have you invented? What have you advocated or obtained for your clients?

  11. Ah, memories:

    /media/docs/2007/10/ICR.Complaint.pdf

    Until September 14, 2007, the inventor of the ’252 Patent, Scott Harris, was a partner at Fish; before his forced resignation, he had been associated with Fish for 14 years. Mr. Harris is a prolific inventor in his own right; he made his first invention at the age of 12. …

    Mr. Harris has 27 patents and has pending approximately 80 patent applications covering many different fields of technology. Most have been sold to different companies that license and enforce the patents. At all times, Fish was aware of Mr. Harris’s personal inventorship activities. Indeed, the co-inventor of one of his
    patents is the wife of the former managing partner of Fish. Plaques identifying some of
    Mr. Harris’s patents were on display in his office at Fish.
    —————————-

    What was it that was invented at “age 12″?

  12. Mooney – going to show us examples of your beyond-reproach applications/patents, or continue as the fool provocateur?

  13. Dennis,

    Don’t you owe it to your readers to provide a warning that Mr. Harris will file a defamation suit against you, your readers, and the Easter Bunny if any readers make disparaging remarks about the Ferguson application?

    link to thepriorart.typepad.com

  14. I personally was not “excited” about the new genre (my BS detector was seriously against the stops) and I never wrote a “business method” claim in my career, and yet, effectively, I wrote many. And they are probably as valid today as the day I wrote them since I used my imagination to cover the innovative aspect of the subject matter with resorting to using the words “business” and “method.” Now THAT is what I call an “innovative claim form.”

  15. Harris: “I did not believe there was any prior art defeating patentability, and indeed, the patent office never found any.”

    [rolls eyes]

  16. Harris: “I was excited by the prospect of writing a whole new claim form for the business method genre.”

    This is one of the most vomit-worthy comments I’ve read on a patent blog in a long time. Yes, Mr. Harris clearly was “very excited” about writing claims in the “business method genre.” We knew that already. But other than achieving personal fame and fortune off the Internet, what is the point? Does Mr. Harris believe that such claims should be patentable? Does Mr. Harris believe that without patents issuing on the dreck he filed that people won’t have incentives to develop new ways of making a profit?

  17. Cripes, Mooney is clicking his freakin’ heels together again. Next, the show tunes and the white wine…

  18. Every well drafted claim is or should be an “innovative claim form” to the extent that the invention is itself “innovative.” Particularly these days.

    Not surprised Harris and the puppet gallery fail to grasp this.

  19. Harris: “I believed the Supreme Court when they said that 35 USC §101 allows you to patent “anything under the sun that is made by man”. Diamond v Chakrabarty, 447 US 303, 308 (1980).”

    LOL. You forgot to click your heels together three times.

  20. Harris” “Ferguson was about selling computer software, and that was not something that would normally be carried out on a computer.”

    On what planet is this an honest statement?

  21. “Disclose (and claim) interaction with a computer in every patent application that is not a pure mechanical device.

    Don’t get your hopes up about the patent office accepting an innovative claim form.”

    And you needed the Ferguson case to tell you these? I’ve been including the computer and interaction with it in my patent apps since well before State Street, as it just seemed like a good idea, since there’s no way to know where the CAFC would go. And I’ve rarely encouraged a client to spend money trying to forge new law.

  22. With all due respect, Mr. Harris, I never quite warmed up to your proposed “more than a scintilla of interaction with the real world in a specific way” standard.

    As for 101 requiring “that you must be able to “touch” the machine or the thing being transformed,” where did you get that from?

    It really sounds like you’re making up stuff as you go along.

  23. “Disclose (and claim) interaction with a computer in every patent application that is not a pure mechanical device.”

    Will this work? You can touch the computer, but you can’t touch the way in which it is changed.

  24. ->Disclose (and claim) interaction with a computer in every patent application that is not a pure mechanical device.<-

    Computers are the basis for almost every emerging technology unless you use words like “goss-darn” or “gizmo.”

    Scott is right on… I would further say that if you client is patenting a purely mechanical device, they might consider how the device might be implemented with the tools of today, namely, computers and networking, to increase the potential applications of the invention.

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