Bilski v. Kappos

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.

Business Methods: Section 101 does not categorically exclude business methods from patentability. Rather, the court noted that the prior-use defense found in Section 273(b)(1) of the Patent Act "explicitly contemplates the existence of at least some business method patents. . . . [B]y allowing this defense the statute itself acknowledges that there may be business method patents."
Software: Although the court expressly refused to rule on the patentability of software, it appears that software will largely remain patentable. At minimum, the decision would bar any categorical exclusion of software patents. The court neither endorsed nor rejected the Federal Circuit's past interpretations of Section 101 — Noting that "nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357."

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.   

Read the Opinion

397 thoughts on “Bilski v. Kappos

  1. 301

    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.

    _______

    That is not what I asked but you already know that. Your circular games are what’s silly here.

  2. 300

    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.

  3. 299

    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.

    ______

    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::

  4. 298

    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.

  5. 297

    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.

  6. 296

    “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.

  7. 295

    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!

    ____________

    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.

  8. 294

    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.
    _______________

    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?

  9. 293

    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.

  10. 292

    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.

  11. 291

    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.

  12. 290

    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?

  13. 289

    Correction,

    Banning methods of doing or conducting business would be to ban the very purpose of getting a patent in the first place.

  14. 288

    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”

  15. 287

    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.

  16. 286

    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?

  17. 285

    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”

  18. 284

    AI,

    What the heck do you mean by “business methods were outside the Bilski type”?

  19. 283

    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.”

  20. 282

    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.

  21. 281

    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.
    ______

    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.

  22. 280

    “Now, I don’t know whether that patent is Bilski’s type”

    __________

    Then why post such Trollish tripe? Wait….I think I just answered my own question.

  23. 279

    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.

  24. 278

    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.

  25. 277

    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?

  26. 276

    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”?

  27. 275

    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.

    ____________

    I never said otherwise. Look it up.

    ________

    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.

  28. 274

    C’mon IANAE – “a mere conclusory statement might well be insurmountable

    Are you really posting such drivel?

  29. 273

    sigh

    IANAE is still posting that examiners have as much power and rights as the Supremes.

    How low will my idol sink?

  30. 272

    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.

  31. 271

    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.

  32. 270

    “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.

  33. 269

    I have posted objective definitions of business methods, as have others.
    Posted by: Malcolm Mooney | Jun 29, 2010 at 10:05 AM
    ______

    In which universe?

  34. 268

    The SCOTUS just arbitrarily said they were.

    Yes. That’s the legal test for that now.

    Happy patenting.

  35. 267

    Posted by: Les | Jun 29, 2010 at 10:06 AM: So, what does abstract mean? And on what planet are Bilski’s claims abstract?

    ____________

    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!

  36. 266

    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?

  37. 265

    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

    _______

    Yet you cant mention ONE outside of a Bilski type, that won’t pass 101.

    Nuff said.

  38. 264

    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.

    __________

    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!

  39. 263

    “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.

  40. 262

    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).

  41. 261

    @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?

  42. 260

    @ 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.

  43. 259

    @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.

  44. 258

    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?

  45. 257

    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

  46. 256

    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.

  47. 255

    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.

  48. 254

    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.

  49. 253

    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.

  50. 252

    “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.”

  51. 251

    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.

  52. 250

    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?

  53. 249

    “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.

  54. 248

    “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.

  55. 247

    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?

  56. 246

    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.

  57. 244

    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.

  58. 243

    “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.

  59. 242

    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.

  60. 241

    @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.

  61. 240

    @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).

  62. 239

    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.

  63. 238

    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.

  64. 237

    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.

  65. 236

    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.

  66. 235

    “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.”

  67. 233

    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.

  68. 231

    “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.

  69. 229

    “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?

  70. 228

    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.

  71. 227

    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.

  72. 226

    I’ll bite.

    The holding is

    “Claims to BM == claims to Abs. Idea,” but claims that pass MOT are not.

    That it?

  73. 225

    “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?

  74. 224

    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.

  75. 223

    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?

  76. 222

    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”.

  77. 221

    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?

  78. 220

    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!

  79. 219

    IANAE,

    “But I still don’t think they needed to answer the second question at all.”

    They could have answered only question 1, held that the claims were an abstract idea, and be done with it. I agree, but it was Bilski that raised the issue of Congressional intent for adding business method patents in § 273. The Court addressed the issue and agreed with him that “some” business method patents should not be foreclosed but might be patentable. Unfortunately for Bilski, his didn’t get pass the “abstract idea” test.

  80. 218

    Post swallowed. I will learn to spell g a r b a g e, which is my view of the majority opinion. I agree with Stevens that the majority merely stated the result, the claims were abstract, and provided no analysis. We do not even know whether the Bilski claims failed the MOT and if that was why the Supremes held them unpatentable.

  81. 217

    Okay WCG, I’ll give you that.

    But I still don’t think they needed to answer the second question at all.

  82. 216

    IANAE,

    “Still, they could have requested a full briefing on whether Bilski claimed an “abstract idea” question before deciding it. They could have done that months ago, and probably wouldn’t even have delayed the release of their opinion.”

    I think the issue of whether or not Bilski’s claims were abstract ideas were fully briefed before the Supreme Court, and here’s my proffer of proof.

    In Bilski’s petition for cert, Bilski states that:

    “[t]he examiner stated that “the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathe-matical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.”

    His petition continues:

    “The Board concluded that the 11 claims merely recite an “abstract idea” since they are not “instantiated in some physical way so as to become a practical application of the idea.” Id. at 184a. Recognizing that actual physical acts of individuals or organizations would still be required to implement the steps of the method, the Board nevertheless held that the claims were directed to the “‘abstract idea’ itself” because they cover every possible way of per-forming those steps. Id.”

    His petition continues:

    “Claim 1 does not cover the abstract idea of hedging. It recites a specific series of steps involving the purchase and sale of commodities by an intermediary commodity provider to manage consumption risk costs. Even if claim 1 does include the abstract idea of hedging, it is still patentable because the abstract idea is practically applied. Likewise, the mathematical formula in claim 4, which is used to determine the fixed price for consumer transactions, is practically applied as part of a method of managing weather-related energy price risk costs.”

  83. 215

    If so, the higher court has the discretion to act sua sponte and reach the same outcome for the right reason.

    Not that it’s ever meaningful to question the jurisdiction of the Supreme Court.

    Still, they could have requested a full briefing on whether Bilski claimed an “abstract idea” question before deciding it. They could have done that months ago, and probably wouldn’t even have delayed the release of their opinion.

  84. 214

    “Then, it passes 101 muster.”

    Actually it is probably just one of the few that passes MoT but doesn’t pass 101 lol.

  85. 213

    whiskey,

    “Every single algorithm is per se abstract. What the hell do I do with that?”

    Claim the algorithm, but include in the claim an element that meets the MoT test.

    Then, it passes 101 muster.

  86. 212

    Please, I beg of you IANAE, take some time to think before posting further. You are not thinking clearly, confusing all matters of legal and procedural law and tarnishing your fine reputation.

    Give it a day.

  87. 211

    IANAE,

    “The other is that the court should have vacated the Circuit decision based on those two questions and remanded for further consideration consistent with whatever sense could be made of their decision.”

    Although they answered both questions, sometimes lower courts are right for the wrong reason. If so, the higher court has the discretion to act sua sponte and reach the same outcome for the right reason. Bilski was such case.

  88. 209

    They didn’t, and they didn’t have to since they failed to adopt the MoT as the exclusive test.

    It’s still important, mostly because they never articulated any other test. It’s the difference between computer-implemented methods getting a free pass under MOT and having to show for each particular computer-implemented method that it falls within the presumably-narrow miscellaneous category of non-MOT non-abstract statutory subject matter.

  89. 208

    Peter H.,

    “So, is it “safe” to state that a mere abstract idea, an idea without enabling disclosure under 112 is not patentable and a method tied to a particular machine is patentable? If that is the case, has anything really changed? Seems like the Court took the easy way out and decided 101 was not met in Bilski, end of issue.”

    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.

    Nothing has really changed. Bright line rules are (still) out, and “some” business method patents are in.

  90. 207

    So, in affirming the CAFC, a unanimous Court acted sua sponte and held that the claims were abstract ideas and not patentable under § 101.

    There are two ways of looking at it, I suppose.

    One is that cert was improvidently granted because the questions asked were not relevant to the outcome of the case.

    The other is that the court should have vacated the Circuit decision based on those two questions and remanded for further consideration consistent with whatever sense could be made of their decision.

    Either way, I think we both agree that Bilski was not the right case to get these important questions definitively answered.

  91. 206

    “Correct me if I’m wrong here, but the Supremes didn’t appear to comment on the exclusion of general-purpose computers (i.e., pretty much any computer) from the definition of “particular machine” in the scholarly decision on appeal. Bad news for software patents, I should think.”

    They didn’t, and they didn’t have to since they failed to adopt the MoT as the exclusive test.

  92. 205

    So, is it “safe” to state that a mere abstract idea, an idea without enabling disclosure under 112 is not patentable and a method tied to a particular machine is patentable? If that is the case, has anything really changed? Seems like the Court took the easy way out and decided 101 was not met in Bilski, end of issue.

  93. 204

    IANAE,

    “The outcome of the case clearly did not depend on the answer to either question, since the Supremes disagreed with the Circuit en banc on question 1, and with each other on question 2, and we had concurrence in the result all around.”

    The answer to Question 1 was yes, the CAFC did err by tying the process to the MoT test.

    The answer to Question 2 was also yes.

    However, even though the Court answered in the affirmative to the two questions posed, they nevertheless decided the case by answering a non-question: whether the claims at issue were an abstract idea.

    So, in affirming the CAFC, a unanimous Court acted sua sponte and held that the claims were abstract ideas and not patentable under § 101.

  94. 203

    Correct me if I’m wrong here, but the Supremes didn’t appear to comment on the exclusion of general-purpose computers (i.e., pretty much any computer) from the definition of “particular machine” in the scholarly decision on appeal. Bad news for software patents, I should think.

  95. 202

    The M-O-T test is not overruled, it is simply not the exclusive test (leaving open the door to further development in accordance with section 100 & 101’s statutory language). For the time being, however, it is the sole test outside of an analysis based on stare decises and the plain language of the statute.

  96. 201

    AI: Awww… it’s okay. I am just here to gloat.

    Not, for example, to understand what you’re gloating about.

    AI: business methods safe for the foreseeable future

    … as long as they can pass the Machine-or-Transformation test. Same as yesterday.

    By all means, keep declaring victory. It’ll tax your intellect far less than trying to understand who won.

