Bilski v. Kappos (Supreme Court 2009) 08-964bsUnitedStates.pdf
In its responsive brief, the Obama Administration asks the Supreme Court to confirm that a patentable process must be tethered to technology – either “directed to the operation of a particular machine or apparatus” or “involve the transformation of matter into a different state or thing.”
Interpreted in light of the historical scope and development of the patent laws, as well as the statutory context, the term “process” encompasses all technological and industrial processes, broadly conceived. But it does not extend patent-eligibility beyond those bounds, to methods of organizing human activity that are untethered to technology—e.g., methods by which people conduct economic, social, or legal tasks, such as entering into contracts, playing poker, or choosing a jury. Such methods fall outside of the broad expanse of technological and industrial fields that “the statute was enacted to protect.” Parker v. Flook, 437 U.S. 584, 593 (1978). Because petitioners’ hedging method relates solely to human conduct, untethered to any technology—any machine or transformation of matter—it falls outside the coverage of Section 101.
. . .
This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing.
Although Bilski’s claim does not relate directly to software, the machine-or-transformation could be seen to limit the patentability of software processes acting on a general purpose computer (as opposed to a “particular machine”). The Government brief suggests that the Federal Circuit test leaves software substantially patentable when tied to a general purpose computer – citing favorably to In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc) (“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”).
In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. . . . [However,] software code that is claimed by itself, uncoupled from any storage medium or computer, may be nothing more than “an idea without physical embodiment,” and therefore would not be patent-eligible.
Here, the brief did not address the reality that a software process can be “technological and industrial” without be limited in its association to a particular computer.
As a fall-back, the Government appears to suggest an additional exception to the patentable subject matter test for “methods of organizing human activity.”
Methods of organizing human activity are not patent-eligible “process[es]” within the meaning of Section 101.
The brief spends a considerable amount of time focusing on the statutory interpretation on the word “process” and its predecessor “useful arts” – paying special attention to provide an originalist style analysis. Here, the government attempts to show that finance (i.e., business methods) were not originally considered useful arts. Additionally, the government argued that even though tremendous advances took place in finance and insurance industries during the 18th and 19th centuries, those innovations were not traditionally patented.
In sum, because the initial patent statutes were intended to foster the “useful arts,” they were directed to technological and industrial inventions, as opposed to fields of purely human activity—including financial and economic activity unconnected to technology—which fell within the sciences or liberal arts.
Amicus briefs in support of the government position are due this Friday.
A particular city council ended up paying close to
2.5 million pounds as compensation to victims who were injured by
tripping over uneven pavements. On an average, councils now are paying
more money as compensation than ever before, with the average claim
being around 1800 pounds. Makes you think re-paving the pavements could
be cheaper. Thus, if you’ve suffered serious damages on city sidewalks,
you could do well by claiming some compensation.
link to legallaw.sosblog.com
sp, I wouldn’t be so sure of that. The brief also argues that such “data gathering” steps are “insignificant” extra-solution activity, relying on the dissection analysis of Flook.
With respect to their proposed exception to “methods of organizing human activity”, the brief makes clear they are referring to “purely human activity” not tied to technology. So a technology that provides a method of “organizing human activity” (such as a cellphone, walkie-talkie, email, etc.) would not fall within this exception.
Thanks for the offer 6. Of course, I’ve already searched it myslef, and I’m pretty sure that I could get a patent. But my experience teaches me that, no matter what, today’s PTO will force me to take claims that are overly narrow and too easy to invent around.
I imagine that if you received a patent application to examine on the real, honest to goodness holy grail, cold fusion, you’d still find some way to reject the claims, force an amendment and pat yourself on the back, convinced you’d done a good job.
I agree with most of what you say slone, but I was actually hoping that you’d point me to some other works. I did read some of both of the cited works already, but don’t own a copy and thus couldn’t read the whole thing in a sitting at a store, or from online previews. I did not find either one to be fascinating enough to buy either. Although I will freely grant you that what you say about their intention could very well be true.
Broje, I think your issue is with being a businessman trying to sell one limited product as not being rewarding enough, not “the patent system” not being rewarding enough. Is that not fair to say?
Since you’re never going to take this product and run with it, why not disclose it so that I can google it and 102 it for you? Or why not pay 500$ and get a good ol’ patent to hang on your wall? It’ll be good to have something of your own to show clients. 500$ (1000 at issue?) is but a pittance to “advance the useful arts” am I not right? Plus, what if some company just happens to invent slightly after you and then you can troll them for $?
If you need a cheap machinist I can see what I can do.
If I may make one suggestion for those who are prone to use the word “innovation”. While among attorneys it is often used interchangeably with “invention”, those who advocate against patent law typically use it in a different sense. Specifically, “innovation” to them means taking a good or service from its inception to market introduction. Such a good or sevice can be based upon an invention, but not necessarily so. Even when based upon an invention, their views do no admit to any government granted preference to the inventor. If one truly invents something having market potential, upon its being revealed it is fair game for free riders and others alike. The inventor’s payback would come solely by out-competing others for market share.
It is noteworthy that the books and articles cited by those who would eliminate patents are applied by them with equal force to copyrights.
Yes, this is “wordsmithing”, but in any discussion it is important to be cognizant of the distiction.
Bravo M. Slonecker,
You have repectfully and with particular objectivity pointed out the flaws in the “debate” between idealogues, and you have provided a roadmap for professionals to review the arguments with an understnading of the latent biases from both sides.
Well said.
broje says:
“So there you have it. I see the patent system as not rewarding enough. Meanwhile, we have all these loud voices proclaiming that it rewards too much.”
Two comments and a question:
1. That would be “the patent system” as it exists in the USA, right? I do not recognise your assessment as accurate anywhere else.
