Transformers v. Decepticons – Petitioner’s Brief In Bilski

Guest post by Brett Trout, author of BlawgIT 200908052209.jpg

Background

Petitioners Bernard Bilski and Rand Warsaw filed their Brief For Petitioners last week in what could be this decade’s watershed patent ruling. The patent at issue relates to a method for managing risk when buying or selling energy commodities. The law at issue is whether a process must be tied to: 1) a machine or 2) a transformation of a particular article into a different state to be patentable (the “machine-or-transformation”/“MOT” test). The Brief breaks the case down into five issues:

1)     No New Limits On §101

Petitioners note §101 covers “any … process” and argue court’s limits on patentable subject matter, should not exceed limits outlined by Congress. Citing Benson and Flook, Petitioners note the Supreme Court has twice refused to limit §101 to the MOT test. Processes must, they argue, be subject to the same patentability requirements (and no more) than the other categories of subject matter. Petitioners enlist caselaw to attack the machine requirement of the test. They enlist Judge Rader’s dissent in Bilski to attack the transformation requirement which “links patent eligibility to the age of iron and steel as a time of subatomic particles and terabytes.”

Petitioners argue that Congress drafted the language of §101 broadly enough to encompass emerging technologies and the CAFC’s inability to apply its MOT test to “information-age processes” demonstrates the test is anathema to Congressional intent. Pitting the Supreme Court’s flexibility in interpreting patent cases against the CAFC’s rigidity, Petitioner’s analogize the MOT test with the CAFC’s KSR “teaching, suggestion or motivation test,” which the Supreme Court unanimously rejected.

2)     Conflict with §273, State Street and J.E.M. Ag Supply,

In 1999, Congress enacted 35 U.S.C. §273, which insulates entities from patent infringement liability based on using a method of conducting business, if the entity reduced the method to practice at least one year before the effective filing date of the patent and the patent contains claims the method would otherwise infringe. Since §273 of the Patent Act specifically recognizes patent protection for business methods Petitioners argue §101 cannot be read to exclude those same claims. Petitioners note the legislative history of §273 provides “[a] method is any systematic way of accomplishing a particular business goal” with “[t]he State Street decision [bringing the financial services] industry to the forefront of cutting edge patent law protection.”

In J.E.M. Ag Supply the Supreme Court upheld the validity of plant patents, basing its decision on the PTO’s history of issuing patents on plants and Congress’ failure to amend the Patent Act to prevent the practice. Petitioners analogize the facts underlying J.E.M. Ag Supply with the PTO’s grant of more than 15,000 patents in the “business methods” technology group. Weilding   J.E.M. Ag Supply, Petitioner’s argue, settled PTO practice and Congressional non-interference mandate a reversal of the Bilski decision.

3)     Disruption of Public Policy and Settled Expectations

Petitioners argue the MOT test constitutes legislation from the bench, straying from the CAFC’s prior technology neutral position to one of anti-technology Luddism. Acknowledging the problem of vague or trivial patents, Petitioners assert an unfettered §101, along with §112, §102 and §103 are far more better suited to vet patents than the MOT test. Petitioners cite Judge Newman’s dissent in which she notes the MOT test diminishes incentives available to new enterprises and disrupts settled expectations of those who rely on the law. Festo is also cited for the proposition that disrupting settled expectations destroys legitimate property expectations.

4)     Practical Applications

In lieu of the MOT test, Petitioner’s suggest the more flexible “practical application” test of Funk Bros. Petitioner’s argue the Supreme Court finds a principle is “practically applied,” and therefore patent-eligible, when the principle is applied (1) to a new and useful result; 2) in a particular apparatus or structure; or 3) in a particular art or process. Under this test, a method or transformation is sufficient, but not necessary, to make a principle patent-eligible. Petitioners analogize practical and patentable applications of mathematical formulas, natural laws, industrial processes, chemicals and manufacturing processes.

Petitioners point to the historical rejection of the English “manner of manufacture” in favor of the broader Constitutional “and useful Arts” as support for protection of processes being a seminal Constitutional right. Diehr is cited for the proposition that processes have historically enjoyed patent protection as a form of “art” as that term is used in the 1793 Patent Act.

5)     The Bilski Patent Claims Comport With §101

Petitioners reiterate the expansive nature of the language of §101, the admonition not to overrule Congressional intent by placing unnecessary restrictions on §101, and the availability of the Supreme Court’s “practical application” test as an alternative to the MOT test. Petitioners argue Claim 1 of the Bilski patent falls within the broad reach of §101 and embodies a practical application of using an intermediary to manage consumption risk costs associated with buying and selling a commodity. Even if Claim 1 fails the “practical application” test, Petitioners argue the much narrower and detailed Claim 4 is patentable for its inclusion of a mathematical formula, practically applied to a useful result.

Conclusions

Though well argued, Petitioners’ Brief buries its most persuasive argument. Arguments relating to the scope of §101, concordance of various statutes, general principles of patent law and application of particular claims to the law are all the true grist of every patent attorney’s mill. The issue with the most far-reaching and potentially catastrophic consequences is the disruption of public policy and settled expectations. Even the first U.S. patent ever granted covers a process.

It is no surprise the CAFC, left with applying flexible formulations to mercurial facts, constantly strives for hard and fast measures against which to adjudicate patent cases. Sweeping aphorisms (while simple to understand and apply) risk excluding entire technologies. Moreover, invalidating decades of case law and established practice undermines faith in our entire patent system. If there can be no reliance that patents granted today will endure, all patents immediately become less valuable and infringers are more apt to challenge them in court.

Disputed issues of patentability must be settled. Any decision of this magnitude must take into account rules regarding statutory interpretation, stare decisis and the application of the law to the facts. The decision should also take into account the tens of thousands of current inventors whose patents may be made worthless by this decision. Of course the value of the property interest at issue is not a pivotal factor in cases such as these. The public policy underlying reliance on the fairness and settled expectations under the law however, not only for past inventors, but for future inventors as well, is a factor of critical import. While simple rules and bright lines make resolving patent disputes easier, surrendering fairness for simplicity achieves neither end.

139 thoughts on “Transformers v. Decepticons – Petitioner’s Brief In Bilski

  1. 139

    No. That you and your ilk refuse to allow amendments to indicate that a method is performed by a processor even though such is obvious, if not literally expressed in the application.

  2. 138

    “Duuuuuuh that’s the point I’m trying to get through to you. ”

    That your invention was obvious at the time the invention was made? Fine, whatever, have a 103 over your own admission instead. I’d still keep the 112 1st in place on the off chance that you’re mistaken about the claim being unpatentable under 103.

  3. 137

    “Tell you what though Les, next time you get a rejection like that, simply argue that it was obvious, at the time the invention was made, to one of ordinary skill, that it could be performed on a computer. See how well that goes over k?”

    Duuuuuuh that’s the point I’m trying to get through to you.

    Remember the juxtaposition of the ridiculous assertion that its obvious to combine the teaching of 6 documents, but not obvious or otherwise clear that a method claimed 3 years ago could be carried out on a computer?

    Next time you’re looking up obvious, scan up the page a bit for obtuse.

  4. 136

    “—-A patent need not teach, and preferably omits, what is well known in the art—.””

    This doesn’t say that you don’t have to claim a statutory invention. Anyone telling you otherwise is out of the gourd.


    Mean, at a minimum, that if it is obvious that a method is carried out on, with or in a commpuuuuuuter, that such is support for a claim amendment, even if there is no literal word searchable discussion of the fact in the application.”

    Not necesssaaaaarrrrrriiillllyyyyy. If you disclosed your invention as being broad enough to encompase more than it operating on a commmmmpppppuuuuuutttteeeerrrr then you may not have disclosed the invention with the necessarily specificity to establish you possessed that invention at the time of filing. And I for one am sure as hel not going to turn that into a reverse obviousness analysis for you.

    Tell you what though Les, next time you get a rejection like that, simply argue that it was obvious, at the time the invention was made, to one of ordinary skill, that it could be performed on a computer. See how well that goes over k?

  5. 135

    explain and elaborate, Malcolm. some explanation beyond “totally bogus.” I am not saying that I disagree with you, just want to learn your reasons.

  6. 134

    “If no one has attempted to solve the problem before, there is no evidence as to how one of ordinary skill would solve the problem,”

    Totally bogus.

  7. 133

    Regarding a claim being obvious if anyone who attempts to solve the problem will arrive at the same solution:
    while I don’t disagree that that would indicate that the claim is in fact obvious, I don’t see how it can be realistically applied as a basis for determination of obviousness. The examiner’s job is to show that a claim is obvious based on evidence. If no one has attempted to solve the problem before, there is no evidence as to how one of ordinary skill would solve the problem, so how can an examiner make a case without relying on “uh, well, it seems pretty obvious to me”.

  8. 132

    “In all that sht you went out of your way to quote it didn’t say one gd thing about obviousness. I cracked more books before I hit 6th grade than you probably will in a lifetime.”

    Well, you should have actually read them after you cracked them. If you would get out of –“examiner” word search mode– and read the whole sentences in context and extract some meaning from them you might see that these sentences:

    “(“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”).

    —-A patent need not teach, and preferably omits, what is well known in the art—.”

    Mean, at a minimum, that if it is obvious that a method is carried out on, with or in a commpuuuuuuter, that such is support for a claim amendment, even if there is no literal word searchable discussion of the fact in the application.

  9. 131

    “And without that patent, there would have been far less incentive to develop
    alternative or improved codecs”

    Let me be the first to say “f codecs”. Stupd sons of guns made those things such a PITA. We don’t need “alternative” codecs, we need standardization for our codecs, if anything. However, the point about alternative solutions is, normally a good thing.

    I really don’t give 2 shts if your codec makes the picture .00000000001 sharper for the same amount of storage space or whatever trivial nonsense comes out of the hundreds of them. What I care about is being able to watch the movie. Sacrificing the second for the first is ridiculous. I watch videos using the very first codecs and enjoy them just as much as the brand new divx encoded ones.

    Gimme an S
    Gimme an T
    Gimme an A
    Gimme an N
    Gimme an D
    Gimme an A
    Gimme an R
    Gimme an D
    Gimme an I
    Gimme an Z
    Gimme an A
    Gimme an T
    Gimme an I
    Gimme an O
    Gimme an N

    What’s that spell? Standardization.

    I’m not even sure what enters people’s minds when they’re using a nonstandard codec. Could it be “Gee, I’d like to make sure that half the people who want to watch this movie can’t even though I gave them the movie?”

