CAFC Hears En Banc Bilski Case

May 8th’s en banc oral arguments in Ex parte Bilski reveal a court clearly grappling with the difficult problem of defining the scope of patentable subject matter in a way that is both administratively workable and supportive of future innovation and technology surges.  The Federal Circuit’s leeway is limited by Supreme Court precedent. The en banc panel notably focused on Diamond v. Diehr, 450 U.S. 175 (1981), and the meaning of “transformation.” 

Hitting upon an argument found in several amici briefs, the court questioned whether the statutory limits of Section 101 are necessary at all — given the administrability of Sections 102, 103 and 112. No counsel presented clear “harms” of an overbroad interpretation of a statutory “process.” (The potential issues were best described in Prof Sarnoff’s brief.)

Notes:

• Listen to the oral argument in the en banc hearing of In re Bilski here for Part One and here for Part Two.
• Economist.com
• Quinn

Tea leaves (FWIW):

• PTO’s decision will be affirmed by shaping the facts (e.g., by calling the invention an abstract idea).
• State Street will not be overruled.
• The court will not implement a “machine test.”

Comments

[Pro Se Pro]

I find the Sarnosky brief to be the most intellectually dishonest and
disingenuous, of all the briefs arguing to narrow101.

His entire argument is predicated on the fallacious tying of Flook-Diehr
together as the same standard. When in fact Flook sets one standard and Diehr sets
another, with binding precedent that overruled much of Flook. Sarnosky keeps
the old precedent set by Flook while conveniently leaving out the new
standards set by Diehr.

Most notably, Flooks standard for the point of novelty as a use for claim
dissection is effectively overruled by Diehrs ruling to evaluate claims as a
whole. Sarnosky's convoluted logic for a so-called combined Flook-Diehr standard
when analyzing claims for patentable subject matter goes like this:

We can't ignore it, and we can't dissect it, so we dissect it!

Like they say in Texas, that dog dont bark! And Diehr set the new standard
and binding precedent for deciding 101 subject matter eligibility by ruling
that:

"It is now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection."

And while Diehr does clearly support Flook and earlier precedent that
inventions that pre-empt the laws of nature, and abstract ideas are ineligible
subject matter, (which proponents of narrowing 101 love to quote) Diehr goes on to
say::

"On the other hand, when a claim containing a mathematical formula implements
or applies that formula in a structure or process which, when considered as a
whole, is
performing a function which the patent laws were designed to protect (e.g.,
transforming or reducing an article to a different state or thing), then the
claim satisfies the requirements of §101. "

And that my friends is the current binding law until the Supreme Court
clearly overrules it.

CASE CLOSED!

[Jeff Spangler]

At the annual PTO program this afternoon on Business Methods, we received the attached May 15, 2008 memo to Examiners to ensure that examination of process claims is consistent with the Solicitor's position at argument in Bilski on May 8. The memo will be available on the PTO website in a day or so. I've also posted it on my website and sent it to Professor Crouch.

During questions and answers, someone asked TC 3600 Director (Ms.) Wynn Coggins if there "needs to be a device" to tie (or "tether" as British courts say) the process to an apparatus, and she said "yes". Later, when the memo's author Deputy Commissioner for Patent Examination Policy John Love was asked whether a "device need not be included" in the claim, he did not answer with an unequivocal "no".

To be honest, I'm not sure what his exact answer was (other than unclear to me), but he said the required "transformation" of the underlying subject matter would "usually" involve technology. I have the impression that the PTO is maintaining a "technological arts" requirement for process claims.

Hope this is of interest.