    The only winner here is the party that actually won the case – the PTO. Bilski lost, and everybody else broke even at best.

    WCG: Is that the case here in you opinion?

    Yes, it is. The outcome of the case clearly did not depend on the answer to either question, since the Supremes disagreed with the Circuit en banc on question 1, and with each other on question 2, and we had concurrence in the result all around.

  97. 200

    Not need when 99.9% of all so called business methods pass MOT with flying colors.

    So all those 101 rejections under CAFC Bilski back when MOT was the test… figments of everyone’s collective imagination except yours?

    They were the 1% that don’t pass MOT I presume. Nothing imaginary about that.

    Posted by: IANAE | Jun 28, 2010 at 05:05 PM

  98. 199

    IANAE,

    “Only because judges insist on deciding questions that are not before them on those facts.”

    Is that the case here in you opinion?

    In my opinion, the Court answered the two questions posed by Bilski in his petition for cert:

    1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

    2. Whether the “machine-or-transformation” test for patent eligibility adopted by the Federal Circuit, effectively foreclosing meaningful patent protection to a business method involving a series of transactions among a commodity provider, consumers, and market participants, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

  99. 198

    Posted by: IANAE | Jun 28, 2010 at 04:06 PM: It’s pretty safe to say you haven’t successfully en-Diehr-ed yourself to very many people on this blog.”

    Awww… it’s okay. I am just here to gloat.

    Now with Steven’s gone and business methods safe for the foreseeable future I wont be here much longer. Although I may Intellectually B Slap you, 6, and WCG once more for the road.

  100. 197

    Bad facts make for bad case law.

    Only because judges insist on deciding questions that are not before them on those facts.

  101. 196

    actually, many of the equations commonly used for the purpose of hedging are at least as fundamental as E = m * c^2 if not more so.

    They’re not as fundamental. Physics equations are models of how the universe works. Hedging equations are models of how to achieve a desired result. If you had desired a different result (e.g. you want some nonzero exposure to the underlying security, or you want higher/lower-order hedging), the equations would be different.

    However, if those equations are the only possible equations that derive from the most common set of assumptions, any sufficiently basic application of them should be invalidated under 103 in relatively short order.

    Unless of course you filed an application for those claims, in which case AI’s Law governs and the claims are clearly patentable.

  102. 194

    I have to believe that a better case is in the pipes for the Supreme Court to hear and draw the line for. Bilski was just a terrible record to work with.

  103. 193

    If the Bilski claims are representative of business method patents, then the Kennedy 5 do not like business method patents. They could not categorically exclude business method patents from § 101, however, because they were included in § 273.

    If Congress were to remove the “business methods” langauge from § 273, then the Bilski holding of the Kennedy 5 would no longer be on point.

  104. 192

    “Burden shifting cannot happen as MOT cannot be applied as absolute.”

    Well it appears from the memo that the PTO will be considering it to have shifted lol. Gl with that at the Fed Circ.

  105. 191

    Night Writer Patent Attorney: actually, many of the equations commonly used for the purpose of hedging are at least as fundamental as E = m * c^2 if not more so. So long as the underlying (fairly obvious) assumptions are valid, the values computed describe the only positions to take that correctly hedge your risk. This is inevitable and unavoidable: any other choice will not do so under the same assumptions. It’s a property of the system being described itself.

  106. 190

    AnotherJuniorExaminer,

    “This is really a 4-4 plurality with Scalia concurring to specific portions of each of the two plurality opinions.”

    Scalis did NOT join in the Stevens opinion. His name doesn’t appear on the Stevens’ opinion, and he didn’t join in Part I of Breyer’s which states “I join JUSTICE STEVENS’ opinion in full.”

    “Scalia joined the Stevens concurrence for the important section (Part II) which states that “the machine-or-transformation test remains an important test for patentability.””

    Sorry, he didn’t.

  107. 189

    “6, I’m having a hard time seeing why someone with your perspective would be so chipper about this decision. All in all, this ends up being a more expansive view of the scope of 101 patentablility than we saw in the CAFC’s majority opinion. You’re happy about that?”

    Well Andrew, the case to me never was about simply restricting how broad 101 was, as I tried to explain on about a million occasions. Additionally, this wasn’t a very good case to test the big question which largely goes unanswered “thanks” to Scalia. The question as to whether or not there should be a ban on specific portions of business methods is left for another day but I think based on what the CAFC has said we know how they’ll hold.

    Furthermore, the MoT test was not such a good thing in practice for me because I had to include a 101 where plainly none was called for in the majority of my applications. Further, as I explained, the court largely supports the destruction of a small category (at least if II-C-2 is validly the majority opinion) of the most egregious business methods if the CAFC can come up with a good test to weed out the ones attempting to claim abstract ideas, where that term includes things like “hedging”. This should be good enough to get rid us of the majority of patents I find most distasteful. Further, I have been telling people for years now to just draft a method claim instead of a Beauregard claim to cover their computer processes and have also been saying that Diehr reached the right decision. The USSC agrees with me that filing such a method claim is permitted under 101 and that Diehr reached the right decision.

    Sure, I would have preferred Stevens side to have prevailed in total for simplicity’s sake, and for properness’s sake. For the life of me cannot understand what would compel any of the majority of judges to hold as they did, even after they just got through explaining it. The whole, “lets read the statute from the perspective of the layman in this one particular instance as opposed to all the other decisions where we ignore the layman’s perspective” is a cop-out of epic porportions especially in view of the fact that it should be undeniable that “process” still means “art”, as the CAFC recently reminded us was held long ago. Not to mention that the “definition” given for “process” includes “process” itself. The majority is a bit off of their rockers in this respect, but they came up with a decent decision on the whole at least.

    But in either case, it is an ok trade-off. All business methods don’t die while the worst will. That’s better than what we had pre-Bilski.

    Finally, the parts about computer related inventions aren’t directed to programmed general purpose computer claims or Beauregard claims, it’s directed to method claims, so I’m not worried about those subjects at all. A better test case will arise for that nonsense in the future, hopefully soon.

    And also what IANAE comments in response to you.

  108. 188

    Correction of above: Scalia joining Part II of Breyer, but not the important parts of Kennedy.

  109. 187

    Here’s the breakdown that I think matters most: five justices are determined to avoid categorical restrictions on 101 patentability, while only three remaining justices want such restrictions. Presented with an opportunity to make sweeping changes, five justices refused, and left in place the hard-to-reconcile trio of Benson, Flook and Diehr. It’s anyone’s guess where Kagan will side in this debate.

    My prediction: we won’t see another Supreme Court 101 case for several years at the earliest. I wouldn’t be surprised if more than a decade passes before the next one. In the meantime, look for a few CAFC panel decisions, and eventually, another en banc decision.

  110. 186

    Summary of Bilski:

    This case hinged on the Court’s distain for bright-line rules and statutory interpretation.

    (1) The MoT test is bright line — hence, unacceptable.

    (2) According to the Kennedy 5, the inclusion of business methods in § 273 and the statutory interpretation thereof made the wholesale exclusion of business method patents not possible.

  111. 185

    Posted by: Andrew Dhuey | Jun 28, 2010 at 04:44 PM: 6, I’m having a hard time seeing why someone with your perspective would be so chipper about this decision. All in all, this ends up being a more expansive view of the scope of 101 patentablility than we saw in the CAFC’s majority opinion. You’re happy about that?

    __________

    He is just punch drunk and maybe in the early statges of PTSD.

    The SCOTUS did not narrow Diehr.

    The SCOTUS did not hold MOT as exclusive.

    The SCOTUS did not even strike down State Street!

    This is a HUGE victory for Actual Inventors everywhere.

    God Bless The US Patent System !

    God Bless The America !

  112. 184

    It appears that many practitioners don’t know how to read plurality opinions (I’m thinking of West Coast Guy). The opinion of the court was NOT joined by Stevens, Ginsberg, Breyer, and Sotomayor. They signed on to a “concurrence” (really a dissent). This is really a 4-4 plurality with Scalia concurring to specific portions of each of the two plurality opinions.

    Scalia did not join the opinion of the Court (i.e. Kennedy opinion) for two critical parts, and Scalia joined the Stevens concurrence for the important section (Part II) which states that “the machine-or-transformation test remains an important test for patentability.”

    In the end you’re left with the MorT test being an “important test” with the court simply leaving open the possibility that something may fail the MorT test and conceivably be statutory, or visa versa something that passes the MorT test and still be non-statutory.

    Nothing in either the main opinion of the court, or the concurrence gives Applicants a real argument for overcoming an MorT test rejection and I’m willing to bet the PTO will continue to use the MorT test until a viable alternative is provided by the courts (with Applicants of course appealing all MorT rejections complaining that it’s “not the sole test”).

    The Kennedy opinion is especially disturbing because it essentially says that the Bilski method is “an abstract idea” and then punts when it comes to explaining what is to be classified as an abstract idea. Most software methods are couched in general terms leading some to believe they’re all trying to patent an abstract idea or algorithm. Specifically Kennedy punts to previous cases like Gottchalk v. Benson where performing a method of converting binary to decimal on a computer was deemed to much of an abstract idea/algorithm/”preempts the field”.

    Someone needs to stop punting and start catching because now all hell is going to break loose between examiners and practitioners.

  113. 183

    No need when 99.9% of all so called business methods pass MOT with flying colors.

    So all those 101 rejections under CAFC Bilski back when MOT was the test… figments of everyone’s collective imagination except yours?

    What are they, half of the Board’s appeal backlog now? My, but imagination is a powerful thing.

  114. 182

    I agree with the analysis above about Scalia. He was apparently in the majority with Stevens on the issue of whether business methods were patentable as useful arts. He chickened out at some point, leaving them patentable if somehow they could pass the MOT or some other test yet to be devised by the Feds.

  115. 181

    West Coast Guy at 4:12 p.m.: “The following is printed on page 1 of the Kennedy opinion:

    “JUSTICE KENNEDY delivered the opinion of the Court, except as to Parts II–B–2 and II–C–2.*”

    To me, this means that all justices have signed onto this opinion. The absense of Stevens, Ginsberg, Breyer, and Sotomayer names suggests to me that they signed onto the Kennedy opinion.”

    No, it means that only a plurality have signed onto Parts II–B–2 and II–C–2 of the Kennedy opinion, that’s why not all his opinion is the opinion of the Court. Stevens, Ginsberg, Breyer, and Sotomayor did not join in any part of Kennedy’s opinion, they only agreed as to the mandate in this particular case. In other words, Scalia joined Kennedy, Roberts, Alito and Thomas to form the 5-vote majority for Kennedy’s opinion, minus Parts II–B–2 and II–C–2. Scalia did NOT agree to Parts II–B–2 and II–C–2, and hence, those are not part of the Court’s opinion.

