Although Bilski's claims were held unpatentably abstract, the Supreme Court has re-affirmed that the door to patent eligibility should remain broad and open.
Bilski v. Kappos (Supreme Court 2010)(08-964)
The Supreme Court has issued its opinion in Bilski v. Kappos. In the decision, the Supreme Court affirmed that Bilski’s risk-management method was not the type of innovation that may be patented. However, rather than using the Federal Circuit's "machine-or-transformation test", the court simply relied on prior precedent to find the claimed method unpatentably abstract. Justice Kennedy authored the majority opinion. Justices Breyer and Stevens both wrote concurring opinions.
Business as Usual: In general, the opinion offers no clarity or aid for those tasked with determining whether a particular innovation falls within Section 101. The opinion provides no new lines to be avoided. Rather, the outcome from the decision might be best stated as "business as usual."
Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.
By refusing to state any particular rule or categorical exclusion, the Court has almost certainly pushed Section 101 patent eligibility to the background in most patent prosecution and litigation.
Abstract Idea: The one thing that all nine justices agreed upon is that Bilski's method of hedging risk was not patentable because it is an abstract idea "just like the algorithms at issue in Benson and Flook."
The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.
Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.
It is unclear to me how patent office examiners will be able to apply the test for abstract ideas in any meaningful way. I suspect that they will not. Rather, the best advice for the USPTO is to focus on Section II-A of Justice Kennedy's opinion. There, the opinion recognizes that Section 101 patent eligibility is "only a threshold test." To be patentable, the invention must also "be novel, see §102, nonobvious, see §103, and fully and particularly described, see §112."
What is the test?: 35 USC 101 offers patent protection for "any new and useful process, machine, manufacture, or composition of matter." Here, the focus was on the definition of a "process" because Bilski's patent application was written to claim a method of hedging risk. Although the majority opinion refused to define the term process, it did write that the machine-or-transformation test developed by the Federal Circuit does not define what is (and is not) a patentable process. Rather, the Court held that the machine-or-transformation offers "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process." As a "clue," the machine-or-transformation test likely correlates with the existence of patentable subject matter. However, some patent claims that fail the test will still be patentable and other patent claims that pass the test will still be ineligible.
Posted by: West Coast Guy | Jun 29, 2010 at 09:32 PM:No need to go any further because those business methods failed the MoT, and that is what you asked. Your efforts of piling on more and more conditions is just silly.
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That is not what I asked but you already know that. Your circular games are what’s silly here.
Posted by: West Coast Guy | Jun 29, 2010 at 09:39 PM: With that comment, you’ve said it all, AI.
In other words you lose and its time to cut and run. Say hello to MM at the club will ya? Nice skirt BTW.
AI,
“Look it up and think again.”
U.S. Patent No. 1 is not a method of doing or conducting business. Better check your research.
Posted by: West Coast Guy | Jun 29, 2010 at 09:34 PM
___________________
First U.S. Patent Issued Today in 1790
FIRST U.S. PATENT ISSUED TODAY IN 1790
PRESS RELEASE
On July 31, 1790 Samuel Hopkins was issued the first patent for a process of making potash, an ingredient used in fertilizer. The patent was signed by President George Washington. Hopkins was born in Vermont, but was living in Philadelphia, PA when the patent was granted.
The first patent, as well as the more than 6 million patents issued since then, can be seen on the Department of Commerce’s U.S. Patent and Trademark Office website at http://www.uspto.gov . The original document is in the collections of the Chicago Historical Society.
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So West Coast Guy,
You think Ole Sam Hopkins was making all that potash for fun and relaxation?
Or maybe he was an artist creatively expressing himself? ? Yeah thats the ticket. This was a patent on an art process, a way to find ones self perhaps!
Although it makes you wonder why someone would need a patent for such a purpose.
Hmmmm…..
Cuz we all know according to your thinking Patents can’t be for doing or conducting business.
Heck next thing you know folks will be trying to start companies manufacturing and “selling” vehicular components, with patents on the process no less!
::rolls eyes::
AI,
“You admit your clients manufacture and “sell” vehicular components. Well I have news for you West Coast Guy, in American thats called Conducting Business, no matter what they chose to call their patents!
Now when they start giving these vehicular components away for free. And letting anyone that wants to use their patented methods for FREE to manufacture and “sell” competing vehicular components then you might have a point.
But until then they are conducting business baby!”
With that comment, you’ve said it all, AI.
AI,
“Look it up and think again.”
U.S. Patent No. 1 is not a method of doing or conducting business. Better check your research.
“See the reason so stated up thread. BTW, do you know what “objective” means?”
Why complicate things by inserting a second definition of a term that is already defined? I prefer to work within the statutory framework and use the definition Congress provided and the Court cited in Bilksi.
“And you are claiming those inventions are not abstract ideas as defined by the SCOTUS, yet you admit you have NOT read the specification for the inventions, nor has the SCOTUS reviewed the inventions patentability to make that determination”
No, I am not making that claim. For the sake of argument, I will assume that the business methods in the patents I’ve cited are not abstract ideas but failed the MoT. No need to go any further because those business methods failed the MoT, and that is what you asked. Your efforts of piling on more and more conditions is just silly.
