Gardner: Patent Bar Should Use Its High Priced Skills to Overcome Bilski et al.

In my last post on Bilski, I added my Comiskey ‘fear factor’ to Paul Gardner’s analysis of post-Bilski claim strategies. In response, Mr. Gardner first notes that the Comiskey language I quoted is “dicta, supported only by arguably inapposite precedent, and presumably uninformed by any discourse in the briefing.” Beyond that, however, Gardner explains that the Patent Bar should stand-up and explain to the PTO and courts that “the application of novel and nonobvious software to otherwise computer hardware is neither ‘routine’ nor ‘typical.'”

Paul Gardner: The verbiage in Comiskey from which you opine in the September 20, 2007 issue of Patently O that “Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious” is dicta, supported only by arguably inapposite precedent (n. 16 in Comiskey), and presumably uninformed by any discourse in the briefing (given the fact that the court remanded the case to the Patent Office for ruling on the Section 103 issue). Moreover, the opinion says only that “[t]he routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.” (Emphasis added.) I can’t help but wonder whether such gratuitous, patent-negative dicta is in large part the unintended but predictable consequence of the patent bar too often capitulating to rejections rather than aggressively asserting their clients’ rights to protection (caused, perhaps, by clients’ limited funding of patent prosecution). By “aggressively asserting,” I mean arguing forcefully in a given case that the application of novel and nonobvious software to otherwise conventional computer hardware is neither “routine” nor “typical,” and that labeling it “routine” or “typical” at the front end is to prejudge the 103 issue and forestall reasoned analysis.

I submit that a compelling argument can and should be made that the application of nonobvious software to conventional hardware renders the combination patentable, in much the same way that purification of a naturally-occurring substance renders the purified substance patentable if its therapeutic value is nonobvious. The discovery of the therapeutic value of the naturally-occurring substance makes the purified substance nonobvious notwithstanding the fact that the purification process itself is old and well known. It seems to me that the same logic applies to nonobvious software implemented by old and well known hardware.

One of the two questions you posed last Friday was whether skilled patent attorneys will be able to alter their claim strategies to fit within Bilski’s pronouncements. I believe that it is more important than ever for the patent bar to use their high priced skills to argue against the kind of short-sighted rejections that are coming out of the Patent Office and being affirmed by the courts. The balance has clearly shifted against inventors and patentees in recent years, and only the skills of the advocate can move the balance back to the appropriate position.

Please understand that I do not take issue with your statement that “Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.” My concern is that, left without countervailing exposition, such commentary may discourage the patent bar from advocating the contrary.

20 thoughts on “Gardner: Patent Bar Should Use Its High Priced Skills to Overcome Bilski et al.

  1. I’m reminded of the old legal adage:
    When the law is on your side, pound the law; when the facts are on your side, pound the facts; when neither the law nor the facts are on your side; pound the table.

  2. Kevin: _|__

    “try create an atmosphere where infringement can occur with impunity”

    It already can. You just have to be willing to go the extra mile. Hitman: 1,000$.

    Seriously, what’s a G or 2?

  3. David *J* Stein, according to his website is an associate patent attorney, in Ohio and software developer. I second Bloom’s notion that the designation “partner” does not automatically equate to knowledge of much of anything.

    Gardner’s point is to rediscover the art of argumentation. I feel fortunate to have studied under the guidance of some of the finest in the field and learned this lesson early on. It has served me well, particularly in the post-Festo age. Festo aside, for conscientious practitioners amendment has never been the most desirable way to overcome rejections since it has always led to file wrapper/surrender issues.

    Just goes to show that no matter how much hot air people like Mooney try to blow, the more things change, the more they stay the same.

  4. David, I don’t think that Gardner is requesting appeal to the highest tribunal or the legislature. To the contrary, I think he is suggesting not throwing in the towel at the most fundamental stage: responding to an OA with a novelty or obviousness rejection lacking a well-reasoned argument against a claim in which software is applied to/integrated with an otherwise non-patentable invention. As patent practitioners, we shouldn’t roll over so easy to the PTO’s position, but instead craft a well-reasoned persuasive argument at the first instance. Of course, this takes some aggressiveness (and time) in interpreting and applying the relevant case law – especially with the torrent of recent 101 and 103 diecisions. But a practitioner’s skill in this regard is becoming ever more important recently because the patent bar and the Fed Cir have been exposed to a tremendous amount of negative policy (right or wrong) that has seeped into interpretation and application of basic patent law construct and shifted the balance against patent seekers and holders. More aggressiveness, as Gardner puts it, at the response-to-OA level, and of course at the appellate level, would do well to shift the balance the other way.

  5. It is commonly propounded by herd propagandists like yourself, angry little 1diots like Mooney, and corporate shills like a certain corporate blogger who was recently shut down, that the patent system is broken – all in a desperate attempt to advance an obfuscatory agenda and to try create an atmosphere where infringement can occur with impunity.

