With an opportunity to render some order out of the Bilski chaos, the Federal Circuit instead completely ducked the patent-eligibility issue clearly presented in King Pharmaceuticals. The Federal Circuit then created (and I do mean “created”) the new “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method” doctrine. With this new “doctrine,” we have now “jumped down the rabbit hole” into a surreal “Bilski in Patentland” world.
So now what does SCOTUS’ ruling in Bilski “really” mean to us “mere mortals”? First, we’ve got two “wild cards” to deal with as noted above: (1) Stevens has retired; and (2) what does Scalia’s refusal to join Parts II B-2 and C-2 of Kennedy’s opinion for the Court signify. Some aspects of “wild card” #2 are dealt with above, but as also noted, there are still some aspects which are unclear or at least ambiguous as to how this refusal by Scalia should be viewed. This lack of clarity/ambiguity will require some sorting out by the Federal Circuit, which may come as early as the reconsideration by the Federal Circuit of Prometheus, Classen, or even the appeal in AMP v. USPTO involving the gene patenting controversy. In AMP, District Court Judge Sweet’s invalidity ruling regarding the method claims for determining a pre-disposition to breast/ovarian cancer using the BRCA1 and BRCA2 genes relies at least in part upon the “M or T” test which, as noted above, SCOTUS unanimously relegated to “second class” status in Bilski as not the only test for patent-eligibility.
Where this decision takes on a surreal quality is how the various Justices viewed the impact of 35 U.S.C. § 273 in determining whether “business methods” are patent-eligible. Justice Stevens and 3 other Justices (Ginsburg, Breyer and Sotamayor) are completely WRONG in treating 35 U.S.C. § 273 as if this statute doesn’t exist. Even Scalia, who obviously doesn’t like patents on “business methods” (by his refusal to join Part II B-2 of Kennedy’s opinion) couldn’t stomach rendering the language of 35 U.S.C. § 273 a nullity.
The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy. There were no dissents, only concurring opinions, which is in and of itself a little surprising. In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test.
As a result of the useful, concrete and tangible result test and in conjunction with the disposition of the business method exception that never existed in the first place, software could come out of the closet and out into polite patent society. Gone were the days that patent attorneys would protect software by pretending that it was the hardware that presented the magic. So rather than claim a machine that accomplished a certain task patent attorneys could acknowledge that the machine is not the piece that makes things unique, but rather the software that drives the machine is the patentable innovation, of course presuming that it is new and nonobvious.
After 6 months and 15 days we still wait for a decision in Bilski v. Kappos, perhaps the most anticipated Supreme Court patent decision of all time. So, once again, it seems as if the patent story of the day will be the one that never materialized. The difficulty the Supreme Court is facing is in all likelihood this: how do they kill the Bilski patent application as being unpatentable subject matter without also killing the US economy. A decision that is too broad not only could put an end to the pure business methods akin to the Bilski “invention,” but could also put an end to the patentability of software, business methods and medical innovations. Thus, it is hardly an overstatement to observe that the Bilski case, if decided improperly, could destroy an already fragile US economy and set back medical research decades.
Today the United States Supreme Court issued four decisions, and none of them were Bilski v. Kappos. If you look back at the lag time between oral argument and decision over the last 17 Supreme Court patent decisions the average is 2.82 months. KSR was 5.07 months and as of today Bilski is 6.29 months. Does this mean Bilski will be more earth shattering than KSR, which is the biggest patent decision of at least the last generation?
Earlier this week, on February 23, 2010, Facebook was granted US Patent No. 7,669,123, which covers a patent on a method for dynamically providing a news feed about a user of a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then.
Unfortunately, those who oppose software patents frequently, if not always, want to turn the patentability requirements as they apply to software and business methods into a single step inquiry. They want it all to ride on patentable subject matter, which is a horrible mistake. The majority of the Federal Circuit got it completely wrong in Bilski, and other notable recent decisions. Patentable subject matter is a threshold inquiry and should not be used to weed out an entire class of innovation simply because bad patents could and will issue if the other patentability requirements are not adequately applied. That is taking the “easy” way out and is simply wrong.
At 2pm ET on November 9, 2009, Chief Justice John Roberts gaveled the session to a close announcing that the case had now been submitted. The arguments were good, and the Court was most assuredly hot, peppering both sides with question after question seeking to probe the issues. It is clear that the Supreme Court did their homework and spent no time gravitating to the weak points of the parties.
On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess.
Yesterday I posted an article titled Innovation Held Hostage by the Patent Office. In the article I detailed some troubling things I have learned regarding what appears to be best explained by patent examiners taking cases out of order. The Patent Office is a first-in-first-out (FIFO) system, or at least it is supposed to be. A couple patent attorneys have…
The United States Supreme Court granted cert. in Bilski v. Doll. This means that the last chapter on business methods and software has not yet been written, which could be good news or bad news depending upon your particular take. I have wondered out loud about allowing software patents as patentable subject matter, which I think is the right thing to do myself.
Ever since this decision was rendered there has been rampant speculation as to what Bilski means and how it will be interpreted. As one who works in this area and one with my own patent application pending in class 705, I was greatly interested both professionally and personally. Thankfully, I can report that it does not seem as if Bilski is turning out to be the impediment to patentability that many feared. In fact, based on what is going on at the USPTO one could make a convincing argument that it is actually getting easier to obtain patents that related to software and computer related processes.
Just over two weeks ago I wrote an article explaining that quality review at the USPTO was changing for the better. Shortly after this article published I received a telephone call from the Office of Public Affairs at the USPTO. We chatted about this article and one thing lead to another and ultimately I spoke with Acting Commissioner for Patents,…