AI,
“If so how do they earn their money?”
Posted by: West Coast Guy | Jun 29, 2010 at 09:07 PM: They manufacture and sell vehicular components employing patented non-business methods.”
You admit your clients manufacture and “sell” vehicular components. Well I have news for you West Coast Guy, in American thats called Conducting Business, no matter what they chose to call their patents!
Now when they start giving these vehicular components away for free. And letting anyone that wants to use their patented methods for FREE to manufacture and “sell” competing vehicular components then you might have a point.
But until then they are conducting business baby!
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AI: “The very first patent ever granted was a business method patent so your question is illogical.”
WCG: No, I don’t think so.
Look it up and think again.
Posted by: West Coast Guy | Jun 29, 2010 at 08:11
“Inventions like Bilski’s. Apparently the SCOTUS seems think they know what that is, why doesn’t anyone esle?”
Okay, the “invention” of Bilski was determined to be an abstract idea. So, you have asked to provide other business method patents that are not like Bilski (i.e., not abstract ideas) that have not passed MoT.
I provided you two of them that fit your criteria of (1) inventions (i.e., actual patents and not applications) (2) not of the Bilski type (i.e., not abstract ideas) (3) that have not passed MoT. See above.
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Okay, lets get this straight. You are claiming these so called business methods, which you can’t “objectively” define had some of their claims, declared as abstract ideas before the Bilski Supreme Court ruling.
And you are claiming those inventions are not abstract ideas as defined by the SCOTUS, yet you admit you have NOT read the specification for the inventions, nor has the SCOTUS reviewed the inventions patentability to make that determination
So exactly again how did YOU make that determination?
WCG: Oh, BTW, why doesn’t the following definition provided by Congress work for you:
“a method of doing or conducting business”
See the reason so stated up thread. BTW, do you know what “objective” means?
AI,
“If so how do they earn their money?”
They manufacture and sell vehicular components employing patented non-business methods.
“The very first patent ever granted was a business method patent so your question is illogical.”
No, I don’t think so.
Posted by: West Coast Guy | Jun 29, 2010 at 08:18 PM:
“Banning methods of doing or conducting business would be to ban the very purpose of getting a patent in the first place.”
West Coast Guy: That’s funny. My clients find purpose in getting patents for methods that have nothing to do with doing or conducting business.
You just don’t get it.
Do these Clients pay you?
If so how do they earn their money?
West Coast Guy: On yeah, what has been the purpose of getting patents for many, many years prior to the introduction of business method patents?
The very first patent ever granted was a business method patent so your question is illogical.
Ping, I am simply observing how these kinds of opinions are read by lower courts. In cases where the 5th justice of a majority doesn’t join the full opinion and writes separately (or in this case concurs separately), that separate writing is given great weight in interpreting/applying the majority opinion. As I stated earlier, the Seattle Schools case (and Kennedy’s concurrence) comes to mind, as do other cases.
You may not like this, and you might “love” to argue that this should not be the case, but that doesn’t change how these types of decisions have been read by lower courts going back decades.
AI,
“Banning methods of doing or conducting business would be to ban the very purpose of getting a patent in the first place.”
That’s funny. My clients find purpose in getting patents for methods that have nothing to do with doing or conducting business. On yeah, what has been the purpose of getting patents for many, many years prior to the introduction of business method patents?
Correction,
Banning methods of doing or conducting business would be to ban the very purpose of getting a patent in the first place.
AI,
“Inventions like Bilski’s. Apparently the SCOTUS seems think they know what that is, why doesn’t anyone esle?”
Okay, the “invention” of Bilski was determined to be an abstract idea. So, you have asked to provide other business method patents that are not like Bilski (i.e., not abstract ideas) that have not passed MoT.
I provided you two of them that fit your criteria of (1) inventions (i.e., actual patents and not applications) (2) not of the Bilski type (i.e., not abstract ideas) (3) that have not passed MoT. See above.
Oh, BTW, why doesn’t the following definition provided by Congress work for you:
“a method of doing or conducting business”
Posted by: West Coast Guy | Jun 29, 2010 at 06:59 PM: Why doesn’t the following definition provided by Congress work for you:
“a method of doing or conducting business”
Because merely repeating the same words as the question is not really an answer to the question.
Besides, every patented invention at its core is a method of doing or conducting business.
The PTO is under the Department of Commerce. Its all commercial. Its all business, despite what that silly MM says.
Banning methods of doing or conducting business would be to ban the very purpose if getting a patent in the first place.
AI,
What the heck do you mean by “business methods were outside the Bilski type”?
Posted by: West Coast Guy | Jun 29, 2010 at 06:47 PM
Inventions like Bilski’s. Apparently the SCOTUS seems think they know what that is, why doesn’t anyone esle?
AI,
“1. No one can state an objective definition of the so called business method.”
Why doesn’t the following definition provided by Congress work for you:
“a method of doing or conducting business”
AI,
What the heck do you mean by “business methods were outside the Bilski type”?
Posted by: West Coast Guy | Jun 29, 2010 at 06:26 PM: Why would I want to waste my time? A court of law has determined that the claims in the two business method patents failed the MoT test.