2. A wide gap between success and failure is what characterizes the USA relative to all other countries, no?
3. Is a Goldilocks (not too hot, not too cold but, rather, just right) patent system even possible?
Nice comment Slonecker. I delved into this issue years ago and arrived ambivalent. I don’t think that it is even possible to devise an experiment that can determine whether patents have any positive or negative impacts on rates of innovation, quality of innovation, quantity of innovation, or disclosures of innovation (instead of trade secret). All we can do is theorize and never test.
Speaking only from my own personal experience, I actually have in mind an invention I would like to hire a machinist to build for me. Mostly, I really want one for personal use, but it is not worth the money to me to go through mutiple prototypes and design phases just to have one. If I thought I might have a chance to recoup my investment and even make a profit by selling them, I might be encouraged. It is the sort of thaing that is small and can be sold with a magazine advertisement.
But I have had too much experience with the patent system as a patent attorney. There is no way I am stepping into that money pit of no reward. It is not for the small inventor.
So there you have it. I see the patent system as not rewarding enough. Meanwhile, we have all these loud voices proclaiming that it rewards too much.
Dennis –
Why no links (if not commentary) to the now trio of Amici from the anti-“software patent” side?
6 | Oct 03, 2009 at 05:16 PM,
Perhaps the best evidence to read at this point in time is that relied upon to challenge our system of patent laws. Were I you I would start with Levine and Boldrin’s “Against Monopoly”, followed by Bessen and Meurer’s “Patent Failure…”. It is difficult to get past the introductions and first chapters without it becoming apparent they are in search of reasons to support a theory, and not engaging in “honest broker” research.
If you study articles asking the question “Do patents promote progress?”, you will find Messrs. Kinsella and Masnick reciting the same set of books and articles (Levine/Boldrin, Bessen/Meurer/Petra Moser/etc.) that lend support for their views, but nary a mention of many, many others that provide them with some measure of discomfort.
I do not presume to answer the question because, quite frankly, it is not one that admits in my view to any difinitive answer.
Mr. Kinsella subscribes to a school of economic thought that rejects the legitimacy of patents and copyrights as “property”. Importantly, however, there are other libertarian theoreticians who disagree quite strongly.
Mr. Masnick mirrors Mr. Kinsella’s conclusions, but for reasons he states are based solely on economic principles to which he subscribes. Unfortunately, if questioned about these principles a diatribe and caustic remark is all but guaranteed.
In contrast, Mr. Quinn represents the opposite end of the scale. While I am quite leery of persons who proclaim they are “right” and those in opposition “wrong”, I do agree with him to the limited extent that history can be a useful factor in considering the question. Note that my agreement is very, very limited, and not an endorsement of his broader views. History will not answer the question, but it does provide useful insight.
Read the books and articles with a healthy degree of skepticism but because it will force you to critically consider what they say. Thereafter I will be glad to identify opposing views by others who have delved into this question.
Lastly, it is not that I find such a debate boring, but that exchanges between idealogues provides little useful information.
“and the others basing theirs on economic principles where each hew to the line that property should only be associated with “scarcity” of tangible goods.”
That view is going to become more and more popular over time. Watch and see.
“and is most certainly not “all the evidence”.”
Perhaps you could go ahead and cite some of “all the evidence” not already of record. I mean, if you feel generous.
But you’re right, the debate is rather boring. Eugene getting slaughtered is nothing new to me and it never will be. Seeing it done masterfully is rather pleasant however.
What the heck this prattling about Quinn, Kinsella and Masncik has anything to do with the subject matter of the Bilski brief elludes me.
As for a “debate”, on one side you have a promoter of the patent system, and on the other you have two individuals who promote precisely the opposite. Importantly, each side start their arguments with diametrically opposed assumptions, with Quinn basing his on personal experience and the others basing theirs on economic principles where each hew to the line that property should only be associated with “scarcity” of tangible goods.
In many regards any such debate will likely prove unprovocative, contentious, and provide little, if any, substantive examination of relevant issues. Quinn will cite history, Kinsella will proclaim libertarianism based upon his identification with the Mises School, and Masnick will proclaim the patent system significantly impedes innovation as he defines the term, backing his position with “all the evidence demonstrates”, when, in fact is evidence is cherry picked and is most certainly not “all the evidence”.
This so called debate has all the making of a “I am right!”, “No, I am right” that should prove remarkably unilluminating to those who eschew extreme positions in favor of courteous and insightful debate.
Please let me know when it begins so I can schedule a nap…
MM Wrote: Or is this just another one of those awesome business methods that the USPTO should issue immediately because there isn’t any decent prior art and it’s so plainly useful to the nation’s goat milk lovers?
No, its just another random sentence you typed on the internet.
“You obviously believe software and business method patents are not truly legal – at least that’s the implicaiton you left at techdirt.”
Actually the only impression I should have been read to have left at Tech was that I was vehemently opposed to the types of patents you mention. That does not mean that I think they are necessarily “not truly legal”. Whether or not something is “truly legal” or not factors not at all into my view of what I am opposed to. This is a concept which, I presume, you struggle mightily to understand (perhaps you never bother), and yet you definitely never seem to fully grasp. Be honest NAL, is there a law in existence that you don’t like, or that your are against?
Eugene also has this problem misunderstanding the premise of the statement, or question, in his discussions with Stephan. Stephan brings up the question of whether or not a company really did anything wrong in infringing a patent if they independently invented. Eugene counters that “IT R THA LAWL!!!!!1111!!! SO YES!!!!!!”. Stephan knows what the law is, but just doing something against the law doesn’t make what was done bad to Stephan, or to anyone with half a not yet brainwashed brain. So Stephan has asked whether or not anything genuinely bad was done. Of course it wasn’t. Making a device is not a “bad” thing. And performing a method is not “bad”. Unless either action causes someone else genuine harm. I don’t mean “wah wah my business isn’t profitable” “harm”. I mean real honest to god harm. And ~99% of patents issue with claims that do not cause anyone harm. Guns, methods of mugging people, arson etc. excluded.