    In any case, the backlog is not really such a huge problem and does not lead to the conclusion that the system is broken. I’ve never heard anyone who knows anything about patents advocate for “instant” examination. What’s the point. As long has you have a priority date, who really cares how long examination takes? As long as the application is published at 18 months, there is not much to complain about. Procedures like interference were designed to deal with battling applications, after which there is not much else to deal with.

    Hayek also favored dictatorships. Sorry, but I’m not drinking Hayek’s Kool-aid as you have apparently done.

  6. Ok, here’s a question post-Bilski:

    If all steps of a method claim could be performed solely by a human with a pencil and clipboard, for example, but the specification of the patent clearly describes various hardware and/or software components that enable the steps in the method claim (e.g., “sensing” something, “determining” something), does the claim include patent-eligable subject matter? I’m looking at a claim that could be done by clinicians merely keeping track of events by a clipboard and making determinations based simply on protocols (e.g., printed on a sheet of paper). However, embodiments in the patent describe technology components that facilitate performing the method.

  7. “I submit that a compelling argument can and should be made that the application of nonobvious software to conventional hardware renders the combination patentable” [I would agree, given that, by “nonobvious software” you mean software that performs nonobvious and innovative functions of some sort and not that the actual programming was nonobvious]… “in much the same way that purification of a naturally-occurring substance renders the purified substance patentable if its therapeutic value is nonobvious.” [this is where you lose me] “The discovery of the therapeutic value of the naturally-occurring substance makes the purified substance nonobvious notwithstanding the fact that the purification process itself is old and well known.” [In this example, it is the application of the purified substance to achieve the therapeutic effect that is nonobvious, not the purification itself. You state that the purification process is old. If the purification process is old and the substance is naturally occurring, then I wouldn’t think the purified substance can be nonobvious or patentable. Instead, patentability may be found in the method of application of the substance for therapeutic effect – given that the therapeutic effect was unexepected and nonobvious]

  8. Getting back to Paul’s original point (Dennis, you can delete comments, can’t you?), I agree with his sentiment about being more aggressive, but I also agree with David that it isn’t necessarily a wise use of a client’s time and money to go tilting at windmills. Few of my clients have the resources to fight a determination of non-patentability up to the CAFC. Even if they did, the CAFC’s approach overall has seemed pretty hostile toward patentees (or would-be patentees). The best you can say for the CAFC is that the judges are so divided idealogically that the result you obtain in any given case is likely to depend as much on the composition of the panel that hears it as it does on the court’s case law.

  9. link to djstein.com

    For shame. Who would make such a despicably ugly website and then make it publicly available with their name attached to it? Please tell me someone can introduce this man to “frontpage” at the least. Grey words on black background… sheesh.

  10. It is commonly agreed that the patent system in the US is broken. Even strong pro-patent US diplomates support that view. For instance the USPTO is totally unable to overcome the examination backlog and admits so.

    Your sectarian views might suggest something different, please get things into perspective “AllSeeingEye”.

    You are right with economics but on a totally different level. Patent system is dynamic economics and has to overcome static market imperfection under laissez faire. You have to show that there is a problem to be solved, e.g. “too much competition” and that the application of a patent system to a certain class has positive results. This rather obvious argument was raised most vocally by Hayek who as his collegues knew the property teaching was baseless.

    For soft patents Bessen/Hunt proposed a nice dynamic examination.

  11. Leopold has the right address. That’s me.

    Anyone visiting that site will notice that I’ve spent a significant amount of time (probably an understatement) as a software enthusiast. While patent law is my professional engagement and a core philosophical interest, the software arts are my technical passion.

    (Eye: Yeah, I do fine, thanks.)

    As for the idea of lobbying for change in this area – it’s happened several times before. Biotech successfully lobbied for the addition of 35 USC 102(b). Sui generis protection has been carved out for both the boating industry (the Vessel Hull Design Protection Act) and the semiconductor industry (the Semiconductor Chip Protection Act.) Even on the other side of the ball, the medical industry successfully lobbied to remove enforceability from surgical technique patents (35 USC 287(c)).

    35 USC isn’t carved in stone. If the software industry (or a significant part of it) wants to turn the tide of Nuijten/Comiskey/Bilski and the future addition of further restrictions, it can lobby Congress. That’s not easy… but it’s probably a more reliable process than simply hoping the right type of case comes up for appeal, and that the CAFC listens to reason.

    – David Stein

  12. “Well, he apparently made partner so he probably isn’t that bad, and probably at least knows halfway what he’s talking about.”

    There are not one, but two, faulty premises in that statement, 6.000. First, you’ve got the wrong David Stein (www.djstein.com ). Second, I have my doubts about your assumption that a partner necessarily knows what he/she is talking about.