To prove these so called business methods were outside the Bilski type. Remember that is the point of the discussion. If you have not read it. You don’t know it and thus can’t prove it. So my statement stands true…
“No one can state one business method outside the Bilski type that does not pass the MOT.”
AI,
“Presuming that you have actually read the applications and studied the drawings why are these inventions outside the Bilski type of invention?”
Why would I want to waste my time? A court of law has determined that the claims in the two business method patents failed the MoT test. These were patents that actually issued unlike Bilski’s application.
Posted by: West Coast Guy | Jun 29, 2010 at 06:05 PM: “2. No one can state one business method outside the Bilski type that does not pass the MOT.”
I’ll state two.
See Patent No. 7,181,427. The Central District of California found in an Order of Summary Judgment that Claim Nos. 1, 3, and 4 of the ‘427 patent failed the MoT test. See Dealertrack v. Huber, Case No. CV06-2335AG, Docket No. 770 filed on 7/7/09. Retrievable through PACER or any legal database.
See Patent No. 6,029,154. The Northern District of California case in Cybersources Corp. v. Retail Decisions, 2009 WL 815448 (March 27, 2009) found that Claims 2 and 3 of the ‘154 patent failed the MoT test in an Order of Summary Judgment.
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Presuming that you have actually read the applications and studied the drawings why are these inventions outside the Bilski type of invention?
Plus it appears you are just citing some claims that were not allowed. Remember Bilski’s entire invention/all claims failed the MOT.
“Now, I don’t know whether that patent is Bilski’s type”
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Then why post such Trollish tripe? Wait….I think I just answered my own question.
AI,
“2. No one can state one business method outside the Bilski type that does not pass the MOT.”
I’ll state two.
See Patent No. 7,181,427. The Central District of California found in an Order of Summary Judgment that Claim Nos. 1, 3, and 4 of the ‘427 patent failed the MoT test. See Dealertrack v. Huber, Case No. CV06-2335AG, Docket No. 770 filed on 7/7/09. Retrievable through PACER or any legal database.
See Patent No. 6,029,154. The Northern District of California case in Cybersources Corp. v. Retail Decisions, 2009 WL 815448 (March 27, 2009) found that Claims 2 and 3 of the ‘154 patent failed the MoT test in an Order of Summary Judgment.
2. No one can state one business method outside the Bilski type that does not pass the MOT.
Care to be the first, on either account and make history?
How about Amazon’s one-click patent? I don’t see any particular machines or transformations in claim 1.
Now, I don’t know whether that patent is Bilski’s type. We’d have to set it up on a blind date with the Bilski patent and see if they hit it off. But in the meantime, be a pal and find me the particular machine or transformation.
Posted by: IANAE | Jun 29, 2010 at 05:29 PM: AI: Fortunately, as I have stated before, 99.9% of all so called business methods pass the MOT.
You did indeed state that, but I assumed you were simply testing the persuasiveness of unsupported conclusory statements.
You still think you’re right about that.”
There are two constants in the Patent Community.
1. No one can state an objective definition of the so called business method.
2. No one can state one business method outside the Bilski type that does not pass the MOT.
Care to be the first, on either account and make history?
AI: Fortunately, as I have stated before, 99.9% of all so called business methods pass the MOT.
You did indeed state that, but I assumed you were simply testing the persuasiveness of unsupported conclusory statements.
You still think you’re right about that. So does the examiner, about his rejection. Your move. Or should I say “your opportunity”?
Posted by: TINLA IANYL | Jun 29, 2010 at 04:35 PMAI, only issued patents are entitled to a presumption of validity. It’s a rule. Look it up.
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I never said otherwise. Look it up.
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TINLA IANYL: That doesn’t mean that the Examiner doesn’t have the burden of establishing a prima facie case during prosecution, but that burden is fairly easily met, and then the burden shifts to the applicant.
AI: And any cut & paste abstraction rejection is fairly easily to overcome.
TINLA IANYL: For 101 issues that are not tied to a particular machine or transform a particular article, that just means the examiner only has to say that the claim is rejected under 101 becasue it preempts all uses of the claimed process, and is therefore abstract. At that point, it will fall to applicants to establish that it actually passes the MoT test, or make some kind of argument against preemption.
AI: Wrong. If the Examiner only says that the claim is rejected under 101 because it preempts all uses of the claimed process, all the applicant has to do is show one use the claimed process does not cover. Slam dunk air tight traversal. Now some incompetent, belligerent examiner can simply ignore that fact and force an appeal. But so what? All it takes is time and money and I have plenty of both, with a world of attorneys at my disposal.
TINLA IANYL: I don’t think you should expect much success if you try to do anything except satisfy the requirements of the MoT test.
AI: Fortunately, as I have stated before, 99.9% of all so called business methods pass the MOT. So this abstract non sense need never come up. And if an Actual Inventor is just filing today, well they are even more fortunate as they can avoid the abstraction trap all together.
C’mon IANAE – “a mere conclusory statement might well be insurmountable”
Are you really posting such drivel?
sigh
IANAE is still posting that examiners have as much power and rights as the Supremes.