    If you are a codec developer, consider that feedback.

  10. 130

    If “*anyone* who attempts to solve it [the problem] will likely come up with
    the same procedure,” then it should fail a 102/103 test and not be patentable (even for the first person who solves it).

    Assuming that software is to be patentable (which I am in favor of), then it appears from your excellent posting that (a) the examiners need special training and education and (b) there needs to be better access to the prior art.

  11. 129

    Dan B. – Thank you for your explanation. Yes, it should be a legislative
    debate and not a legal one. I had missed that point, since it was the State
    Street decision that changed much of the status quo, and not a new act from
    Congress. I suppose I was envisioning the Supreme Court changing that
    decision.

    Noise above Law – Sorry, I think you’re misunderstanding my position. The
    law is largely a mystery to me, so I may indeed be clueless, but I am
    interested in increasing my understanding of the legal viewpoint. My
    viewpoint is “This law is defective.” The legal view (including patent
    attorneys) seems to be “This is the law. Here’s how we can use it.” At
    IPWatchdog, Mr. Quinn makes no secret of his view that software should be
    patentable subject matter, and I have no reason to doubt his interpretation.
    That IS the law, and I’m not claiming it isn’t.

    In fact, there are a few software patents which are good ones. The
    Fraunhofer-Gesellshaft MP3 patent, for example, promoted a great deal of
    progress in numerous scientific fields as well as business opportunities.
    And without that patent, there would have been far less incentive to develop
    alternative or improved codecs. So I’m not claiming that *all* software
    patents should be abolished.

    My main objection to software patents lies in how two of the five
    patentability requirements are applied: novelty and nonobviousness. Far too
    many software patents are granted on things which are neither. Very often,
    writing software is much more like solving a puzzle than inventing something
    completely new. In most cases, the first person to “invent” a piece of
    software is simply the first person to attempt to accomplish a particular
    task. That means there’s no prior art, and it’s nonobvious only because no
    one’s asked that particular question before. Like Mr. Larsen, I have
    independently reinvented a couple of famous algorithms myself (flood fill
    and the Bresenham line algorithm). Most good programmers have done the same
    thing. Yet most of those famous algorithms would certainly have been
    considered novel and nonobvious enough to be patented under the current
    rules. They shouldn’t be.

    Because if you can patent that sort of “invention”, the next time someone
    asks the same question, he’s forbidden from getting the same answer. It’s
    like saying “Unscramble this Rubik’s cube, but you can’t do it by arranging
    the corners first. Or the edges.” Yes, for the first person to do it, the
    solution was novel and nonobvious. But that doesn’t mean that it should be
    patented, because *anyone* who attempts to solve it will likely come up with
    the same procedure. Most software is like that, only worse, because one
    large program may incorporate hundreds of similar “inventions”.

    But back to my main point. I make my living writing software. Given the way
    they are issued and used today, I see software patents as a threat, not a
    benefit. To me, the question is whether software patents promote progress or
    hinder it. I see a hindrance, and I’d like to see it changed. As Dan B.
    pointed out though, changing it would be a legislative task. The current
    debate seems to be largely a question of what area and degree of hindrance
    is allowed.

  12. 128

    “Thank you, 6, for the telling insights into your personality.”

    yw, now go ahead, don’t be bashful, let us all know about how your world got flipped, turned upside down. Take a minute, just sit right down.

  13. 127

    “I will be 100% honest with you, as a youth I was more enamored with the dystopia, but as I grew older I realized why I very much prefer the opposite in nearly every respect.”

    Thank you, 6, for the telling insights into your personality.

  14. 126

    Curious you don’t seem to know the difference between criminal punishments depriving citizens of their freedom, and in government sponsored civil harassment schemes. Schemes which deprive citizens of their freedom when they are used, rather than when they aren’t used as in the former case. The general gist is, go with whichever path is “less evil” and causes the least harm. And depriving people of their freedom is the lesser of the two evils. Depriving people of their ability to deprive other people of their freedom is also the lesser of two evils.

    I’m not even sure how people like yourself get brainwashed into a mindset that leads you to have alternative views. Views which your little “contrast” posts reveal that you have. I was just learning about “Nietzche and the Nazi’s” last night in a new instant watch flick on netflix… lol. But seriously, are you born with these views, or is it something you had to study to acquire? Were you once a normal American kid, full of visions of freedom throughout your life etc. etc.? Or did you have a vision of a state/corporate run dystopia? I will be 100% honest with you, as a youth I was more enamored with the dystopia, but as I grew older I realized why I very much prefer the opposite in nearly every respect.

  15. 125

    “Applicants failure to do what? Anticipate that the rules would be changed 3 years in the future, when the patent office bothered to begin examining the applicants application, and in deference to the office’s whining about applications being too long, left out discussion of machine implementations that would be obvious to those of skill in the art once the method was disclosed since the invention was a method and methods are clearly listed in the statute as patentable on an equal footing with other classes of patentable subject matter?”

    Look man, if they fail they fail. There’s no hope for these kind of folks.


    You really should crack that book once in a while homie.”

    In all that sht you went out of your way to quote it didn’t say one gd thing about obviousness. I cracked more books before I hit 6th grade than you probably will in a lifetime.

  16. 124

    “This is why it doesn’t really matter *why* crappy claims die, as long as they die together, in large numbers. If a few allegedly “good” inventions get caught in the grinder, so be it. It’s not the end of the world.”

    Malcolm Mooney
    2009

  17. 123

    Since my previous post disappeared, and my later ones also won’t post, please just go look up “Godwin’s Law” on Wikipedia.

  18. 122

    From the same article:

    “… there is a tradition in many newsgroups and other Internet discussion forums that once such a comparison is made, the thread is finished and whoever mentioned the Nazis has automatically “lost” whatever debate was in progress.”

  19. 121

    Comparing patent claim rejections to the guilt or innocence of a human being is about as honest as comparing the proposed health care reform bill to the Holocaust.

  20. 120

    “It is better that ten guilty persons escape than that one innocent suffer.”

    William Blackstone

    “It is better that ten patentable applications be rejected than that one crappy one issue.”

    Malcolm Mooney

  21. 119

    “It is better to risk saving a guilty man than to condemn an innocent one.”

    Voltaire

    “It is better to risk rejecting a worthy patent application than to issue a crappy one”

    Mooney

  22. 118

    NAL – “NWPA,My apologies for omitting a well deserved comment on your postings.The MM-trollbot line is indeed clever”

    NWPA “Broje where did you get the claim for my MM-trollbot?”

    A triad! Kinky. David Crosby would be proud.

  23. 117

    Les “Applicants failure to do what? Anticipate that the rules would be changed 3 years in the future”

    Many of us are familiar with Les from his “defend any crap at all cost” comments on the 12:01 Tuesday blog.

    But the above quote is a bit much. We’ve seen this before. My friends, whenever you hear someone say “nobody could have predicted” it’s a good chance that someone is trying to cover their axx. In fact, Bilski (or something like it) was very predictable, just as KSR was.

    Either the PTO learns how to examine crappy applications, or the courts are going to fashion tools to clean up the mess. This is why it doesn’t really matter *why* crappy claims die, as long as they die together, in large numbers. If a few allegedly “good” inventions get caught in the grinder, so be it. It’s not the end of the world. It’s the end of a brief period during which the patent system was turned on its head by applicants’ relentless attempts to patent abstractions and information in order to “make a fortune off the Internet.”

  24. 115

    JDaily “Another common objection is that patent duration is a lifetime in computer science. There are two major counterarguments: First, if that is true, then the patents will become worthless as they age”

    Uh … no. You are ridiculous.

    “Second, there is nothing special about computer science. Other fields like biotech and materials science also move very quickly.”

    With respect to biotech, there is a big difference: the time and cost of developing, testing and marketing are huge. In contrast, a skilled 8th grader can write “movie recommendation” software and sell it online in less than a day. Particularly when the biggest proponents of software patenting are on the record saying that all software concepts are enabled and so they need to be described only functionally, this is a huge distinction and an important one. It’s such an obvious distinction, in fact, that the failure to recognize it whiffs of insincerity.

  25. 114

    Yes, the title is a little off. What I think is funny though is that Bilski is subtly being referred to as a Decepticon, which may or may not be an insult. Personally I route for the bad guys sometimes. Just kidding =). I must say the Bilski brief was very well put together.

  26. 113

    “The title doesn’t make sense to an 1980s Transformers fan.”

    It should be Autobots v. Decepticons.

    Whatever.

  27. 112

    broje,

    Not to be hyper-critical, but you forgot to include that your method is a method on a computer (one that has a really big computer brain).

    Or am I beign gratuitous? Honestly.

  28. 111

    Broje where did you get the claim for my MM-trollbot? I requested non-publication of the application.

    You did forget the dependent claim though:

    2. The social networking method of claim 1, further comprising:
    erasing memory for each new post.

  29. 110

    Welcome to the puppet show broje.

    What’s really sad is the identity of the man behind the curtain.

  30. 109

    1. A method for social networking, the method comprising:

    navigating to Patently O;

    identifying a post that details a recent decision by a Court, including at least one of SCOTUS or the CAFC, in which a claim was found to be unpatentable;

    posting under a primary pseudonym, including:

    (a) crowing victoriously that another “crap claim” has been slain by the forces of righteousness;

    (b) spouting something inane about certain types of technology not being patentable subject matter on 103 obviousness grounds;

    (c) chastising the Court for not going far enough;

    (d) predicting that eventually the Court will get it right and then everyone will see that you were right all along;

    navigating to Patently O again and posting another comment under another pseudonym that mocks anyone that disagrees with the comment posted under the primary pseudonym; and

    posting yet another comment under the primary pseudonym agreeing with the other comment in a smug, self congratulatory tone while continuing to taunt all others.

  31. 108

    If patent law is a tax, then bald infringement is a far worse tax…

    In a product market where there is a likelihood of the rise of natural monopoly for an enabling technology, say for video recorders or wireless transmission coding technology; if company A is working feversishly to solve a problem and succeeds first, then every step company B takes down the road thereafter will lead to an eventual inefficiency even if B “wins” and A fails.

    It is a far more efficient capital distribution model to grant a patent to A, which in a rational scenario, should release B to efficiently pursue other developments. Sure there may be patent battles down the road between A and B, but it would be far less of a loss then, say, dumpsters full of Betamaxes…

    Further, Posner notes that, with businesses being risk averse, a regime without patent rights, e.g. one that might lead to total losses for the “loser” in a product market dominance battle, would foster an environment of underinvention and too little risk taking by companies.