Never the less, on the whole, most of what we term “business method patents” and “software patents” would not, in my understanding, be truly legal. That sentence should be easier for you to reference since I’m saying it explicitly. There may be some exceptions to this general rule around the fringes of both categories, since we both know that claims aren’t usually all that cut and dry. Taking cases on a case by case basis is the only answer to that particular issue.
“This is not just a blog, it is my livelihood, and having you tell inventors they don’t need attorneys and should patent things themselves or let an examiner write the claims not only is bad legal advice, but it would damage my business and hurt me, my family and my firm.”
That is from the email Eugene sent me. If you doubt my truthfulness, ask him yourself.
I can barely imagine how much damage his discussion with Stephan will do to his “business”. Probably none, as there probably is no such thing as bad press. And even his blatantly incomprehension of Stephan’s questions probably won’t hurt him with the apparently dimwitted people that hire him already. There are good attorneys out there, but he barely falls within the middle of the herd. But, then again, he might be a good bit cheaper than the good ones so perhaps there is a good reason he has clients.
In any event, if my telling people not to hire him was measureably good for his business he’d probably pay me. He’s literally all about the dollars. Reminds me of someone *cough* J *cough* D, I know.
In any event, be sure, I accept his challenge to debate in person. Although I don’t really have anything specifically on hand to debate with him. Software patents perhaps. I don’t want to steal Stephan’s thunder debating on the same points as they are already fighting about.
Btw, in terms of a debate you know Eugene is getting slaughtered, and will be slaughtered some more, don’t you?
Malcolm, if you want to invent some new law regarding “sham” limitations, go ahead. Newman’s dissent also seems to treat “insignificant” etc., in the majority opinion as something new and not well understood.
All I am trying to point out here is that this whole analysis comes right out of Benson and Flook, and is the pith and essence of their holdings. Diehr when it talked about “insignificant,” cited to Flook.
What the Diehr court did not seem to realize is that an analysis for “insignificance” requires dissection. A claim limitation, in Flook and Benson terms, is “insignificant” if it is old and conventional.
I take it also that you might call it “sham.” But if “sham” and “old and conventional” are not the same thing, then “sham” is a new test.
“Boss12 – or um, 6 as whatever you choose to call yourself,
(you forget that I outed this pseudonym ahwile back)
”
I’m not boss12 and if I were I’d tell you about it. The guy regularly says things which I’m completely opposed to if you’ve been paying any attention.
“here at the trainwreck, you do put on a show”
Troll really seems to love this alleged “trainwreck,” though. One of its creepier attributes, I’d say, next to its weird habit of mimicking my comments. I wonder if it believe that its succeeding at “beating me down”? Hard to imagine it could be that delusional. Easy to imagine that it’s spent some quality time with GQ, though.
Again Diehr says, “Respondents’ claims must be considered as a whole..”
Diehr can say that until it’s blue in the face. But that doesn’t mean that it isn’t proper for a court to ignore a sham limitation that has no purpose except to render the claim statutory.
i.e., a claim to “A process for solving a problem relating to determining the optimum temperature for maximizing the yield of milk from a two year old Tibetan black-kneed goat, wherein said process comprises identifying a competent researcher and paying the researcher to conceive of an experiment, wherein said experiment takes place in a goat barn.”
Properly rejected under 101? Or is this just another one of those awesome business methods that the USPTO should issue immediately because there isn’t any decent prior art and it’s so plainly useful to the nation’s goat milk lovers?
Boss12 – or um, 6 as whatever you choose to call yourself,
(you forget that I outed this pseudonym ahwile back)
You obviously believe software and business method patents are not truly legal – at least that’s the implicaiton you left at techdirt. Your statement here is obvious troll-bait.
I’m curious why you didn’t state there that you were an examiner at Techdirt.
Not surprisingly, you also mistated (yet again) why Gene Quinn banned you from IPWatchdog. Your line of “I was telling people not to buy Gene’s services” is simply laughable. Anyone reading your crap would know that such a line would be great advertisement TO buy Gene’s services. You were banned because of your blatent ignorance of the Law.
Don’t worry though – here at the trainwreck, you do put on a show uner any pseudonym.
I have a proposal that would make all of these problems disappear like a puff of smoke. Have Congress amend 35 USC 101 to:
Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, OR COMPUTER SOFTWARE, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
I don’t understand why Microsoft, IBM and HP don’t have their best lobbyists on this . . . or do they?
Merely a cautionary note to those who may choose to focus solely on the merits/demerits or the competing positions articluated in the Bilski briefs to date.
Experience informs me that for every “door” closed by a decision another “door” is opened, and the benefit of the newly opened “door” becomes readily apparent if only one takes the time to study the matter from a strategic point of view.
Merely by way of one example, the Zoltek case was discussed at length about two years ago, and the general concensus of those who reviewe the CAFC decision was that patentees were screwed and effectively left without recourse. By focusing solely on the decision itself it was almost universally overlooked that the court’s preoccupation and narrow reading of 28 USC 1498 under principles of sovereign immunity opened the “barn door” for direct action against government contractors and subcontractor for initiating an action against these private sector actors in our federal district courts for “vanilla” patent infringement.
I have no reason to doubt that Bilski will present similar opportunities for the application of other legal approaches that may very well effectively accomplish that which would be foreclosed should the court answer the question presented in the “negative”. All it takes is quality time thinking outside the box.
