Ex Parte Bilski: Once Again Rethinking the Scope of Patentable Subject Matter

We can expect over one dozen friendly briefs in the pending en banc case captioned Ex Parte Bilski by the amicus deadline of April 7. The Bilski case involves questions of whether an invention can fit within the requirements of 35 U.S.C. 101 if the invention does not specifically require the use of “technology.” 

35 U.S.C. 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.

I was part of the team that drafted and submitted IPO’s 2006 brief to the Supreme Court in the Metabolite case. There, we argued on policy grounds that the court should not set arbitrary limits on the types of innovations that should be patentable. Instead, we asked the court to “support the expectation that innovations in yet unknown areas of technology will be eligible for patent protection.”  There will be at least one Bilski brief arguing along the same lines. It will, of course, be interesting to see whether the IPO and AIPLA have altered their positions in the past two years.

If the court chooses to narrow subject matter, the 2007 Comiskey decision will quickly become an elephant in the room. In that opinion, the Federal Circuit implicitly held that a patent applicant cannot rely on nonpatentable subject matter portions of an invention to prove nonobviousness.  Comiskey’s arguably unique inventive contribution was a method of arbitration. By itself, that method was considered an unpatentable mental process. And, Comiskey’s attempt to tie the process to a microprocessor were also unsuccessful:

“The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

The implicit holdings here: (1) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious; and (2) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter.”

Depending upon how it is interpreted, the Comiskey decision may greatly influence the impact of a rule narrowing patentable subject matter. For that reason, I hope that at least one brief will focus its effort on this important issue.

 

Comments

[patent leather]

Isn't Comiskey contrary to statute? 103 says, "...if the differences between the subject matter sought to be patented and the prior art..." The entire claim is what is "sought to be patented." So why does the CAFC in Comiskey think that they can exclude parts of a claim from the obviousness analysis? To exclude non-transformative steps/algorithms from a 103 analysis would render many (too many to even estimate) issued patents now invalid.

I think Comiskey was a poorly written opinion that takes a strange path to reach its ultimate holding. Hopefully, the en banc CAFC will clarify these issues and will not upset patents currently in force.

If Bilski does overrule State Street, then the CAFC has engaged in retroactive rulemaking, wiping out millions (billions?) of patent assets. I suppose the judicial branch is permitted to make retroactive rules even though the executive/legislative branches cannot (unless you think you're John Dudas). It's a given that Bilski will lose in this case. I just hope that the CAFC crafts a careful opinion that allows most non-transformative process patents to remain valid. Imagine if you are a medical company that holds a portfolio of patents on surgical methods. Bilski may very well wipe them out.

[e#6k]

No. 1, Claim 1 of Comiskey was, once again, a method claim trying to distinguish itself in terms of a structure, so it almost fails outright. I can not see that the mandatory arbitration system is manipulating anything in the claim so that structural limitation is ignored out of hand. The court chose to leave it in presumably for giggles and to provide guidance to all the moro ns running around thinking they can get around the judicial exception by practicing their judicial exception on a machine. They put that in place for a reason.

"If Bilski does overrule State Street, then the CAFC has engaged in retroactive rulemaking, wiping out millions (billions?) of patent assets."

They're not overruling anything, they're just telling the people that construed it too broadly (i.e. out of context) that they construed it too broadly and were at error. Sorry, learn to read before you file next time eh?

"It's a given that Bilski will lose in this case."

True

"Imagine if you are a medical company that holds a portfolio of patents on surgical methods. Bilski may very well wipe them out."

Not to be rude, nor overstep our civilized boundaries too far, but I have to let you have a "cry more" on that one. Learn to not claim non-statutory material. It's really not that hard. Just say no to non-statutory material. Really, truthfully, just say N O. If a client approaches you with an idea he'd like to patent, and it's non-statutory, just tell him he can't patent it because it's non-statutory. Simple as that. Saved everyone the trouble of rejecting you, or getting you overturned in court if the PTO makes a mistake and allows.