  116. 180

    haha, 2600examiner essentially affirmed my suspicions, I have not yet seen that memo.

  117. 179

    Posted by: IANAE | Jun 28, 2010 at 04:04 PM: The PTO can reject your claim under 101 for being abstract as long as it fails MOT, and ask that you amend or argue for its eligibility under MOT or otherwise. Good luck successfully arguing under “otherwise”.

    _________

    No need when 99.9% of all so called business methods pass MOT with flying colors. That’s why you as the Resident Troll and your court jester have been praying all these years for a wholesale elimination of business methods by the SCOTUS.

    You didn’t get.

    You lose.

    Actual Inventors Win.

    We always win.

  118. 178

    Actual Inventor,

    For page 11 of the Kennedy majority:

    “Finally, while §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.”

    “Some” business method patents; that is, not “most.” Also, “broad” patentability of business method patents are not suggested in §273.

    Face it, business method patents which claim elements of “initiating – identifying – initiating” (or the like) are doomed.

  119. 177

    IANAE is a bit dazed – “ The PTO can reject your claim under 101 for being abstract as long as it fails MOT” – no longer works. MOT only works to show eligibility, not ineligibility.

    This is asking to prove a negative while the Office has to prove the positive first.

    So hoteling examiner’s “make the 101 to shift the burden to you to prove it wrong” doesn’t fly – Burden shifting cannot happen as MOT cannot be applied as absolute.

    Posted by: ping | Jun 28, 2010 at 04:46 PM

    ——–

    I don’t want to speak for IANAE, but what I was getting at is, if the claims fail the MOT test, the Examiner likely can/will just say the claim is in the abstract, therefore fails 101. I’m definitely not saying that is how it should be done, but I think that will likely be what you guys on the outside end up dealing with. An as IANAE said, if you know your claim fails MOT, good luck convincing an Examiner that it is still 101 eligible because it isn’t abstract. I’m not sure what the threshold is for eligibility that you’ll have to show in that situation.

  120. 175

    From memo sent out today:
    “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.”

    –Robert W. Bahr (Acting Associate Commissioner For Patent Examination Policy)

  121. 174

    ping,

    “No – You are assuming that Breyer Part II has the rest of the majority – it does not. It only has Breyer and Scalia.”

    You are correct. Thanks for pointing that out.

  122. 173

    As a result, I think Part II of Breyer’s opinion has controlling weight

    No – You are assuming that Breyer Part II has the rest of the majority – it does not. It only has Breyer and Scalia.

    Cy is correct – “If M-O-T is not the exclusive test of 101 eligibility, then it cannot be used to prove that a claim is ineligible….On the other hand, the Court’s opinion suggests that the M-O-T test is useful in proving that subject matter IS eligible. So won’t applicants be using it, rather than the PTO?

    IANAE is a bit dazed – “ The PTO can reject your claim under 101 for being abstract as long as it fails MOT” – no longer works. MOT only works to show eligibility, not ineligibility.

    This is asking to prove a negative while the Office has to prove the positive first.

    So hoteling examiner’s “make the 101 to shift the burden to you to prove it wrong” doesn’t fly – Burden shifting cannot happen as MOT cannot be applied as absolute.

  123. 172

    All in all, this ends up being a more expansive view of the scope of 101 patentablility than we saw in the CAFC’s majority opinion.

    It is, but not in a meaningful way from the examiner’s perspective. MOT may not be the only test anymore, but it’s still the only test we know of.

  124. 171

    I’m going to go out on a small limb for a second and say that this is what Scalia is having trouble with as they appear to be the substance of these respective sections:

    II-B-2

    All of the language trying to create, or assuming a fundamental difference between Iron Age and Information Age claims. Or perhaps the part that I loled about above having to do with preventing patenting of procedures that others would discover by independent, creative application of “general principles”.

    II-C-2

    “In searching for a limiting principle, this Court’s precedents on the unpatentability of abstract ideas provideuseful tools. See infra, at 12–15. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. See ibid. But beyond this or some other limitation consistentwith the statutory text, the Patent Act leaves open thepossibility that there are at least some processes that can be fairly described as business methods that are withinpatentable subject matter under §101.”

  125. 170

    6, I’m having a hard time seeing why someone with your perspective would be so chipper about this decision. All in all, this ends up being a more expansive view of the scope of 101 patentablility than we saw in the CAFC’s majority opinion. You’re happy about that?

  126. 168

    With such a vague and indefinite result for all concerned (with the exception of Bilksi), why did the Supreme Court even bother taking this case? What was the point of it all?

  127. 167

    What substance in Parts II-B-2 and II-C-2 of the Kennedy opinion does Scalia find objectionable?

  128. 166

    And yes IANAE I agree with you there, should have been a case that wasn’t a ringer on the abstract idea question. The fate of the case should have been balanced on the larger issues, but I suppose this wasn’t foreseen like 3 years ago when this journey to the USSC began.

  129. 165

    WCG that is what it appears that we have.

    But why o why wouldn’t Scalia tell us something about why he wanted to not join II-B-2 and II-C-2 and why him and the others didn’t put down a 5 man minority opinion on that part?

    I don’t know, it seems like that would be kind of odd procedurally… We would effectively have 2 majorities, one holding one way on a small part of the issues, the other holding another on a small part of the issues, and everyone agreeing as to result and the abstract idea basis therefore.

  130. 164

    Let me re-phrase:

    I think there is a majority opinion (Kennedy, Roberts, Scalia, Thomas, and Alito) in Bilski consisting of the following sections of the Kennedy opinion:

    Part I
    Part II–A
    Part II-B–1
    Part II-C-1
    Part III

  131. 163

    But that view is too simple, and the majority and minority disagree over the broader questions with Scalia throwing a monkey wrench into the whole opinion by not joining on to 2 keys parts but not telling us why.

    See, this is exactly why I said the law should not be determined by a case whose result does not hang in the balance. The fine distinction between two tests that both kill the patent in suit is not a point likely to be well-argued by the parties.

    At least let the Supremes pronounce on a 101-eligible non-MOT claim (that seems to be the boundary), so we can compare the “abstractness” of our claims to that case.

  132. 162

    What I think we have is a 5-4 majority for the following Sections of the Kennedy opinion:

    Part I
    Part II–A
    Part II-B–1
    Part II-C-1
    Part III

  133. 161

    “”If you think that Stevens, Ginsberg, Breyer, and Sotomayer did not sign onto the Kennedy opinion, think again.””

    Actually let me amend my comment in response to this comment. Context was lacking when last I read it.

    What I should have said was, no, they did not concur with the reasoning given in the opinion at all, especially, one would believe II-B-2 and II-C-2 since those sections go directly against what Stevens et al. would hold. They only agreed with the result and that was because clearly everyone agreed the thing was directed to an abstract idea. That is to say, the only things the majority and minority are in agreement on is that the claim was directed to an abstract idea. Basically, everyone agrees with Rader’s simplistic view, as do I and probably nearly everyone in the universe. But that view is too simple, and the majority and minority disagree over the broader questions with Scalia throwing a monkey wrench into the whole opinion by not joining on to 2 keys parts but not telling us why.

  134. 160

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  135. 159

    Someone didn’t read the opinion just yet did they?

    Why read someone else’s opinion, when you already have your own?

  136. 158

    Why stop there? They’re applying for a patent, so surely they also have 101 and 112 beat.

    Posted by: IANAE | Jun 28, 2010 at 04:11 PM

    _________________

    They do now that the SCOTUS has ruled. Time to check into your airplane restroom, change back into your Mooney suit and start spewing anti homo remarks,

  137. 157

    “You Malcolm and 6 are intellectually beaten, bloodied, in denial and border line delusional.”

    LOLOLOLOL.

    Someone didn’t read the opinion just yet did they?

  138. 156

    bschmabo,

    “Kennedy’s opinion is joined by 5 justices, with the exceptions of parts II-B-2 and II-C-2. Thus, everything from the other sections of Kennedy’s opinion should be controlling.”

    How do you arrive at this? How do you arrive at the opinion that only Roberts, Thomas, and Alito the Kennedy opinion in full, of which Scalia joined except for Parts II–B–2 and II–C–2?

    Keep in mind the following NOTE at the top of the Syllabus:

    “The syllabus constitutes no part of the opinion of the Court but has beenprepared by the Reporter of Decisions for the convenience of the reader.”

  139. 155

    “If you think that Stevens, Ginsberg, Breyer, and Sotomayer did not sign onto the Kennedy opinion, think again.”

    No, they did concur in the result, and in the abstract idea concept, but they’d also give a big ol’ ban to business methods right straight up.

  140. 154

    Oh and:

    “With ever more people trying to innovate and thus seeking patent protections fortheir inventions, the patent law faces a great challenge instriking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of generalprinciples.”

    Lol wut? We’re now trying to not grant monopolies over procedures that others would discover by independent, creative application of general principles? Or do they mean abstract ideas?

  141. 153

    “Malcolm,
    You should take some comfort that “some” business method patents are eligible.
    Reading it another way, “most” are not.
    Posted by: West Coast Guy | Jun 28, 2010 at 12:58 PM”
    ______________

    Oh really? Name three?

    ::Silence::

    You Malcolm and 6 are intellectually beaten, bloodied, in denial and border line delusional.
    ____

  142. 152

    The following is printed on page 1 of the Kennedy opinion:

    “JUSTICE KENNEDY delivered the opinion of the Court, except as to Parts II–B–2 and II–C–2.*”

    To me, this means that all justices have signed onto this opinion. The absense of Stevens, Ginsberg, Breyer, and Sotomayer names suggests to me that they signed onto the Kennedy opinion.

    Since it is the opinion that counts, I have read the Kennedy opinion as including Stevens, Ginsberg, Breyer, and Sotomayer. Also, please note the NOTE at the top of ths Syllabus:

    “The syllabus constitutes no part of the opinion of the Court but has beenprepared by the Reporter of Decisions for the convenience of the reader.”

    If you think that Stevens, Ginsberg, Breyer, and Sotomayer did not sign onto the Kennedy opinion, think again.

  143. 151

    On the whole a very good decision. It allows me to use MoT when I please, as a “tool” to come to whatever conclusion it leads me to, but also the latitude to not have to make a 101 when the claim is clearly an old-fashioned manufacturing method even if it doesn’t have a very particular machine recited or have a transformation recited.

    Additionally, they expound a bit about the concept brought up in Benson dealing with abstract ideas and claims that attempt to cover them without reciting only specifically them explicitly. And that’s good, because many folks don’t really keep an eye out for those kinds of 101’s and they are valid every single time. Form should not save a claim that covers an abstract idea in total even though it be limited to some machine or transformation.