How low will my idol sink?
If the PTO has no test, statutory or otherwise to prove my invention is an abstract idea, guess what? Its not an abstract idea!
It may or may not be an abstract idea. That’s not the point.
The point is as follows: If the examiner says your invention is an abstract idea, how are you going to get your patent?
Look, the Examiner must provide “CLEAR AND CONVINCING” evidence.
Uh huh. Repeat until true.
We do have a judiciary that enforces inventors Constitutional and statutory rights.
The same judiciary that rejected Bilski’s claims based on a conclusory finding that they’re abstract. And even that was less draconian than the decision appealed from, where only a single judge from an en banc panel would have been so charitable as to do the same. Neither of the two courts has any idea of what argument might persuade them that a claim is non-abstract, so good luck on appeal.
Posted by: IANAE | Jun 29, 2010 at 09:36 AM
AI: If the PTO has no test, statutory or otherwise to prove my invention is an abstract idea, guess what? Its not an abstract idea!
Guess what? A conclusory statement that the claim is directed to an abstract idea was good enough for the highest court in the land. Three levels of appeal up from the humble examiner. I think you’ll find it’s good enough for the examiner too.”
You are intellectually weaker than even Ping has observed. Look, the Examiner must provide “CLEAR AND CONVINCING” evidence.
And no applicant/inventor has to accept anything less. In short, you call my invention abstract you better have an objective definition for it or ya gonna get traversed and/or smacked down in the courts.
“Besides, one way or another, you’ll have to get past somebody at the PTO if you want your patent. If it’s not the examiner, it’ll still be up to you to convince the Board.”
Uhh.. I dont know if you have been keeping up with current event pal but the buck does not stop at the board.
We do have a judiciary that enforces inventors Constitutional and statutory rights.
“But no where, no way does it say that patents no longer have a pressaumption of validity and its the burden of the applicant to first prove the invention is valid.”
AI, only issued patents are entitled to a presumption of validity. It’s a rule. Look it up.
That doesn’t mean that the Examiner doesn’t have the burden of establishing a prima facie case during prosecution, but that burden is fairly easily met, and then the burden shifts to the applicant.
For 101 issues that are not tied to a particular machine or transform a particular article, that just means the examiner only has to say that the claim is rejected under 101 becasue it preempts all uses of the claimed process, and is therefore abstract. At that point, it will fall to applicants to establish that it actually passes the MoT test, or make some kind of argument against preemption.
What that successful argument will be, no one knows. The Courts have not been able to come up with anything besides machine or transformation for many many years. I don’t think you should expect much success if you try to do anything except satisfy the requirements of the MoT test.
There might be something that succeeds one day, but I expect that applicant will have to take it to Court. I wouldn’t expect to see any success in front of an examiner or the BPAI.
I have posted objective definitions of business methods, as have others.
Posted by: Malcolm Mooney | Jun 29, 2010 at 10:05 AM
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In which universe?
The SCOTUS just arbitrarily said they were.
Yes. That’s the legal test for that now.
Happy patenting.
Posted by: Les | Jun 29, 2010 at 10:06 AM: So, what does abstract mean? And on what planet are Bilski’s claims abstract?
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Bilski’s claims are not scientifically and technologically abstract. Everyone in the room knows this. The SCOTUS just arbitrarily said they were. which is within their power. Just like they once said separate was equal and Dred Scott, a human being, was not human and merely property.
But the good news is Steven’s is gone!
But no where, no way does it say that patents no longer have a pressaumption of validity and its the burden of the applicant to first prove the invention is valid.
Pending applications enjoy no presumption of validity.
But the simple FACT is, the applicant always has the opportunity to explain why any rejection made by the examiner is not correct.
You say “opportunity”, I say “burden”.
The burden is always on the applicant to show that his invention is patentable. Sometimes that burden is satisfied by filing the claims and requesting that a patent be granted, but sometimes it takes some interaction with the examiner.
It may not technically be a legal burden on the applicant, but sooner or later it’s your move and you’d better do something to convince the examiner if you want that patent.
But examiners still have to present and apply “clear and convincing evidence” for the basis of any rejection.
You’re thinking of “defendants”. Examiners only have to make a prima facie case, which sets the bar quite a few levels lower. In the case of “abstract” inventions that fail MOT, where there is no legal test to overcome the examiner’s objection, a mere conclusory statement might well be insurmountable except on appeal.
What part of the MPEP are you reading, exactly?
MM Wrote:
AI That leaves us with only ONE type of business method that does not qualify. Which means 99.9% of the rest will sail right thru the gates of 101.
“Dream on, AI. Dream on.”
Posted by: Malcolm Mooney | Jun 29, 2010 at 10:09 AM
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Yet you cant mention ONE outside of a Bilski type, that won’t pass 101.
Nuff said.
Posted by: Andrew Klein | Jun 29, 2010 at 07:51 AM: Here, Here is the relevant excerpt from the memo:
“If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.”
It does seem in unclear cases the burden shifts.
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Exactly! Thats how you CHOOSE to interprete it or at least how someone told you to interpret it. But the simple FACT is, the applicant always has the opportunity to explain why any rejection made by the examiner is not correct.
