Bilski Briefs [Updated with 44 Briefs]

The question of patentable subject matter has returned to the Supreme Court — this time with a focus on business methods. In January 2009, an en banc Federal Circuit implemented the “machine or transformation test” as the exclusive test for determining whether a claimed process qualifies as patentable subject matter under 35 U.S.C. 101. Now, the case is pending before the Supreme Court with two focused questions:

QUESTIONS PRESENTED

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

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

In this post, I have attached recently filed briefs which either (1) support Bilski or (2) support neither party. The government brief in opposition is due Sept 25 and friendly brief in opposition due within seven days of that filing.

  • Yahoo (Bilski – Yahoo! Amicus Brief (S.Ct) (as filed) (8-6-09).pdf) The focus on physicality does not make sense in today’s technology.
  • IBM (08-964 IBM.pdf) The proper test looks for a “technological contribution.”
  • Regulatory Data Corp ( 08-964 Regulatory Datacorp et al..pdf) Brief by John Duffy focuses directly on the historical importance of the statutory test. “The government is now asking this Court to impose a formalistic restriction on definition of “process” that would create an unprecedented and uncertain judicial limitation on patentable subject matter. This Court should reject that invitation just as it did more than a third of a century ago, when the government unsuccessfully advanced the very same argument. See Gottschalk v. Benson, 409 U.S. 63, 71 (1972).”
  • Accenture (08-964 tsac Accenture and Pitney Bowes, Inc.pdf) Machine or transformation test is not a reliable indicator of anything relevant. The standard for patentability should “usefulness” as set forth in the Constitution, in the patent statute, and by the Court.
  • Austin IP Law Ass’n ( 08-964 Austin Intellectual Property Law Association.pdf) The patent statute explicitly defines process quite broadly in Section 100(b). The Federal Circuit’s version of “process” in 35 U.S.C. § 101 is far narrower than the broad definition of “process” in 35 U.S.C. § 100(b) (2008).   
  • Double Rock and other IP entities (08-964tsacdoublerockcorporation.pdf) The Federal Circuit test conflicts with Supreme Court precedent and Congressional intent.
  • Law Professors [Lemley et al.] (08-964ac20lawandbusinessprofessors.pdf) The distinction on patentable subject matter should be based on the distinction between applied and abstract inventions. Bilski’s claims fail this test.
  • Chakrabarty (08-964 Chakrabarty.pdf) Brief by Scott Kieff and Richard Epstein argue that patent rights operate “like a beacon in the dark” to start conversations between innovative entities and potential users.
  • Franklin Pierce Law Center (Bilski.pdf) Court should adopt the “useful, concrete, and tangible result” test.
  • TeleCommunication Systems (08-964nsactelecommunicationsystemsinc.pdf) Subject matter eligibility should be predictably broad.
  • BIO, AdvaMed, WARF and U of Calif (08-964 tsac Biotechnology Industry Organization et al..pdf) Any decision should be clear that biotechnology is patentable.
  • Conejo Valley Bar Ass’n (08-964.ac.Conejo Valley Bar Association.pdf) The substantive elements of the patent act (102, 103, and 112) do all the necessary work.
  • Novartis (08-964tsacNovartisCorporation.pdf) A process of diagnosis should be patentable.
  • Dr. McDonough (08-964_PetitionerAmCuTMcDounough.pdf) “American innovation is not confined to Industrial Age mousetraps and other cleverly contrived gadgets. The modern economic agent is more likely to encounter innovation today in the services they consume than in the contraptions they use. The present amicus curiae suggests that the decision of the Federal Circuit in this case is an attempt to apply an Industrial Age standard to address a perceived Services Age problem, a problem that the present amicus curiae suggests does not exist.”
  • State of Oregon (08-964_NeutralAmCuOregon.pdf) (The Patent Hawk filed this brief on behalf of all Oregonians – although apparently without any official state approval) The brief makes an important point: Although Section 101 comes first in the statute, it does not make sense to use it as a screening tool at the PTO. Rather, the PTO’s skills are in comparisons of prior art and ensuring that the elements of Section 112 have been satisfied.
  • Chicago IP Law Ass’n (08-964 ac Intellectual Property Association of Chicago.pdf) There are strong parallels here with KSR; CAFC rule is too rigid.
  • Borland (Amicus Curiae Brief (Borland Software Corporation).pdf) The CAFC test does not properly follow Supreme Court precedent.
  • Time Systems (08-964 ac On Time Systems.pdf) Some abstract ideas should be patentable.
  • Monogram BioSciences and Genomic Health (08-964 ac Monogram Biosciences Inc.pdf) Patentable processes can be non-physical.
  • Sachs and Brownstone (08-964 ac Robert R. Sachs.pdf) The CAFC test is limits the patenting of software, and a bad result.
  • Boston Patent Law Association (08-964tsacbostonpatentlaw.pdf) A broad scope of patentable subject matter better preserves the health of an innovative culture; many landmark inventions fail the Federal Circuit’s Bilski test.
  • Georgia Biomedical Partnership, Inc. (08-964 Georgia Biomedical Partnership Inc.pdf) The Supreme Court has consistently refused to offer a “rigid” test.
  • Dolby Labs (08-964 Dolby Laboratories et al..pdf) The important thing is to settle expectations.
  • Teles AG ( 08-964 Teles AG.pdf) Subject matter eligibility should be “dynamic.” “Further, the global nature of today’s economy strongly recommends that the United States patent system be harmonized with robust patent systems of other nations wherever possible.”
  • Medtronic (08-964 Medtronic.pdf) Provides specific examples of medical innovations that may be unpatentable under the Federal Circuit test
  • Intellectual Property Owners (08-964acintellectualproperty.pdf) Machine or transformation test is not the only test; In its transformation test for signals, the CAFC “unduly focuses on the contents of the data . . . rather than the manner in which those signals are generated;” a general purpose computer should be considered a “particular machine.”
  • AIPLA ( 08-964 American Intellectual Property Law Association.pdf) A new exclusionary test is not needed.
  • Houston IPLA (08-964 Houston IP Law Assoc..pdf) The test negatively impacts Dell’s “build-to-order” patent (5,963,743) ; AT&T’s linear programming patent (4,744,028); and Sperry Corporation’s LZW compression patent (4,558,302).
  • Armanta, Asentinel, Cybersource, and Hooked Wireless (08-964 Entrepreneurial Software Companies.pdf) Questions of patentability are causing software companies to lose value.
  • Mr. Meiers ( 08-964 Raymond C. Meiers.pdf) A patentable invention “applies manifestations of nature and achieves a useful result.” This is the tripartite system.
  • Univ. South Florida ( 08-964 University of South Florida.pdf)
  • Awaken IP ( 08-964 AwakenIP.pdf) The CAFC test is unworkable and is as bad as the vague idea/expression dichotomy of copyright.
  • BSA ( 08-964 Business Software Alliance.pdf) Section 101 has been consistently and correctly interpreted to cover software innovations.
  • PhRMA, etc. ( 08-964 PhRMA et al..pdf) Medical processes should be patentable.”
  • Caris Diagnostics ( 08-964 Caris Diagnostics, Inc.pdf) Diagnostic method patents are important and have been called into question by Bilski.
  • AIPPI (AIPPI SupremeCourt_3455697.pdf) A flexible test is better, and TRIPS requires a flexible standard.
  • FICPI ( 08-964 FICPI.pdf) “The § 101 analysis should focus on the section’s substantive utilitarian requirement, rather than retrospectively attempting to rigidly define the categories of patentable subject matter without the foresight of the particular form technological innovations may take in the future.