    The majority does use some language that, as Stevens suggests, if taken to extremes produces absurdities. It also uses language that does in fact seem to bless at least some “computer program” claims at least in so far as they are being claimed like they were in the manufacturing method in Diehr. Which is fine within reason.

    And perhaps one of the best things is that it grants us a view into the various opinions of the justices on the court and how they basically fall on the questions presented. We will have 3 judges that basically agree with Stevens on the issues (See especially the terms “art” and “Useful Arts”) and one more that agrees with Stevens on the business method exclusion. So there are 3 that are solidly on that side it would seem after Stevens leaves. The remaining justices seem to merely feel like there could be some remnant business methods that are patentable and decline to just categorically throw them all in the bin.

    Furthermore it does seem like the differences of opinion between the members of the court might in large part be due to the imprecision of language and in how each member views the term “business method”. It is perhaps the case that Stevens et al. take a more restrictive view of what would be a business method than that which their fellows adopt. In such a case it would seem that they are likely all in agreement save for imprecision in the language used. Sure, if one interprets “business method” hugely broadly then there are exceptions and the plain language of the statute compels us to not exclude it, but if one takes a restrictive view on that term then for all intents and purposes there is a ban.

    See:

    “Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent.”

    For this reason, if someone is planning to claim a business method that falls squarely into a strict definition of the term where the intent is really to preclude an abstract idea then they are likely facing the strict bar on patentability that the 3 justices would put into place though it has not yet so been held. I would look to the CAFC attempting to create one of these definitions of a narrow category in the future that will, for all intents and purposes include nearly all business methods.

    See further where the majority says:

    “But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open thepossibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.”

    Which is to say that under a hugely broad definition of business methods then surely there are some that are patentable.

    So we see here a great example of the judiciary holding no more than they are forced by the case at hand and reiterating things they’ve already stated. The case at hand required no more than what Rader suggested, the abstract idea rejection while at the same time showing how the justices feel on the issues.

    Overall I agree with the propositions made, and while I’d probably personally just say “heck with it” and throw in all “business methods” I can see where the majority is coming from. Indeed there are methods, such as a method of stacking milk jugs which I’d heard about a few years ago, that would certainly be considered a business method, but it doesn’t really fit within a narrow definition of the term that would deal strictly with the buying and selling of goods. I would be fine with such methods being patentable, so long as the ones that are within the more strictly bound definition are done away with eventually. And that’s even considering the ridiculousness of such patents and the shame brought upon the patent system by such granting. In the current state of the law small steps are needed to reestablish the reputation of the profession until someone takes some initiative and statutorily solves the problem. The majority allows for this to take place.

    Oh and finally the USSC makes it clear that it doesn’t endorse the ridiculousness in SS. I can’t believe that practicioners latched on to that nonsense for so long. They will be justly rewarded for their trouble with a great heap of worthless patents.

    All this btching in this thread about examiners or practicioners (or presumptively your local art students either) not knowing how to spot an abstract idea or be able to determine when a claim is attempting to cover an abstract idea is misplaced. First, it isn’t rocket science to observe an abstract idea being claimed. If anyone is having trouble understanding what the term “abstract” or “abstract idea” is then they should head down to their local university for a class in art where they will teach you, quite specifically, what the terms mean and how to spot such in your day to day. If you can’t understand after that class then just quit patent law because you’re worthless. Second, while it is marginally more difficult to spot one that is being hidden in a tradition claim’s clothing (ala Benson) it is manageable and, though some will be overlooked accidentally that isn’t the end of the world. After all, the DC’s can cipher them out.

    The one thing to btch about is that the majority didn’t explain its own abstract idea analysis very well in this particular decision.

    The one thing I don’t understand about the decision though is why the 3 justices that joined Stevens and Stevens himself wouldn’t all have joined in the part that Scalia joined Breyer in. If they had done so wouldn’t the majority have had to include that in the decision? And wouldn’t Stevens have wanted that part in there even if he couldn’t get all his way? Plus, why doesn’t Stevens et al. join whatever Scalia wants to put in for IIB2 and II-C-2 so as to foreclose the majority from writing what they want? I wish we had a piece by Scalia putting down what he thought on those portions and a piece from Stevens stating why he doesn’t simply join Scalia and change the “worst” parts of this decision.

    In other words, we have Kennedy, Roberts, Thomas, Alito, and Scalia in the majority and Stevens, Ginsburg, Breyer, and Sotomayor in the minority. Why wouldn’t the minority simply band together with Scalia to get rid of II-B-2 and II-C-2?

  144. 150

    The PTO can reject your claim under 101 for being abstract as long as it fails MOT, and ask that you amend or argue for its eligibility under MOT or otherwise. Good luck successfully arguing under “otherwise”.

    Posted by: IANAE | Jun 28, 2010 at 04:04 PM

    ——–

    exactly as I suggested earlier – if an examiner has any doubt at all, they’ll make the 101 to shift the burden to you to prove it wrong – that’s going to be the grounds for more appeals in the future that work up to SCOTUS for further development of the law (in theory)

  145. 149

    Actual Inevntors already have 102 and 103 beat from the beginning or they would not be applying for a patent.

    Why stop there? They’re applying for a patent, so surely they also have 101 and 112 beat. Why bother examining patents at all? The mere fact that an application has been filed is proof enough that a patent should be granted.

    Makes you wonder why we have all this prosecution and litigation, doesn’t it?

  146. 148

    Isn’t this just a 5-4-2 opinion?

    Kennedy’s opinion is joined by 5 justices, with the exceptions of parts II-B-2 and II-C-2. Thus, everything from the other sections of Kennedy’s opinion should be controlling.

  147. 147

    “Did the Stevens opinion really go along with the Kennedy opinion? Did the Stevens+3 sign onto the Kennedy opinion?

    Posted by: West Coast Guy | Jun 28, 2010 at 03:54 PM”

    In a word, no. Stevens and the other 3 only concurred in the judgment–i.e., they agreed with Kennedy + 4 that Bilski’s application was correctly rejected on 101 grounds. Beyond that, the two groupings do not agree as to what s101 means.

  148. 146

    Business methods check in, but they don’t check out.
    Posted by: IANAE | Jun 28, 2010 at 11:57 AM
    ___________

    In your anti patent dreams. Actual Inevntors already have 102 and 103 beat from the beginning or they would not be applying for a patent. It’s 101 that was the real threat to business methods.

    And since the SCOTUS did not eliminate business methods as patentable subject matter the path is clear for smart inventors everywhere to get their patents. Let the unjamming of the back log begin!

  149. 145

    First one to make a pun about prosecuting patents under “Diehr circumstances” wins.

  150. 144

    AI: There is still the Deihr test which I have used for the years to annihilate the likes of MM, 6, West Coast Guy and other anti patent posters on this blog.

    It’s pretty safe to say you haven’t successfully en-Diehr-ed yourself to very many people on this blog.

  151. 143

    If M-O-T is not the exclusive test of 101 eligibility, then it cannot be used to prove that a claim is ineligible. So I don’t see why the PTO would be interested in using it – it doesn’t help them exclude anything.

    Sure it does. The current legal test is “passing MOT makes it patentable, and failing MOT makes it not patentable if it kinda sorta seems abstract”.

    The PTO can reject your claim under 101 for being abstract as long as it fails MOT, and ask that you amend or argue for its eligibility under MOT or otherwise. Good luck successfully arguing under “otherwise”.

  152. 142

    I thought the majority opinion was pretty good.
    It avoided a bright line rule. It also explicitly rejects a broad subject matter exception to patentability for business methods while admitting that many will be unpatentable as abstract ideas under 101. And many more will be unpatentable under 102, 103, and 112.

    Posted by: Lionel Hutz | Jun 28, 2010 at 11:55 AM

    ________________

    Oh really? Besides Bilski type mathematical equations not tied to a computer and Furgerson type sales and marketing techniques, not tied to anything, what so called business methods are unpatentable under 101?

  153. 141

    Posted by: Anon. | Jun 28, 2010 at 01:18 PM

    “the QAS return to their role of destroying the careers of Examiners who allow cases”

    I thought the role of the QAS was changing and they will no longer be “destorying careers” as you put it. If you are a USPTO insider (or anyone else on this board who is), please shed light on this…

  154. 140

    While the machine or transformation test isn’t the ONLY test, they don’t provide any other guidance. So, for now at least, the machine or transformation test is the ONLY test…..
    Why did it take them eight months to decide that?
    Posted by: Brian L. | Jun 28, 2010 at 11:46 AM
    _____________

    There is still the Deihr test which I have used for the years to annihilate the likes of MM, 6, West Coast Guy and other anti patent posters on this blog.

  155. 139

    I think that the reporter forgot to include the names of Roberts, Scalia, Thomas, and Alito on page 1 of the Kennedy opinion because of what it is printed on page 4 of the Syllabus.

    After the date on page 1 of the Kennedy opinion, it shows the following:

    “JUSTICE KENNEDY delivered the opinion of the Court, except as to Parts II–B–2 and II–C–2.*”

    I think the reporter meant to say the following:

    “KENNEDY, J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. ROBERTS, C. J., and THOMAS and ALITO, JJ., joined the opinion in full, and SCALIA, J., joined except for Parts II–B–2 and II–C–2.”

    In my opinion, there is a misprint on page 1 of the Kennedy opinion.

    I hope I’m right because a 5-4 vote is much easier to understand.

  156. 138

    Stevens’ explanation of 273 does not square with Kennedy’s.

    Stevens is clearly rationalizing on that point. Whether or not 273 shows that Congress had any love for business method patents, he can’t deny that 273 is a grudging acknowledgement of their existence. Seems that his logic falls apart at that point.

  157. 137

    “I think previous posters are probably correct, as a practical matter, that the PTO will apply m-o-t anyway (after all, SCOTUS didn’t say it COULDN’T be applied, only that it wasn’t the EXCLUSIVE test for determining s101 patentability).”

    I admit that I haven’t read all of the comments, so this may have been addressed, but this just doesn’t make sense to me. If M-O-T is not the exclusive test of 101 eligibility, then it cannot be used to prove that a claim is ineligible. So I don’t see why the PTO would be interested in using it – it doesn’t help them exclude anything. On the other hand, the Court’s opinion suggests that the M-O-T test is useful in proving that subject matter IS eligible. So won’t applicants be using it, rather than the PTO?

  158. 136

    To all Actual Inventors. Today was a GOOD day for us. Here is how you should see it.

