In Ex Parte Bilski, an en banc Federal Circuit plans to reconsider the scope of patentable subject matter as it relates to business methods and so called mental methods. Perhaps more importantly to the patent system as a whole, the court is considering the proper procedures going forward for determining whether a particular invention falls within the scope of 35 USC 101.
In its en banc decision, the CAFC invited non-party amici briefs, which were due April 7. (Scroll down to find the briefs). In reading through the briefs, the first aspect that caught my attention was a common theme that institutional strengths and weaknesses of the PTO and Courts should help dictate the ultimate subject matter rule.
- Prof Morris: Through its examiners, the PTO has expertise in determining the technical questions of novelty, nonobviousness, and indefiniteness. On the other hand, examiners do not have the expertise to decide “philosophical and abstract” issues of statutory subject matter.
- Prof Lemley*: Arbitrary subject matter boundaries have generally been difficult to enforce and usually result in patent attorneys using “magic words” to avoid the limits. (*NOTE: I signed Prof Lemley’s brief along with 21 other law professors.)
- Prof Collins: A test that excludes “human cognition” elements is administrable.
- EFF: Proposed three-step process provides a more “efficient and meaningful” way to administer the Section 101 threshold.
- AIPLA: Section 112 should guard claim scope rather than Section 101.
Narrow or Expansive: The main thrust of the Bilski arguments, however, focus on whether patentable subject matter should be narrow or expansive. I have categorized the briefs on this axis:
Expansive Subject Matter:
- Prof Lemley: We cannot predict the next area of innovation, and arbitrary limits on patent scope reduces incentives in those potential areas. “Bad patents” should be dealt with using the true tools of the Patent Act: Sections 102, 103, and 112. “Mental methods” should be allowed if they fall within the other requirements of patentability.
- Regulatory Data Corp (Prof Duffy): Even under a narrow definition, applied economics is now part of the “useful arts.” Statutory subject matter should only limit claims directed to abstract ideas, physical phenomena, or principles of nature.
- AIPLA: We should continue to follow Diehr, State Street, & AT&T.
- RMC: Business methods should be patentable.
- American Express: Patenting of business and information management processes encourages the development of those useful societal tools.
- Accenture: Business methods should be patentable regardless of any physicality limitations. Congress has deemed that business methods should be patentable via 35 USC 273.
- Greg Aharonian: The Supreme Court’s 1876 Cochraine test does not exclusively define “process.” Rather, a patent eligible process should be broadly defined to include any process or method that yields a “useful concrete and tangible result.”
- Koninklijke Philips: The court should be wary of relying upon precedent that focused on traditional manufacturing methods. Rather, the court should look at the broad definition of process required by Congress in 35 U.S.C. 100(b).
Narrow Subject Matter:
- Prof Sarnoff: The court should return to the precedent of Flook. The inventive concept of a patent cannot be an abstract idea (such as hedging risk). Likewise, an information processing method must include significant post-solution activity. State Street is unconstitutionally over-broad.
- End Software patents: Software should not be patentable even when loaded on a computer. Rather, to be patentable, there must be significant additional (non-information processing) physical activity.
- American Civil Liberties Union: Patents mental processes would violate the first amendment.
- EFF: There must be a technological component of a patentable invention.
- Computer & Communications Industry Association: The CAFC should shed its “patentee-centric approach” and insted try to meet the needs of the modern world. In particular, the court should consider the systemic policy implications of its decisions. The policy implications of broader patent coverage is more litigation & rent seeking.
- IBM: There is no sound policy for allowing business method patents.
- American Institute of CPAs: Tax methods should not be patentable because they preempt free use of the tax laws. (Of course, the same could be said of CPAs charging corporations for their service).
- SAP: A process should both (1) have a concrete, useful, and tangible result and (2) be “sufficiently machine-like” in order to avoid preempting work-arounds. However, software processes should be patentable.
- Prof Collins: The court should add a “human cognition” exception to Section 101. Steps involving human cognition should receive no consideration in judging patentability.
- Red Hat: Software patents put a huge kink in the open source software movement.
- Financial Services Industry: State Street and its progeny are unduly broad. A token inclusion of a ‘machine’ in a claim would not render that claim patentable subject matter.