Update: More Briefs

  • Professor Collins (08-964 Prof. Kevin Emerson Collins.pdf) Professor Collins has written a number of very interesting PSM articles. In his brief, he argues that the test should focus on whether “the claim impermissibly seeks a patent on a fundamental principle or an abstract idea.” One concern of the CAFC test is that it takes us off the path toward international harmonization.
  • Legal Onramp (08-964 Legal OnRamp.pdf) “Pure” business methods should not be patentable. “Unlike traditional patents on technological advances, the patenting of pure business methods is a serious obstacle to innovation because it unduly impedes competition.”
  • Eagle Forum (08-964 Eagle Forum Education & Legal Defense.pdf) Reminds us of the important constitutional role of the patent clause. “The decision below usurps the legislative role and adds complexities to patent law that are neither welcome nor justified in the 21st century.”
  • Fed Cir Bar Ass’n (08-964 Federal Circuit Bar Association.pdf) The CAFC test does not follow Supreme Court precedent.
  • Washington State Patent Law Association (08-964 tsac WSPLA.pdf) The Court should focus on Chakrabarty and Diamond v. Diehr: “any,” “new,” and “useful” “process.”
  • San Diego IP Law Ass’n (08-964 ac San Diego Intellectual Property Law Assoc.pdf)

93 thoughts on “Bilski Briefs [Updated with 44 Briefs]

  1. I wonder if we can just slap some heading on the comments and submit them as a brief. Our summary can be “we can’t decide either”

  2. BigGuy: Aug 13, 2009 at 11:35 AM

    I do not necessarily disagree with you. In fact, the views you articulate represent the likely outcome should such a situation as I posit arise. The problem, however, is that the current construct of Title 35 leaves the matter up in the air due to congressional silence…and this is the rub.

  3. That’s interesting, Mr. Slonecker. I have a different take on those cases – I read them to say that a state can’t provide protection that “looks like” patent or copyright protection, even for subject matter that could NOT “have been covered by Titles 17 and/or 35.”

    For instance, Congress could re-write Section 101 to specifically exclude patent protection for inventions involving the burning of fossil fuel. (I’m not suggesting that they should, mind you, or that such an exclusion would be easy to define.) If they did, the states would still be preempted from providing patent-like protection for those inventions.

    It seems to me that the same is true for Bilski-excluded subject matter. As far as I know we’re not running into any Constitutional limits on Congress’s authority, so it appears that Congress COULD provide patent protection for processes unconnected to machines or not effecting physical transformations. Therefore, states cannot. Any decision the Supreme Court makes regarding what Congress’s Section 101 actually covers would thus appear to have no impact on this preemption.

    Now, I agree that it might not always be clear whether a particular state action is sufficiently “patent-like” to invoke the preemption doctrine. But, if the Supreme Court were to adopt a version of 6′s position, for example, that any method that can be implemented on a general-purpose Intel microprocessor running a mass-market Windows operating system is unpatentable under the current statute, I think it’s quite clear that Vermont can’t provide a 10-year exclusive right to the first inventor of such methods.

  4. BigGuy: Aug 11, 2009 at 02:50 PM

    “Mr. Slonecker, I think that Sears v. Stiffel and Bonito Boats suggest that the answer to your question is no, preemption of “patent-like” laws at the state level would be largely unaffected. Your thoughts?”

    Sears and its progeny reflect the Supreme Court’s consideration of state legislative power pertaining to “things” otherwise within the ambit of patent and/or copyright law. They attempt to articulate the cirsumstances under which the state and federal powers can comfortably co-exist.

    Bilski, in contrast, presents a situation that could lead in the future to a case of first impression; namely, the relationship between state power and federal power under circumstances where “things” are extrisic to Titles 17 and 35, and particularly the latter.

    Thus, my question is framed in the context of what impact this might have to the relationship between state and federal powers? No more could the Supreme Court say “The ‘thing’ could have been covered by Titles 17 and/or 35, but for some reason the inventor/author chose not to avail himself/herself of these Titles.”

    In my view the answer is far from clear.

  5. 35 U.S.C. 101 Inventions patentable.

    Whoever 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, subject to the conditions and requirements of this title.
    link to uspto.gov

    What is lacking is a clearly defined database of business method art. Because there is no good business method (or computer algorithm) abstracting service, there is no where to find existing business methods. IBM, Microsoft, Bilski, the “trolls” and others get patents to minor improvements that likely already exist in other places. Without a uniform abstracted database, it is difficult to find the best art in a storm of other patents, software, and manuals that are not easily searched.

    And for those against “big pharma” you should pick either 1) all government funded research, government providers, and no patents; or 2) let business roll with it. Pharma is expensive because we have an exponential growth in the number of tools available. A stethoscope and bone saw vs. MRI and laproscopic surgery. Costs will continue to rise because old age is expensive. The older I get, the more my medical bills cost, the more treatments I need, the faster I approach bankruptcy. Live with it!

  6. I think the arguments against allowing patents of biomarkers are missing the mark. For instance:

    “It’s pretty hard for the general public to buy the “b-b-but without patents, Big Pharma wouldn’t be able to make a profit” arguments when health care costs are on track to approach what people are paying for rent while Big Pharma is currently making record profits.”

    The argument above is right. Why should we give BigPharma more money? After all, all they want is money, right?

    Using that cynical rationale, if we want diagnostic tests, we have to make them worth something or BigPharma won’t bother developing them. If they are after profits, then they won’t pursue a discovery or product that can easily be ripped off by competitors because there is no patent protection available.

    Furthermore, having effective tests may actually decrease their profits if they cannot make money from the test.

    For example, say BigPharma develops drug “A” that is 100% effective against colon cancer in 20% of the population and completely ineffective for the rest. Because of it’s chance at a cure, 100% of patients with colon cancer try drug “A” drug. If BigPharma creates at test to identify the 20% for which the drug is effective, they are cutting their market share by 80%. Why would they do that if they can’t make any money on the test?

    The techniques used in performing the biomarker or diagnostic tests are almost never patentable (standard and known in the art), it’s the correlation that has value. To put this sort of test on the market is $$$$, as it requires clinical studies and FDA approval. However, it costs almost nothing for a generic company to replicate the technology. With this sort of pricing structure, without patent protection there will be little to no incentive to develop the much touted “personalized medicine” of the future.

  7. MaxDrei,

    I appreciate your improved commenting style and your fighting the urge to throw crap up and see what sticks.

    You are even separating your “EP bias”. Looks like I will be paying substantive attention to your content!

  8. Law Student, I was thinking mainly of apportionment of damages.

    Whereas a brand new blockbuster drug (I’m not talking here about evergreening) is protected by the single patent on the molecule, a new piece of “tech” has thousands of patents on it, held in aggregate by the various members of the relevant patent pool.

    And I’m thinking about the use of industry money in the unprecedented issue and counter-issue lobbying activity on the Hill.

    But, hey, observing from half a world away, I know next to nothing. Others here can provide much more informed comment, much closer to the bone.

  9. Good argument, Jefferson, but (from Europe) I’m still curious. Is your:

    “The Constitution provides for the promotion of the useful arts and sciences, not for the glory of technological change, but for the benefit of economic progress”

    fact, or just your personal opinion?

  10. MaxDrei -

    “The history of “patent reform” in the United States shows that the needs of tech are diametrically opposed (in many respects) to those of pharma.”

    Can you explain what you mean by this statement? Examples?

  11. All this 101 controversy boils down to one thing: whether a process, product, machine, or composition *of information* is patentable.

    Economically, processes that manipulate information in novel ways to aid humans or machines in making decisions are more valuable than the related machine or manufactures.

    It is in deciding what *not* to make, how much to price, what resources to best allocate, and yes, how to best structure the transactions among participants that creates the economic value.

    The Constitution provides for the promotion of the useful arts and sciences, not for the glory of technological change, but for the benefit of economic progress. So yes, process, product, machine or composition of information and improvements thereof should be patentable.

  12. Amen, Max. It’s pretty hard for the general public to buy the “b-b-but without patents, Big Pharma wouldn’t be able to make a profit” arguments when health care costs are on track to approach what people are paying for rent while Big Pharma is currently making record profits. The general public would probably not only be ok with eliminating patents altogether, but probably would approve of waterboarding a random selection of Pharma execs just for good measure.