    Basically any invention of a process that can be performed in your head, via vocal communication, such as a sales or marketing technique or a risk hedging method opens you up to a rejection based on an abstract idea.

    However if you can show how your claims are limited to the use or operation of a specific technology you can argue and traverse the 101 rejection.

    Bottomline the Inventors Constitutional Right and statutory right to patent a technological process which includes business method, remains.

    CASE CLOSED

    ______

  159. 135

    WCG< I don't see why there is any confusion at all. My copy of the case seems to clearly say that: KENNEDY, J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. ROBERTS, C. J., and THOMAS and ALITO, JJ., joined the oinion in full, and SCALIA, J., joined except for Parts II–B–2 and II–C– 2. STEVENS, J., filed an opinion concurring in the judgment, in which GINSBURG, BREYER, and SOTOMAYOR, JJ., joined. BREYER, J., filed an opinion concurring in the judgment, in which SCALIA, J., joined as to Part II. What do you think it SHOULD say if the clerk were "on the ball?"

  160. 134

    Stevens’ explanation of 273 does not square with Kennedy’s. They are opposite. Kennedy infers a Congressional intent for keeping business method patents — Stevens does not.

    Did the Stevens opinion really go along with the Kennedy opinion? Did the Stevens+3 sign onto the Kennedy opinion?

  161. 133

    It doesn’t bode well for the clarity of the law that we’re still debating who is in the majority.

    Not that anything else I’ve seen today bodes well for the clarity of the law.

  162. 132

    I need some backing up here.

    A concurring opinion just indicates it concurs with the outcome — affirmed. It doesn’t mean that it signs onto the reasoning.

    I don’t think that Steven + 3 signed onto the Kennedy opinion — just the affirming of the Federal Circuit’s judgment.

    I really wonder if the clerk has forgotten to mention that only Roberts, Scalia, Thomas, and Alito has signed onto the Keedy opinion if you read the reporter’s last statement of the Syllabus.

    With the exception of Parts II-B-2 and Parts II-C-2 of the Kennedy opinion, what I think we have is a 5-4 majority opinion penned by Kennedy.

  163. 131

    Bilski: Satisfaction of the MoT test is sufficient, but NOT necessary, to prove patentability under section 101.

  164. 130

    Chicago IP,

    “I think Part II of Breyer’s opinion has controlling weight, since Scalia is the 5th vote for the majority.”

    I agree. Part II of the Breyer concurrence is the law of the case (and now law of the land).

  165. 129

    I think Gary hit the nail on the head — it sounds like Stevens originally had 5 votes (including Scalia) for his position after conference, and assigned himself the putative majority opinion (since he is the senior Associate Justice, and C.J. Roberts apparently was not in agreement), and then somewhere along the way lost Scalia. At the very least, large portions of Stevens’ opinion read like they were written for the majority. But instead of Scalia outright joining Kennedy’s opinion, he decided to try and bridge the gap between Kennedy and Stevens by joining Breyer’s concurring opinion. All speculation, of course, but it seems to make sense in light of what we know about the assignments for the other opinions this term (see Professor John Duffy’s recent post). As a result, I think Part II of Breyer’s opinion has controlling weight, since Scalia is the 5th vote for the majority.

    Bottom line… (a) M-or-T test is important but not controlling; (b) State Street’s “useful, concrete, and tangible result” test is still dead (since 5 Justices agree it is not the correct test — the Stevens 4 + Scalia); and (c) the patentability (sec. 101) door is more open to business methods patent than it was after the Fed. Cir.’s decision, although how much more is still uncertain (and it may not be much).

  166. 128

    Note the following:

    The Court’s syllabus states the following on p. 4:

    “KENNEDY, J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. ROBERTS, C. J., and THOMAS and ALITO, JJ., joined the opinion in full, and SCALIA, J., joined except for Parts II–B–2 and II–C–2.”

    Why did the reporter feel it necessary to name Roberts, Thomas, and Alito as joining in full? Isn’t that understood? Does the absence of Stevens, Breyer, Ginsberg, and Sotomayer suggest something?

    I don’t know about you, but it feels like there are some justices that waited until the last minute to make up their mind, and that the reporter failed to make the last minute changes.

  167. 125

    Also, KC, Breyer was part of Steven’s “+3,” so you are incorrectly counting him twice.

    You have 5 Justices that say no categorical exclusion for Business methods, and 4 saying that there should be a categorical exclusion, but one of those 4 just left the court. So it’s really 5 to 3.

  168. 124

    “Stevens +3 : “a claim that merely describes a method of doing business does not qualify as a ‘process’ under s. 101.”

    Breyer and Scalia : “This Court has never before held that so-called ‘business methods’ are patentable, and, in my view, the text, history, and purposes of the Patent Act make clear that they are not.”

    You are counting Breyer twice and Scalia did not join that part of Breyer’s concurrence.

  169. 123

    No, KC. Scalia only joined Breyer on part 2, not part 1.

    Scalia voted with the majority that Business Methods are not categorically excluded.

  170. 122

    Is not the opposite ro abstract simply concrete or tangible? Now where have I head that?

  171. 121

    Bilski = unpatentable abstract idea

    MOT test = not the lone test

    Proceed as normal and as defined in the code.

    Put another way:

    Bilski: Too abstract for an application

    The old test: Not the test

    The law: Too abstract for application

  172. 120

    Stevens +3 : “a claim that merely describes a method of doing business does not qualify as a ‘process’ under s. 101.”

    Breyer and Scalia : “This Court has never before held that so-called ‘business methods’ are patentable, and, in my view, the text, history, and purposes of the Patent Act make clear that they are not.”

    Seems to me that 6 Justices have said that a business method is not patentable. End of Story.

  173. 119

    IANAE “At least with MOT you could amend in a machine or a transformation and you’d be done. You’d get a narrower claim, but you’d get an allowance. Under Bilski, presumably you have to show that your invention as claimed actually does something, but there’s no legal authority even for that, and even that isn’t determinative.”

    In practical effect, I think you can still amend to satisfy MoT and be done. The hard issue will be if the Examiner says your machine is not a “particular machine,” or your transformation is just “insufficient post-solution activity,” because your claim preempts all uses of the “abstract idea” or whatever. I think that is where we will have to see the law develop in the near future.

    But, if you want to try and get the claim allowed without amending to satisfy MoT, then you’de better be prepared to take it to the Supreme Court. I don’t see why the CAFC would bother to try and carve out another category of “important clue” besides the two already in MoT when they can just say “we don’t see either of the established ‘important clues,’ and applicants have failed to identify another category of ‘important clue,’ so no patent for you.” Or even if the applicants do identify a new potential category of “important clue,” then why would the CAFC go out on a limb to embrace it? Easier to just reject it and let SCOTUS grant Cert if they want to add it to the list of “important clues.”

  174. 118

    Looks just like what the real contributors here predicted it would.

    Bilski = unpatentable abstract idea

    MOT test = not the lone test

    Proceed as normal and as defined in the code.

  175. 117

    I think that it is interesting that J. Scalia only joined PART II of J. Breyer’s dissent, which states that the MOT is an important test and that the “useful, concrete, and tangible results” test is inappropriate. That portion of J. Breyer’s opinion does not provide the blanket statement found in PART I stating that Business Methods are unpatentable.

    It appears to this humble reader that J. Stevens is flawed in two respects: 1) it chastises the Majority for stating that the “abstract idea” test can be used as a tool to weed out business methods that should not be patented because “we have never in the past suggested that the inquiry varies by subject matter”; yet J. Stevens goes on to single out business methods as unpantentable. 2) J. Stevens states that Congress enacted 273 due to the misconception business methods were patentable under Sate Street; J. Stevens, however, does not explain why Congress did not simply modify 101 to exclude business methods if it believed such methods should not be patented.

  176. 116

    To say it another way . . . for those who just can’t get it, if your invention is vague and abstract, you have violated section 112, not section 101.

    If your claim is vague and abstract, you have violated section 112.

    If your invention is vague and abstract, you have violated section 101.

  177. 115

    you asked that question as if there is a form paragraph you can simply copy and paste that will overcome all 101 rejections for you.

    I’m sorry if you understood it that way, but that’s most assuredly not how I asked it. I’d have a hard time justifying the existence of my profession if there were a form paragraph for every occasion. Even the examiners can only do it because people keep sending them work regardless.

    This whopper of a decision should prove to you that there isn’t,

    See, this is the problem. Not the absence of a form paragraph, but the absence of a coherent line of reasoning that can demonstrate that a particular claim is not abstract. For a 103 rejection, you know how to proceed. You can show that the references don’t teach one limitation of your claims, or that they can’t be combined. The facts and analysis will vary from case to case, but you have some idea of what you must show to convince the examiner.

    At least with MOT you could amend in a machine or a transformation and you’d be done. You’d get a narrower claim, but you’d get an allowance. Under Bilski, presumably you have to show that your invention as claimed actually does something, but there’s no legal authority even for that, and even that isn’t determinative.

  178. 114

    Sorry I should have stated if you “can’t” clearly define the invention seciton 112 precludes patentability.

  179. 113

    Look I discussed this topic exhaustively in my law review article back in 1992. 22 GGU Law Rev. 455 Human Ingenuity: The Novel Standard for Patenting Algorithms. The question of patentability that lies within section 101 is really utility. The test of novelty required for the new requirement in seciton 101 is found in section 102 and section 103. If you can clearly define the invention section 112 would preclude patentability even if it was new and non-obvious. It is great to see the Supreme Court finally straightening this mess out. As I said once, I will say a 1,000 times, Benson was not a 101 analysis. The legal rationale for invalidating the BCD method in Benson was premised upon section 112, indefiniteness. The judges just used the wrong label section 101. To say it another way . . . for those who just can’t get it, if your invention is vague and abstract, you have violated section 112, not section 101. This isn’t rocket science, it is just basic logic.

  180. 112

    Okay, that made me LOL.

    Seriously though, you asked that question as if there is a form paragraph you can simply copy and paste that will overcome all 101 rejections for you. This whopper of a decision should prove to you that there isn’t, when SCOTUS can’t even give a straight answer to the 2 questions that were presented.

  181. 111

    “Reading the two concurring opinions, there are six justices who indicate that business methods are not patentable. How is it that Justice Steven’s opinion is not the main opinion of the Court?”

    Huh?

  182. 110

    Having reread the opinion in deatil, including the Stevens discurrence, I still cannot find where the Court says that a claim that passes the MoT test might not be patent eligible subject matter under 101.

    It seems to me that the Court basically said that if a claim passes MoT, then it satisfies 101, and that some claims that don’t pass MoT might, in rare cases, still satisy 101, but that it would be a mistake to think that anything that passes the “useful, concrete, and tangible” test satisfies 101.