    Is this so hard?

  32. 107

    If you think the courts and USPTO are struggling with business method patents, wait until they face something really new, like “social networking” patents.

    250% per year growth in filings over the past five years. link to bit.ly (Now that’s an explosion.)

    +2,000 currently on file. link to bit.ly (+4,000 if you take into account 18 month delay and nonpub requests?)

    Only about 100 issued so far. link to bit.ly (Can you say “examination backlog”?)

  33. 106

    NWPA,

    My apologies for omitting a well deserved comment on your postings.

    The MM-trollbot line is indeed clever, as MM is always quick to accuse others of trolling, yet epitomizes that behavior (much like other comments such as gratuitous posting, and posting with integrity(NOT)). I had hoped that by my adding the “ignorance is bliss” module, you would have recognized the inherent approval, but I really should have given you more credit.

    I applaud your contributions. Please continue to add your wit to the boards.

  34. 105

    I think in your title you were attempting to be clever by using “Transformers” vs. Decepticons. Maybe because one of the issues is transformation for statutory subject matter.

    However, Decepticons are also Transformers,
    so your title is like saying “Humans vs Iranians”.

    The title doesn’t make sense to an 1980s Transformers fan.

  35. 104

    “”its not oooobvioussss daaaat it was did by a commmmpuuuuuter.”

    Obviousness has nothing to do with WD homie. ”

    MPEP 2164.01
    Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).

    Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”).

    —-A patent need not teach, and preferably omits, what is well known in the art.—- In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984).

    You really should crack that book once in a while homie.

  36. 103

    Noise Above the Law wrote:
    >>Dan B and James Daily, I thoroughly enjoyed our posts today. Thank you.
    >>Bill Richardson and Christopher Larsen, You are completely clueless.
    >>6, you have supplied your own rope

    Hey what about me? What’s my rating? Also, please rate my MM-trollbot as well. I’m trying to work the kinks out of him, but the goal is to annoy intelligent people.

  37. 102

    “”First of all, not all claims CAN be so amended.”

    I’m aware, that’s the applicant’s failure. We’re talking about applicant’s that do not fail. ”

    Applicants failure to do what? Anticipate that the rules would be changed 3 years in the future, when the patent office bothered to begin examining the applicants application, and in deference to the office’s whining about applications being too long, left out discussion of machine implementations that would be obvious to those of skill in the art once the method was disclosed since the invention was a method and methods are clearly listed in the statute as patentable on an equal footing with other classes of patentable subject matter?

    paleeeze

  38. 101

    “There are 2523 patents with the exact phrase “method on a computer.” Are you saying that all these examiners who allowed these patents were stoopid?”

    Nah, they just wanted to go home and were just fine with letting that go. I know how they feel. :( You’re the on inferring that they’re stoopid. That isn’t entirely unreasonable though I will grant you. They could be.

    Btw, the very small number indicates just the opposite, that the vast majority of people submitting that language were caught by the PTO. I wouldn’t doubt it if a good 50000 hadn’t been sent in. So, on the whole, 5% or so getting out isn’t horrible. Besides, claims like “… and executing the method on a computer.” might not be as bad. Although if that was all of the MoT, I’d rip them a new Bilski sized behind orifice. Plus, did you look only in claims? They can spout out whatever bs they like in the spec.

    FYI- I do. As an examiner I also know that there has never been a method “on” a computer. Methods aren’t “anywhere”, they exist everywhere and nowhere at the same time, though they are sometimes performed or executed some place.

    Ok ok, I waxed a little poetic.

  39. 100

    “Some how they took a wrong turn in Bilski”

    They were trying to set forth an easy-to-apply test which could be used. Unfortunately, it is not all that easy to apply and it also is legislating from the bench IMHO.

  40. 99

    I would recommned reading HUMAN INGENUITY: A NOVEL APPROACH FOR PATENTING ALGORITHMS, 22 GGU LAW REV. 455 (1992). I would say that the Federal Circuit nearly copied the standard for determining patentable subject matter pursuant to 35 USC section 101 set forth therein back in 1999. Some how they took a wrong turn in Bilski.

  41. 98

    “lololololololol Bilskied. A method “on” a computer lolololololololol. Did you put the method on top of the computer or on bottom? The right or the left? Where do the “method steps” go? On top of your head?”

    There are 2523 patents with the exact phrase “method on a computer.” Are you saying that all these examiners who allowed these patents were stoopid?

    FYI — as an examiner, you should know that “on” does not necessarily mean “physically on” (i.e., the book is one the table).

  42. 97

    Bob1: Hey, Bob, I just developed this new method for hedging risk. Just tell me how much of a commodity you want to buy, then the past average price for the last 5 years.

    Bob2: Wow, that’s great Bob1! Ok, $100,000 and $50.

    Bob1: Ok, so multiplying $100,000 x $50 by my new method yields $5,000,000. So your hedge risk is $5,000,000! Oh, by the way Bob2, I am totally patenting this method!

    Bob2: Great! SO, ummm…Bob1, now what do I do with that number you calculated using your soon-to-be-patented method?

    Bob1: Well, you apply it of course!

    Bob2: Ohh…

  43. 96

    “A method on a computer comprising detecting the movement of user input device.”

    lololololololol Bilskied. A method “on” a computer lolololololololol. Did you put the method on top of the computer or on bottom? The right or the left? Where do the “method steps” go? On top of your head?

    Jes us, learn 2 draft that is pathetic.

  44. 95

    omfg, my other response eaten by the type pad.

    short version: dan b you’re evil, and dmb. Also, how do you know what hours I was in the office today? R u spying on me? Why are you spouting nonsense arguments taking up time “I” could be spending on legitimate lawyer’s arguments that are in line behind you? Attorneys take note of your fellow attorney’s behavior.

    Noise, reading comprehension is now a weakness? <3 for u lol.

  45. 94

    “A method on a computer comprising detecting the movement of user input device.”

    OMFG ROLFMAO, a method “on” a computer. Ok, ok, I’m going to try to restrain myself. Someone else take care of the little fish.

  46. 93

    Your claim preempts every possible method for detecting the movement of a user input device using a computer including using a passive sonar array to detect the sound of the user device sliding on your desk or 1001 other things that probably aren’t supported by your specification.

    I don’t think any examiner would have any difficulty stating an abstract principle and requiring compliance with the machine or transform test.

  47. 92

    Noise:

    I hope enjoyed meant in a good way. If so, then you’re welcome.

    Just Visiting:
    If the PTO can’t identify the judicial exception, how can the PTO justifiably argue that the claim is attempting to pre-empt all applications of the judicial exception.

    How can I argue that my contains no fundamental principal and thus the MoT test does not apply. You’re making the argument that all process are abstract ideas by default as I believe the PTO was trying to do to my claims. However, Bilski DOES NOT SAY THAT. Bilski clearly says, that MoT applies to process claims applying a judicial exception.

    A method on a computer comprising detecting the movement of user input device.

    What is abstract about that? The computer has to use some algorithmic program to detect the motion of a mouse. That’s about a concrete as can be. Not according to my examiner. Bilski she cries, Bilski!

  48. 91

    “I’m always correct don’t bother, don’t even bother.”

    There’s nothing I enjoy more than that call from some junior examiner an hour or so after I called the SPE.

    Junior – “After a review of the application, if you change ‘the’ to ‘said’ in claim 34, line 5, the case will be in condition for allowance.”

    Me – “Thanks. Feel free to make the change and send out the Notice of Allowance. It was a pleasure doing business with you.”

    LOL

  49. 90

    Heavy activity on the boards today, but a couple of quick points:

    6, you have supplied your own rope (and your greatest condemnation) yet again with:

    “I think I understand the law “so well” because I know how to read. Furthermore, because it has been my foremost hobby for the past 2 or 3 years. And to be honest, I don’t think I understand it “so well”, I think my understanding is precisely mediocre.”

    Your ability to read, to read in context, and to read and understand are perhaps your greatest WEAKNESSES. Couple these weaknesses with your colossal ego and your shield of persistent ignorance and it is no wonder that even examiners have stated on the boards how loathed you are.

    Bill Richardson and Christopher Larsen,

    You are completely clueless. To steal from my friend breadcrumbs, patent attorneys enjoy the perspective of two worlds; engineering and legal. The statement “Unfortunately, there is a dichotomy between the mindset of engineers and that of lawyers.” and the logic of your positions are built on loose sand. Your positions were thoroughly dismantled over at the IPWatchdog going back at least to last November. Your anti-patent agenda will not fly.

    Dan B and James Daily,

    I thoroughly enjoyed your posts today. Thank you.

  50. 89

    “In Bilski, the court specifically found that minimizing risks by entering into hedging contracts is an abstract idea.”

    This should give a hint as to how futile it is to ask the examiner to identify the “abstract idea”. The above statement is just some high level summary of what Bilski’s claim actually said. It is not going to be difficult task for the examiner to summarize the point of your invention at a high enough level to conclude that the machine/transformation test ought to be applied.

    As long as you are dealing with art rejections at the same time, go ahead and stall on the 101. But you aren’t really advancing the prosecution ball if you put off addressing the machine or transformation test.

  51. 88

    “I wonder what the trend is if we start at 1996? 28%?”

    Not quite that high, 19% CAGR. But as you’ve mentioned, you have to be careful about cherry picking years. If you go 2000 – 2004, the growth is actually negative.

  52. 86

    6:

    The entire patent system is about financial motivation. That’s the reason it was created–a financial incentive for inventors to disclose their inventions. Perhaps your 2-3 years of hobby law didn’t cover that. And while my company is financially motivated, my salary is the same whether we obtain patents or not.

    Secondly, intentional deception. I’m not quite sure how I am deceiving the examiner. He has rejected under 101 claiming the my claims were non-statutory subject matter because they did not meet the MoT test. In Bilski, the court said the MoT test determines whether a process pre-empts a fundamental principal. All I am ASKING for is for the USPTO to tell me what the abstract idea is.

    In Bilski, the court specifically found that minimizing risks by entering into hedging contracts is an abstract idea. Then they applied the MoT test. I’m simply asking for the Examiner to do the same. Simple request.

    Also, I love how being an examiner is just a hobby to you! And wow, you’ve been reading about patent law for a whole three years now as your hobby? That’s great.

    All patent attorneys take note. The reason the PTO is so backed up is because examiners such as 6 have spent their entire day reading blogs and responding to them. Your tax dollars and filing fees hard at work!