  13. The brutal fact is that there are a lot more people out there who think like DK and Sadpanda than there are folks who understand how patents work, and they all have a vote. It behoves members of the minority, who know the value of patents, to handle the patent system with extreme care lest “the baby be thrown out, along with the bathwater”. Ultimately, it falls to SCOTUS to constrain inherent patentability within bounds that the public will accept, so that the patent system is accepted by the public as a “good thing” (that delivers a stream of new life-saving drugs, for example) rather than a “bad thing” that puts a brake on creativity, entrepreneurship and enterprise. The history of “patent reform” in the United States shows that the needs of tech are diametrically opposed (in many respects) to those of pharma. Bilski is an opportunity for SCOTUS, Solomon-like, firmly and fairly to “split the baby”, and thereby restore respect for the patents judges and the patent statute. After all, the Congress seems to be unable to do it.

    The vested interests of patent lawyers (including Amicus Duffy), in pushing the boundaries of patentability out to “anything under the sun made by man, except the liberal arts” clash with the common sense of lay voters, that patents should be available only for new combinations of technical features that define a non-obvious solution to an objective technical problem.

  14. Claim 107 of the ‘LZW’ patent. Can anyone distinguish this claim from the claims at issue in Benson?

    107. In a data compression and data decompression method, a compression method for compressing a stream of data character signals into a compressed stream of code signals, said compression method comprising the steps of

    storing, in the locations of a memory, strings of data character signals encountered in said stream of data character signals, respectively, said stored strings having code signals associated therewith, respectively, said locations of said memory being accessable by a plurality of address signals, respectively, each said string of data character signals comprising a prefix string of data character signals and an extension character signal, said prefix string corresponding to a string stored in said memory,

    searching said stream of data character signals by comparaing said stream to said stored strings to determine the longest match therewith,

    inserting into said memory, for storage therein, an extended string comprising said longest match with said stream of data character signals extended by the next data character signal following said longest match,

    assigning a code signal corresponding to said stored extended string, and

    providing the code signal associated with said longest match so as to provide said compressed stream of code signals.

  15. sadpanda,

    Now think of how many drugs there are because patenting provides a cost-recovery mechanism for the actual development of the drugs in the first place.

    I’m saddened by your sadness and incredulity. Your view is sad because in wanting to throw out patents, you do not realize that you would throw out the advances brought about by patents. Without the advances, you would die anyway. After the limited time of exclusivity, the entire world has the advances. You do have good company though – it would seem that you and the Pope are both equally misinformed.

    “But they would have been developed anyway” runs the counter argument. An unprovable view and one frankly I am glad the real world does not have to prove.

    DK,

    Your naiveté is sweet. It’s almost as if real people in companies don’t make the decisions that your seemingly abhor. It’s the bigger “Them”.

    A history teacher of mine used to say, “Human beings, being as they are…”, which means that ANY system will have a certain percentage of abusers. Why do you think that a patent system (or any particular system) would be different? Or do you think that Patents are especially heinous? Do you base this on fact or emotion? Do you have specific examples of “killing the competition by abusing the patent law”?

    Would you be surprised, given the number of patents and comparing the actual number of lawsuits, that the patent system has less problems of abuse than the average abused system? To echo Chief Justice Michel (and put the patent deformer’s cup of tainted kool-aid down), there is NO explosion of lawsuits.

  16. Patents were meant to protect the inventor from someone stealing his/her invention.

    Now they’re being used by companies that want to increase their earning without increasing their expenses, they do this by killing the competition by abusing the patent law.

    What good has ever come from allowing companies to own a patent? They hire inventors, and throw money at building their inventions. Now:

    In all honesty, contracts could easily be written such that an inventor binds him-/herself to licensing all invented products while working for the company, to the company, for at least a 15 year period per invention, in return for a monthly paycheck. The actual period could be regulated by a maximum defined in law, probably depending on which market it applies to, to prevent the “for the lifetime of the inventor” loophole.

    IOW, the law could simply prescribe that it is illegal for a company to hold a patent, and let the market sort the rest out as a licensing issue. When only an individual person can own what (s)he invented, all of the problems we’re seeing goes away, because individual inventors wants to see their invention used for the general benefit of society as much as they want to make a buck.

    (As opposed to companies – see second paragraph above.)

  17. The notion that there are people out there so incredulous as to think that patenting medical and diagnosis processes is a good idea makes me want to cry. Think about a pharmaceutical company that has a patent on an expensive life saving drug. Fine. Then they patent the process to see if you need this drug to live as well as the process to detect if it is working. They could charge you any amount of money they wanted, and you would pay it- or overdose, not get said medication, or die.

  18. I’ve been through about five or six briefs now. They give no consistent interpretation of the holding of Benson. Why am I surprised?

    Comment: Mathematics, ideas and scientific principles cannot be patented – but practical applications of them can be. The Benson algorithm was just such an example.

    Lemley’s brief, for example, said the algorithm was known. I assume it was not. The court said it could be done on paper, but that was not the claim.

    The use of the algorithm was to translate BCD to binary efficiently on a computer, not to use the programmed computer to transform matter into a new state or thing. If a claim to the algorithm on a general purpose is overbroad because it preempts the algorithm, then any claim to any algorithm on a general purpose, such as to the LSW or MP3 algorithms, is overbroad for the same reason. One can only conclude that Benson must be overruled, not “harmonized.”

  19. What a joke. Just a bunch of idiots begging for their personal meal tickets.

    Best choice: Congress eliminates all patents. Period.

    Second choice: Eliminate all “method” patents.

    Third choice: Concentrate on making sure the patent is on the specific, disclosed PROCESS. Not on the result OF the process.

  20. Has any brief directly attacked the “result” in Benson. I cannot see how one can argue on the one hand that the LZW or MP3 compression algorithms, claimed as a machine processes, are patentable, but that the detailed BCD to binary algorithm of Benson is not. A proper claim would be to the algorithm per se (machine process) regardless of example. Such a claim would wholly preempt the algorithm, the vice Benson perceived in the claim before that court and the reason it concluded that claim to be unpatentable. In all cases, regardless of whether it is LZW, MP3 or BCD to binary, data is transformed, not matter. But the technological usefulness of each of the algorithms is beyond question.

    Unless I am entirely off base on this, I cannot see how we can comfortable co-exist with Benson. Yet, I have yet to see a brief directly attack it. Is there one?

  21. “Merely as an aside, I do have to wonder what legal consequences may follow should subject matter, any subject matter, be deemed outside the ‘harbor’ provided by Title 35. For example, ‘federal preemption’ declares Title 35 as forclosing state action. But what about subject matter outside Title 35? Will we now have a scenario where state action is no longer subject to preemption by federal law?”

    Mr. Slonecker, I think that Sears v. Stiffel and Bonito Boats suggest that the answer to your question is no, preemption of “patent-like” laws at the state level would be largely unaffected. Your thoughts?

  22. “Surprise surprise surprise. An examiner is wrong and I am expected to file an RCE for the privilege of explaining it to him/her (again).”

    Or appeal your nonsense.

    “Those who have poo-poo’ed Prof. Duffy’s reference to financial engineering, walk in the well-worn footprints of those that criticized other emerging areas of scientific discourse”

    We all understand how it is “engineering” and “scientific” and we also get that it wasn’t traditionally so. We have other words especially for what is being described.

  23. Wasn’t the point of utility and historical patent law that the invention was capable of being industrialized in, say, a factory. Without the machine part, how does one industrialize a pure human step process?

  24. “If something is capable of useful application, isn’t it useful?”

    The issue was decided years ago and the answer is no. The utility needs to be substantial. You may recall that expressed sequence tags, without more, were declared unpatentable even though they were certainly capable of useful application. In spite of the extremely harmful effect this had on many companies and their investors, most patent prosecutors shed not a tear.

    Go figure.

  25. “Please insert $50 to continue.

    Posted by: 6 | Aug 10, 2009 at 08:53 AM”

    Surprise surprise surprise. An examiner is wrong and I am expected to file an RCE for the privilege of explaining it to him/her (again).

  26. It is quite distressing to note what I believe should be respectful give and take among professionals devolve into numerous personal “put downs” between certain individuals who hold differing viewspoints.

    I for one await the filing of the later set of briefs likely arguing that the patent application for what Messrs. Bilski and Warsaw have “invented” is outside the scope of Title 35′s patent eligible subject matter per 101. Of course, it most certainly does not help to analyze 101 with reference to 100.