But no where, no way does it say that patents no longer have a pressaumption of validity and its the burden of the applicant to first prove the invention is valid.
Yes, the application my very well be invalid for a number of reasons, abstract, 101, 102 103 112, and so on. But examiners still have to present and apply “clear and convincing evidence” for the basis of any rejection. It’s in the MPEP. Don’t trust me, look it up!
“If the algorithm embodies a method that has practical utlity without being tied to a computer, then tying it to a computer avoids preemption, and the computer is found to be a “particular machine” by virtue of being programmed with such an algorithm. ”
Like I said Broje, I would reject it. You’re welcome to take your argument to the Board and then the Fed Circ. if the Board agrees with me.
“Your view seems to be that the computer must have some new component in order to be a particular machine, which is what J. Stevens said in his later dissents, but that’s not the law. You can tell that it’s not the law because it was in the dissents. ”
First, it is not my view that the computer must have some new component in order to be a particular machine, although that would likely do it. The machine must simply be reasonably particular. There are various ways to establish a machine as being more particular, but I will not accept that putting an algorithm which will be all but, or entirely preempt by the claim on the machine makes it particular. That is in fact the reason the post-solution activity law exists. Check your Flook, it is in fact very much good law according to Kennedy. The solution in your example is the algorithm, the post-solution activity is adding it to a computer.
Second, Stevens said a lot of things in his dissent, not all of them are “not the law” because he said them in his dissent. There is no if> in the dissent > then > not the law, rule. Saying such a thing is absurd. Justice Stevens noted quite a bit about the abstract caselaw. His mentioning it doesn’t make it not the law now. You’re a lawlyer and I expect better caselaw analysis from you.
“even though it is never expressed more clearly than in Benson.”
… that it would be improper to preclude use of that algorithm itself?
“that algorithm embodies a method that would only be useful with a computer.”
That is the specific reason they’ll die, along with the fact that the addition of the gen computer was post-solution activity. If they had substantial use outside that which is claimed then the claim might live.
“when it is found to be tied to a particular machine, it is the case that the method would also have utility without being tied to a computer. ”
Replace “computer” with “general purpose computer” at the end and yes, that’s pretty much correct, as a general rule of thumb, though perhaps not always.
I think Breyer was aiming for a new patent eligibility test: The Absurdity Test (of course, absurd patents are not currently illegal, that’s why we need a new test to rein in such terror producing patents that harm the nation so badly).
@crelboyne:
I think the closest the decision comes to saying that there might be some things that pass MoT and yet are abstract might be in Breyers Concurrence at pages 3 and 4, where he mentions some patents that were granted that were ridiculous or absurd. the examples given are:
a method of training janitors to dust and vacuum using video displays;
a system for toilet reservations; and
a method of using color coded bracelets to designate dating status in order to limit the embarrassment of rejection.
I don’t know if any of the claims in these cases passed the MoT test. Does anyone think the Court would find claims to such inventions unpatentable even if they pass the MoT test?
@ TINLA IANYL:
I was wondering the exact same thing. What in the decision even suggests something might pass MoT and fail 101?
This important more than anything to understand why SCOTUS GVR’d Prometheus rather than simply denying the cert. If MoT is sufficient (though not necessary), shouldn’t the Prometheus decision stand? Anyone got any thoughts on what will happen with Prometheus?
Perhaps more intellectually interesting, though far less important to the diagnostics industry, is Classen, which also got GVR’d. I thought Classen was a much weaker case for patent eligibility than Prometheus and thus the claims in Classen might be resurrected after SCOTUS Bilski.
@6 for “I would reject your algorithm/abstract idea tied to an unparticular machine because you’re not meaningfully limiting the claim past the algorithm itself, you want to encompass nearly, if not all, of the uses of the algorithm in the claim. That was the no-no that happened in Benson, and it is why Bilski just got rejected.”
6, we’ve talked about this before. Let me just chime in and remind you of my view that the Court in Benson said that tying that algorithm to a digital computer did not avoid preemption becasue that algorithm embodies a method of converting between digital and binary, and that method only has practical utility with a digital computer.
Your view seems to be that the computer must have some new component in order to be a particular machine, which is what J. Stevens said in his later dissents, but that’s not the law. You can tell that it’s not the law because it was in the dissents.
If the algorithm embodies a method that has practical utlity without being tied to a computer, then tying it to a computer avoids preemption, and the computer is found to be a “particular machine” by virtue of being programmed with such an algorithm. The caselaw is consistent with this view, even though it is never expressed more clearly than in Benson.
But if you look at the claims at issue in the computer software cases, you’ll note that when the algorithm is found to be tied to a general purpose computer, that algorithm embodies a method that would only be useful with a computer. And when it is found to be tied to a particular machine, it is the case that the method would also have utility without being tied to a computer. That is what the forest looks like, although you might take a different view when looking at one tree or another.
The court had a problem with an artificial test that was in conflict with the wording of the statute. So how does the artifice called an “abstract idea” not conflict with the wording of the statute?