  13. “In any case, the question whether patents should be made available for a field is just a matter of economic analysis. The rationale of a market system as Hayek called it. I wonder how judges and attorneys are qualified to raise their voice in these matters. I suggest their “appropriate position” is equivalent to profit maximization of their own profession. Time to kick them out of the debate and let sound economics in.”

    It was “sound economics” that drove the software patent train up the mountain and off the rails in the first place. Now it’s just a matter of picking up the broken pieces now. Or sweeping them under the rug and forgetting about them, as the case may be.

  14. link to mwe.com

    Well, he apparently made partner so he probably isn’t that bad, and probably at least knows halfway what he’s talking about.

    I believe he is advocating lobbying to reject most new patent reform legislation and perhaps some legislation to change the patent environment caused by KSR and now Bilski. And he’s within his right, although, it appears that he’s just trying to advocate for keeping his job (and maybe a bit for his client’s interests) rather than making any real arguments towards why such lobbying should take place.

    You’ve got to hand it to him though, he’s right that it was foolish for Bilski to appeal and set up this fodder.

    “The balance has clearly shifted against inventors and patentees in recent years, and only the skills of the advocate can move the balance back to the appropriate position.”

    Besides this being a bit of bs, it shouldn’t be a big deal, it was definitely biased for inventors for a very long time. It’s hard to get the balance just perfect, probably impossible. And right now it’s not that biased against apps. You can still argue something is non-obvious. And I haven’t seen the success rate on such arguments go down any since KSR in my cases. Sure, some arts would be different of course, but hey, maybe the things you used to would have won an argument on and now would not really are obvious. Get over it, go on with life, the courts made the decision, fight it when it deserves to be fought, and not before.

  15. Sorry David, with all due respect, I don’t think you know what you’re talking about. Avenues for change? From what, exactly, to what are you advocating change? And how can you do software development and be an associate patent attorney at the same time and be much good at either? I would say – you can’t.

  16. Addressing the issue (and pointedly ignoring meaningless provocation)…

    I’d be happy to take argue the issue as high up the judicial and legislative systems as I can reach. I’d put my personal life on hold and sacrifice a sizable chunk of productive billing for that opportunity.

    However, it would not be in the best interest of most of my clients. Was it in Bilski’s best interest to throw a bunch of money toward appealing a bad patent application, only to have it held up for ridicule in an adverse political climate? Did Bilski derive *any* benefit from that?

    Change (that honorable buzzword of this Nov. 4th) can happen in many ways. Perhaps my clients, or other companies, will lobby our new Democratic Congress for some legislative solutions to this trendy, anti-patent tilt of the patent system. (I think they could have TREMENDOUS traction: “Look, guys, we are the ONE area of the American economy that’s thriving and internationally competitive! Manufacturing, services, financial – they’re all gone… high-tech R&D is still strong. Why not support us by shoring up our right to patent our inventions?”) Or maybe other clients will appeal. Or maybe I can pitch in with my professional organizations – AIPLA, most notably – with solid amicus briefs in key cases.

    Given all of these avenues for change… is it really in my clients’ best interest to appeal their case to the heavens, at significant expense, and in a hostile patent climate? I’m not optimistic.

    – David Stein

  17. Karsten, go back to sipping your pretentious latte. You must be European. The U.S. system is not broken. Only Canadians who get paychecks from Research in Motion say things like that. As far as I’m concerned, its time to kick people like you out of the debate. The U.S., facilitated by the patent system has produced and distributed some of the greatest inventions in modern times; and I don’t just mean for U.S. manufacturers. What is broken is your notion that somehow a system that produces “soft patents” and is tilted against patentees is a desirable outcome.

    “…just a matter of economic analysis…”

    Patent economics defy classical economic models since they assist in governing the evolutionary direction of technology and the allocation of capital at the embryonic edge. There is no classic economic model for that Hayek or no Hayek.

    Mr. Gardener has an excellent point. Many patent prosecutors however are simply not in the proper mindset to craft the kind of arguments he is talking about, which are the products of excellent training and superlative instincts. I always consider whether there is an aggressive argument before considering amendments or new ways to draft claims. The problem is, crafting arguments takes studious effort.

  18. That is funny. A satire? The text sounds like written by an imitator of a pretentious aristocrat.

    “I believe that it is more important than ever for the patent bar to use their high priced skills to argue against the kind of short-sighted rejections that are coming out of the Patent Office and being affirmed by the courts. The balance has clearly shifted against inventors and patentees in recent years, and only the skills of the advocate can move the balance back to the appropriate position.”

    Oh, attorneys as parasites of the market like more patents and want the US system to remain broken. It is well know in your circles that the patent system is biased towards patentees and soft patents do more harm than good. But of course there are those who profit from it.

    In any case, the question whether patents should be made available for a field is just a matter of economic analysis. The rationale of a market system as Hayek called it. I wonder how judges and attorneys are qualified to raise their voice in these matters. I suggest their “appropriate position” is equivalent to profit maximization of their own profession. Time to kick them out of the debate and let sound economics in.

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