    I have always had a high degree of skepticism how one can define, without patent ambiguity, an “invention” using the term “invention” in the definition and “process” using the term “process” in the definition. 100 is hardly a model of clarity, as seems to me only too clear in reviewing Mr. Duffy’s argument that seems directed to little more that a thoughful analysis of how to interpret definitions in references such as the Merriam Webster dictionary.

    Merely as an aside, I do have to wonder what legal consequences may follow should subject matter, any subject matter, be deemed outside the “harbor” provided by Title 35. For example, “federal preemption” declares Title 35 as forclosing state action. But what about subject matter outside Title 35? Will we now have a scenario where state action is no longer subject to preemption by federal law?

  27. Hey Gaiben, do you have a safe, or maybe a combination lock? Do you find the combination of numbers useful to have? A numer having known properties (e.g., a very large prime number) is useful. A statistical probability of an event occurring is merely a number, but it’s useful with respect to that event. I bet your wife’s birthdate number is pretty useful to avoid overnight stays in the doghouse.

    I’m the president of a big university. A donor wants me to start a new theoretical algorithms research group. I’m tight on budget in this economy. I ask my attorney: can we make money off this research to help keep cost low? If the answer is no, maybe I don’t start this research. And maybe the research that would-have-been would have made MRI scans more detailed, or would have found a way to improve parallel processing speed (benefiting global weather and physics research) or would have … you get the idea.

    If I invent a circuit, no one requires that I _claim_ a practical application of the circuit. A new circuit’s usefulness can usually speak for itself. Same with an algorithm. Fine by me if you want me to claim my new algorithm in some physical way… like “computer-implemented” or “performed by a physical device” or whatever. But requiring more than that ignores the fact that an algorithm can be useful in many applications. If you come up with a new semi-conductor that doubles the speed of all computers, you deserve a patent. If I come up with a new mathematical algorithm that when applied to an operating system can double the efficiency of memory cache, I deserve a patent too (and I shouldn’t be limited to just the application in an O.S.).

    Is algorithm research something we want to encourage? Can new useful algorithms improve life? Ask the brain cancer patient if he’d like to proceed without an MRI (impossible without algorithms).

    So you think: claim your algorithm as applied to an MRI machine. Fine. But what if my algorithm is also useful in digital cameras, and internet routers, and weather satellites, and … so on. Should I have to file a thousand patents? Your reasoning is flawed. Usefulness does not hinge on actual use. Usefulness is a property that reflects the potential of a thing. Traditional technical arts don’t require claiming application of the new thing, neither should computer-implemented numerical algorithms. An element of physicality, whatever that means, should be sufficient.

    I’ve worked with a lot of c.s. researchers. It’s gratifying to see them get that extra incentive cash each year for filing some patents. Go use Google or Bing, you’ll benefit from their work. If you’re a patent attorney, maybe you need to find some software clients who rely on patents to exist, like to obtain VC funding. The area of user interface research comes to mind. It can involve a lot of cost to run a lab with test users, usability studies, etc.. It’s expensive just to find out what problems exist. So you spend the time and money, and find a clever improvement that’s trivial to implement. Most would call the idea useful and non-obvious. Yet a competitor could copy the idea with neglible cost, and your competitive advantage is lost, maybe you don’t recoup the cost of the research.

    It’s true there’s some advantage to being “first to market” with a new idea. But the early days of the software industry are long gone. It’s so easy to reverse engineer and immitate, and the stakes are higher. It’s a whole different world today. Patents aren’t the cure-all, but they have a proper place.

  28. Gaiben (and pseudonyms),

    My post was hardly an emotional reaction.

    I clearly pointed out your mistake in believing that PumpingLemmas “made your point” and rationally explained why.

    I posited that you are not a lawyer for missing the point-counterpoint exchange, and even made allowance for your post’s emotive content. The “legal arguments” put forth by those with only a technical background on this board and others (such as Gene Quinn’s IPWatchdog) often contain errors such as yours.

    If you are indeed a patent lawyer, I offer my apologies for confusing your mistake for that of an impassioned novice. Your mistake is only more the glaring in this case.

    The call for reason is laudable, but reason and passion can (and must) co-exist. If passionate debate is too much for you, you may be in the wrong profession.

  29. “As such, thanks BigGuy, and your alter ego, ‘Pumping’ for making my point.”

    What did I do?

    But I’ll throw my contribution in, since you insist on dragging me into this. You said “An abstract algorithm not tied to a machine or apparatus should not be patentable under the current law.” Actually, that IS the current law, has been the law for some time, and will almost certainly be the law after Bilski is reviewed by the Supreme Court, for the simple reason that this is not the issue under review.

  30. Noise,

    I just took the time to read your comments for the third time. If there is anything I can do to help you, psychologically, please let me know.

  31. Noise above Law,

    I must say, that is an impressive emotional reaction to my post, surprising to say the least.

    I am a patent lawyer and the Bilski case is couched upon whether an algorithm should be tied to an apparatus or not.

    Yes, and Pumping did make my point – he tied all his examples to machines and apparatuses and that may have been unfortunate if he wanted to argue that numerical transformations could exist in a netherworld not on paper nor in our heads, Should an algorithm be tied to a machine or apparatus or not? That is the crux of Bilski – which has been conveniently forgotten by many bloggers here. As such, thanks BigGuy, and your alter ego, “Pumping” for making my point. Please direct your anger toward a more positive place and not toward other lawyers that are trying to provide meaningful analysis under Bilski.

    This will be my last post as Patently-O is proving to be more of a flame war zone than a bastion for any discussion of substance relating to patent law.

  32. Those who have poo-poo’ed Prof. Duffy’s reference to financial engineering, walk in the well-worn footprints of those that criticized other emerging areas of scientific discourse, see computer engineering, and before that, electrical engineering, see also biotechnology. Sorry, the idea that the wheel and pulley are the only form of science is a bit antiquated and myopic. As sciences have advanced, applied science advances as well.

    The word technology means “the practical application of knowledge in a particular area.” The etymology of the term comes from the Greek “technologia”, the systematic treatment of an art, from “techne” meaning art or skill, and “logos” means word, the utterance by which an inward thought is expressed; so literally technology means words or discourse about the way things are gained; today it seems the term has been interpretted to have a much narrower meaning, see: link to web.engr.oregonstate.edu

    The work of applied mathematics to financial problems is a well understood area of computational research, see, e.g., the Institute for Quantitative Research in Finance (Q-Group, link to q-group.org), and the International Association of Financial Engineers (IAFE.org) which lists 70 financial engineering programs (including BS, MS, and PhD) worldwide in the study of financial engineering: link to iafe.org

    You can’t diminish the work of the likes of Harry Markowitz, Jack Treynor, Robert Merton, William Sharpe, Myron Scholes, James Tobin, etc., just because they choose to apply the scientific method and applied math and computations to the financial and economic disciplines.

  33. “MM has stated many times that we don’t need patents because the activity that led to the patent would have occurred anyway. This guy probably believes that we don’t need contract law, because people would still make and fulfill promises with each other, and we don’t need laws making theft a crime because, heck, most people are honest and the law doesn’t keep them from stealing.”

    Gee, that’s persuasive. What was your point, exactly?

    “Herodotus, Homer, Socrates, Cicero, The Bard, and countless others wrote without the incentive of being able to own their creations.” Not to mention Moses. And yet Dan Brown, J.K. Rowling, and James Patternson get to own their carp for near perpetuity. That makes sense.

  34. Gaiben,

    I would guess that you are not a lawyer. You should not be thanking PumpingLemmas, since he did not make your point. Quite the converse, he took your point and by analogy showed that even limiting the subject matter to the likes of “machine and apparatus”, your supposition is fatally flawed.

    I would also question your belief as to what patents are for. Anyone who so readily espouses trade secrets more than likely harbors an irrational anti-patent bias. Trade secrets do have their place – some things may be worth the secrecy for the holder, but for society, there is no advancement with secrets. I have seen this trade secret or copyright as alternatives most often in those who have drunk the “software is free” koolaid, and who do not know the risks and limitations of those alternatives. Further, the exclusionary attitude is often placed around a particular technology (computer science is sooo different…). You might place foremost in your mind the concept that the patent laws were built to embrace new and unforeseen advances. The “not in my backyard” attitude provides evidence of the lack of this knowledge.