NAL, I’m grateful for your guidance, but I don’t want to get into an argument – about which one of us is guilty of the greater amount of wishful thinking. It would be pointless, I feel. We don’t have so long to wait now, till SCOTUS delivers its final verdict, saving the need for any more predictions.
Of course, we are going to see the MoT struck down and a reiteration of: “(a) concrete; (b) tangible; and (c) useful.” Someone please do me a favor. Provide an example of something that is:
(1) only (a);
(2) only (b);
(3) only (c);
(4) all of (a), (b), and (c);
(5) both (a) and (b) but not (c);
(6) both (a) and (c) but not (b); and
(7) both (b) and (c) but not (a).
You may find it helpful to draw a Venn diagram.
MaxDrei,
The wishful thinking (particularly concerning Business Methods) is a plenty in this debate.
Without going to the trouble of defining “business method” patents ( I wouldn’t want to be a tad boring or unhelpful), ANY position that intends to exclude business methods in the US is simply dead wrong. Such a position isn’t viable after being thoroughly denounced in the Bilski appeal, see page 21:
“We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court. We rejected just such an exclusion in State Street, noting that the so-called “business method exception” was unlawful and that business method claims (and indeed all process claims) are “subject to the same legal requirements for patentability as applied to any other process or method.” 149 F.3d at 1375-76. We reaffirm this conclusion.”
There has been NO indications that this holding will change. NONE – ZERO – NADA – Ain’t goin’ to happen.
Ned, I detect a touch of wishful thinking in your:
“Given the numerous examples of historical patents being granted on business methods throughout our history and in England prior to 1791,”
I’m a bit sceptical that a number barely above zero is significant enough to disprove the proposition:
“.. that business methods were intended to be excluded per se..”
What happens in a trademark case, when one cries “You let that one through. So why not mine now?”
At least in the UK, you get a dusty answer.
One more point: the Federal Circuit and its predecessors made clear that it is improper to reject a claim as drawn to an abstract principle just because it can be wholly conducted by humans. If its only practicable implementation is by using a machine to perform at least some of the calculations, the claim is drawn to statutory subject matter.
Bilski seems to meet this test as well.
Actual Inventor: I am surprised the “dissection” issue has not heretofore been raised by any of the Amici. I think it is inappropriate though to e-mail the Supreme Court clerk. Hopefully, though, some counsel on the upcoming Amici will read this thread and bring it up.
While not central to Newman’s powerful dissent, she did raise the dissection issue near the end of her opinion. This may be enough for some of the smart law clerks to look into it more deeply.
In the end, the Supremes might flatly overrule all dissection analysis, hold that MOT is a valid, but not exclusive test. That leaves the issue of whether the Bilski claim is unpatentable because it does not transform matter and is not tied to a specific machine. Given the numerous examples of historical patents being granted on business methods throughout our history and in England prior to 1791, it is not clear that business methods were intended to be excluded per se. The Supremes might come to that conclusion, but they will have to, it seems, ignore the historical record to do so. They might also do so as a matter of competition policy, but that, I believe would be ignoring the constitutional definition which says nothing at all about balancing the rights of inventors to patents on their “discoveries” and the need for competitors to copy them. All that is required is that inventions be in the “useful arts.”
6 said ” dissection only in so far as they say “we have looked at the claim as a whole as the lawl commands, and this little piece over here that can be identified cannot save the claim as a whole”.
You are wrong. Diehr says,
“The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under 101.”
No matter what circular logic you dream up, Diehr does not give you any authority, instruction, or precedent to dissect claims for 101 purposes.
And as far as Field of Use Limitations and Extra Solution Activity, Diehr is quite clear and specific on these areas as well. Essentially saying that an invention does not pre-empt all uses of a fundamental principle in any field when limited to a particular use, or specific application.
And where do you learn the use? From the “Actual Inventor” as described in the specification as the underlying principle and intended purpose of the invention.
You do not, I repeat, DO NOT, determine Field of Use Limitations and Extra Solution Activity by dissecting the individual elements of the claims.
Again Diehr says, “Respondents’ claims must be considered as a whole..”
Even the Governments brief says…
“The Interim Instructions further explain (at 6) that “[i]nsignificant ‘extra-solution’ activity means activity that is not central to the purpose of the method invented by the applicant.”
And again, it’s “THE INVENTOR” that will teach what is central to the purpose of invention, NOT the examiner/PTO.
So here is what you need to know:
if when considering the claim as whole it has one element with a machine, or transformation ( which is not required by constitution or statute by the way) AND the inventor has spelled out in the description the underlying principle and intended purpose and such purpose does not does not pre-empt all uses of a fundamental principle in any field when limited to a particular use, or specific application the invention is patentable subject matter. And providing all other conditions and requirements are met, issue the patent.
“6, you haven’t studied the lawl sufficiently to have yet lost all respect for it. Go to lawl school first.”
Gotta get through this bulsht “sort the ordered list” section on the LSAT first.
Dale Halling makes an interesting point about formalism.
It may be that Bilski is about form and not substance. But sometimes form is everything. The EPC refers to business methods. But it does not refer to apparatus for use in business, So a method of commodity trading is not statutory subject matter. But a computer configured to facilitate commodity trades is statutory subject matter, at least according to the EPO Appeal Boards because a prohibition on a method cannot cover an apparatus. It may lack inventive step if it does not solve a technical problem, but that is a different issue. But you can only claim the use of a computer if you describe and claim the computer.
Patents rarely fail through deficiencies in the difficult and complex technical aspects of an invention. They usually fail for simple straightforward things. Like not thinking out how the method is going to be implemented on a computer, not describing the implementation in detail and not describing the computer-related features. When you start thinking about these seemingly trivial issues which every skilled person could so easily deal with that it is not worth describing how they are solved, it is often found that there are in reality real difficulties and overcoming them involves invention. At the very least the court might be persuaded that the patentee has done some hard work and thought things through, and that his case whatever its difficulty has some merit.