[MaxDrei]

Dennis knows (but isn't saying) that whoever wrote the Comiskey Decision had already been briefed by somebody who understands the EPO line. On the obviousness issue, the international EPO (after trying thousands of blockbuster oppositions, each time through two instances) is rock solid consistent and legally very predictable. Therefore, it's quite reasonable for the CAFC to examine that line, and use it to the extent that it's helpful. How the CAFC decides Bilski will be fascinating, also for observers from Europe. Meanwhile, Chicken Little, whatever the CAFC decides, the sky is not really going to fall down, is it?

[examiner#6k]

"(1) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious; and (2) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter.”"

Oh, and Dennis, people making broad sweeping statements about what implications are from case statements is what led to this case in the first place. Just say no to reading implications in. Read it for what it says, and what it says only.

1. Routine addition of electronics to otherwise unpatentable subject matter is TYPICALLY obvious.
2. The particular "longfelt need" secondary consideration is not applicable to a claim being non-obvious if the only subject matter that was "long needed" was non-statutory.

If people would stop expanding these simple rulings into broad sweeping guidelines then maybe we wouldn't be in such a big commonlaw mess. There are no implications, you're imagining them. There is only what the man said. That is all, it, end of story. Go with that and it will take you far, and assure your cases aren't the next CAFC precedent clarification cases.

[lower]

"Imagine if you are a medical company that holds a portfolio of patents on surgical methods. Bilski may very well wipe them out."

This is not a good example. 35 USC 287(c) basically says that while surgical methods can be patented, they cannot be enforced. I'm surprised so few patent attorneys know this.

E6K, when you get your law degree and license, you can say yes to such claims, as they're certainly statutory. You should advise your client, though, that such method claims have no value beyond prestige.

It would be interesting if State Street was overruled. All of a sudden, many lawsuits having to do with business methods of using the Internet would disappear. Dennis wouldn't have to worry about being sued for using JPEGs, Acacia's business model would disappear, JAOI would have less to complain about, tax strategy patents would be a non-issue, a significant portion of the backlog of unexamined applications in the USPTO would disappear through fairly quick three-page 101 rejections and reassignment of examiners to other arts...

[SF]

There are at least a couple of approaches: (1) ignore non-statutory subject matter in a claim or (2) treat the non-statutory subject matter as if it's already in the public domain (e.g., as a prior art reference).

I prefer the second approach. For instance, in the metabolite case, treat the correlation between the vitamin deficiency and the disease as prior art and then look at the claim to see if diagnosing it is obvious or not. It seems to me that, if a law of nature should be in the public domain, all obvious applications made in view of that law of nature should be in the public domain too. This way, the claim as a whole is still evaluated (addressing patent leather's concern), but the public domain is protected too.

[MM (not Mooney)]

SF, that is an elegant solution; which is precisely why it will not be the outcome.

[academic]

SF, I know that solution is being presented in one of the Bilski amicus briefs being passed around in academic circles...

[SF]

academic: Great minds think alike. I think it works well with natural laws. I'm not sure whether it works as well with respect to all cases.

There was a case where the inventor discovered why a certain process (I think relating to newpaper printing) could not exceed a certain speed without damaging the paper and, once the inventor discovered the cause, the solution/invention was simple. In that case, I think there was a long-felt need. I'd like to think that long-felt need could play a role in rebutting an initial conclusion that something is obvious, if that conclusion is based on the fictitious assumption that the natural law is prior art knowledge.

[TJ]

SF, it is an elegant solution. It is also current law: "Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the 'basic tools of scientific and technological work,' see Gottschalk v. Benson, 409 U.S. at 67, it is treated as though it were a familiar part of the prior art." Parker v. Flook, 437 U.S. 584 (1978).

[SF]

TJ:

No it isn't.

I was talking about how to treat subject matter that, while it clears the 101 hurdle, relies upon a law of nature and how that law of nature should be presumed as prior art to keep obvious applications of laws of nature in the public domain.

Flook's talk about "treated as though it were a familiar part of the prior art" -- whatever the nonsense they meant by it -- had nothing to do with the 103 inquiry. Flook was a 101 case.

It may be that Flook's standard of 101 may be incompatible with my (and others') solution in that Flook would avoid the need to go to this solution. I haven't thought through that.