    “breadcrumbs” has posted how the world view of law and the world view of tech can be difficult to bridge, and that patent attorneys have a foot in each world. Those with feet in only one world often put forth fatally flawed arguments, such as yours. The one-world myopia can even lead to the inability to understand the breaks in logic of the anti-patent agenda.

    Being passionately misguided usually does not bring about the same ire as being persistently ignorant, but does tend to cloud the use of logic in ironically a class of people who highly value logic. I understand and can empathize more with the passionately misguided, and hope that your passion is not wed to a persistent ignorance.

  35. PumpingLemmas,

    Thank you for making my point. All of your examples were tied to a machine or apparatus. I hope that you understand what I am saying now.

    An abstract algorithm not tied to a machine or apparatus should not be patentable under the current law. Until there are new laws made, the court should not stretch them to fit this case.

    Algorithms themselves are not useful inventions that fall under patent purview. It’s like patenting a slogan. Sure, a slogan could be arguably useful for creating business, etc. and it is not tied to a particular display medium and it is not patentable. I think the closest example would be software. You cannot patent software code either.

  36. MM: “Nobody doubts that if Bell had no “invented” the telephone, that many others would have done the same. Many others in fact DID do it, independently, and (quite convincingly) before Bell.”

    This guy is a dictionary of fallacies. It reminds me of that old saying about being the last person to die in a war… With many things, sooner is better than later. Could you imagine having this blog by postal mail? How about being the person who died of a disease the day before the cure became available? Thanks for the viewpoint, but I’ll take my progress now instead of later.

  37. “Look, numbers themselves are not useful, any process that is used to obtain a number is inherently not useful. What is useful is the APPLICATION of said number which is obtained from a transformation. The transformation and the number itself are not useful products or processes. It is the application of the number which is useful. I agree with the court and I hope that numerical algorithms themselves do not become patentable.”

    If something is capable of useful application, isn’t it useful? By your reasoning, an oven isn’t useful until a goose is cooking in it. You confuse use with useful. What?- the minute someone stops hitting the nail on the head, the hammer is no longer is useful? After all, it’s the application of the hammer that makes it useful.

    By the same reasoning, a new type of memory cell isn’t useful. After all, by itself it does nothing useful. Heck, its storage of information (a bit), by itself, couldn’t be more useless. If someone wants to patent that new memory cell, they should have to claim its useful application, like say “a memory cell [with new unobvious properties] storing a bit in a computer that is controlling a lightbulb”, or some such thing. They can’t claim it as a memory cell in a computer, because, after all, computers aren’t useful; they just transform numbers. It’s the application of those numbers that is useful. A new kind of sprocket isn’t useful — by itself it can’t do anything for anyone.

  38. MM has stated many times that we don’t need patents because the activity that led to the patent would have occurred anyway. This guy probably believes that we don’t need contract law, because people would still make and fulfill promises with each other, and we don’t need laws making theft a crime because, heck, most people are honest and the law doesn’t keep them from stealing. We don’t need bounties, because most people are good samaritins and will turn in bad guys without the incentive. Who needs copyrights — Herodotus, Homer, Socrates, Cicero, The Bard, and countless others wrote without the incentive of being able to own their creations.

    This message brought to you by useless queues and abstract shuffling of numbers.

  39. Breadcrumbs,

    That depends on how the claims are written. If you want to tie the cryptographic process to a machine, it’s ok. The cryptology will always be tied to a machine unless it’s done on paper or in your head.

    Otherwise, a cryptographic algorithm does not get a patent, either keep it a trade secret or copyright it.

    Utility patents are not the answer to every new idea people dream up.

  40. “The ability to provide fixed bill energy contracts in the US grew out of the deregulation of the energy industry in the 1990’s.”

    How’d that deregulation work out (I mean, for regular folks, not the fat pigs at Enron et al)? The Bilski patent application (and many similar applications) grew out of that deregulation as well as the deregulation in patent law occurring at the same time. Meanwhile, the Supremes have begun cracking down on the patent free-for-all and states such as Minnesota are cracking down on the contracts. Here’s to a continuation of both trends, which serve to force an elite minority to kick its greedy and destructive habits, and force the USPTO to focus its limited resources on the examination of tangible inventions that achieve more than shuffling numbers or queues of people waiting to take a leak.

  41. “What the hell is MaxDrei’s personal troll talking about?”

    Who knows. Ignore it, maybe it will go away.

  42. MM they’re simply inferring too much from what you said. Remember, they make a living from inferring too much, you simply must watch yourself.

  43. “In back to back posts, Malcolm calls for a new obviousness standard”

    What the helll is MaxDrei’s personal troll talking about?

  44. Wow, even for Malcolm, that’s quite some gratuitous crap.

    In back to back posts, Malcolm calls for a new obviousness standard “without patents…that many others would have done the same.” and then repudiates someone holding his feet to the fire with “exists only in your mind.”

    Malcolm, what is your point in your 2:31 post, other than the typical so-he-wouldn’t-have-gotton-a-patent-let’s-still-toss-the-law-because-that’s-how-I-see-it worthless crap?

    Your anti-patent tendencies are getting the best of you.

  45. “how does the present obviousness test differ from your “many others would have invented it” test,”

    Mainly in that the present obviousness test exists in the real world while my “many others would have invented it” test exists only in your mind.

  46. how does the present obviousness test differ from your “many others would have invented it” test, Malcolm?

  47. “nice historical examples of many important inventions that would not pass that test”

    So what? What is the implication? That there was no other way to protect those innovations except to use the exact claim language at issue? i.e., “‘The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth.” Let us hope not.

    Or is the implication that without such patents, the invention would never have occurred? That doesn’t appear correct and the dissent by three of the Supremes in the Bell case is rather prophetic in its tone: “A common astronomer, by carefully sweeping the sky, might have been first in discovering the planet Neptune; while no one but a Leverrier, or an Adams, could have ascertained its existence and position by calculation. So it was with Bell and Drawbaugh. The latter invented the telephone without appreciating the importanc and completeness of his invention. Bell subsequently projected it on the basis of scientific inference, and took out a patent for it. But, as our laws do not award a patent to one who was not the first to make an invention, we think that Bell’s patent is void by the anticipation of Drawbaugh.”

    Nobody doubts that if Bell had no “invented” the telephone, that many others would have done the same. Many others in fact DID do it, independently, and (quite convincingly) before Bell.

    This is the case with nearly *ALL* the Bilski’d garbage we’ve been discussing.

  48. “But the really interesting aspect of this IPO brief is an obvious attempt in that same M or T” test challenge to also get the Supremes to indirectly overrule the 2008 CAFC decision in In re Nuijten barring any “signal” claims under 101 [without mentioning that decision by name, or that the Supremes had refused cert for it].”

    Because everyone knows that the Supreme Court loves it when attorneys try to hide the ball.

  49. The IPO has now also published its amcus brief in this Sup. Ct. In re Bilski appeal. It takes a “neutral” position on the validity of the Bilski claims, but like others above attacks the “M or T” test as too narrow, giving more nice historical examples of many important inventions that would not pass that test, and in particular noting the claim sustained by the Sup. Ct. in 1888 in Dolbear v.American Bell Tel. Co., 126 U.S. 1. Also, noting subsequent Sup. Ct. case citations of that decision.
    But the really interesting aspect of this IPO brief is an obvious attempt in that same M or T” test challenge to also get the Supremes to indirectly overrule the 2008 CAFC decision in In re Nuijten barring any “signal” claims under 101 [without mentioning that decision by name, or that the Supremes had refused cert for it].