  53. 85

    “The thing is that the limitation to a general computer is no more meaningful than saying you can perform the calculations on a piece of paper to transform it to a concrete expression.”

    One key difference between the computer implementation and the pencil & paper implementation is that the computer implementation is actually useful. For most computer science algorithms, working them out with pencil and paper is completely impractical.

    I said above, another key difference is that by only claiming an exclusive right to the use of the algorithm as implemented on a computer, the patentee has left the algorithm itself, as a mathematical idea, to the public domain. Thus, computer scientists are free to research it in the abstract using pencil & paper and their own minds.

    “It’s like saying you could patent the addition of one plus one because a computer does it instead of your brain.”

    No, it is not like that at all. It’s like saying you could patent a new, nonobvious algorithm or datastructure as implemented on a computer because the practical application of that algorithm on a computer is useful in a way that the abstract idea is not.

  54. 84

    “The science (or art) that is computer
    programming is to arrange those myriad known techniques into a pattern to accomplish a specific goal. Mr. Larsen’s analogy of patenting computer programs to patenting legal arguments is quite apt.”

    This is akin to saying that you cannot assemble a patentable device from a family of CMOS circuits.

  55. 83

    “That is correct. ”

    I’m always correct don’t bother, don’t even bother.

    “Business method patents have only been growing explosively (i.e. 15% per year) since 1970. link to bit.ly

    The thing about that graph is that we could take a different point on it and make a different trend line. For instance, let’s leave out years 1978- and suddenly the trend line fits just as well at 20%. And even a 1% increase in the rate of growth is pretty big. I wonder what the trend is if we start at 1996? 28%?

  56. 82

    Les, you shot back with “1 a archaic : a constructed thing whether material or immaterial.”

    I’d actually found machine defined as “a device consisting of fixed and moving parts that modifies mechanical energy and transmits it in a more useful form.” This comes from the less authoritative Free Online Dictionary link to thefreedictionary.com but provides a definition that comports with how I believe the term is most commonly used. At least it isn’t prefaced by “archaic.” You M-W definition is almost the same as the definition for “apparatus” which is “a set of materials or equipment designed for a particular use.” So why call out “machine or apparatus” if they are basically the same? As I read “machine” a machine is one example of an apparatus.

    Regardless, I did not come here to argue definitions but to point out that “particular machine or apparatus” is hopelessly vague as a bright line, and contrasting differing definitions for “machine” does nothing to diminish that assertion. And that’s just a start. What does “tied” mean? And then there’s the transformation branch…

  57. 81

    “I think I understand the law ‘so well’ because I know how to read.”

    One would never guess that based on how sh!tty you write.

    “I think my understanding is precisely mediocre.”

    Don’t be so hard on yourself, your understanding is phenomenally mediocre.

    “And yours apparently.”

    That is correct. You are a legend. In my mind and many others. All of us have dealt with the likes of you many times. The true hard core, bad a$$ examiners who have never lost at the Board, or even allowed an application. Funny thing though is after one call to your SPE or Director you become more of a myth.

    LOL

  58. 80

    “But that does refute the point of my comment, which is simply to note the indisputable fact that the explosive interest in the patenting of abstract business and accounting concepts is a recent phenomenon.”

    You are right, I was engaging in a bit of hyperbole to make a point.

    Business method patents have only been growing explosively (i.e. 15% per year) since 1970. link to bit.ly

  59. 79

    “Why do examiners such as “6” think they know and understand the law so well just because they sat in on Solicitor Chen’s workshop on how to reject patent applications?”

    I think I understand the law “so well” because I know how to read. Furthermore, because it has been my foremost hobby for the past 2 or 3 years. And to be honest, I don’t think I understand it “so well”, I think my understanding is precisely mediocre. I just think that there are a lot of people in my interwebs (I think they’re inside the tubes) who have much less of an understanding. And I also think that these same people, absent a financial reward for misunderstanding the law would have a much better understanding. That is, they’re smart, they’re so smart that they can tell that they stand to gain by miscomprehension, and spreading that miscomprehension around. This isn’t even necessarily a conscious effort on their part, it may be entirely subconscious.

    Dan B is a particularly curious case of the exact phenomena referred to above. Do you see how his financial interest fuels his misunderstanding? In his case this misunderstanding appears to be entirely intentional, with an intent to decieve a poor hapless examiner. But, like I mentioned, this behavior doesn’t necessarily always manifest itself in such a manner.

    “Right. Like one phone call to your TC Director isn’t going to bring your little re-opening merry go round to a grinding halt.”

    Don’t bother says: I agree with you 6, I have nothing to threaten you with, but you on the other hand can threaten me with thousands of dollars of costs.

    “You’re a legend in your own mind. ”

    And yours apparently.

  60. 78

    James Daily wrote:
    >>But now suppose one adds the limitation that the algorithm be implemented on a computer. Suddenly two things have happened.

    The thing is that the limitation to a general computer is no more meaningful than saying you can perform the calculations on a piece of paper to transform it to a concrete expression. Putting it down on paper makes it easier to communicate, implementing it in a computer probably is faster than doing it in your head…but its still an a mathematical concept. Its like saying you could patent the addition of one plus one because a computer does it instead of your brain.

    Comparing pace of change in Biotech or Materials science and claiming it is anything vaguely related to duration of a software “generation” when discussing patent duration is underestimating software’s pace of change by orders of magnitude. There is simply no comparison between industries that spend years and millions or billions of dollars to a single idea and software that is composed of thousands or millions of ideas to create an aggregate product as a unique expression.

  61. 77

    Regarding the Curry-Howard Correspondence, which was brought up (as it so often is) to prove that software is inherently unpatentable:

    Suppose one discovers a new, more efficient algorithm for, say, simulating fluids on a computer. It is true that the algorithm is ultimately a mathematical proof and it can be performed entirely within the human mind. This looks like an abstract, mathematical idea, which would be excluded under 101.

    But now suppose one adds the limitation that the algorithm be implemented on a computer. Suddenly two things have happened. First, the invention is now a practical application of an abstract idea. Second, that limitation means that computer scientists can still study the algorithm in its pure mathematical state without running afoul of the patent.

    The requirement that the algorithm be implemented on a computer is sufficient to remove software from the realm of abstract ideas and into the realm of patentable useful processes. It also has the beneficial side effect of keeping the algorithm itself in the public domain.

    Another common objection is that patent duration is a lifetime in computer science. There are two major counterarguments: First, if that is true, then the patents will become worthless as they age, maintenance fees will go unpaid, and the patents will be abandoned. Dennis has written at least one post on the cumulative percentage of patents that go abandoned over time, and it is non-trivial. There is no reason to believe, without evidence, that software patents are immune to this trend.

    Second, there is nothing special about computer science. Other fields like biotech and materials science also move very quickly. What’s more, all of the fundamental algorithms and data structures are in the public domain. Quicksort, for example, was invented in 1962. Hash tables date back to at least 1957. No fundamental algorithms or data structures have been blocked by patents.

    Furthermore, with few exceptions (e.g. prime number factorization), it is known that we have either the optimal algorithms (e.g. n log n sorting algorithms) or very close to the optimal algorithms (e.g. polygon triangulation) for most fundamental computing tasks. Thus, it is often impossible to invent a significantly better algorithm. For the cases where it is possible, doing so would represent such a monumental stroke of genius that a patent would be a worthy reward and worthwhile incentive (e.g. an efficient way to transform an NP-Complete problem into a polynomial-time problem).

  62. 75

    Les wrote:
    >> Patenting an airplane is like patenting and algorithm. It makes it impossible to practice the profession of making airplanes.

    No, the equivalent for airplanes would be patenting the use of Drag and Lift so that you simply could not fly at all.

    You would be free to invent levitation to fly if you could.

  63. 74

    Has anyone read the Interim Guidelines that the PTO issued to its Examiners after Bilski.

    Steps to Determine whether the claimed invention complies with subject matter eligibility requirements of 35 USC § 101

    1. Consider the Breadth of 101 under controlling law
    2. Determine whether the claimed invention falls within an enumerated statutory category (process, machine, manufacture, or composition of matter)
    3. Determine whether the claimed invention falls within an judicial exceptions – Laws of Nature, Natural Phenomena, and Abstract Idea
    and if it does fall under the judicial exception, Determine whether the claimed invention is a practical application of a judicial exception.

    It then instructs the examiner to apply the MoT test for a practical application.

    Now I have received several rejections based on Bilski but they have never stated that my claims fall under a judicial exception. Therefore, I have replied that the MoT test is inapplicable because my claims do not fall under a judicial exception and if the USPTO believes they do fall under a judicial exception, that they should so state. Because how can I possible argue that a claim is a practical application of a judicial exception if I don’t know what the law of nature, natural phenomena, or abstract idea that I am supposedly trying to claim is?

    No responses yet.

  64. 73

    Patenting an airplane is like patenting and algorithm. It makes it impossible to practice the profession of making airplanes.

  65. 72

    Night Writer Patent Attorney said:
    >> Pick the right sorting algorithm (read information transformation method) and you can sort all the names in the wink of an eye.

    When I was learning programming I “reinvented” several of the well known sorting algorithms long before I’d ever heard of them, I’m not that smart its just logic and math.

    1+1=2

    Software engineers can not escape solving the same problems someone else has solved, its trivial to do in software…the expression is what needs protection (and is in copyright).

    Patenting an algorithm is like patenting a legal defense. It makes it impossible to practice parts of our profession.

  66. 71

    umm a pencil is and a piece of paper is a machine:

    * Main Entry: 1ma·chine
    * Pronunciation: \mə-ˈshēn\
    * Function: noun
    * Usage: often attributive
    * Etymology: Middle French, from Latin machina, from Greek mēchanē (Doric dialect machana), from mēchos means, expedient — more at may
    * Date: circa 1545

    1 a archaic : a constructed thing whether material or immaterial

    link to merriam-webster.com

  67. 70

    Why do examiners such as “6” think they know and understand the law so well just because they sat in on Solicitor Chen’s workshop on how to reject patent applications?

  68. 69

    “It isn’t exactly rocket science that you have nothing to threaten me with…”

    Right. Like one phone call to your TC Director isn’t going to bring your little re-opening merry go round to a grinding halt.

    LOL

    You’re a legend in your own mind.

  69. 68

    Mr. Richardson:

    Regarding your statement:
    “At every company I’ve worked for in the last 25 years, one of the first and
    most emphatic lectures I’ve gotten from the legal department is “Never look
    at a patent. Don’t search online, don’t ask, don’t let anyone tell you
    anything about anything that’s patented.” The reason of course, is that if
    we accidently infringe something we may have to pay. But if we knew about
    it, we may have to pay much more.”