[e#6k]

"It may be that Flook's standard of 101 may be incompatible with my (and others') solution in that Flook would avoid the need to go to this solution. I haven't thought through that."

I think that was what TJ was implying, when something is treated as though it were a familiar part of the prior art then one presumes it is familiar in every known piece of prior art, thus reducing the need to rely on "obviousness" and increasing the need to rely instead on "implicit" teaching in all references under 102 anticipation. At least that's the way I see it from that case as a whole. It means that intagible scientific (or otherwise) concepts are implicitly disclosed in every reference even if the scientific principle had not been "discovered" yet. Of course, this seems to me to fly in the face of the very constitutional basis that the whole system is founded on, if we presume the patent act as currently written is meant to encompass "discoveries" as well as applications of those discoveries. But, that seems to be the system at present.

[RJS]

I don't think the CAFC intended to hold that "during [a] nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious." If this were the holding, no computer-readable medium claim would be patentable because the software it stores would be ignored. System claims that rely on novel software components as the point of distinction would also become unpatentable.

If the CAFC had intended to make such a sweeping change to the law of obviousness, it would have made this clear. Instead, I think were merely saying that an invention that is otherwise unpatentable on obviousness grounds would not be rendered nonobvious by the routine addition of modern electronics.

[Leopold Bloom]

"I think [the CAFC is] merely saying that an invention that is otherwise unpatentable on obviousness grounds would not be rendered nonobvious by the routine addition of modern electronics."

Which is precisely what they did say in Leapfrog.

"'any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.' - If this were the holding, no computer-readable medium claim would be patentable because the software it stores would be ignored."

You're right, which is a fundamental problem with SF's otherwise elegant solution. It's not just computer-readable medium claims, or system claims that rely on novel software components, however. (Many people on this board wouldn't bemoan their demise.) Thousands (10's of thousands?) of patents in the telecommunications area would also be wiped out. This probably applies to some degree throughout the electronics fields. For instance, at the end of the day, every node in a modern communications system is just a computer, some with more or less conventional radios attached. Often it is the selection, formatting, packaging, translation, and moving around of non-statutory subject matter that is interesting. If you "ignore" that non-statutory subject matter, there's nothing left.

[SF]

RJS: By the time these 101 / 103 issues shake out, there are going to be lots of software and business methods that won't survive. I, like you, doubt that the court will intentionally craft a rule that throws all of them out. But many will have problems and I expect a flood of reissue applications being filed after all this is through. ... and, of course, the backlog swells further.

[SF]

Leopold: I agree it doesn't work well with software, which is why I added the caveat above that it might not work well in all cases. It's hard to see naturally occuring events being the equivalent of non-naturally occuring software processes. At least in that sense, they should be treated differently.

But I think assuming-as-prior-art approach could be a starting point for brainstorming approaches that account for protecting innovation, but also protecting non-statutory, public domain natural laws, math, etc. and obvious statutory uses thereof. I don't think all software patents and business method patents should be thrown out, but I don't think all of them deserve protection either.

[patent leather]

e#6k said: "They're not overruling anything, they're just telling the people that construed it too broadly (i.e. out of context) that they construed it too broadly and were at error. Sorry, learn to read before you file next time eh? "

Not true. State Street ruled that a claim to a machine implementing software with a practical result was valid. Tens (perhaps hundreds) of thousands of software applications followed this decision which claimed in the same style as State Street. The CAFC in Bilski is being specifically asked whether State Street should be overruled. So you are saying it is error to reasonably rely on a CAFC decision?

e#6k also said, "Not to be rude, nor overstep our civilized boundaries too far, but I have to let you have a "cry more" on that one. Learn to not claim non-statutory material. It's really not that hard. Just say no to non-statutory material. Really, truthfully, just say N O. If a client approaches you with an idea he'd like to patent, and it's non-statutory, just tell him he can't patent it because it's non-statutory. Simple as that. Saved everyone the trouble of rejecting you, or getting you overturned in court if the PTO makes a mistake and allows. "

If you were an attorney and you told your client that their software invention was not statutory after the State Street decision, you'd be guilty of malpractice. You better stay at the USPTO.