  50. Following on from the Darn European above, I give the link to the veritable multitude of Amicus Curiae briefs, including one from the AIPLA, and others from the likes of Accenture and Pitney-Bowes, for the EPO’s Supreme Court (the Enlarged Board of Appeal) to consider, in the Presidential referral case G3/08 on the patentability of software/business methods at the EPO. I think you will find the Briefs overwhelmingly in favour of the EPO status quo. Darn those Europeans.

    link to epo.org

    Mind you, with SCOTUS and the EBA simultaneously “on the case”, do you think they might be (deep behind the scenes and out of sight of everybody) actually talking to each other? Surely not. The sheer effrontery of any Patent Office person thinking it can help a Supreme Court judge, and no Supreme Court judge would come to the idea of offering suggestions to the technical judges of the EPO Boards of Appeal, on where to draw the line on inherent patentability. Shame, I would say. Good opportunity lost, once again.

  51. Some of the briefs seem to do more harm than good to their cause.

    For instance, the brief about diagnostic tests — should someone be allowed to claim how to diagnose a certain disease based on, for instance, the presence of a certain protein in your blood. They may be allowed to patent specific methods of detecting the protein, but the thought that they can stop a doctor from diagnosing a disease using a method seems like a really bad idea. (All the more so because it is likely that such a correlation would usually be developed using public support, including NIH grants.)

    There is a very different reason for opposing Bilski (and related to the alleged analogy of financial engineering as applied economics) is that economic theory and practice is sufficiently imprecise that the “metes and bounds” of claimed financial engineering inventions are very imprecise. The situation of management theory (from which which business model methods are based) is still worse. Till such time as these bodies of knowledge are sufficiently advanced, it may make sense to apply the MoT test. Eventually perhaps we may revisit the issue.

    Disclaimer: I am an economist rather than a lawyer and apologize in advance if I have slain any sacred legal cows.

  52. The test for patentable subject matter in Europe (that is, under the EPC) is arguably a good one. In any case, it seems to be consistent with what the IBM is asking for in their amicus brief.

    The EPC test can be used to accurately ascertain when claimed subject matter is a computer-implemented business method vs. when claimed subject matter is technical (i.e. when it’s really directed at the internal workings of a computer, and results in e.g. something like better RAM usage, more efficient execution, etc.).

    For background info, the Wikipedia article offers a good, accessible summar: link to en.wikipedia.org

    The probability that the SCOTUS will simply scrap its prior precedent and adopt this test closely approaches 0.
    However, a lot of people would welcome a test that that got the same results, even if it got there a different way.

  53. USEFULNESS IS INDEFINITE

    One question: How do you avoid “garbage in, garbage out?” If a transformation of numerical data can be separately patented, I can call it a “risk coefficient” or anything else I want – a line must be drawn when it comes to numerical transformations or usefulness will be indefinite.

    Look, numbers themselves are not useful, any process that is used to obtain a number is inherently not useful. What is useful is the APPLICATION of said number which is obtained from a transformation. The transformation and the number itself are not useful products or processes. It is the application of the number which is useful. I agree with the court and I hope that numerical algorithms themselves do not become patentable.

  54. “It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” —-We do not hold—- that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. ——We do not so hold—–.” Emphasis Added

    I can read. Can you?

  55. Les I read that a long time ago thx. Like I said. You internet rtards will have no support.

    Here, I’ll give you a little analysis to help relieve you from one of the problems brought upon yourself by your inability to read. Benson claimed the only useful product of the abstract comment. This was unacceptable. Thus, the USSC decided that they would stick to the narrow invalidity premise and let themselves punt on the real issue of whether or not MoT was required. Now the other team got the ball, and brought it back to them. It is their play again.

    In sum Les, failing to hold a certain thing when the court isn’t forced into holding or rejecting it is not a cause for celebration on your part. if anything, it is a cause for you to be alarmed. What the court is saying is this: “this is a really hard/broad subject and we don’t want to touch it today, because if we did it might turn out bad, k thx bye”. Now bilski is forcing their hand. It’ll turn out bad. Or the USSC will weasel out of deciding the issue.

    To be completely honest I prefered the people in 2nd grade who at least would straight up declare to me that they didn’t know how to read so I could just skip over their “beliefs” instead of addressing them on the merits. In any event Les, you’ve had enough freebies for the last little while. If you want more, I’m available for you to hire.

  56. “Les, why are you so dmb? I have said, many times, that the CAFC’s test is not what I would impose. ”

    “I give up o you worthless financially motivated shinanigan pullers. The USSC will settle you down right fast. Scalia and 8 more learned judges will have ——my back—–, while you internet rtards will have no support. You watch. ” Emphasis added.

    Am I dumb, or are you two faced?

    As for the SCOTUS having your back, here is what the SCOTUS has said on the issue:

    “It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” —-We do not hold—- that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. ——We do not so hold—–.” Emphasis Added

    link to caselaw.lp.findlaw.com

    read ‘em and weep

  57. MM, you will get me into trouble, repeating what I wrote then saying that I was quoting Duffy. My words were an attempt to abstract the thought from Duffy’s Brief; I don’t think you will find my words, as such, in Duffy. Actually, I sympathise with your view, but fear that the Duffy view will prevail: that, if the subject matter of the claim isn’t “liberal” arts then it must be “useful” arts and so it passes the 101 test. I wonder, is there an undifferentiated middle, that occupies a gap between liberal arts and 101-meeting “useful” arts. I think there is, but I also think that the difficulty of defining that middle will be too much for the non-technical SCOTUS team. It’s bad enough defining one line where patentability stops, harder still to define two lines in the sand. My prediction: SCOTUS will cop out, and simply go with Duffy, because it will favour a KSR no strict rule test, because it knows there is indeed a distinction between liberal and useful arts, and because (being non-technical) it simply can’t think of any better line in the sand.

  58. “35 U.S.C. § 100(b)”

    The biggest, and longest running joke of patent law.

    Les, why are you so dmb? I have said, many times, that the CAFC’s test is not what I would impose. I don’t need to read these jackofs to know that the cafc’s test is probably “wrong”. The problem is, none of these guys probably got it “right” either. The USSC will bring down the hammer, hard, on the types of subject matter the CAFC sought to combat. Just because the MoT test, as currently stated, isn’t perfection will not save you and your presumptive hoard of sht claims from the wrath of the USSC. Sorry, it just will not.

    These guys filing a brief isn’t going to stop the fact that taking this to the USSC is the equivalent of Bilski saying “ok, I would like another, harsher, beating please.”.

    “bECAUSE OF THE BROAD DEFINITION OF “MANUFACTURE,”
    THE eNGLISH PATENT SYSTEM ROUTINELY ISSUED PROCESS
    PATENTS. iNDEED, ¢HIEF JUSTICE eYRE ESTIMATED IN 1795
    THAT “TWO-THIRDS, i BELIEVE i MIGHT SAY, THREE-FOURTHS OF
    ALL PATENTS GRANTED SINCE THE STATUTE (OF mONOPOLIES)
    PASSED, ARE FOR METHODS OF OPERATING AND OF
    MANUFACTURING, PRODUCING NO NEW SUBSTANCES AND
    EMPLOYING NO NEW MACHINERY.””

    See, that was what a real process claim was all about. Now we have these bs claims where it is nothing more than another way of claiming a product because the only thing “new” is the fact that it is a new product. The method itself isn’t really “new” except for the steps of making the “new” thing. I can’t believe that the court messed that up in the 60′s. I h8te them sometimes for that. Examining methods is a farce these days.