    Those attorneys should be sued for giving such advice. Perhaps if you do look for and find a patent ahead of time, you could have figured out how to work around the patent and avoid getting sued and losing in the first place.

    I am in house in a very litigious industry and we maintain an extensive database of related patents and applications specifically so that we don’t get sued.

  70. 67

    “Goodness, 6. You are hostile.”

    I wrote that in a totally gentle manner, with no hostility meant what so ever. Completely, believe me. I have nothing against him, its fine if he wants to sit there, I just don’t understand what he is thinking. He isn’t going to get anything, and he’s just wasting his time. Sure, he’s on the client’s dime, but come on.

    “And if you want me to take a hike then please be prepared for an appeal or a petition.”

    No problem, that’s why I have a high appeal rate, a high approved pre-appeal rate, and a high appeal brief rate. But in the instant situation, the guy can tell he just got catch 22ed. There is no “appeal” or “petition” that is going to save him. He knows good and well there is some art to prove his 112 point, and he knows good and well the same art will 103 him. Wtf? Sure, come and argue if there is an argument to be made, but this guy already admits that he knows he’s fed and yet he’s still arguing.

    And, as a bonus for just for you, and because the appeal process is onerous, I might start reopening ad infinitum just for kicks and so that I don’t have to ever put up with your threatened appeal headache. Just spend 15 minutes every 3 mo to send you a new action until you go away. It isn’t exactly rocket science that you have nothing to threaten me with, and I have a lot to threaten you with. $$$. Don’t even go down that road.

    Be sure to understand my point, my point is not to ever argue, My point is to not argue when you know you’re in corner that is impossible to get out of.

    “Did you get nothing from the sorting example? The point was 101 and not 102 or 103.”

    That was my point too. There’s nothing to “get” from the sorting example except that you’re trying to get around the biggest barrier to patent protection, the unwritten law that if your claim is worthless then there was no point in getting it, by claiming something that fails 101. 102 and 103 do not enter this little analysis at all.

  71. 66

    Mr. Richardson:

    Here’s the deal, whether software patents should be patentable or not is a question Congress should answer not the courts. And the Supreme Court agrees. They have repeatedly said, do not read limitations into 101 that Congress did not intend. Congress can make anything patentable that it wants. They have that power. The Supreme Court cannot take it away (but for unconstitutionality).

    Congress has had many years since State Street to “fix” the issue of business method patents but has never done so. In fact, § 273 shows that, in fact, they intended business methods to be patentable.

    Your argument is for legislative debate not legal debate. Under the law business methods are patentable, and unless the Supreme Court finds that such an inclusion is unconstitutional, their hands are tied to hold otherwise.

  72. 65

    >>Your use of profanity leads me to believe you >>are a disgruntled government employee. >>Nevertheless, I will respond to your statement.

    It’s fairly disturbing too.

  73. 64

    6:

    Your use of profanity leads me to believe you are a disgruntled government employee. Nevertheless, I will respond to your statement.

    Your statement implies you know which art Bilski is intended for. Please enlighten us. Because no where in the application (have you read it) does Bilski say that this is a method restricted to computers. I can perform all the steps in the Bilski claims in person, through the mail, by fax, over the phone, using sign language, using software. Heck my three year old daughter manages risk all the time. “Dad, can I take my toys to Suzie’s house in case she doesn’t let me play with her toys.”

    I’m not saying that he has to publish the source code but he disclose best mode of implementation. In his case he disclosed nothing. You cannot infer enablement. It has to be disclosed. It’s the law.

    How can an inventor be awarded a patent on inventions he did not conceive? In Bilski’s case, he did not disclose any manner of performing the methods that revealed his conceptions.

  74. 63

    Bill Richardson said:
    >>With regard to software, Mr. Larsen is right. >>and Night Writer Patent
    >>Attorney is mistaken. Yes, it takes some tiny >>effort to “transform” an
    >>unsorted list into a sorted one, but that >>doesn’t make it an invention any
    >>more than the invention of “transforming” the >>text of a legal brief into an
    >>oral argument.

    First, 30 years about computers spent about 80% of their time sorting. Second, the point was to show why information processing should be eligible for patentability. Third, how one sorts makes a huge difference. Pick the wrong sorting algorithm and you can’t sort the names of all the people in the U.S.A. before you die. Pick the right sorting algorithm (read information transformation method) and you can sort all the names in the wink of an eye. So, I guess it matters how you sort. And the method will change how much energy is used, space, and time.

    Cheers to all. Good to have such lively debates. The trollbots are hilarious.

  75. 62

    >>No, we get it. Who the f CARES that >>it “essentially” emulates other machines? >>NOBODY. The fact has no relevance to what the >>law should be, or is.

    Why does it have no relevance?

    >>But, the bottom line is, why can this guy not >>just take the hint to take a hike?

    Goodness, 6. You are hostile. Gee, you are a government employee, right? And if you want me to take a hike then please be prepared for an appeal or a petition. You remind me of an examiner I had to deal with a few months ago. I had to call up his SPE because the examiner was just refusing to follow the MPEP, which you are bound to follow. The SPE said: do what the attorney said. The application was allowed.

    >>SO CLAIM ALL THAT INSTEAD OF THE SORTED LIST. >>JES US.
    Did you get nothing from the sorting example? The point was 101 and not 102 or 103.

    6: you have become more and more hostile with less and less content. Soon you will become a 6-trollbot.

  76. 61

    With regard to software, Mr. Larsen is right. and Night Writer Patent
    Attorney is mistaken. Yes, it takes some tiny effort to “transform” an
    unsorted list into a sorted one, but that doesn’t make it an invention any
    more than the invention of “transforming” the text of a legal brief into an
    oral argument.

    Transforming and manipulating data is what computers DO. Further, the nature
    of computer programming is such that every program written contains within
    it uncountable instances of techniques and operations that have already been
    discovered or used by others. The science (or art) that is computer
    programming is to arrange those myriad known techniques into a pattern to
    accomplish a specific goal. Mr. Larsen’s analogy of patenting computer
    programs to patenting legal arguments is quite apt.

    The straw man example of having your invention stolen as soon as it’s on the
    market is not one that applies to computer programming. Computer programming
    is hard (but just being hard doesn’t mean it’s an invention), and the only
    way to “steal” a program would be to copy it directly, which is well covered
    by copyright law. Independently reimplementing the program — even if one
    “skilled in the art” tells you how it’s done — requires prohibitively large
    effort. That effort is what fosters competition.

    Unfortunately, there is a dichotomy between the mindset of engineers and
    that of lawyers. To lawyers, the law is a tool used to acquire some
    advantage. By patenting something, I can prevent others from competing
    effectively. Whether or not the patent “should” be granted is irrelevant.
    But to an engineer, the law is an attempt to solve a problem. If the problem
    is not being solved or is made worse, the law is broken and needs to be
    adjusted.

    Patents, like copyright, are (or were) intended “to promote the progress of
    science and useful arts”. Patents on drugs, machinery, chemical processes,
    etc. do have that effect because once demonstrated or sold they are easily
    copied and without patent protection, yes, someone would duplicate your
    invention immediately. But with software, patents are at best pointless, and
    at worst a serious impediment to innovation. Instead of saying “I won’t work
    on this unless I’m sure it won’t be stolen”, programmers say “There’s no
    point to working on this, because if I’m successful, someone will sue me.”

    At every company I’ve worked for in the last 25 years, one of the first and
    most emphatic lectures I’ve gotten from the legal department is “Never look
    at a patent. Don’t search online, don’t ask, don’t let anyone tell you
    anything about anything that’s patented.” The reason of course, is that if
    we accidently infringe something we may have to pay. But if we knew about
    it, we may have to pay much more.

    In the software field, this means that patents are NOT promoting progress.
    When a programming method is patented, it completely removes that method and
    anything resembling it from the realm of useful knowledge forever (20 years
    *is* forever in computer science). It also vastly increases the risk of
    further development, since any one of thousands of known programming methods
    could also be patented (or claimed to be, which costs just as much to defend
    against).

    Yes, programming is hard and the results are often quite innovative. But
    duplication is almost always just as hard, so there’s no need for an
    artificial barrier to prevent that duplication. If the purpose of patent law
    is to promote scientific and cultural progress, patenting software is NOT
    helping. If the purpose is to ensure economic advantage for the innovator,
    it’s not helping there either because every programmer faces the same
    unknown patent threats from all the others. If the goal is to ensure that
    the companies with the deepest pockets can secure their continued economic
    advantage over all smaller competitors, then it’s working just fine.

  77. 60

    “HOWEVER, it lacks enablement. Nowhere in the application did the inventors disclose HOW to perform the steps.”

    That’s because you are rtarded. You don’t have to disclose HOW to perform the steps if someone like me who knows di ck about these arts could implement the claimed “inventionlol” in less than an hour given the raw “materials”.

  78. 59

    “First of all, not all claims CAN be so amended.”

    I’m aware, that’s the applicant’s failure. We’re talking about applicant’s that do not fail.

    “The only open question is do you want to hold that a method that is partially carried out in someone’s head is eligible for patentability. For example, perform test a on the person, look at the results and based on the results perform either therapy b or therapy c.
    I think we should allow these and we will be better off for it if we do.”

    I’ll disagree.

    “its not oooobvioussss daaaat it was did by a commmmpuuuuuter.”

    Obviousness has nothing to do with WD homie.

    “Making a claim easier to work around (by using a different particular machine, for example)is clearly unfair to the inventor.”

    No it isn’t. If the m fin inventor didn’t disclose it, claim it, or know of it at time of conception, then there is no reason to go granting him a patent on it. Homie, you just think granting broad claims for the sake of granting broad claims is a great thing. I’m here to tell you that in and of itself it isn’t. There’s no reason to use that as a basis for any determination.

    “So, as applied to machine-or-transformation, one might expect that machine-or-transformation shouldn’t be the only way that we can find process claims nonstatutory, but it should still be a way.”

    I like the way you’re thinking today plurality.

    “This is the core of the misunderstanding of the MM-trollbots. They don’t understand that a CPU essentially emulates other machines. ”

    No, we get it. Who the f CARES that it “essentially” emulates other machines? NOBODY. The fact has no relevance to what the law should be, or is.

    “Third, D didn’t write the article. Jeez, he even included a picture of the author for those of us who have trouble reading. And you’re the one calling people mor ons?”