    Does anyone think that claim drafters and patent prosectors and examinaers and ought to proceed in a different fashion? If so, why?

  183. 109

    “More importantly, how is an applicant to address or overcome a hypothetical poorly-reasoned 101 rejection for claiming an abstract idea?”

    — IANAE

    Well, that’s easy — just ask the examiner to look at the invention “as a whole”. Yes, I’m kidding, but that appears to be what Bilski suggests we do.

  184. 108

    Reading the two concurring opinions, there are six justices who indicate that business methods are not patentable. How is it that Justice Steven’s opinion is not the main opinion of the Court?

  185. 107

    If you have no idea how to rebut the presumption that what is claimd is an abstract idea then either a) you are not competent to practice in that technological field or b) it is in fact an abstract idea, and thus not patentable as the exception to 101.

    A simple “I don’t know either” would have sufficed.

  186. 106

    More importantly, how is an applicant to address or overcome a hypothetical poorly-reasoned 101 rejection for claiming an abstract idea?

    If you have no idea how to rebut the presumption that what is claimd is an abstract idea then either a) you are not competent to practice in that technological field or b) it is in fact an abstract idea, and thus not patentable as the exception to 101.

  187. 105

    Arthur Dent–
    I agree that the Court has left a void instead of an answer. I think previous posters are probably correct, as a practical matter, that the PTO will apply m-o-t anyway (after all, SCOTUS didn’t say it COULDN’T be applied, only that it wasn’t the EXCLUSIVE test for determining s101 patentability). Thus, even though SCOTUS has given us the same kind of drivel it gave us in KSR, the practical result is likely to be very different. The PTO didn’t want to use the teaching-or-motivation test, and because KSR told them they weren’t REQUIRED to, they now don’t. Instead pretty much all you get is hindsight dressed as “X would have been obvious in light of Y and Z,” as a recent poster more or less said. But for purposes of s101, it looks as if the PTO liked the m-o-t test, and because they aren’t FORBIDDEN from using it, they will.

  188. 103

    “Many business patents are practiced in public, and therefore a patent does not necessarily encourage dissemination of anything not already known.” Stevens, J.

    Typical of this jurist’s pathetic lack of any clue as to what it’s all about.

    The practicing in public is not the dissemination that is encouraged by the Patent Act, an enabling disclosure of the invention is what is encouraged. Steven’s comment could be applied equally well to any subject matter. Is he arguing there is no point in patents for fuel efficient engines because they, too, are practiced in public?

    Wish we could put it down to senility, but he’s been missing the boat for decades. Let’s just be thankful he’s now history, and let’s just pray Kagen can do better… I mean, after the filibuster goes bust, of course.

  189. 102

    Is there anyone that feels Bilski could save his claims from 101 by adding some sort of signal or visual indication after the performance of his formula?

  190. 100

    What inquiry is an examiner to conduct when evaluating a borderline abstract idea?

    More importantly, how is an applicant to address or overcome a hypothetical poorly-reasoned 101 rejection for claiming an abstract idea?

  191. 99

    “I disagree.” Posted by: smashmouth football | Jun 28, 2010 at 12:52 PM

    You’re correct in that SCOTUS has not revived the “useful, concrete, and tangible result” inquiry of State Street. Breyer’s concurrence seems particularly damning in this regard. However, Dennis’ practical concerns remain: we know that “abstract ideas” are not patentable, but Examiners are left without a test to determine what constitutes an abstract idea.

    This is troubling. How should the Office instruct its examiners to interpret today’s ruling re the unpatentability of “abstract ideas” in the absence of a test? What inquiry is an examiner to conduct when evaluating a borderline abstract idea? SCOTUS tells us that the machine-or-transformation test offers “useful and important clues” to the patentability question, but, aside from pointing to Benson, Flook, and Diehr, fails to tell us what other “clues” are appropriate to consider before reaching a conclusion of patentability.

  192. 98

    After reading through everything once, “punt” is the word that comes to mind. I am pleasantly surprised, as I was expecting a big restriction on the scope of 101 eligibility. Still, the majority is kidding itself when it pretends that Benson, Flook and Diehr together present a coherent test for patentability under 101.

    How frustrated Justice Stevens must be. He dissented in Diehr, nearly 30 years ago. LabCorp v. Metabolite gave him and Justices Breyer & Souter some hope, only to see a dismissal. He might be even more disappointed with the result in Bilski.

  193. 96

    @ babel boy:

    I get so sick of judges and justices wading back to 1800, 1200, and beyond to try and make sense of what is patentable in the 21st century. Stevens even alludes to the Assyrians, fer jez sake.

    Strong agreement. These arguments invariably try to make some statement about the eligibility of software processes based on 1800’s definitions of the term “process,” when the ONLY processes that EXISTED were physical or mental. These are the same folks who argue that computers are functionally equivalent with pocket calculators.

    ===

    @ hoteling examiner:

    I think the PTO (even if there isn’t formal training/procedure set forth to do this) will have SPE’s tell their examiner’s to make the 101 rejection under the MOT test if there is any doubt, and then attempt to shift the burden to the applicant to show that even though the claims fail the MOT test, they are not an abstract idea, and thus don’t fail 101.

    Yeah, I’m with you. The PTO *likes* the m-o-t test, and while the Supreme Court encouraged it to create additional tests, it didn’t COMMAND it to do so. I’m guessing the PTO will stick clearly with m-o-t, and will, as a practical matter, perform exactly the steps that you described.

    I’m guessing the CAFC engage in exactly the same behavior. It will continue its timeless hobby of inventing 101 tests du jour, but every ruling on a claim using such a test will back it up with: “and the claims fare similarly under the machine-or-transformation test…”

    ===

    @ bilski@bilski.com:

    > From Zurko:”[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”

    See also, KSR Int’l Co. v. Teleflex, Inc. 😉

    I’d LOVE to see some kind of statistical estimate of the stated justification in combining references in PTO 103 rejections since KSR. I am guessing that the TSM test has been totally dropped in favor of the beloved hindsight test (“it would have been obvious to one of ordinary skill in the art to combine the techniques of Doe with the techniques of Smith…”) LITERALLY 100% of the 103 rejections that I’ve received since KSR rely on this “test.”

  194. 95

    The Supreme Court mischaracterized the Federal Circuit’s opinion, and the machine or transformation test as a whole. As the Federal Circuit put it, the machine or transformation test is the test to determine whether an abstract idea has been preempted; if the abstract idea is tied to a particular machine or transforms a particular article, then the invention clearly does not preempt all uses of the abstract idea. The Supreme Court, however, neglects to recognize that not every process claim relies on abstract ideas! Clearly those process claims not relying on abstract ideas will not even need to reach the machine-or-transformation test!

    The abstract idea is an exception to everything under the sun, and the machine-or-transformation test is an exception to the exception!

  195. 94

    completely agree with you, just my prediction and what WILL happen, not what SHOULD happen

    Yes, I was expressing my disappointment in what inevitably will happen.

  196. 93

    So I expect that the PTO will use Bilski v. Kappos as tacit approval of the validity of the machine-or-transformation test – and that, despite the encouragement of the Supreme Court to create new tests, the PTO will (without so admitting) use the machine-or-transformation test as its exclusive test of section 101 patent eligibility.

    Ugh, I hope not. I had a rejection the other day because the claim didn’t recite apparatus at the point of novelty. The whole thing took place in a physical lab setup. I had to add the words “illumination source” or some such or else waste my client’s money arguing.

  197. 92

    Anon, your statements make me want to practice another freedom the SC gave me today, that is, buy a handgun and do myself in.

  198. 91

    An “abstract idea” seems to be one with too many applications, at least according to Benson. But if you try to make it non-abstract by reducing the number of applications, as in Parker v Flook, it doesn’t count; the idea will still be abstract.

  199. 90

    The status quo is preserved:

    Business methods and software will remain patentable until such time as the corporate interests which control all of the US government (including the Supreme Court) decide it is no longer in their best interests for said subject matter to be patentable.

    The QAS will continue to make Examiners’ and Applicants’ lives a living hell by devising a new set of “magic words” every few months to make a software or business method claim patentable. This will occur until such time as the USPTO decides to return to the old slaughterhouse method of Examining, whereby the QAS return to their role of destroying the careers of Examiners who allow cases and the Examiner attrition rate increases.

  200. 89

    I think the PTO (even if there isn’t formal training/procedure set forth to do this) will have SPE’s tell their examiner’s to make the 101 rejection under the MOT test if there is any doubt, and then attempt to shift the burden to the applicant to show that even though the claims fail the MOT test, they are not an abstract idea, and thus don’t fail 101.

    I think that would be missing the point of today’s decision, which is that no bright line rule can predict in advance the patent-eligibility of inventions, which themselves are inherently unpredictable. Every case is different and needs to be treated on an individual basis, using intelligence and common sense.

    Whether we trust examiners (or even District Court judges) to do that and do it well is a whole other question.

    ——–

    completely agree with you, just my prediction and what WILL happen, not what SHOULD happen

  201. 88

    Scotusblog notes that interestingly, the part of the majority opinion that Scalia DIDN’T join (making that part of the opinion a plurality opinion) is the part that casts a generally favorable light on information-age patents:

    “The breadth of today’s ruling is an open question. Justice Kennedy seemingly suggested that the Court favored the basic patent eligibility “of inventions in the Information Age,” including to some extent with respect to “software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.” But that part of the opinion is only a plurality – not controlling – because Justice Scalia did not join that discussion and did not explain his reasons for declining to do so.”

    link to scotusblog.com

  202. 87

    Does anyone else think the Court’s analysis of abstract idea was completely a by-the-numbers MPEP 2144.03 prior art rejection? Citing Judge Rader’s opinion as a finding of fact and pointing to some textbooks? How is that “evidence” of being an abstract idea?

    From Zurko:”[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”

    Oh sorry, guess the Court can.

  203. 86

    I think the PTO (even if there isn’t formal training/procedure set forth to do this) will have SPE’s tell their examiner’s to make the 101 rejection under the MOT test if there is any doubt, and then attempt to shift the burden to the applicant to show that even though the claims fail the MOT test, they are not an abstract idea, and thus don’t fail 101.

    I think that would be missing the point of today’s decision, which is that no bright line rule can predict in advance the patent-eligibility of inventions, which themselves are inherently unpredictable. Every case is different and needs to be treated on an individual basis, using intelligence and common sense.

    Whether we trust examiners (or even District Court judges) to do that and do it well is a whole other question.

  204. 84

    Simply, if a bright line test is not in the statute, the Court is not going to add one, whether it is 101 or 103.

