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« Reminder: RCE Docketing Change Effective November 15, 2009 | Main | Next Up: Ariad v. Lilly Rehearing En Banc »

November 09, 2009



Having now read through the oral argument transcript, it speaks volumes on what I’ve said before: using 35 USC 101 as anything other than a coarse screen to rule out patents on abstract ideas, natural phenomena, and discoveries of laws of nature is an exercise in futility. The Justices repeatedly asked for a test other than the Federal Circuit machine or transformation test that could be used, and it’s clear from what was said during oral argument that no one there could articulate an objective test beyond screening out abstract ideas, natural phenomena, and discoveries of laws of nature. Justice Breyer frankly confessed that he couldn’t come up with any meaningful test under 35 USC 101. The Chief Justice was particularly on target is asking Jakes whether the Bilski claim covered an abstract idea. In other words, what Judge Rader said in dissent was correct: this Bilskl claim is not patentable subject matter because it simply covers an abstract idea.

I also give high marks to what Justice Sotamayor appears to understand: the Bilski claim is being judged for patentability under the wrong patent statute. It’s pretty clear to me she feels this Bilski claim should be judged first under 35 USC 102 or 103, not 35 USC 101. And I give very low marks to Justices Scalia and Ginsburg. Scalia obviously can’t get past the 19th Century. And Justice Ginsburg’s comment about looking to international patent standards was very nicely shot down by Jakes.

I thought Jakes did a pretty good job considering the difficult position he was trying to argue for. He at least understands that O’Reilly v. Morse is really an enablement or claim scope case, not a patentable subject matter case. He certainly had a better command of his argument than those who argued in KSR International.

Bottomline: If the oral argument is any reflection of where SCOTUS is going with this case, they aren’t going to issue an “earthshaking” ruling here. I predict the Federal Circuit “machine or transformation” test will be trounced as too inflexible (SCOTUS may still retain it as a test, but not the only one, like TSM in KSR International). I also predict that SCOTUS will affirm the PTO ruling that the Bilski claim is not patentable subject matter but on the ground that it covers an abstract idea, as suggested by Judge Rader’s dissent.

The only thing unclear to me is how SCOTUS will treat the enactment of 35 USC 273 on the issue before them. Other than Jakes mentioning it during oral argument, there really wasn’t any comment from the Justices on this statute. (Someone else has already commented on 35 USC 273 as being the "elephant in the room.")

Someone on Patently-O also made an astute observation about how to separate out the “abstract idea” chaff from the “real world” wheat: reinstate the “useful, concrete and tangible result” standard. Reinstating this standard would do much to make 35 USC 101 objective. The Bilski claim would have failed this standard as not providing, as that someone said, a “concrete outcome.” The Federal Circuit should have never dumped this standard in Bilski in favor of the nonsensical "machine or tranformation" test.


On further reflection and having reviewed again the Bilski application and Bilski claim 1, I've come to the view that this case should have never gone up to SCOTUS under 35 USC 101. Instead, the Bilski claims should have been trounced under one or both of parsgraphs 1 and 2 of 35 USC 112. Many, if not all, of the key claim terms are undefined (and undefinable from) the Bilski patent specification. Illustrative examples are: "series of transactions," "commodity provider," "historical averages," "market participants," "counter-risk
position," "balances the risk position." The paucity of the description in the Bilski patent specification simply doesn't define these claim terms, nor does it "enable" the claim scope.

This reinforces my view that claims should be judged first under 35 USC 112 before applying 35 USC 101. That 35 USC 101 comes before 35 USC 112 in the statutes shouldn't change this. Until you understand what the claims mean, and whether the scope of those claims are enabled under 35 USC 112, determining whether the claimed invention is "useful" under 35 USC 101 is an exercise in futility.

I also remain convinced that the "useful, concrete, and tangible result" standard should be reinstated for determining whether 35 USC 101 is satisfied. It is the only objective standard I've seen for applying 35 USC 101. How to apply this standard to root out claims to "disembodied" abstract ideas is articulated well by Alappat and State Street. Again, 35 USC 112 should be the initial screen, not 35 USC 101.


I am a software developer, and I have a few questions that someone here might be able to answer.

Software has protections via copyright.

What I want to know is if another test would be viable: How much of the invention is covered by copyright? I see copyright as being fairly good protection for abstract concepts.

But isn't much of the Bilski "invention" covered by copyright? If the vast majority is covered, then is a patent a legitimate request?

Aren't copyrights better suited for protection of abstract concepts and ideas and works of art?


You raise a number of different points. As a threshold matter and as many others will, no doubt, state more eloquently than I, copyright protection simply does not extend to abstract concepts and ideas. It is only the expression of those concepts and ideas (fixed in a tangible medium) that is afforded copyright. Importantly, copyright gives the owner/author the right to exclude others from copying the work, making derivative or adaptations of the work, and publishing, displaying, performing and importing the work. Copyright does not protect against a third party independently creating identical expression. Conceivably, a software developer working in the same field as you, solving the same or similar problems could create code that is identical to yours and provided it was not copied, it would not be an infringement of your work. Thus, copyright has significant limitations in terms of providing a scheme for carving out broad protection for software and encroachment by competitors.

Patents, on the other hand, do provide broader protection and due to the way in which patent claims are written, patents can be directed to what would appear to be "concepts" (insofar as that term is used loosely here). But suffice it to say that the disclosures and teachings that are found in a patent typically support a far broader interpretation of the protected subject matter than do copyrights. Thus, patents have a far greater value when it comes to keeping competitors from developing products which may be similar or identical to yours.

Lastly, and vitally important is that patent protection and copyright protection are not and have never been mutually exclusive. The code that runs on a computer would indeed be copyrightable and even under Bilski, could also be patentable.

Regardless of how much or how little of the Bilski invention could be covered by copyright, there is no basis under the patent or copyright statutes to force an inventor to choose a sub-optimal protection scheme when he or she is otherwise entitled to the broadest possible protection.

Dear software developer,

you obviously have no clue about these issues

Try to do your homework first before asking stupid questions

Then you can read this:

Thanks very much for your response, Robert.

AngryDude seems very angry. I recommend you read:
before posting rude responses.

That said, I will remember Roberts advice and not angrydudes, and everything will be good in the world once again.


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