    I love how that guy who attempts to throw back to the old dictionaries does so blatantly improperly, thinking that he can just pick and choose his definitions of each word regardless of context. And then, he just tacks “iT IS A LOGICAL ERROR TO ASSUME THAT, BECAUSE ALL
    MANUFACTURING ARTS ARE USEFUL ARTS, ALL USEFUL ARTS MUST
    BE MANUFACTURING ARTS.” on at the end (I don’t know why the caps is reversed in the qoute, but I didn’t do it) As if he had just laid down something to show why it is a logical error and why contemporaries of Johnson did consider “useful arts” to be “manufacture”, especially in the context of patents. He doesn’t even attempt to explain himself. If he has an argument to make, then he needs to support his statements. Then, to top it off, he goes on to say:

    “nONE OF THE HISTORICAL SOURCES PRODUCED BY THE
    GOVERNMENT BELOW CONSTRAIN THE USEFUL ARTS SOLELY TO THE
    PROCESSES OR ARTS OF MANUFACTURING (NARROWLY
    CONSTRUED), AND CERTAINLY NONE LIMITS “USEFUL ARTS” TO
    THOSE ARTS THAT ARE “TIED TO A PARTICULAR MACHINE” OR THAT
    “TRANSFORM() A PARTICULAR ARTICLE INTO A DIFFERENT STATE
    OR THING.” QUITE THE CONTRARY. FOR EXAMPLE, IN ANOTHER
    WORK, tENCH ¢OXE HIMSELF LISTED THE “(M)ANY CURIOUS AND
    VALUABLE INVENTIONS AND IMPROVEMENTS” RESPONSIBLE FOR
    THE “VERY RAPID PROGRESS, AND A MUCH WIDER DIFFUSION IN
    THE USEFUL ARTS AND TRADES” OCCURRING IN THE YOUNG
    NATION. tENCH ¢OXE, a sTATEMENT OF THE aRTS AND
    mANUFACTURES OF THE UNITED sTATES L (1814). ¢OXE
    INCLUDED IMPROVEMENTS IN THE MANAGEMENT TECHNIQUES
    AND SERVICES USED BY MANUFACTURERS AND OTHER
    PRODUCERS SUCH AS “THE DIVISION OF LABOR IN THE CULTIVATION
    OF THE CANE,” “THE EXTENSION AND FACILITATION OF
    COMMUNICATION,” AND “THE EXTENSION OF THE FUNDS OF THE
    MANUFACTURERS BY MANY OF THE BANKS, WHICH ARE SOLIDLY
    FOUNDED AND RIGIDLY CONSTITUTED AND ADMINISTERED.””

    Where he blatantly says “useful arts and TRADES” and then proceeds to list business methods. Because they would be a “trade” back then. You plied your trade back then. That is, you performed your “business methods” such as the division of labor and blah blah blah.

    How supposedly scholarly people can be so bad at reading is astounding to me. Perhaps they simply never spent time reading old old books? I mean, they’re older than me, I would have expected them to have had easier access to them back when they were kids than I did.

    I give up o you worthless financially motivated shinanigan pullers. The USSC will settle you down right fast. Scalia and 8 more learned judges will have my back, while you internet rtards will have no support. You watch.

    ” just as anyone can use a newly isolated DNA molecule as an additive in turtle food. ”

    Actually I can’t do that.

    “6′s brief “MoT test makes my job easier to avoid doing any examining, amirite?”"

    btw, it doesn’t make my job easier. I don’t work in the AU’s dealing with sht methods. The methods in my art have a transformation involved in nearly 100% of them. The only thing MOT does for me is have to write up a 101 when they left the transformation out. So, in sum, it makes my job “harder” or “longer”.

    “What this all comes down to is you can’t KO the patent under 101, (at least not without rewriting SCOUTUS precedent) so now you want to bring 112 into it. Enough is enough! Give the gentleman his patent and let’s all move on.”

    No AI what Hawk’s brief comes down to is a sad attempt to avoid the USSC knocking out a whole realm of useless crp by getting them to avoid the issue. He doesn’t have anything against Bilski, or his claims. He has an issue with what Bilski is about to do to him, and his biz.

  59. From the brief: “Regardless of how much gas the consumer uses consistent with the method, the heating bill will remain fixed.” “The method of the invention does not necessarily have to be performed on a particular machine or
    computer …”

    It is to laugh. This is a substantial utility for 101 purposes? Any seller of a commodity can keep a price fixed (or not) after doing some math, just as anyone can use a newly isolated DNA molecule as an additive in turtle food. The point is that granting patents on this crap doesn’t promote anything except the exploitation of the PTO and the courts for the sole benefit of the patentee.

    If this method of “identifying” and “initiating” stuff isn’t practiced on a particlar machine or computer, then how can a commodity provider avoid being accused of infringement and dragged into court if he/she “initiates transactions” and “sells at fixed rates” to minimize overall risk?

    “In doing so, the Federal Circuit has ventured into territory reserved for the legislature and disrupted the legitimate expectations of patent owners and inventors in their property.”

    I recall that argument was made in KSR on behalf of sticking to the strict TSM test. Not terribly compelling.

    “The existing requirements for patentability—properly applied—are better suited than the machine-or-transformation test to prevent the issuance of vague or trivial patents for business methods as well as all other fields.”

    If that were true, we wouldn’t be having this discussion.

  60. “after having spent some 10 years in the patent process and having the Office and the CAFC, refuse to reject his application on 112, 102. and 103 grounds. I say he deserves his patent and a chance to see how strong and enforceable it can be in the free market system.”

    I love it, forget the MoT test, forget the UCT test, the new test will be the Fortitude Test.

    “Bilski, for the last ten years you’ve been rejected under every statute in the book, yet you refuse to acknowledge that your method of managing risk is not patentable. What determination! What grit! You’ve passed the “4 RCE” test. Now get out there and sue some people, kid! You’ve earned it!”

  61. This may have been addressed before, but the file wrapper for the Bilski application, 08/833,892, is not available on PAIR. Presumably it was filed with a nonpublication request.

    Can the Court view the contents of the Specification? If not, how will the know what the language of the claims means? If they can, how can the render a decision without disclosing the contents and thus violating Bilski’s right to confidentiality of the contents of his application?

  62. “Are you hoping instead that the Justices read patentlyo comments?”

    I doubt they have time. On the other hand, some of their friends, some of their clerks and some of their clerks’ friends probably do have time.

    Frightening, isn’t it?

  63. MM, I watched Duffy say “financial engineering” with a straight face during the Federal Circuit argument and couldn’t believe my ears. The fact that he has an undergrad physics degree makes it all the more galling.

    On some level, though, this reminds me of the age-old debate about what is and isn’t a “sport.” Except that here, courts have to decide it and what they say matters.

  64. peanut gallery, at the merits phase at the Supreme Court, amicus briefs are typically due a week after the brief of the party they’re supporting. Sup. Ct. R. 37.3(a).

    So what Dennis has posted is just the briefs in support of the petitioners or in support of neither party. See his note right under the questions presented:

    “In this post, I have attached recently filed briefs which either (1) support Bilski or (2) support neither party. The government brief in opposition is due Sept 25 and friendly brief in opposition due within seven days of that filing.”

    Any briefs defending the decision below will probably be filed on October 2ish.

  65. “That is nothing more than hysterical fearmongering.”

    MM- all kidding and lampooning in the above posts aside, why don’t you submit a brief against petitioners in this case? You seem to have thought through and have strongly held your positions set out in your posts (albeit incorrectly, in my opinion). Are you hoping instead that the Justices read patentlyo comments? Or perhaps the possibility of “your man Breyer” cruelly leaving your opinions unrequited is too big of a risk of rejection?

  66. MM Wrote:

    “Some credible analysis under 103 would be greatly appreciated. In particular, I’d like to see some discussion of the unexpected results achieved by Bilski’s risk management method.”

    This case is about 101, not 103. But if the Supremes want to vacate the CAFC 101/MOT opinion and remand the matter back to the PTO for further review under 103, in light of KSR, that would be reasonable, I suppose.

    However being an “Actual Inventor” my sentiments would still be on the side of Bilski. Especially after having spent some 10 years in the patent process and having the Office and the CAFC, refuse to reject his application on 112, 102. and 103 grounds. I say he deserves his patent and a chance to see how strong and enforceable it can be in the free market system.

  67. “What this all comes down to is you can’t KO the patent under 101, (at least not without rewriting SCOUTUS precedent) so now you want to bring 112 into it. Enough is enough! Give the gentleman his patent and let’s all move on.”

    LOLOLOL. Some credible analysis under 103 would be greatly appreciated. In particular, I’d like to see some discussion of the unexpected results achieved by Bilski’s risk management method.

  68. MD, quoting Duffy: “financial engineering being the practical application of the science of economics”

    Right, just add the term “engineering” to any endeavor and suddenly it’s all “scientific” and “technical”.