    Yeah I noticed that later. There was a sht ton of content to read and I just posted as I read it.

    “Of course, this definition means you would have to claim each single computer (machine) or article (hard disk transformed by code) separately to meet the “particular” limitation of the rule.”

    You sir, caught on quick. I’m not sure about the total fees for these types of claims. However, I would like to patent a general purpose machine programmed to generate such lists of claims, can anyone help me with this?

    “http://www.google.com/patents?id=lB5AAAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q=&f=false”

    Mark, that claim appears to me as if it passes MoT.

    ” you become a commodity seller.”

    Perhaps you were a commodity seller from the beginning and you just didn’t know it?

    “And, I think it takes time and energy and space. And, I think how well the sorting is done makes a big, big difference.”

    SO CLAIM ALL THAT INSTEAD OF THE SORTED LIST. JES US. The whole issue is that your actual invention is worthless, so you need to tread into the unclaimable to get any claims of value. Sorry, take a hike.

    You remind me of an attorney who my bud just told me about having an interview with. The attorney was worried about a 112 issue, and apparently he felt like in order to get around the 112 issue (probably a miyazaki, I got this bud using it :) ) he’d have to submit a piece of art showing x. And then, he surmised, when he did that, my bud would turn around and 103 him based on that art showing x. He didn’t feel like that situation was fair. My bud of course felt like he should report the lawyer to legal discipline or whatever (I explained to him later why that isn’t necessarily true) because he was obviously aware this feature was old and there would be motivation to combine etc. and he hadn’t put that on the record. It’s a hilarious situation, with both sides doing dmb things. But, the bottom line is, why can this guy not just take the hint to take a hike?

  79. 58

    Um, about that pencil, it’s not a machine but it is an apparatus. Same on the paper. But is it a particular apparatus? Or does “particular” only modify “machine?” The phrase “particular machine or apparatus” would never pass 112, 2nd if it came up in claim language, but it makes a great bright line test.

  80. 57

    Max –
    I’m not sure what you are asking. I said that the claim would be rejected because it is anticipated (It has been done before). The issue raised by Bilski is whether is can be classified as the kind of thing (if it were not known or obvious) that could be patented. That is, is it a process (as processes are one category of things that can be patented). The answer is clearly yes. Receive date, transform date to at lest one symbol, commit symbol to storage media….That is a process and if it were new and if it were not obvious, then it would be patentable.

  81. 56

    Les I’m not at all sure I agree with you there. We are to suppose that the state of the art includes 1) dates 2) paper 3) pencils 4) writing. We are asked whether a process (key word, that) step, of writing on paper (with the known pencil) would be a patentable invention, if what is written is “dates”. Is that what you’re asserting? Seriously?

    In Europe, one of the statutory exclusions from patentability is “the presentation of information” (as such and per se). Never realised the provision was so contentious.

  82. 55

    Mr. Larsen:

    The uncertainty J. Newman wrote of referred to the uncertainty that the majority alluded to. Specifically, that this MoT could very well be inapplicable to unforeseen inventions. However, the majority missed the point of patentability then, because under Title 35, to receive a patent, the invention must have been unforeseen, that is not anticipate and not obvious. So to state that their test may not apply to “unforeseeable” technologies in and of itself renders the rule invalid.

    Secondly, patents are public record. So a software engineer, and any inventor, who is working on a problem should at least try to see if such a solution has already been reached. After all everyone is aware of the patent system and its implications.

    Furthermore, judging by the number of “software patents” out there, it seems that the software engineers you seem to be defending are in fact the ones filing these patents. You may dislike patent trolls for whatever reason, but the fact is before the trolls get their hands on a patent, an inventor actually filed and received the patent. He then sold it to the highest bidder so that he could benefit from his inventiveness.

    It is hypocritical that that same group of people (software engineers for example) who claim that software patents are unfair and should not be patentable ALSO continue to file for patent applications.

    Finally, everyone please remember it is not up to the courts to say that business methods or software patents are non-patentable. The Constitution grants CONGRESS the right to make patent law. The Court’s job is to interpret and enforce the law. The Supreme Court will NEVER rule software patents and business method patents non-patentable, given that Congress has had so many years to specifically exclude such patents and has not done so.

    To those that argue that the Supreme Court should rule such inventions unpatentable: Do you really want an Ivy League group of Supreme Court Judges to write your laws?

  83. 54

    Mr. Larson –

    You are confusing many many issues.

    First I would point out that your example birthday data retention technique would pass the ridiculous machine or transformation test. It is tied to 2 particular machines: a pencil and a piece of paper. Furthermore, as you point out, an ephemeral date is transformed to symbols stored on a storage medium.

    Writing dates on paper is known and so, such a claim would be rejected as being anticipated.

    However, I think you will agree, if you had invented the writing of dates on paper, before writing dates had ever been done before, that would be quite an invention and worthy of protection. ugh ugh?

  84. 53

    Regarding Newman’s dissent, I’m sure its a marvelously crafted piece of legal reasoning but it is fundamentally wrong at least for some industries for the same reason he cites for the dissent.

    “Uncertainty is the enemy of innovation.”

    Today’s “knowledge economy”-of “digital prosperity” moves so much faster than the patent office that the very existence of method patents or potential patents introduces incalculable uncertainty. Their existence is such every day software engineers are solving problems and hoping that five years from now someone does not come along and sue their companies because the patent office granted a patent on some “method” of manipulating data or interpreting it.

    The patent system is not working properly if the only safe thing to do for some industries in the “knowledge economy” (for example software) is to do no work at all. How can this possibly be fostering innovation?

  85. 52

    Mr. Larsen:

    Thank you for your posting. My guess is that 950% or so of the “idea” or “method” “inventions” which you believe are not entitled to patent protection would not be entitled to patent protection on 102 or 103 grounds (or even 112 grounds) and thus 101 is not needed to reject them.

    The other 5% you would likely agree are entitled to patent protection unless you are opposed to all patents.

    It sounds like you have had some bad experiences with patents in your business.

    From my experience most companies and individuals would not go through the very expensive process of developing, manufacturing and marketing inventions if there were not patent protection to prevent competitors from copying the inventions (without having incurred the r & d costs) and selling them cheaper, especially competitors from cheap labor countries.

  86. 51

    Mr. Larsen:

    Your last paragraph is obviously directed toward “patent trolls.” Your statement implies a responsibility on the part of the inventor even though the inventor does not even have the appropriate right.

    Where in Title 35 is there a requirement that a patent holder produce a product?
    Nowhere and here is why. Patents DO NOT give a patent holder the right to produce a product. For example, if I invented a better mousetrap, but the original mousetrap that I based my invention on is still under patent protection, I could not produce my better mousetrap without infringing. However, now the original mousetrap manufacturer must get a license from me to use my improvement.

    Additionally, many patented inventions come from the work of universities, yet I have never seen The Ohio State University Factory. Are universities trolls then? Should they stop all research and inventing because sensationalist persons such as yourself are ignorant of what rights patent laws grant.

    As to the Bilski Patent, I think it should be invalidated but not because that it is non-statutory subject matter. It’s a process, therefore it is statutory subject matter under 101. HOWEVER, it lacks enablement. Nowhere in the application did the inventors disclose HOW to perform the steps. Therefore, the claims are invalid due to lack of enablement. Which, by the way, is typically how abstract idea patents are invalidated. Why the Fed Cir continues to read limitations into 101 after being repeatedly and EXPLICITLY told by the Supreme Court not to (see Chakrabarty) is beyond comprehension. They are a rogue court.

  87. 50

    “I also wonder if you have ever been in the business side of engineering where once you create a product it is stolen as soon as you make the first sale. Or have ever negotiated a sale with a big corporation where if you do not have any intellectual property rights you become a commodity seller.”

    Uh-oh, here come the tears.

  88. 48

    “Yeah. Very, very, VERY recently….Like 1840”

    Thanks for the link, Mark. Indeed, crappy patents were being filed from the very beginning. But that does refute the point of my comment, which is simply to note the indisputable fact that the explosive interest in the patenting of abstract business and accounting concepts is a recent phenomenon.

    Not only is irrefutable, but it’s obvious why it happened. Not sure why this should be controversial, except of course for the fact that a certain cohort of patent bulls who perpetually lobby for worse patents have an interest in perpetuating the existence of a “controversy”. Why do they lobby for such patents? Because their business revolves, in part, around the existence of such patents. Pure self interest. It has nothing to do with “promoting innovation” or “maintaining America’s leadership” or any of the other pithy rationales that are floated over and over again.

  89. 47

    Not to mention the great lengths people will go through to hide the design of their inventions without patent protection. The infomration people get about the design is a direct consequence of the disclosures at the patent office. You may read about it in a magazine, but you wouldn’t if it weren’t for the disclosure in the patent office.

  90. 46

    And, Mr. Larsen, I am certain that in the not too distant future there will be information processing machines that can practice law better than the average lawyer. And the design of these machines should be eligible for patentability.

    I also wonder if you have ever been in the business side of engineering where once you create a product it is stolen as soon as you make the first sale. Or have ever negotiated a sale with a big corporation where if you do not have any intellectual property rights you become a commodity seller.

  91. 45

    Do you think Mr. Larsen that taking an unsorted list and sorting the list is a tranformation? I do.

    And, I think it takes time and energy and space. And, I think how well the sorting is done makes a big, big difference.

  92. 44

    NWPA trollbot “Please respond to Dan B’s post MM-trollbot.”

    I will if I feel like it. How about you respond to mine instead of just spouting some inane garbage about “some people paid for a service so it must be patent-worthy”? Seriously. Can you handle?

  93. 43

    When I said “idea”, I meant something that is intangible or a physical fact of the universe. “A method for remembering birthdays” using a pencil and paper, “transforms” data making it easier to use/recall.

    Patent lawyers (on behalf of the poor defenseless inventors of course) would like to argue that manipulating data to make it easier to use is an invention. “A method for managing risk” by taking some data, stuffing it into a computer and running an analysis of it.

    Patenting software or “methods” makes no more sense than patenting legal arguments. “A method for defending an accused person by utilizing previous court rulings.” On a daily basis you manipulate data to make decisions, write legal briefs and otherwise perform your job. In past your data came from bookcases filled with rulings, today you probably use a computer to search helpful online databases.

    Using mathematics, statistics or even simple logic to manipulate data to answer a question can not be an “invention”. Using a computer to display the same data (birthdays) in a pretty graph or even make decisions to send out a birthday card is no more inventive, special or “transformative” than using a pencil.