Incidentally, it pays to look at the claim that was actually granted by the EPO in Vicom. The difference is simply that the claim is limited to a particular field of use, with the effect that (in US parlance) it is no longer preempting the algorithm. But if you compare the original and the amended claim, the introduced amendments look cosmetic and there is not much nexus between the limited field and the other technical features of the claim. To get a really good claim, the EPO Appeal Board should have made the applicants work a little harder.
“I was wrong.
Posted by: Malcolm Mooney”
QFT.
AI: “All patents are business methods and all inventions are processes.”
Well, I thought NWPA’s comment about how nobody knew what information was 200 years ago took the cake.
I was wrong.
6, you haven’t studied the lawl sufficiently to have yet lost all respect for it. Go to lawl school first.
Max Wrote: “Demanding “definition” and “evidence” for what “business” means, or what “method” means strikes me as a tad boring and unhelpful.”
Wait, you want to vitiate the legal validity of business method patents yet you refuse to define what a business method is? And you claim to be a Patent Attorney yet find demands for definition of terms and evidence to be, “boring and unhelpful?!?!?!?!”
:: Throws Hands in The Air ::
Posted by: Ned Heller wrote: “The flaw should now be apparent to all.
But if “wholly preempt” was effectively overruled as contended, the corollary aspects of that analysis “insignificant extra-solution activity,” “central to the method,” and all such variations are also overruled.
Food for thought.”
It is now that you have so insightfully pointed it out. Ned, please please, email your analysis to each clerk for the SCOTUS. One may just put this on the desk of one of the justices before the arguments begin in Bilski.
Your point has not been made by any of the Amici, nor have I seen anyone else proffer the question on the blogs so it needs to be dealt with.
From the USG brief:
“QUESTION PRESENTED
Whether a method of hedging financial risk that neither concerns the use of a particular machine or apparatus nor effects a transformation of matter into a different state or thing is eligible for patent protection under 35 U.S.C. 101.”
Above I posed a simple question. If the “Question Presented” is answered in the negative, how does this affect the rights of current holders of such patents and the limitations such patents impose on others?
It would be one thing if this was an early manifestation of patents such as in Bilski being examined by the court for eligibility under Section 101. However, this does not appear to be the case. These types of patents, love them or hate them, have insinuated themselves into our economic system, and business decisions have been made and implemented across many diverse markets in light of their existence. One obvious concern is the impact that a negative answer may have upon the economic expectancy interests of those who have to date entered into all manner of business arrangements that currently guide their business conduct. Shall these business arrangements simply be tossed aside notwithstanding the potential turmoil this would have in various markets?
In anticipation of Mr. 6 weighing in with yet another caustic remark, it is useful to note that State Street was denied cert by the Supreme Court.
The point to be noted is that a negative answer with retroactive application may very well have a very negative effect that at this moment in time is not at all understood, and nothing in any of the briefs to date, to my knowledge, address this. Again, if this case was being presented early on and before significant business relationships were established, the effect would perhaps be negligible. This is, however, to my knowledge not the case. Hence, I do have certain misgivings concerning a wholesale declaration such patents are of no force and effect.
Equally important in my view is that the question is framed solely with regard to Title 35. A negative answer would suggest that Title 35 is merely yet another statutory scheme that bears no applicability to these types of innovative activities. Being outside the purview of Title 35, might this signify that those behind such innovative activities are free to seek safe and legally enforceable harbor under any other of a myriad of state and federal laws now existing or later created?
Now, some will quickly default to cases such as Bonito, but it bears noting that Bonito in particular involved an “invention” clearly within the scope of Title 35, but for unknown reasons the “inventor” chose not to take advantage of the rights afforded under Title 35. In what I admit is a greatly simplified statement of the legal issues associated with Bonito, the court in Bonito was faced with deciding the power of states under general laws of unfair competition to craft legislation granting “patent-like” rights to otherwise patent eligible subject matter. It was a case involving federal preemption, and the court’s answer was only too clear. “No, states may not do so as it would frustrate federal objectives of national interest and scope.”
Bilski presents a conundrum, and I am not at all sanguine that to simply answer the question in the “negative” will prove to be a panacea. More to the point, I am concerned about the possibly destabilizing influence such an anwer would have within presently existing markets, as well as the potential it holds for redefining the constitutional relationship betwee state and federal powers.
This is not to say that I believe the question is best answered in the “affirmative” (though I do as a matter or personal opinion subscribe to the view that Section 101 should be held as wide open as possible and not in a manner akin to the speakeasies that proliferated during Prohibition), but that in answering the question the court would be remiss if it does not address the consequences of its ultimate decision.
Answer the question in the “affirmative” and 219 years of juridprudence since the original Patent of 1790 will continue to govern and demarcate what is and what is not patentable based upon the present incarnations, inter alia, of Sections 102, 103 and 112.
Answer the question in the “negative” and one can only begin to imagine the mischief that may be wrought by those who are presented with what I view as a virtually clean slate. Experience informs me that a “negative” answer presents a panoply of opportunities to fashion new approaches, many of which are likely to achieve that which Title 35 would otherwise foreclose.
“Funny though, you can’t seem to actually provide any subtantive answer to my “nonsense”. My “nonsense” about fundamental law which you purport to know.”
Noise the subject of that thread is not the lawl. It is the policy basis for the lawl. The two things are different. I know you have trouble understanding this, but try again until you understand.
NAL thanks for beating down 6 and MM-trollbot.