I’d appreciate anyone’s further views on what the Court said about business method patents. Justice Scalia did not join in that part of the Court’s decision and he did join with Justice Breyer’s concluding remarks that business methods are not a patentable process. Five justices expressed these serious reservations about business methods. Thanks
“It doesn’t matter.”
Andrew – with all due respect, it does matter and you be wrong.
Ya can’t go conflatin your maths by adding different views together to get a magical majority (don’t worry you be in good company with Dennis making the same mistake).
The logic of why not really be quite simple – if the justices wanted to add their voices together, they would have done so. They did not, which mean that lower courts cannot. Scalia only agreed to certain points, just as Ginsburg and Sotomayer only agreed to certain points. There is only one majority. You are left with the major IFs: If Scalia had joined in the other portions of the Stevens concurrence – but he did not. If Stevens plus Others had joined in the Breyer concurrence with Scalia – but they did not.
I would love for you to make your added majority argument against me in a court. The simple matter is that the justices had nigh eight months to agree or disagree and the published opinion shows that they only agreed so far (and no further). The ruling is a 5-4-4-2-1 amalgam. Ya gotta take it as it is.
As posted on a sister thread – I welcome the Office making hand-waiving rejections based on “I say that’s abstract”. Conclusionary statements will be bounced right back – that law hasn’t changed, and such statements fail to establish prima facie cases of non-patentability.
AI,
“The very first invention ever patented was a series of steps easily performed by a human being. Why some 200 years later well into the 21st century should it be troubling a couple of justices?”
I think the overall discussion surrounds method/process patents. Bilski is not drawn to a processor that is programmed or a system which comprises a programmed processor.
RE: Dennis’ comment “It is unclear to me how patent office examiners will be able to apply the test for abstract ideas in any meaningful way. I suspect that they will not.”
Patent office examiners will apply the test for abstract ideas simply by saying “Claim 1 is directed to an abstract idea and is rejected under 101.” Then, the patent office examiner merely will refuse to budge until the patent applicant adds something Claim 1 (like tie it to a machine or transform something) or gives up because they can’t afford to appeal.
Simply put, just like the SCOTUS in Bilski, the patent examiner need only make an accusuation and a conclusion. Look at the varying views in Bilski. No patent examier will be wrong in how they choose to apply Bilski. The patent applicant will be wrong unless they do something in the face of a 101 abstract idea rejection.
I have nothing but contempt for Stevens’ concurrence in saying that “Section 273 is a red herring.” It is not, plain and simple. Stevens’s concurrence is disingenuous, sophistry in the extreme, and with logic, to use my dad’s expression, that “won’t hold soap.” Even Justice Scalia, who obviously doesn’t like patents on “business methods” (however you define them) by not joining Part II B-2 of Kennedy’s opinion, couldn’t stomach Steven’s nonsense in treating 35 USC 273 as nullity. Kennedy and the other 4 justices who sided with him that 35 USC 273 is implicit if not explicit recognition by Congress that “business methods” are patent-eligible under 35 USC 101 are very CORRECT, while Stevens and the 3 other justices who sided with him are very WRONG.
“Bull Hash, that is NOT what has been “instructed”.”
Here is the relevant excerpt from the memo:
“If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.”
It does seem in unclear cases the burden shifts.
This is also how Gene interprets it at IPWatchDog:
“It is also recognized that satisfying the machine-or-transformation test is heavy evidence of satisfying the requirements of 101, and an interim process is put in place whereby the burden will be shifted to the applicant to demonstrate that the claimed invention is not simply drawn to an abstract idea if a machine-or-transformation rejection is given.”
Posted by: Andrew Klein | Jun 29, 2010 at 07:02 AM “Examiners have already been instructed to basically apply the MOT test and move the burden to the applicant if it fails the MOT test. This is clearly consistent with section 4 of part 2 of Breyer’s concurrence. ”
Bull Hash, that is NOT what has been “instructed”. Its only your fanciful interpretation and wishful thinking. And if you are an attorney, particularly my attorney, and present such non sense you will be fired on the spot.
Posted by: West Coast Guy | Jun 29, 2010 at 04:03 AM: “If I understood the transcript of the oral arguments, this type of scenario troubled a couple of the justices. A series of steps easily performed by a human is trying to be patented.”
The very first invention ever patented was a series of steps easily performed by a human being. Why some 200 years later well into the 21st century should it be troubling a couple of justices?
“It counts for interesting reading, discussion and speculation on a blog maybe. It certainly does not count for legal interpretation from a junior, IQ 6 examiner without a law degree.”
Examiners have already been instructed to basically apply the MOT test and move the burden to the applicant if it fails the MOT test. This is clearly consistent with section 4 of part 2 of Breyer’s concurrence. Just because you don’t like this doesn’t mean it isn’t going to happen.
“There is no suport here for a lower court to try to graft together portions of the remaining concurrences in the judgment to reanimate stare decisis on questions we may find curious, but were not the opinion of the court.”
Yes there is. It happens somewhat frequently. In the case of 4 justices clearly on one side, 4 justices clearly on the other, and one justice who joins much of the majority but writes himself, the middle justice’s opinion is considered controlling in the lower courts. (For example, see Parents Involved in Community Schools v. Seattle School District No. 1. In this case, Kennedy joined most of Roberts’ opinion but not all, and wrote himself. His opinion is looked at by lower courts.)