  205. 83

    just a prediction here – I think the PTO (even if there isn’t formal training/procedure set forth to do this) will have SPE’s tell their examiner’s to make the 101 rejection under the MOT test if there is any doubt, and then attempt to shift the burden to the applicant to show that even though the claims fail the MOT test, they are not an abstract idea, and thus don’t fail 101. The PTO will then respond with a simple “we disagree, 101 stands” and be on their way.

    and I’m an examiner….

  206. 81

    I think this is the most telling part of the entire opinion:

    “The case produced five different opinions [at the Fed. Cir.]. Students of patent law would be well advised to study these scholarly opinions.”

    I see this as putting the onus upon us to reconcile what each of the Fed. Cir. judges said and to find some common ground. That’s as good as its going to get. The Supreme Court isn’t going to do it for us, and neither is Congress.

  207. 80

    Malcolm,

    You should take some comfort that “some” business method patents are eligible.

    Reading it another way, “most” are not.

  208. 79

    I get so sick of judges and justices wading back to 1800, 1200, and beyond to try and make sense of what is patentable in the 21st century. Stevens even alludes to the Assyrians, fer jez sake.

    Who cares what Jefferson or Washington thought about patents? Washington had wooden teeth. They all lived on a different planet than we do. Any contemporary high school graduate has accumulated more knowledge about technology than Jefferson accumulated in a life time of inquiry. This is not to diss Jefferson, it’s just to point out that these judges and justices have to get out of the 18th century if they ever hope to resolve these prickly patent problems.

    The Founders weren’t soothsayers and they weren’t perfect. They were privileged males, mostly young and mostly slaveholders with no possible connection to a future 200 years out. Their views are irrelevant to today’s complex patent issues. The original US Constitution they drafted had so many flaws, it couldn’t even hold the country together for 75 years. There is absolutely no point in going back any further than 1952 in these analyzes. IMHO.

  209. 78

    I’m interested to note that the Supreme Court took the same approach as in KSR, stating that the predominant test used in determining a critical issue of patentability (here, machine-or-transformation; there, teaching-suggestion-motivation to combine) was not, in fact, the *only* valid test for this issue, and that other tests could be adopted that are consistent with 35 USC.

    However, I expect the reaction of the PTO to be the exact opposite as with KSR. The PTO really wanted to escape the exclusivity of the TSM test, and it has barely ever been used since the Supreme Court opinion. By contrast, the PTO really *likes* the machine-or-transformation test – it advocated its adoption at every stage of this litigation! So I expect that the PTO will use Bilski v. Kappos as tacit approval of the validity of the machine-or-transformation test – and that, despite the encouragement of the Supreme Court to create new tests, the PTO will (without so admitting) use the machine-or-transformation test as its exclusive test of section 101 patent eligibility.

    Meanwhile, the CAFC will probably waffle on the issue for several more decades, playing around with additional tests… but will probably back up every one of its decisions citing each of these “pet” test with: “but the claims fare similarly under the machine-or-transformation test…”

    My takeaway practice tip (for myself, as legal advice 😉 ) is simple: I intend to keep doing what I’ve been doing for the 22 months since In re Bilski – drafting claims that pass the machine-or-transformation test by a clear margin.

  210. 77

    “Dennis wrote: “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.”

    I for one expect a return to the “useful, concrete, and tangible result” inquiry examiners were using before Bilski’s machine-or-transformation test.

    Posted by: Arthur Dent | Jun 28, 2010 at 12:33 PM”

    I disagree. The Stevens opinion (4 justices) and Part II of Breyer’s concurrence (joined by Scalia, making 5 justices total) seem to shoot down State Street specifically. See in particular FN1 on page 2 of Stevens’s opinion (“Even if the machine-or-transformation test may not define the scope of a patentable process, it would be a grave mistake to assume that anything with a “ ‘useful, concrete and tangible result,’ ” State Street Bank & Trust v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), may be patented.”). See also opinion of Breyer at 3 (“Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a “‘useful, concrete, and tangible result,’” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), is patentable.”); id. at 4 (“To the extent that the Federal Circuit’s decision in this case rejected that approach [i.e., the “useful, concrete, and tangible result” test from State Street], nothing in today’s decision should be taken as disapproving of that determination.”). Not even Kennedy’s opinion would support retaining the State Street test. See Kennedy opinion at 16 (“And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357.”).

  211. 76

    “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.”

    I read the opinion and did not find the bolded part in the opinion even though I looked for it. I’ll read it again, but I’d appreciate it if someione could direct me to the part where they say a claim to a process could pass MoT and still fail 101. Maybe its in the lengthy lame duck Stevens concurrence that I merely skimmed. Can someone please help me out?

  212. 75

    > Why did it take them eight months to decide that?

    I’m guessing (based on the style of his opinion) that Stevens spent eight months lobbying the other justices for majority support for a categorical business method exception to patentability… and then didn’t get it, requiring Kennedy to write a quickie affirmation.

    Stevens is right about one thing: the majority opinion basically rejects Bilski’s claims out of hand, with barely an explanation – not even explaining which test it was using, and noting that the claims are directed to “well-known concepts” (which, last I checked, was a 102 issue!)

  213. 74

    That’s got to be the main take-away here. 102 and 103 are supposed to be our guardians against overly-broad claims to methods everyone else is already using. The front door to the PTO, in the form of 101, remains wide open.

    Business methods check in, but they don’t check out.

    This is exactly right. 101 was a dumb tool for this – Stevens is right about that.

  214. 73

    1) “Times change.” Halle-freaking-lujah.

    So much discussion of Bilski – including Dyk’s concurrence at the CAFC and Stevens’s concurrence here – tries to resolve the patentability of software processes based on historical definitions of the term “process” from pre-computing ages… when ALL methods were either “physical/manufacturing” or “mental”. It’s interesting that the majority repeatedly acknowledges that we have passed into the “Information Age,” but Stevens’s opinion only seems to mock this statement while delving into Elizabethan patent law! These crotchety old men refuse to acknowledge that computers are even remotely different from souped-up pocket calculators, and reject 50 years of technological progress.

    2) I’m deeply amused that Stevens’s review of the history of business method patents is NINE PAGES LONGER than the entire majority opinion. Clearly, Stevens set his clerks to work at writing a historical basis to support a sea change in the law as a majority opinion. Can’t imagine he was too happy about failing to secure that majority, and having to edit strong statements like “the opinion of the Court today establishes…” to prophetic statements like “MY opinion WOULD…”

  215. 72

    DB Bilski claims a method for entering in contracts with various parties to hedge risk, but he doesn’t say HOW. How do you identify the parties?

    With your eyes.

    how do you initiate the transactions?

    By communication with words or symbols.

  216. 71

    I’d just like to say that I have nothing to add to the analysis as I’ve not yet read the decision, but based on initial comments I’ll wait for the paperback. I’d also like to thank Dr. Zaius for its biting commentary through this whole ordeal and eek for making me legitimately lol.

    I’d also like to claim at least partial victory in my prognostications. Last night I predicted a plurality, which did not occur, but the opinions were fractured enough that it had commentors using the word, so I claim victory on that point. Also, I stated on Nov. 10:

    “I think they will dump the MOT test and replace it with another incoherent and impossible to implement standard. I’d go so far as to say the standard they’ll replace it with will be a regurgitation of existing contradictory precedent. Same as it ever was.

    Bilski will not get a patent, which will be the closest thing to guidance we’ll see. Everyone will declare victory (except Bilski) and no one will be happy.”

    They dumped MOT
    We got a regurgitation of existing contradictory precedent
    Same as it ever was
    Bilski did not get a patent
    That was the closest thing to guidance we saw
    Everyone declared victory

    I was off on two points, there was no incoherent replacement standard, and some people are actually happy.

    I also have gone on record that this will be a big flaming sack left on the doorstep at the very end of the session, that the CAFC will stomp all over it, and the PTO will be left to clean it all up, which they will fail to do, but will manage to smear it everywhere.

  217. 70

    Lionel Hutz,

    “while admitting that many will be unpatentable as abstract ideas under 101”

    No, no, abstract ideas lack enablement and are therefore overly broad under 112.

  218. 68

    Definition for all the idiots who seem to miss the Court’s point, which has been repeated over and over again.

    Abstract idea claim: A claim that does not meet the enablement requirements of section 112.

    The Court has repeatedly said that claims to abstract ideas and laws of nature are not patentable because they are overly broad. They preclude all uses of the idea. The Court did not decide that claims cannot be overly broad, Congress did. Section 112 clearly says “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

    Bilski claims a method for entering in contracts with various parties to hedge risk, but he doesn’t say HOW. How do you identify the parties? how do you initiate the transactions?

    That’s why the machine or transformation test sometimes provides a clue. It tells us how.

  219. 67

    Dennis wrote: “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.”

    I for one expect a return to the “useful, concrete, and tangible result” inquiry examiners were using before Bilski’s machine-or-transformation test.

  220. 66

    My favorite line from my initial reading:
    “Any suggestion in this Court’s case law that the Patent Act’s terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas.”

    Hopefully, rejections under 101 will now actually assert one of these three exceptions. The primacy of these exceptions is further reinforced by the Court’s suggestion that the Fed. Cir. could specifically define a class of inventions related to business methods and adjudge this class as abstract.

  221. 65

    Ping, fair enough. I meant mapping as a verb meaning the SCOTUS finding a way to say x is y.

  222. 64

    Are they not approximations that are tools for our mind to use?

    Sunshine – you be getting me wrong. re-read what I wrote (and don’t be misguided by the subtle “is” is play). I be agreeing with you that “mapping” is not the same as “is”. Criminy – one only has to look at the history of “mapping” to see that “mapping” isn’t “is”.

  223. 63

    Amen, BabelBoy – all the speculation and wasted time was just that. No insight into the decision, no greater appreciation for what was said, nada. Trying to guess what the Supes will say is really only worth it if you are party to an appeal going into briefing.

  224. 61

    I’m with Lionel.
    All claims like Bilski’s are dead, and one does not even need to focus excessively on the MoT test, or any other test. It won’t be long before a thoughful attorney defending his/her client against a crxppy patent abstraction articulates yet another test to the Federal Circuit … which will provide yet another “clue” as to how many different kinds of crxppy abstract patents were improperly granted.

    The slide is greased, trolls. Enjoy the ride.

  225. 60

    >>Um, quite simply – No. “Maps to” is quite >>correct. Now, if you wanted to say “is”, then >>Ida agree with you.

    Ping, you are out of your mind. Newton’s equations map to what? Are they not approximations that are tools for our mind to use? Don’t be ridiculous. Information processing is an art just as is chemistry.