MM-trollbot: No one cares whether you think something is easy or obvious in informmation processing. It is troll talk and simply ridiculous. The fact is that some of the smartest people of the 20th century didn’t find it so easy. I prefer to give their opinions weight and not yours.
BigGuy,
You assume that the correspondence GED program you are working on will put you on the level with 6.
It just might catapult you way above his level.
;-p
“The more people become educated, the more unfounded government intervention in our lives will be brought under scrutiny.”
Absolutely right, 6. Exhibit A – the increased scrutiny of “unfounded government intervention” this summer from all those highly educated people attending “tea parties” and screaming at town hall meetings. Exhibit B – Glenn Beck and Rush Limbaugh, clearly the leaders of contemporary scrutiny of “unfounded government intervention”, have not one, but TWO entire semesters of higher education between them. A few more weeks of this correspondence GED program I’m working on, and I’ll be ready to join you and your government scrutinizing intelligentsia, on the front lines. Keep up the good work!
The biggest argument I would use if I were balinski would be the obligation of the court to the world to advance not retard prosperity and a free market capitalist system by adding new and benificial catagories of invention to what exists in our patenting system.Also this policy would be in line with constitutional cival rights of individules.
“Another thing I thought was great about that discussion was the way they dismissed your characteristic nonsense out of hand.”
Yes 6, it is easy to see how you would hold up as your hero someone NOT answering a question.
No surprise.
Funny though, you can’t seem to actually provide any subtantive answer to my “nonsense”. My “nonsense” about fundamental law which you purport to know.
How is that paragraph 112 coming along?
Come back when you have real answers.
I’m accused of being flippant. But anybody who, in the context of this debate, writes:
“A process for curing rubber IS (my emphasis) also a method of doing business.”
is not in a position to call anybody else “flippant”.
Every “process” under the sun involves movement of electrons. So it involves a “transformation”. There now, who thinks that’s a valuable contribution to the debate?
Demanding “definition” and “evidence” for what “business” means, or what “method” means strikes me as a tad boring and unhelpful. Sorry Actual and Dale. I think we all know what “business method” means, in the context of this debate. Those who pretend they don’t I will suspect of having a personal vested interest. AI hopes to make his fortune from patenting one, and Dale’s gonna help him. It’s just as MM annoyingly suggests.
Dale B. Halling wrote: “see link to hallingblog.com A process for building a car, airplane, or radio are methods of doing business and yet no one would question that it was patentable. A process for curing rubber is also a method of doing business. All of these processes are part of how a company conducts its business, i.e., a method of doing business. There is no support in the statute, 35 USC § 101, for a prohibition against business method patents.”
Thank you Dale for the link. I just had to paste part of the paragraph that elaborates on the nature of business methods. So many people like Max and others flippantly use the term as if business methods are some separate category that needs to be dealt with, when there is no legal or scientific evidence to support such a notion.
All patents are business methods and all inventions are processes. The more prior art that exist the more narrow you are forced to claim your invention which means going further down the lane to the other categories but that does not remove the process from the invention.
Oh, and by the by, Eugene is correct to fear that such a view will spread. Anyone with their head screwed on straight has to question the system as currently implemented. The more people become educated, the more unfounded government intervention in our lives will be brought under scrutiny.
I do have a question for you though, are you even aware of your exposure to extensive propaganda that you were exposed to in your formative years? Or is the brainwashing so complete that you no longer regard it as brainwashing?
Actually, one other question, how would you differentiate your belief in the “good” of the patent system from that of a belief in a diety?
“actual attorneys is properly actual attorney (singular). (Two if you count the foreign dissident Koepsell, which I do not – the man unedrstands patent law just as well as you do, which means NOT).”
So then actual attorneys is properly actual attorneys? Good point NAL. I’m glad you brought that up.
Another thing I thought was great about that discussion was the way they dismissed your characteristic nonsense out of hand.
Here’s the thing Ned, the exception to the MOT test does require “dissection”. However, it is not the same manner of dissection that was “overruled”. The USSC simply overruled “dissection” in so far as the cases where the dissection is performed to dissect out a piece, and then, based solely upon the fact that the piece was in the claim at all, invalidate the claim. The type of dissection which is utilized in the exception to the MOT test however is dissection only in so far as they say “we have looked at the claim as a whole as the lawl commands, and this little piece over here that can be identified cannot save the claim as a whole”.
They are, in effect, two different types of dissection. Furthermore, the type used in the MOT exception is actually a direct result of forcing courts to “view the claim as a whole” and is there only to stop the skilled drafter from avoiding the actual lawl.
If you cannot see the difference, or cannot accept that it is proper, then take it up with the courts. Personally I find it to be an ok addition to the ridiculous MOT test if we must have the MOT test at all. It adds subjective spice to life :)
The Government’s idea of “technology” seems to be limited to wheels, gears, and shafts.
You can make up your own joke about shafts.
“Insignificant post-solution activity,” “central to to the method” are the pith and essence of the Flook dissection analysis. It has no place in the law once the error of dissection was recognized.
“Wholly preempt” is a species of dissection. According to Flook, the algorithm of Benson was first dissected and then held to be preempted in major part because the computer elements were old and the programmed computer was not applied to do anything new.
Diehr was supposed to change all that. But it did not flatly overrule Flook, which means the core of the Flook dissection analysis survives.
Newman in her Bilski dissent recognized the problems in these “exceptions” to the MOT in that it require dissection, but did not recognize or acknowledge that the analysis is straight from Benson and Flook.
The Flook rule is this: if the elements other than the algorithm are old, the claim is unpatentable. The algorithm is treated as unprotectible — as if it were part of the prior art. If it is combined only with old elements, the old elements are defined to be “insignificant” leaving only the unprotectible algorithm, which one cannot patent.