In this case, the only difference is that Scalia didn’t write himself. But he joined Part 2 of Breyer’s opinion in full, which clearly indicates how Scalia interprets the majority opinion.
Is it possible that, as a parting political shot, Scalia gamed Stevens into believing that Stevens had majority support for a categorical business method exception to patentability, and then pulled the rug out at the last minute?
I do agree that the what the Examiners refer to as Bilski’s abstract ideas are really novelty/obviousness rejections.
Like the bathroom queuing patent should probably have been rejected as simply a “hi-tech” implementation of the deli “take a number” system.
I would still prefer 102, 103, and 112 be used to reject these claims. However, I guess I am more relieved the SC avoided adding subject matter restrictions.
Brian Hickman,
My apologies. You stated Benson — not Bilski.
Brian Hickman,
“(e.g. contrary the the court’s assertion, the invention claimed in Benson cannot possibly be practiced without any machine at all).”
Yes it can. It can be practiced by humans. If I were a broker in the commodities market, I might be able to perform the initiate-identify-initiate elements as claimed by (1) picking up the phone to initiate a series of transactions, (2) flipping through my Rolodex to identify market participants, and (3) picking up the phone to initiate a series of transactions.
If I understood the transcript of the oral arguments, this type of scenario troubled a couple of the justices. A series of steps easily performed by a human is trying to be patented.
“Hard to believe, unless you just started. I’ve been drafting and prosecuting software patents for 19 years, and I have seen every flavor of 101 rejection the PTO has to offer. They are easy to overcome, but that doesn’t stop the PTO from giving them.”
They aren’t business method patents, i.e., they don’t conduct business.
My applications are tied to specific processors used in vehicular systems. Typically, input from many systems determines the output to another system. For example, think of the processor(s) used in a car’s GPS system. Input of GPS signals result in the display of routes and the providing of verbal instructions to the driver after the software-driven processor manipulates the inputted data.
Posted by: 6 | Jun 28, 2010 at 10:24 PM: Actually that’s pretty interesting Andrew.
At the least part 2 which Scalia joined should be afforded some weight as it is plain as day that the justice is reciting what there was broad agreement on in the case. Unless he was lying I’d think that counts for something.
_______________________
It counts for interesting reading, discussion and speculation on a blog maybe. It certainly does not count for legal interpretation from a junior, IQ 6 examiner without a law degree.
@West Coast Guy “Most of the patent applications I write are software- and processor-driven… I’ve never had a 101 rejection.”
Hard to believe, unless you just started. I’ve been drafting and prosecuting software patents for 19 years, and I have seen every flavor of 101 rejection the PTO has to offer. They are easy to overcome, but that doesn’t stop the PTO from giving them.
@IANAE – great comments throughout. Thx.
One small problem with the opinion… it never says why they call some inventions abstract ideas, while others are not.
The fact that hedging is taught in old textbooks supports a holding of obviousness, not “abstract idea-ness”
Pre-emption alone explains nothing, because all claims pre-empt all uses of the invention they recite.
To me the abstract idea exclusion has always been an “I know it when I see it” test, similar to obscenity.
The court has never given a clear explanation of what constitutes an “abstract idea”, and the muddled explanations that it has attempted are often inconsistent with their holdings.
(e.g. contrary the the court’s assertion, the invention claimed in Benson cannot possibly be practiced without any machine at all).
In our corporate IP group, we have a saying: “All our patents our valid, but some are more valid than others.”
Post-Bilski this seems as true as ever.
I will continue to counsel my clients that patents are economic rights, and that each patent has its own unique probability for successful enforcement.
Actually that’s pretty interesting Andrew.
At the least part 2 which Scalia joined should be afforded some weight as it is plain as day that the justice is reciting what there was broad agreement on in the case. Unless he was lying I’d think that counts for something.
Sorry, Andrew, but I disagree. Kennedy’s opinion — minus the two sections Scalia did not join — encompasses a complete rationale for deciding the case.
There is no suport here for a lower court to try to graft together portions of the remaining concurrences in the judgment to reanimate stare decisis on questions we may find curious, but were not the opinion of the court.
Actual Inventor:
“The SCOTUS did not hold MOT as exclusive.”
Correct, but Part 2 of Breyer’s concurring opinion (joined by Scalia) clearly says that they are not saying there are many patents for which MOT doesn’t reach. Since Kennedy needed Scalia to make his opinion the majority, Scalia’s views on this are what control.
“The SCOTUS did not even strike down State Street!”
Scalia and Stevens et al clearly repudiated the State Street test (though not the result in that particular case). That makes 5 justices on that particular question/test.
“No – You are assuming that Breyer Part II has the rest of the majority – it does not. It only has Breyer and Scalia.”
It doesn’t matter. This happens in other cases as well, where there is a 4-1-4 decision, yet the 1 justice in the middle writes a concurring opinion that lower courts see as controlling. That’s even though NO OTHER JUSTICE signed onto the 1 justice’s concurring opinion.