- Dell & Microsoft: A patentable invention must operate on “something physical.” To be patentable, software should be tied to a computer and cause some physical transformation (such as movement of electrons). And, following Comiskey, a patent should not be granted under 103 if the inventor merely combined well known computer hardware with inventive but otherwise unpatentable software.
- Yahoo! and Prof Merges: A strict “technology” requirement is too inflexible. State Street taught us that such a strict requirement does not fit well with “onrushing technology.” The Yahoo!/Merges test: a patent eligible process must itself be “stable, predictable, and reproducible” and its result must be “useful, concrete, and tangible.” Bilski’s claims would not be eligible because they do not define a “stable” process.
- Intellectual Property Owners Association: A process that is either implemented by a machine or that transforms matter into another state is patentable subject matter. IPO favorably cites the Flook limitations on on information processing.
- Business Software Alliance: Courts should err on the side of patentable subject matter because Sections 102, 103, and 112 make-up any slack. Software should be patentable. However, Bilski’s invention is not patentable because it is an abstract idea.
- Washington State IP Law Assn: The CAFC should re-write State Street to be consistent with Supreme Court precedent.
- Prof Morris: Subject matter questions should be avoided. Rather the PTO and courts should look to the substantive rules of 102, 103, and 112 to decide the issue. Section 101 jurisprudence has been both haphazard and unfair.
The elephant in the room is the recent Comiskey decision. There, it appeared that the court refused to give any patentable weight to the portion of the invention directed to non-statutory subject matter. In its brief, the Boston Patent Law Assn asks the court to clarify the following statement from Comiskey:
“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.”
- I signed Professor Lemley’s brief along with twenty-one other law professors. The theory behind the brief follows the IPO brief that I helped draft in the Metabolite case.
- Accenture: www.patentlyo.com/patent/bilski.accenture.pdf
- ACLU: http://www.aclu.org/pdfs/freespeech/in_re_bilski_aclu_amicus.pdf
- AIPLA: www.patentlyo.com/patent/bilski.aipla.pdf
- AMEX: www.patentlyo.com/patent/bilski.amex.pdf
- BIO: www.patentlyo.com/patent/bilski.bio.pdf
- BPLA: www.patentlyo.com/patent/bilski.bpla.pdf
- BSA: www.patentlyo.com/patent/bilski.bsa.pdf
- CCIA: http://www.ccianet.org/docs/filings/ip/CCIA-Bilski-Amicus.pdf
- CPA: www.patentlyo.com/patent/bilski.aicpa.pdf
- Dell & Microsoft: www.patentlyo.com/patent/bilski.microsoft.pdf
- EFF (Schultz) www.patentlyo.com/patent/bilski.eff.pdf
- Eli Lilly: www.patentlyo.com/patent/bilski.lilly.pdf
- EOS (End of Software) www.patentlyo.com/patent/bilski.eos.pdf
- Financial Services Industry: www.patentlyo.com/patent/bilski.fsi.pdf
- IBM: www.patentlyo.com/patent/bilski.ibm.pdf
- IPO: www.patentlyo.com/patent/bilski.ipo.pdf
- Mr. Aharonian: www.patentlyo.com/patent/bilski.aharonian.pdf
- Mr. Morgan: www.patentlyo.com/patent/bilski.morgan.pdf
- Philips: www.patentlyo.com/patent/bilski.philips.pdf
- Prof Collins: www.patentlyo.com/patent/bilski.collins.pdf
- Prof Lemley: www.patentlyo.com/patent/bilski.lemley.pdf
- Prof Morris: www.patentlyo.com/patent/bilski.rjmorris.pdf
- Prof Sarnoff: www.patentlyo.com/bilski.sarnoff.pdf
- RDC (Duffy) www.patentlyo.com/patent/bilski.duffy.pdf
- Red Hat: http://www.redhat.com/f/pdf/federal_circuit_brief.pdf
- RMC: www.patentlyo.com/patent/bilski.acr.pdf
- SAP: www.patentlyo.com/patent/bilski.sap.pdf
- Software & Information Industry Assn: www.patentlyo.com/patent/bilski.siaa.pdf [sic]
- WA IP: www.patentlyo.com/patent/bilski.wash.pdf
- Yahoo! & Prof Merges: http://www.patentlyo.com/patent/bilski.yahoomerges.pdf