  226. 59

    this opinion is really a kick to Congress to clarify this issue.

    Congress has never put any limiting language in section 101, and they’re not about to start now.

  227. 58

    Reading between the lines, this opinion is really a kick to Congress to clarify this issue.

  228. 57

    I’m trying to read into the conservative/liberal split on this one. The split was Roberts, Thomas, Alito, and partly Scalia in the majority; Stevens Ginsburg, Breyer, Sotomayor in the minority; and Kennedy as the centrist swing vote joining the majority.

    I didn’t see this case as necessarily invoking a liberal vs conservative split. I wonder if it really did or if it was just coincidence that the votes split that way.

    Scalia’s joining in part of Breyer’s separate concurrence suggests that Scalia may have been the fifth vote for a Stevens majority for a time before taking the more moderate approach of a little joining the majority, a little joining Breyer. Would explain why Steven’s opinion is written as if it was initially drafted as a majority opinion.

    All total speculation of course. But it does make me wonder if Scalia just got too uncomfortable being in a majority with four liberal votes.

  229. 56

    And many more will be unpatentable under 102, 103, and 112.

    That’s got to be the main take-away here. 102 and 103 are supposed to be our guardians against overly-broad claims to methods everyone else is already using. The front door to the PTO, in the form of 101, remains wide open.

    Business methods check in, but they don’t check out.

  230. 54

    Saying that an equation maps to a law of nature is just strange.

    Um, quite simply – No. “Maps to” is quite correct. Now, if you wanted to say “is“, then Ida agree with you.

  231. 53

    I thought the majority opinion was pretty good.

    It avoided a bright line rule. It also explicitly rejects a broad subject matter exception to patentability for business methods while admitting that many will be unpatentable as abstract ideas under 101. And many more will be unpatentable under 102, 103, and 112.

  232. 52

    The Court to a duck-and-cover approach to business method patents.

    The elimination of the business method patent fell short by one justice. Sorry, Malcolm.

  233. 51

    So, for now at least, the machine or transformation test is the ONLY test…..

    Um, quite simply – No.

  234. 49

    The best I can figure it, these bone heads seem to think since e= m * c * c represents a law of nature that all equations are somehow those represenations of laws of nature.

    Just strange. Illustrates a lack of understanding of science that –I think –rises to the level of impeachment. If a justice were this ignorant of say human behavior, (for example, saying that people tend to stab people when the light are blue and thus are justified in murder in blue light) I think we would impeach them.

    Saying that an equation maps to a law of nature is just strange.

  235. 48

    While the machine or transformation test isn’t the ONLY test, they don’t provide any other guidance. So, for now at least, the machine or transformation test is the ONLY test…..

    Why did it take them eight months to decide that?

  236. 47

    “It is rather disappointing in that it does not untwist the strange and shameful Benson.”

    Yes, but this wasn’t the right case for that.

  237. 46

    Stevens couldn’t get the vote because he read s273 out of title 35 of the United States Code.

  238. 45

    I think you’re probably correct, Andrew. Breyer’s concurrence will be the most relied-upon statement for patent decision-makers.

    But the nature of the plurality opinions might leave the door open for future tribunals to second-guess which opinion is the “narrowest” or what combination of plurality opinions are most consistent:

    link to en.wikipedia.org

  239. 44

    I have to read the opinion again, but I don’t think I am smart enough to use this opinion to answer my clients’ questions.

  240. 43

    It is rather disappointing in that it does not untwist the strange and shameful Benson.

    An equation getting mapped to a law of nature and thus being abstract is –simply and completely–wrong.

  241. 42

    “given that 3 other justices wouldn’t allow such patents at all”

    Actually, Breyer joined Stevens in saying that he wouldn’t allow them at all. So it is really the 4 who wouldn’t allow them at all, + Scalia (who by joining Breyer’s concurrence) who seems to place great weight (but not exclusive weight) on the MOT test.

  242. 41

    @ eek – rofl.

    @ plurality – as i count, nine justices agreed that m-o-t is not the exclusive test, but is the best they can come up with yet, and that concrete-useful-tangible is bogus. zero justices provided any bright line or even standard for discerning what non-m-o-t subject matter might be patentable.

    the PTO response to this decision may be weird to behold.

  243. 40

    Even the plurality opinion seems to cast skepticism on business method patents that simply provide “for more efficient performance of a vast number of business tasks.” Scalia’s concurrence means that basically Breyer’s decision is the majority opinion for how much leeway the Court will give business method patents that don’t meet the “machine-or-transformation” test, given that 3 other justices wouldn’t allow such patents at all.

  244. 39

    “The best part about this decision is that it brings to an end the mindless, meaningless, and mind-numbingly repetitive speculation that Stevens would write the majority opinion.

    BTW, somebody eats crow. No names mentioned.

    Posted by: Babel Boy | Jun 28, 2010 at 11:03 AM”

    I didn’t engage in any prediction on this blog, but I take issue with your characterization as “mindless.” I think a fair, if unobservable, interpretation is that Stevens had been tapped to write the majority, but then lost a vote. His opinion reads a lot like a majority opinion than the Kennedy opinion, with a considerably more-in-depth analysis.

  245. 38

    “Plurality means something different at SCOTUS:”

    You are correct in that 5 justices didn’t join Breyer’s opinion. But by joining that part of Breyer’s opinion, Scalia is in effect saying “I only joined the majority opinion because I believe the majority opinion is consistent with this part of Breyer’s opinion.”

    Of course, Scalia is not disagreeing with the majority opinion specifically; he (by joining Breyer) is just emphasizing that the MOT test (while not the sole test) is still a very important test, and that the Court is not saying that a huge number of processes are beyond the reach of the test.

  246. 35

    Andrew – I don’t count 5 justices joining Breyer’s opinion anywhere. Don’t we simply have 4-3-2 plurality opinions with regard to the current test (as articulated in II-B-2 and II-C-2)? Or does it work how you say – that Scalia makes it a majority?

  247. 34

    “Plurality means something different at SCOTUS:”

    Read Part II of Breyer’s opinion. Since it was joined by Scalia, it will most likely be read by lower courts as the controlling for how to interpret Kennedy’s majority opinion.

  248. 33

    Scalia (by joining part 2 of Breyer’s concurring opinion) further disparages the “useful, concrete, and tangible result” test of State Street. This means that a 5 member majority are basically coming as close as possible to throwing it out.

  249. 32

    patent.drafter: Stevens hit the nail on the head there. At least in KSR, they provided a bunch of other specific rationales for rejecting claims under 103 when they said that TSM wasn’t the only test. Here, they took away M-or-T and then just gave us a huge headache.

  250. 31

    It seems the most narrow holding required to achieve the result (i.e. the opinion that controls) is Part 2 of Breyer’s opinion, since a member of the 5-4 majority (Scalia) joined it. This seems to say that while the MOT is not the SOLE test, it is a very powerful test, and that the court is not saying that many processes lie beyond the reach of the test.

    Scalia also didn’t join B-2 and C-2 of the majority opinion (making those parts of the opinion not controlling).

  251. 29

    It will be an interesting read, but it largely affirms Rich’s position.

    I must admit surprise.

  252. 28

    I really need some clarification as to how the opinion division works. II-B-2 and II-C-2 in Kennedy’s opinion are mere plurality opinions without force of law, right? But neither do Stevens’ or Breyers’ concurences have a majority in any respect, right? Even though Breyer and Scalia claim that their concurrence is consistent with Kennedy’s opinion in the entirety? Help – how does this work?

  253. 27

    I think Fatalist is correct.

    In my opinion, this does little to address software patents at all, in so much as we already knew they had to go somethings beyond mere abstract algorithms and involve something more in the world outside 1s and 0s.
    The question is how abstractly the patent agent can describe the analog, real world results of the digital algorithms. (Oh wait, real numbers are math too. Oh sh–)

  254. 26

    “Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea.”

    That’s the ticket, people. When faced with a business method patent, persuasively argue that the claims are drawn to an abstract idea.

  255. 25

    Looks like MM’s aunt won’t be getting calls for movie recommendations after all.

  256. 24

    “The Court, in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea. Indeed, the Court does not even explain if it is using the machine-or-transformation criteria. The Court essentially asserts its conclusion that petitioners’ application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it also means that the Court’s musings on this issue stand
    for very little.” Stevens J.

  257. 23

    Just like I told you
    The Supremes finally realized their limitations (as far as CS and EE goes) and passed a very neutered decision to not make up any new absurdities (and be laughed at on this blog)
    Which is a good thing for them and for us…

  258. 22

    The Court today said nothing that it hasn’t said before (which is how it’s supposed to be), specifically, “Dear Federal Circuit, please stop MAKING NEW LAW!”

  259. 21

    An absolutely inscrutable read, that utterly fails to bridge the gaping chasm of logic from Benson and Flook on the one hand to Diehr on the other.

    at least the majority opinion – I have not yet read Justice Steven’s concurrence.

  260. 17

    Noise Above Law:

    “MAN THIS IS A GREAT DECISION”

    “Typical 6 declare victory no matter what happens.”

    6 learned the trick…So, don’t laugh, he/she may be the President of US one day.

  261. 15

    I am impressed with the quality of the comments on this topic so far.

    I am a bit surprised by 6 declaring victory, who seems to want no patents under any circumstances. The SC broadened the 101 standard, which seems the opposite of what 6 would want.

  262. 13

    The best part about this decision is that it brings to an end the mindless, meaningless, and mind-numbingly repetitive speculation that Stevens would write the majority opinion.

    BTW, somebody eats crow. No names mentioned.

  263. 11

    De-evolution may have been temporarily halted, but I’ll be back! Good luck humans.

  264. 10

    Business methods not categorically excluded by 101; MOT not the sole test, software patents not touched by this patent.

    Sounds like a victory to me.

    KMA 6 and MM

  265. 9

    “the Supreme Court affirmed that Bilski’s risk-management method was not the type of innovation that may be patented.”

    I’m printing it out now, but my early guess is that this decision really doesn’t answer the big questions, so it’s “business (methods) as usual” for the patent bar. Which is a good thing, as any restriction on 101 = less money for me.

  266. 7

    “It is true that patents for inventions that did not satisfythe machine-or-transformation test were rarely granted in earlier eras, especially in the Industrial Age, as explained by Judge Dyk’s thoughtful historical review. See 545
    F. 3d, at 966–976 (concurring opinion). But times change.

  267. 4

    “MAN THIS IS A GREAT DECISION”

    Typical 6 declare victory no matter what happens.

    This falls to my long held predictions in every sense. Sorry 6 – as much as you declare victory, that declaration rings hollow.

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