    I hope you agree that writing down birthdays on a piece of paper (better cover our bases, or piece of wood, sheet metal, concrete or any other flat or non-flat surface) with a pencil is not patentable? Likewise, manipulating data with a computer is no more “special” or inventive than using a pencil and yet we know such “methods” of displaying data or making decisions based on that data have been patented as being “transformative” inventions because we used a that piece of amazing technology called a computer.

    Patent law is a tax on innovation, it might sometimes protect real inventors but often it is used to stifle competition and innovation.

    I’ll leave you with one last “method” patent.

    “A method whereby a company is created that makes nothing, produces nothing but whose sole purpose is to extort settlements from companies too small to defend themselves by filing in friendly court districts utilizing patents that would probably be ruled invalid if contested by a defendant with deep pockets.”

  94. 41

    Mr. Scott:
    I disagree with your statement “that the only exclusionary basis for rejecting a claim under 101 should remain whether the claim is to a law of nature, natural phenomenon, or an abstract idea.”

    There are several basis for rejecting under 101.
    “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.”

    The invention must be 1) new; 2) useful; 3) ANY process, machine, manufacture, or composition of matter, or any new and useful improvement; and 4) is subject to the conditions and requirements of this title.

    But with regards to statutory subject matter, the only imitation is that the invention is ANY process, machine, manufacture, or composition of matter, or any new and useful improvement.

    Claims directed only to laws of nature, natural phenomenon, and abstract ideas fail because of lack of utility or lack of enablement. Hence the MoT test is really a test of whether the process claim has utility. If it does not, then it is not patentable. But that does not mean it’s not a process, it’s simply not a process that meets the conditions and requirements of Title 35.

    Why is this so hard?

  95. 40

    “Except that accounting tricks and methods of betting are older than iron and steel. Yet somehow the need for patentable “innovation” in those areas didn’t smell desperate until very very recently.”

    Yeah. Very, very, VERY recently….Like 1840. link to bit.ly

  96. 39

    “They enlist Judge Rader’s dissent in Bilski to attack the transformation requirement which ‘links patent eligibility to the age of iron and steel as a time of subatomic particles and terabytes.’ ”

    Since the decision came out, the Rader dissent has seemed to me to be the compass rose holding the keys to the correct direction for SCOTUS to take in deciding Bilski.

    Rader correctly emphasizes that a rigid subject matter test runs the risk of denying patentability for legitimate inventions that happen to take a form that can’t be reconciled against the rigid test. 101 itself was written to embrace *any* new or useful process or improvement.

    Rader correctly argues that “ingenuity should receive a liberal encouragement” and that the only exclusionary basis for rejecting a claim under 101 should remain whether the claim is to a law of nature, natural phenomenon, or an abstract idea. Rader sees the abstract idea exclusion as the simplest and best reason why Bilski’s claim should be rejected.

    101, by its plain language, is a rule of inclusion and should function as a fairly large and wide swinging door. 102 and 103, by their plain language, are rules of exclusion and function as progressively narrower doors.

  97. 38

    **********”Until you know what “particular” means in the context of machine and article, there’s no way to apply MOT.

    Perusing the comments on this blog for the last year, I have yet to see anyone provide a workable definition of either particular machine or particular article.”******************

    I’ll bite. “Particular” means a use or application of the underlying process that is defined so as to exclude at least one other use or application of the underlying process, and thereby avoids preempting all uses or applications of the underlying process.

    FTR, MoT must die a quick and painful death.

  98. 37

    NWPA-bot ” For example, perform test a on the person, look at the results and based on the results perform either therapy b or therapy c.”

    What about performinag no therapy based on the results? Why shouldn’t that be patentable?

  99. 35

    A rose by any other name Night. 112 speaks of an “invention” and Mr Larsen speaks of an “idea”. But where in the Statute is “invention” defined. At least in the newspapers, “invention” and “idea” are synonymous. Why not also in 112?

  100. 34

    Come now Maxdrei. 35 U.S.C. 112. The problem is that people are confusing abstractions used by engineers to convey structure with whatever idea means.

    And Mr. Larsen, please read the dissent of Newman in the Bilski case.

  101. 33

    Like copyright then? You can’t copyright “an idea” but you can use the law of copyright to protect all the skill and labour that went into the creation of your literary work, the expression in material form of the underlying idea.

    So, in patenting, if you can write down what your “idea” is to the extent that you “enable” a reader to “use” your “idea”, you can have a patent, the 20 year monopoly being your reward for communicating your “idea” to the public? I can see how we as a profession of scriveners, paid by the word, might want society to go down that road but do we, wearing our “society” hat, want to go down that road. Are you serious? Is the concept of “invention” co-terminous with an “idea” (any idea) that’s “enabled” by a written description? Copyright law is meaner:Is that what you think?

  102. 32

    Bilski is not such a big deal except for its consistent misinterpretation. I believe that everyone has misinterpreted Bilski.

    “The Supreme Court, however,
    has enunciated a definitive test to deter-
    mine whether a process claim is tailored
    narrowly enough to encompass only a par-
    ticular application of a fundamental princi-
    ple rather than to pre-empt the principle
    itself.transform any other article, to transform
    the same article but in a manner not cov-
    ered by the claim, or to do anything other
    than transform the specified article.”

    It seems clear that they are stating that this rule only applies if the process is claiming a fundamental principle in whole or in part. Thus, this rule does not apply if the process does not encompass a fundamental principle.

    They go on:
    “A claimed process in-
    volving a fundamental principle that uses a
    particular machine or apparatus would not
    pre-empt uses of the principle that do not
    also use the specified machine or appara-
    tus in the manner claimed.”

    and

    “And a claimed process that transforms a particular article
    to a specified different state or thing by
    applying a fundamental principle would
    not pre-empt the use of the principle to
    transform any other article, to transform
    the same article but in a manner not cov-
    ered by the claim, or to do anything other
    than transform the specified article.”

    Further in each case relied upon by the Federal Circuit, the Supreme Court always first identified the fundamental principal and then applied some test to determine whether the claim was a useful application of principal or simply attempted to pre-empt the principal itself.

    Finally, although courts including the Supreme Court cite the “judicial exceptions” to statutory subject matter under § 101, when you look at the cases that first determined those exceptions, the Court invalidated those types of claims because they failed to meet the requirements of Title 35 as a whole. For example, abstract ideas and mathematical formulas are unpatentable because they lack enablement or the claims are overly broad. How many times have we heard the Court hold that (paraphrasing) “these claims attempt to cover ALL applications of the invention, even those unforeseen by the inventor” when talking about fundamental principals?

    Bilski is not such a big deal except for its consistent misinterpretation.

  103. 31

    I am afraid Mr. Larsen that you may be a great engineer, but you do not understand what you know.

    If a person skilled in the art can convey to you an invention and you as one skilled in the art know how to build and use this invention from their description, then that description is not an idea.

    It may feel like an idea to you, but what it is a description of how to make and use the invention.

  104. 30

    Depends what your definition of an “idea” is, Mr. Larsen. Give us some examples of “ideas.”

  105. 29

    Allow me to attempt an analogy for why Engineers consider the patenting of ideas to be flatly crazy in terms to which you can perhaps relate.

    Imagine for a moment if you were involved in a case, there is lots of legal precedence and case law that is on your side.

    Unfortunately, you are not allowed to use any of the arguments or words used by, lets say, State Street since this is a patent blog because those arguments are patented by them. Now you might be able to license the right to use those same arguments and words, but those lawyers want fifty million and fifty percent of what you win because patent law is like a lottery anyway.

    (I’m sure they probably used the word defendant at some point, that word will only cost you fifty thousand per instance in your briefs).

    Oh you say, but the word defendant has been used since the dawn of law. Most likely true, but they were awarded a patent and it will cost you to prove you have any right at all to use it. Probably you will need to sell your house and children to fund your defense.

    Well, obviously you may come up with the same arguments after all you are a clever lawyer. Ooops, that is going to really cost you now unless you can prove you never heard of any of those words or arguments. It will still probably cost you more than your practice is worth to do so though.

    “Oh you say, but law is built on the foundation of precedence and what has gone before.” Interestingly enough, that applies to science, technology, human evolution, learning and language.

    Patenting inventions may be good, patenting ideas (or legal arguments/words) is plain crazy. The manipulation of data is an idea, it is not an invention even if you do use a blender to transform it into confetti.

  106. 28

    [typo in 1) ‘age of iron and steel /AS/ a time of subatomic particles’ should be ‘/AT/ a time of subatomic particles’]

  107. 27

    >>So, as applied to machine-or-transformation, >>one might expect that machine-or->>transformation shouldn’t be the only way that >>we can find process claims nonstatutory, but >>it should still be a way.

    Or, I would guess the outcome will be that the machine or transformation is not the only way to find something patent eligible.

  108. 26

    I always laugh when someone tries to compare the SCOTUS’s decision on TSM in KSR with the machine-or-transformation test:

    With TSM, the Court said that TSM was still a good way to reject claims. It wasn’t the only way, though, and now we have lots of other tools at our disposal for rejecting obvious claims.

    So, as applied to machine-or-transformation, one might expect that machine-or-transformation shouldn’t be the only way that we can find process claims nonstatutory, but it should still be a way.

  109. 25

    “btw, I prefer

    1: of, relating to, or being a single person or thing ”

    OK, great. There we go, we finally have a definition for “particular.” Somebody send 6 a Nobel Prize.

    Of course, this definition means you would have to claim each single computer (machine) or article (hard disk transformed by code) separately to meet the “particular” limitation of the rule.

    Claim 1. A process wherein a computer with IP address xxx.xx.xxx.xx0 carries out the step of…

    Claim 2. A process wherein a computer with IP address xxx.xx.xxx.xx1 carries out the step of…

    etc., etc. What would the fee be for 7 billion independent claims over 3 be?

    Luke, I love it. Nit pickin’ a nit picker. Remember Mason William’s line: “Look at them nit pickers, ain’t they somethin’ “?

    But I’ll stand on my “or” characterization as disjunctive, my point being that an applicant or litigant only needs to satisfy either one test or the other. I’m not getting over Boolean here, nor (NOR) am I trying to convey the exclusive OR. The MOT “works” whenever the claim passes one or more of the machine test or transformation test, which is the definition I have of disjunctive or.

  110. 23

    >>No, that’s not an arguable point. The Curry->>Howard-Lambek correspondence is a mathematical >>proof of this.
    >>Yes, that means you can turn random software >>into mathematical proofs of something.