Hope this helps understanding my point.
“Betch you’d be interested if a pattern of those numbers suggested a tumor.”
Betch?
To qualify for protection, the invention must “promote the Progress of Science and useful Arts.” To do so for the quid pro quo of protection (Simpson, US 1964), the invention must be useful and usable by someone other than the inventor, i.e., useful and usable without the inventor, so the invention must tangible beyond any person. In other words, the invention may be hardware or software, but there must be a tangible connection of the invention to the real world for others to see its usefulness and appreciate that it “promote[s] the Progress of Science and useful Arts.” A business method may be useful, but without a tangible connection for others to see and appreciate, it’s not patentable. Bilski fails patentability because the claim openly allows the user to rely on human memory only and omit pen and paper or computer output and thereby excludes a tangible connection for others to see and appreciate. Had Bilski included at least one interim output step documenting the process, he might well have prevailed.
Malcolm Mooney: “So why would we want to grant patents on the use of numbers generated by algorithms? How can that do anything but slow down the economy?”
Is a number useful? Does it make life better for you? What if it’s a 3-D array of numbers, that together form a volumetric picture of your brain? Betch you’d be interested if a pattern of those numbers suggested a tumor. But no, it’s just numbers, why would we want to encourage innovation on that? It would just slow down the mortuary business.
Sorry for the double-post.
Malcolm and 6, the problem is this: according to the government brief, the “MOT” includes an analysis of “preemption.” This essentially looks to whether the other elements are “insignificant.” But, as we learned from Flook, “insignificant” means “old.” If they are old, it appears, the preemption occurs. But this, camouflaged, is the holding in Flook. which Diehr alleged was purportedly “misunderstood” but which in fact was abundantly well understood and heavily criticized by Rich, et al.
The dissent in Flook made the point that the even in Benson, the “wholly preempt” doctrine involved dissecting the algorithm from the balance of the claim and then determining whether the balance was new. The algorithm itself is treated as if it were old — essentially like a law of nature or scientific fact which the courts have consistently said cannot be preempted.
In both Benson and Flook, everything else in the claim was old and conventional. “Old and conventional” is what describes “insignificant post solution activity.” Dissection is the heart and soul of both Flook and Benson. Dissection, seeming proscribed by Diehr, remains.
What we have is a confused mess.
At a minimum, the Bilski court should finally decide the dissection issue.
6,
actual attorneys is properly actual attorney (singular). (Two if you count the foreign dissident Koepsell, which I do not – the man unedrstands patent law just as well as you do, which means NOT).
Plus the bias of this actual attorney is plainly evident in his political and economic underpinnings.
Fair wager that this singular opinion is a far cry from the norm for actual attorneys.
“according to the government brief, the “MOT” includes an analysis of “preemption.” ”
No, the gov brief states that part of the overall analysis is the analysis of preemption.
You’re clearly missing the bottom line of the gov. brief. I suggest reading it again. It’ll do you good.
If you need me to hold your hand I might can do it later, but I have a class here in a few.
“In the 21st century we have an explosion in science that brings exciting new possibilities including but not limited to
Retro-Causality.”
From wikipedia: Retrocausality (also called retro-causation, backward causation and similar terms) is any of several hypothetical phenomena or processes that reverse causality, allowing an effect to occur before its cause.
If this actually leads to what it implies, which is the ability for people to selectively alter events after they have occurred, this would nullify the patent system as a whole.
A patents X. B reads patent on X. B retrocauses an application for X to be filed prior to A’s application. A fails to patent X.
Then the universe implodes. Or even if it doesn’t implode, no one could ever be sure that the evidence that something happened on some date actually happened on that date because of causes prior to that date.
6 and Malcolm, the problem is this: according to the government brief, the “MOT” includes an analysis of “preemption.” This essentially looks to whether the other elements are “insignificant.” But, as we learned from Flook, “insignificant” means “old.” If they are old, it appears, the preemption occurs. But this, camouflaged, is the holding in Flook. which was purportedly “misunderstood.”
The dissent in Flook made the point that the even in Benson, the “wholly preempt” doctrine involved dissecting the algorithm from the balance of the claim and then determining whether the balance was new. The algorithm itself is treated as if it were old — essentially like a law of nature or scientific fact which the courts have consistently said cannot be preempted.
In both Benson and Flook, everything else in the claim was old and conventional. “Old and conventional” is what describes “insignificant post solution activity.” Dissection is the heart and soul of both Flook and Benson. But it remains even after Diehr.
But, Diehr, it is said, “overruled” Flook’s dissection analysis. Yet, clearly it remains alive and well.
What we have is a confused mess. Dissection is both overruled and the law.
The USPTO brief makes mention of an 18th century English patent on an insurance invention.
Details on what the patent covered are here: link to bit.ly
The USPTO brief makes reference to an 18th century English patent for an insurance invention.
Details of the patent are here: link to bit.ly
You make some good points, Actual Inventor.
Things take a turn for the awesome over at the IPwatchdog.
link to ipwatchdog.com
link to stephankinsella.com
link to ipwatchdog.com
In the above you will see Eugene accosted by actual attorneys accosting him over his lack of understanding of reality. You will then be treated to Eugene’s stubborn attempts to cling to a party line even in the face of his own scientific background leading him to conclusions that threaten the structural stability of his own head.
“Now, anyone with a basic education and a modicum of intellectual honesty knows that in the quantum age of the 21 century EVERYTHING is technology.”
Riiiiiiight.
“Big long list of things that AI has no technical understanding of”
What prevents them from obtaining patents on articles relating to those arts and methods of operating those articles and forming those articles in the gov’s brief? Nothing. Nothing at all.
Max Wrote:
“With computer-implemented inventions, the justification for granting 20 year monopolies is less evident, and with business methods it isn’t evident at all.”