    Screenplay writers are really “script engineers”. Poets are “rhyme and meter scientists.” And patenting thoughts about how to crunch numbers is just protecting the hot new field of mental engineering.

    The attempt by Patent Hawk to speak for all the trolls in the state of Oregon is rather pitiful but illustrates what is sorely lacking in this selection of briefs: the voices of the vast majority of non-applicants who aren’t invested in the system by virtue of their patent holdings or an opportunity to shine their pointy academic heads.

    I’ll leave it to my man Justic Breyer to wade through all the self-serving crap, pithy aphorisms, and bald-faced lies about the end of innovation.

    As for FICPI’s wish that “the § 101 analysis should focus on the section’s substantive utilitarian requirement,” I tend to agree. Converting one number into another, “defining” and and/or mentally/computationally “determining” something are not substantively utilitarian methods for 101 purposes. There must be more. And when the only substantial purpose of the determination is simply to “profit” (by “transacting”), the method should be barred.

    We’ll get there eventually.

    The Caris Diagnostics brief also makes a truly unfortunate error in its listing (on pages 25-29) of what appear to be the worst examples of diagnostic claim drafting that it could possibly find. They are the sort of claims that recite “detecting X (by any means), wherein X correlates with disease Y”, period. The wherein clause in such claims captures the “discovery” of the correlation but, as written, infringers of the claim would include (presumably) anyone who thinks or acts up on the correlation, regardless of how X is detected (see, e.g., LabCorp).

    The Caris brief also attempts to make hay out of rejections of certain diagnostic claims under Bilski at USPTO, as if the field of medical diagnostics is somehow going to be destroyed unless it can obtain broad process claims covering every correlation that can be milked out a whole genome analysis. That is nothing more than hysterical fearmongering. Will the stock value of certain companies and/or the value of their patent portfolio be affected by upholding Bilski? Maybe. So what? Finding correlations between biomarkers and disease is relatively cheap. Some of the companies who engage in this “technology” do nothing except crunch numbers using data obtained by others. There are no great economic hurdles to overcome. Perhaps the CEOs of companies who perform this service to society don’t deserve to make much more money than a high school science teacher. America surely needs more of the latter. Let’s give the free market a push in the right direction instead lining more patent lawyers nests.

    I note also that the Caris brief also used the Classen case to highlight the “danger” of upholding Bilski. It boggles the mind. The lack of granted patents on “inventions” like these poses no “danger” whatsoever to improvements in medical treatment. The only “danger” related to Bilski’s claims and Classen’s claims pose is that their issuance would inspire more mind-numbingly vapid and worthless* applications to be filed at (and, in some instances, issued by) the USPTO.

    *not including the patentees, ignorant but well-heeled gamblers (aka “investors”), and members of the public who are forced to waste their money when attacked by the patentee in an attempt to earn some change for their investors

  69. The IBM brief [which Dave Kappos is not on] could be additionally characterized [very oversimplified] as supporting software related inventions patenting, and not supporting business methods patenting. Furthermore, criticising the CAFC “machine or transformation” test as a sole test (akin to the rigid TSM test dissed in KSR) which is confusing courts as to software patenting and encouraging “form over substance” claim differentiation arguments instead of a fundamental technology versus non-technology test.
    [This is simply an attempt to provide a neutral summary of that brief, not an editorial or any personal opinion.]

  70. “What this all comes down to is you can’t KO the patent under 101″

    Of course you can. It’s abstract crap.

    Done.

  71. Noise above Law wrote:

    “State of Oregon, er, um, Patent Hawk’s brief has comments here:
    link to patenthawk.com

    Mr. Hawks position is that Bilski’s claims fail at 112 and not 101. He concludes by saying, “Would one of skill in the art understand the Bilski claims as “full, clear, concise, and exact terms”? Definitely not.”

    Now how would Mr Hawk know that? I am not an expert or even a Phosita in the field of Bilski’ invention. And unless Mr. Hawk is an expert, or at least has affidavits from such Phosita his argument is invalid.

    Mr. Hawk goes on to say “Risk position” is undefined in the specification, and even as a term of the art is imprecise.”

    Okay, I looked up the term and found clear precise definition.

    “An asset or liability, which is exposed to fluctuations in value through changes in exchange rates or interest rates.
    link to atcbrokers.com in context
    Search Results
    1. risk position definitionrisk position – definition of risk position from BusinessDictionary.com: Extent of exposure to a particular risk, expressed usually in monetary terms.
    2. link to businessdictionary.com – Cached – Similar
    position risk definitionposition risk – definition of position risk from BusinessDictionary.com: Probability of loss associated with a particular trading (long or short) position ”

    Does it not explain in the MPEP that an applicant does not have to include information in the specification that a person of ordinary skill in the art would know?

    Picking out words, or groups of words and claiming indefinitess without an affidavit from a Phosita is nothing more than nitpicking at a patent whose subject matter is not liked, but nonetheless is statutory under 101. What this all comes down to is you can’t KO the patent under 101, (at least not without rewriting SCOUTUS precedent) so now you want to bring 112 into it. Enough is enough! Give the gentleman his patent and let’s all move on.

  72. I think it’s fairly safe to say that the MoT test is going to fall, especially when you have even Lemley against it. The big question is what will replace it? If we get a KSR-style mush test, I don’t know if we’ll be any better off. I wonder if they would consider remanding to the CAFC to design a new test? At any rate, I’m betting we ultimately wind up with a UsefulConcreteTangible (or similar) test.

    I also look forward to the briefs on the other side, including 6′s brief “MoT test makes my job easier to avoid doing any examining, amirite?” and Malcolm’s brief “By gorb! Huge computer brain making a pile of dung that’s all obvious anyway!!!!”

  73. Medtronic brief says: ” A Machine-Or-Transformation Requirement
    Would Harm the Public by Deterring Prompt and Open Disclosure of Medical
    Breakthroughs and by Discouraging Investment in Medical Innovation. ”

    I agree

    (I disagree with “America” above who wants Congress to limit process patent protection to manufacturing processes.)

  74. Duffy is indeed a good read (Mark Nowotarski thanks) on useful arts being the complement of liberal arts, and financial engineering being the practical application of the science of economics.

    But I wonder which side of the divide lie Hollywood screenplay patents. The claims just need to be skilfully drafted, I suppose (like business method claims need to be, in Europe).

  75. This whole mess could be avoided if Congress would simply make clear that the only type of process that is patentable is a process of manufacturing. Not a method of conducting business, not a method of diagnosing a patient, not a method of reserving a restroom, not a method of exercising a cat. I suggest that everyone here contact their Congressman to let them know that we, the American public, have had enough. If Patent Hawk can comment on behalf of everyone in Oregon, then clearly I can comment on behalf of everyone in the United States.

  76. As a European, I’m interested in the IBM brief and the “technological contribution” test which it espouses for 35 USC 101, because this issue has already been explored in the long-running tussle between the English courts and the EPO.

    “Contribution” relative to what? The state of the art, I suppose. So, don’t we need first to know the totality of the art before we can see if a “contribution” has been made to it? When we know what’s novel, relative to the state of the art, then we can set about debating whether the “contribution” is a “technological” contribution, at the same time as we debate whether or not it’s an “obvious” contribution. I should say that, for the EPO, a patentable invention is a solution in terms of technical features to an objective technical problem. One might say, therefore, that the EPO merely swaps one conundrum (“obvious”) for another namely “technical”, but as this is only at the 101 edge of what’s patentable, and that edge will always be controversial, I don’t see the harm.

    That’s why the EPO does its active filtering of inherent patentability at the obviousness (Art 56 EPC) stage, rather than at the “101″ stage, Art 52 EPC. I assume that David Kappos, like the English courts, wants it done at the 101 stage. But the English courts, trying to manage “technological contribution” at the 101 stage, are getting beaten up by the EPO’s line.

    I think this is what your correspondent Paul Cole wants. Tell me Paul, are you the solitary spectator Paul Cole, in the background of the famous photo of the four Beatles on the Abbey Road pedestrian zebra crossing, 40 years ago this week?

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