In this case, while Scalia did join most of Kennedy’s opinion, his joining of part 2 of Breyer’s concurrence will most likely result in part 2 of Breyer’s concurrence being considered controlling. It doesn’t matter that Stevens et al didn’t join it. Scalia is basically saying “I joined most of the Kennedy opinion only because I read part 2 of Breyer’s opinion as accurately stating what Kennedy’s opinion means.”
Ned you’ll have to remind me of the case and I’d have to review the facts/claim.
6, I am in substantial agreement.
We are left with
“BM == Abstract idea, unless it passes MOT.” Post solution activity must be “transformative” to pass MOT. A real signal, transformed, is possibly enough.
6, what is your view the electro-cardiogram case where the output signal was just a number, but it was based on real measurements.
6,
Good point.
“See my post at 7:16 PM. If you tie the resultant generation of data to a user machine which meets the MoT test, how can one say that you’re trying to claim an abstract idea?”
Thar b poast solution activity goin on in this poast.
Now, if your “user machine” is a very specific apparatus then you might get away with it. But simply tying to a “user machine” isn’t going to help you I doubt. You’re welcome to try, but I would reject your algorithm/abstract idea tied to an unparticular machine because you’re not meaningfully limiting the claim past the algorithm itself, you want to encompass nearly, if not all, of the uses of the algorithm in the claim. That was the no-no that happened in Benson, and it is why Bilski just got rejected. Notice even Bilski made a token effort to tie to the real world, even though he didn’t quite make it so far as a “user machine”. You think if he’d simply tied his claim to a user machine he wouldn’t have had so much trouble? I doubt it, he would have been in the same boat he is now.
Note to Judge Newman – it’s time to hand in your resignation.
“Claims to BM == claims to Abs. Idea,” but claims that pass MOT are not.”
See my post at 7:16 PM. If you tie the resultant generation of data to a user machine which meets the MoT test, how can one say that you’re trying to claim an abstract idea?
Ned Heller,
“Please lay out for those of us to dumb to understand just what the “abstract ideas” test is?”
I like IANAE’s response:
“I’m going to go out on a limb here and say the test is “I know it when I see it”.
Here might be a start:
From the Kennedy 5:
“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk:”
My take: If the claim explains a basic concept and nothing more, it is an abstract idea.
More from the Kennedy 5:
“The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea[.]”
My take: If the concept is reduced to a mathematical formula and nothing more, it is an abstract idea.
In my opinion, if Bilski would have added elements to “alert” a buyer or inform the buyer of something or the transaction was tied to a network or another computer, then such an expanded claim would pass under 101 (but be subjected to 102/103/112 scrutiny).
Most of the patent applications I write are software- and processor-driven. There is always “receiving” of data and “generating” a data set based upon the data received; however, I always include a “providing” of data set to a user unit such as a display unit or an alarm unit for subsequent usage and action. I’ve never had a 101 rejection.
More importantly, how is an applicant to address or overcome a hypothetical poorly-reasoned 101 rejection for claiming an abstract idea?
Conduct an interview and convince the Examiner that it’s not abstract. It would probably be wise to have a little pre-interview to figure out what the Examiner thinks “abstract” means. Also politely point out the errors of reasoning. I think they’re often more willing to listen to arguments than read them.
I’ll bite.
The holding is
“Claims to BM == claims to Abs. Idea,” but claims that pass MOT are not.
That it?
“6 can’t do it!”
Would you like your answer in terms of recitations of claims, or patent numbers? Both?
If I provide you with your 3 will you stfu and go away forever?
IANAE, you got it.
What a mash up. Scalia looked like he was a swing vote here. He should have done more to clarify things.
Ned Heller,
“We do not even know whether the Bilski claims failed the MOT and if that was why the Supremes held them unpatentable.”
After rejecting the bright line MoT test, the Supremes just returned to their prior precedent discussing the unpatentability of abstract ideas.
Why the Supremes held them unpatentable was because they were determined to be abstract ideas.
Maybe that’s the lesson of Bilski: are the claims of business methods patents just abstract ideas” without much more?
Please lay out for those of us to dumb to understand just what the “abstract ideas” test is?
I’m going to go out on a limb here and say the test is “I know it when I see it”.
West Coast Guy,
Please lay out for those of us to dumb to understand just what the “abstract ideas” test is?
According to Stevens critique of the majority opinion, the test goes like this:
These claims are claims to an abstract idea. They fail the test.
That about it?
If it is tied to a particular machine, is passes the MoT test and is patentable under 101 (although not passing the MoT does not mean unpatentability under 101). It still has to pass muster under 102, 103, and 112.
Posted by: West Coast Guy | Jun 28, 2010 at 06:05 PM: Nothing has really changed. Bright line rules are (still) out, and “some” business method patents are in.
________
WRONG!
“MOST” Business Method patents are eligible with the exception of a Bilski or Furgeson type invention.
Like I challenged you before, name three business methods, besides a Bilksi or Furgeson type that are out.
You can’t do it!
6 can’t do it!
Inane can’t do it!
Inane even posting as Malcolm can’t do it!
The only thing you can do now is duck, dodge, cut and run.
ACTUAL INVENTORS WIN!