Max, I challenge you right now to define business methods. If you can’t then immediately cease and desist your use of the term as if it has some legal and concrete significance.
Dingoes Ate Your Business Method wrote:
“‘The new technology has already arrived and apparently passed you by!’
Oh really? So share it with us.”
I already did and will be more than glad to repeat and list few more….
In the 21st century we have an explosion in science that brings exciting new possibilities including but not limited to
Retro-Causality.
Delayed Choice Quantum Erasers.
Epigenetics – reprogramming the gene
Quantum Biology.
Brain Efficiency Indexing ( BMI ) replacement for IQ standards.
Global Systems Analysis.
The list goes on and on but this should keep you busy googling for a few days.
The above statement should read, What the PTO is advocating is backwards thinking.
6 Wrote: “I’m pretty sure that is exactly what the gov is arguing. They just don’t want to expand it beyond “technology” into “other than technology”.”
Putting it mildly, thats an illogical statement. Read what you wrote again
S L O W L Y and think about it. Then try and rephrase your statement again with some lexical clarity and evidence you are are comprehensively literate.
Now, anyone with a basic education and a modicum of intellectual honesty knows that in the quantum age of the 21 century EVERYTHING is technology. The only questions is how will the new science be applied so that its practically useful in solving real world problems.
This requires entrepreneurs motivated by the free market system to use their imaginative creative genius to invent new, improved, and non obvious processes that produce results.
What the PTO is advocating backwards is thinking.
Let’s just put it this way: to the extent the Court in Diehr appeared to make it possible to trivially avoid smackdown under 101, Diehr was wrong.
“But if “wholly preempt” was effectively overruled as contended, the corollary aspects of that analysis “insignificant extra-solution activity,” “central to the method,” and all such variations are also overruled. Food for thought.”
A bit too chewy for my taste.
Ned that made no sense what so ever.
Dessert for your thought.
Has anyone noted the flaw in the “wholly preempt” branch of the Section 101 analysis? (The government brief argues this remains as a test.) It is this: the algorithm is treated as if it were old — a part of common resources of all mankind. Flook, by treating the algorithm as old, in its section 101 analysis, is not only consistent with Benson, it is Benson.
But, as was noted in the government’s brief, that aspect of Flook was overruled in Diehr when it held that Section 101 analysis must treat the claim as a whole.
The flaw should now be apparent to all.
But if “wholly preempt” was effectively overruled as contended, the corollary aspects of that analysis “insignificant extra-solution activity,” “central to the method,” and all such variations are also overruled.
Food for thought.
“Because in “Mooney’s World” as we all know, good things just spontaneously appear”
Quite the opposite. The world of betting on pieces of paper that represent potential wealth is the world in which “good things” spontaneously appear. The problem is that those “good things” then spontaneously disappear, the top 1% collect their bonuses, and the rest of us are left to clean up the mess. Oh, but my ATM can predict how much money I’m going to take out so how can I possibly complain?
“Oh, but maybe the economy you are referring to is the micro-economy of investors, patent attorneys and patent trolls? Because everybody loves those people.”
Because in “Mooney’s World” as we all know, good things just spontaneously appear and anyone who is interested in making money is baaaaaaad. Sounds like an Obama speech. Or was that Karl Marx?
Malcolm Mooney: “So why would we want to grant patents on the use of numbers generated by algorithms? How can that do anything but slow down the economy?”
Isn’t there an assumption here that the algorithm is old?
NWPA: “Why didn’t you submit that easy program and pick-up the $1 million dollars?”
I never said that the writing the program was “easy.” What I was was that the underlying concepts set forth in that article were obvious or anticipated. As you are certainly aware, software claims tend to be written broadly using functional language which is why many of us laugh at them (except when they are issued by lazy Examiners who don’t bother to think before rubber stamping). If these winners’ claims were limited to the specific code that actually led to the result, then perhaps we wouldn’t be having this discussion. But for some reason that would compeletely unacceptable to everyone in that childlike field of endeavor. They want the whole pie or nothing at all. Meanwhile, other fields have grown up and continue to contribute to our nation’s economy without reliance on absurdly broad claims.
Man, reading pages 24-25 of this brief is reminiscent of reading scriptures. Beautiful, flowery, precise, and above all, persuasive.
“It is about level billing for commodities using Monte Carlo simulations to predict the future prices for commodities. The level billing is about information and information is the most important area technology in the modern economy.”
So why would we want to grant patents on the use of numbers generated by algorithms? How can that do anything but slow down the economy?
Oh, but maybe the economy you are referring to is the micro-economy of investors, patent attorneys and patent trolls? Because everybody loves those people.
“The fool provocateur simply lacks substance and cannot be bothered with replying with substance”
The troll is very silly today.
MaxDrei,
Any time you echo Malcolm (see the 8:16 AM post), you must ask yourself if your newly gained credibility is worth the soundbyte.
Malcolm doesn’t have a clue – really. The fool provocateur simply lacks substance and cannot be bothered with replying with substance – that’s not a path you want to tread. He plays a character here at the Trainwreck, but do you want that same lack of credibility?
The argument of “it would have come along anyway” is a bankrupt argument. Your continental viewpoint may miss what Malcolm should not – the concept of PROMOTE does not mean that patents are ONLY appropriate where they are the no other ways or means for the advancement of the arts. It just ain’t so.
See the Patent Hawk for an interesting discussion on PROMOTE between Step Back and breadcrumbs (yes, bread, I owe you):
link to patenthawk.com
6,
That is exactly the problem – YOUR finding of “worth” is so suspect, that the chance of obtaining a substantive response from you is basically nil.
Funny how that value coincides with your knowledge of the law.