    I’d have to take a closer look at this, but I think what would break this is that this is probably true of any process or machine (if it is true of any computer program. by the way would that hold for an analog computer?)

  111. 22

    “D, perhaps you could point me to a claim that, in being amended to comply with M or T, was unfair to the inventor.”

    Third, D didn’t write the article. Jeez, he even included a picture of the author for those of us who have trouble reading. And you’re the one calling people mor ons?

  112. 21

    By the logic of the post pasted below, the Wright Brothers plane is not patentable because it is just an embodiment of math, the embodiment of tables of lift v. drag measurements and thrust v. weight determinations. The Wright brothers plane is as much math as is the software running to accept this text entry, if not more so.

    “If they really want to follow the outlines more accurately, why don’t they start banning all software patents on the basis that software is math?

    No, that’s not an arguable point. The Curry-Howard-Lambek correspondence is a mathematical proof of this.

    Yes, that means you can turn random software into mathematical proofs of something.

    But there’s no escaping the fact that all software is math, which is strictly excluded from being patentable.

    I’d like to see the ABA argue that one.”

  113. 20

    From the brief:
    >>The method of the invention does not >>necessarily have to be performed on a >>particular machine or computer, although the >>practice of the invention will most likely >>involve both computers and modern tele->>communications.

    I think I would probably have dove deeper into this and argued that yes it is a particular machine. This is the core of the misunderstanding of the MM-trollbots. They don’t understand that a CPU essentially emulates other machines. That there any software + CPU can be turned into a particular machine all in hardware and that the CPU is a way to move in and out of hardware. Really, more time should be spent explaining this. It goes to the core of the misunderstandings at the SCOTUS. They don’t understand what software is and its relationship to hardware. By being clever and enabling high levels of abstraction, computer science has left the non-science people behind.

  114. 19

    6:

    “D, perhaps you could point me to a claim that, in being amended to comply with M or T, was unfair to the inventor. ”

    First of all, not all claims CAN be so amended. The original application was drafted to disclose and claim a process. No “particular” machine was disclosed. Therefore, such an amendment would likely be rejected for including “new matter”…ddaaaaa we diiiiiidn’t know you meant a compuuuuuuter could dooo it. It would be obbbvisooooose to combine 6 documents to arrive at dissss imvention but….its not oooobvioussss daaaat it was did by a commmmpuuuuuter.

    Second, such an amendment is clearly the addition of a limitation, (or you would be so hell bent on having the amendment made). Making a claim easier to work around (by using a different particular machine, for example)is clearly unfair to the inventor.

  115. 18

    It really is very simple. Information processing should be held to be eligible for patentability. A machine that processes information should be held to be eligible for patentability. Simple.

    All these other arguments are nonsense that have to do with people not understanding patent law. For example: 112 (abstract may be used as long as they are clear to one skilled in the art. See Newman’s dissent in Bilski.)

    And have to do with bizarre notions of what math and science are, and the use of strange abstract words (like idea). Figuring out that people become ill if they don’t have enough vitamin c is a practical application of science. The human body is a machine. Simple.

    The only open question is do you want to hold that a method that is partially carried out in someone’s head is eligible for patentability. For example, perform test a on the person, look at the results and based on the results perform either therapy b or therapy c.
    I think we should allow these and we will be better off for it if we do.

  116. 17

    “But there’s no escaping the fact that all software is math”

    Standing, venture over to IPWatchdog for a different take on the Software is math POV.

  117. 16

    MM-trollbot wrote:
    >>methods of recommending a movie.
    >>It’s right up there with methods of creating a >>list of people who need to take a leak and >>methods of recommending a movie. Old. Trivial. >>Stoopit. Worthless.

    Again, MM-trollbot, if that is old and easy then go and earn $1 million dollars by writing an information transformation program that recommends movies.

    Thank goodness some people understand the value of information transformation methods.

  118. 15

    it is math in what form (medium) though?

    (and can it be shot down on 103 so 101 is not needed?)

  119. 14

    If they really want to follow the outlines more accurately, why don’t they start banning all software patents on the basis that software is math?

    No, that’s not an arguable point. The Curry-Howard-Lambek correspondence is a mathematical proof of this.

    Yes, that means you can turn random software into mathematical proofs of something.

    But there’s no escaping the fact that all software is math, which is strictly excluded from being patentable.

    I’d like to see the ABA argue that one.

  120. 13

    btw, I prefer

    1: of, relating to, or being a single person or thing

    for the definition of particular.

  121. 12

    “Petitioners point to the historical rejection of the English “manner of manufacture” in favor of the broader Constitutional “and useful Arts””

    Rejecting less flowery words for more flowery words don’t change the substance mor ons.

    “surrendering fairness for simplicity achieves neither end.”

    D, perhaps you could point me to a claim that, in being amended to comply with M or T, was unfair to the inventor.

    “Let’s not forget that the MoT test, as a supposed bright line test, fails miserably. Look at the widely divergent results out of the BPAI. Each case is supposedly being decided under the same jurisprudence, but it’s a total crap shoot whether any given application will prevail or not”

    That is the reason the USSC will change things. And if the petitioners didn’t mention it it is because they smell their destruction at its hands just as surely as if the CAFC were affirmed.

  122. 11

    Veritas wrote:

    “Finally, thank you for not referring to MOT as a “two-prong test.” I’m getting really weary of that mal-applied term. A 2-prong test is one in which both tests must be applied. Here only one test need be applied. If the claim passes that test, forget the other. That’s the meaning (and power) of the disjunctive, OR”.

    Nitpick: you mean the *con*junctive OR. A disjunctive OR means you can satisfy one *and only* one of the (in this case two) options. Here however you can satisfy both, and still pass – however you *need* satisfy only one, and thus can then ignore the second limb of the examination.

    The disjunctive or is “either… or…”, the conjunctive is “and/or”.

    In this case the meaning is clearly not either… or…. since it is entirely reasonable for a process to be tied to both a particular machine *and* transform a particular article.

    Cheers, Luke

  123. 10

    “Tranformers v. Decepticons – Petitioner’s Brief In Bilski”

    I haven’t even read the rest of the article and I love it already lolz. I haven’t even seen the T movies.

  124. 9

    I think the they have removed the brief from BlogIT.
    can someone please tell me where do i get the brief.

  125. 8

    “Petitioners note the legislative history of §273 provides “[a] method is any systematic way of accomplishing a particular business goal” with “[t]he State Street decision [bringing the financial services] industry to the forefront of cutting edge patent law protection.”

    And look at the awesome effect all that innovation had on our economy! Why, patent lawyers’ salaries were never so high before. Just look at petitioners! They are in the top 5% income bracket. Who says that business method patents are great???!?!?

    I wonder if there was a better way of flushing their credibility down the twahlet.

    “Petitioners argue the MOT test constitutes legislation from the bench, straying from the CAFC’s prior technology neutral position to one of anti-technology Luddism.”

    LOLOL. There is no “technology” in the claim at issue, nor in most of the worst of the so-called business methods. They’ve got the argument backwards.

    “Petitioner’s argue the Supreme Court finds a principle is “practically applied,” and therefore patent-eligible, when the principle is applied (1) to a new and useful result;”

    Except there is no “new and useful result” in the claim at issue. It’s an old, trivial result: reducing the risk of losing money. It’s right up there with methods of creating a list of people who need to take a leak and methods of recommending a movie. Old. Trivial. Stoopit. Worthless. Or at least no more worthy of patent protection than, say, expressed sequence tags, which undoubtedly have use (albeit an equally trivial one that renders them unpatentable).

    “If there can be no reliance that patents granted today will endure, all patents immediately become less valuable and infringers are more apt to challenge them in court.”

    Good, because there are an incredible number of crappy patents out there.

  126. 7

    Brett, simply as a nagging point of precision, I would rewrite this sentence:

    “The law at issue is whether a process must be tied to: 1) a machine or 2) a transformation of a particular article into a different state to be patentable (the “machine-or-transformation”/“MOT” test).”

    to say . . .

    “The law at issue is whether a process must: 1) be tied to a particular machine, or 2) transform a particular article . . .”

    The “tied” relates to just the machine, and “particular” relates to both machine and transformation test.

    Which raises a point the appellants apparently did not: what is meant by “particular?” How does Michel get away with wiping out potentially thousands of patents on the basis of such an indefinite and undefinable test? Until you know what “particular” means in the context of machine and article, there’s no way to apply MOT.

    Perusing the comments on this blog for the last year, I have yet to see anyone provide a workable definition of either particular machine or particular article.

    This language goes back to ye olde days when processes were related to either a work piece that was transformed, or to a machine that did something new. Ye olde days were before 1995 and State St.

    Also, I’m not sure I get the relevance of your observation that the first patent was for a process. Bilski doesn’t attack all process patents and almost certainly wouldn’t affect the one you have in mind. [BTW, I always thought patent #1 was for Traction Wheels to J. Ruggles, July 13, 1836.]

    Finally, thank you for not referring to MOT as a “two-prong test.” I’m getting really weary of that mal-applied term. A 2-prong test is one in which both tests must be applied. Here only one test need be applied. If the claim passes that test, forget the other. That’s the meaning (and power) of the disjunctive, OR.

  127. 6

    “They enlist Judge Rader’s dissent in Bilski to attack the transformation requirement which “links patent eligibility to the age of iron and steel as a time of subatomic particles and terabytes.”

    Except that accounting tricks and methods of betting are older than iron and steal. Yet somehow the need for patentable “innovation” in those areas didn’t smell desperate until very very recently. I wonder if Judge Rader can understand why that is.

    I can assure you that Justice Breyer understands quite well.

  128. 4

    I won’t be happy until a piece of paper with a recipe written on it is patentable subject matter, or the soundwaves of someone repeating the recipe out loud, or even just the brain waves of thinking about the recipe.

  129. 3

    Let’s not forget that the MoT test, as a supposed bright line test, fails miserably. Look at the widely divergent results out of the BPAI. Each case is supposedly being decided under the same jurisprudence, but it’s a total crap shoot whether any given application will prevail or not.

    This is why I believe the USSC will strike down the MoT test and restore the way things were, without further guidance.

  130. 2

    Excellent legal arguments! Hope for “Actual Inventors” everywhere has just risen greatly with this well written brief. Go Bilski

  131. 1

    blaaaah blaahhhh errrr … great computer mind …. aahhh arggggg … pile of dung …. ooohhhh ackkk egggg …. recipe on a piece of paper … [sound of head exploding]

    Otherwise, a nice brief. The tie-in to 273 is going to be tough to get away from.

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