June 6, 2009
Bilski's and Warsaw's "managing... consumption risk costs," are miserable claims to be scuttling to the Supreme Court on the topic of patentable subject matter, because they clearly are not patentable under §112 ¶2, not to mention §101. At issue is whether the CAFC misconstrued §101, in limiting processes to: 1) machine dependence or 2) transformation. This is something to be scraped off the judicial shoe as too close-minded, just as Judge Newman opined in dissent. What should/will SCOTUS do? To read the crystal ball, peer into how the Supreme Court has decided before. As to that, one gem gleams.
With exception, the Supreme ignores lower court rulings. The exception is in flogging. In KSR, for example, the CAFC precursor was a mere whipping post of wrong interpretation, namely, the CAFC being too rigid.
So the place to look for insight as to the direction that SCOTUS might vector is in its own court's history.
The last time the Supreme Court took up patentability was in 1981, in Diamond v. Diehr, 450 U.S. 175. The patent was for a computer process for curing rubber, which was found patentable.
In cases of statutory construction, we begin with the language of the statute. Unless otherwise defined, "words will be interpreted as taking their ordinary, contemporary, common meaning," Perrin v. United States, 444 U.S. 37, 42 (1979), and, in dealing with the patent laws, we have more than once cautioned that "courts `should not read into the patent laws limitations and conditions which the legislature has not expressed.'" Diamond v. Chakrabarty, supra, at 308, quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933).
The Patent Act of 1793 defined statutory subject matter as "any new and useful art, machine, manufacture or composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, ch. 11, 1, 1 Stat. 318. Not until the patent laws were recodified in 1952 did Congress replace the word "art" with the word "process." It is that latter word which we confront today, and in order to determine its meaning we may not be unmindful of the Committee Reports accompanying the 1952 Act which inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952).
Although the term "process" was not added to 35 U.S.C. 101 until 1952, a process has historically enjoyed patent protection because it was considered a form of "art" as that term was used in the 1793 Act. 7 In defining the nature of a patentable process, the Court stated:
"That a process may be patentable, irrespective of the [450 U.S. 175, 183] particular form of the instrumentalities used, cannot be disputed. . . . A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires [450 U.S. 175, 184] that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence." Cochrane v. Deener, 94 U.S. 780, 787 -788 (1877).
Analysis of the eligibility of a claim of patent protection for a "process" did not change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409 U.S. 63 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: "Transformation and reduction of an article `to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." 409 U.S., at 70 .
Into what is not patentable, namely, abstractions and discoveries of nature or laws of nature. Bilski is easily chalked down to mere concept. But the telling sentence in the below paragraph is that there is nothing inherently non-patentable about computer-based or algorithm-employed processes.
Our conclusion regarding respondents' claims is not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer are used. This Court has undoubtedly recognized limits to 101 and every discovery is not embraced within the statutory terms. Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, supra, at 67; Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). "An idea of itself is not patentable," Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 (1874). "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Le Roy v. Tatham, 14 How. 156, 175 (1853).
Now to computer processes specifically. Here the past held two cases in the negative.
Gottschalk v. Benson went to a numeric conversion algorithm, and so easily denied.
Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a [450 U.S. 175, 186] general purpose digital computer. We defined "algorithm" as a "procedure for solving a given type of mathematical problem," and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.
Similarly, Parker v. Flook was a hazy formula which had an intrinsic §112 problem as well, much like Bilski.
Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an "alarm limit." An "alarm limit" is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, 10 nor [450 U.S. 175, 187] did it purport "to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit." 437 U.S., at 586 .
Again affirmation of "novel and useful" applications, including well-defined computer processes, as patentable.
Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Gottschalk v. Benson we noted: "It is said that the decision precludes a patent for any program servicing a computer. We do not so hold." 409 U.S., at 71 . Similarly, in Parker v. Flook we stated that "a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." 437 U.S., at 590 . It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e. g., Funk Bros. Seed [450 U.S. 175, 188] Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener, 94 U.S. 780 (1877); O'Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone explained four decades ago:
"While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939). '
We think this statement in Mackay takes us a long way toward the correct answer in this case.
Then, warning to consider the claims as a whole, and not mix prior art analysis with considering patentable subject matter.
In determining the eligibility of respondents' claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the [450 U.S. 175, 189] process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.
It has been urged that novelty is an appropriate consideration under 101. Presumably, this argument results from the language in 101 referring to any "new and useful" process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection "subject to the conditions and requirements of this title." Specific conditions for patentability follow and 102 covers in detail the conditions relating to novelty. [450 U.S. 175, 190] The question therefore of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter." In re Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also Nickola v. Peterson, 580 F.2d 898 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning.
The finale of Diehr draws boundaries of what is not patentable: "formula in the abstract," which "insignificant postsolution activity" does not cure.
We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U.S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U.S. 584 (1978). Similarly, insignificant postsolution activity will not transform [450 U.S. 175, 192] an unpatentable principle into a patentable process. Ibid. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.
The foregoing gives an example of patentable processes, which the CAFC interpreted rigorously as circumscription. Two letters: "e.g.," indicate that SCOTUS meant transformation as exemplary, not exhaustive. The CAFC test prong of tying to a machine/device has no foundation in High Court rulings. Supreme Court precedent lacks any necessity to tie a process to another category of patentable subject matter. Diehr's bottom line -
[C]ourts should not read into the patent laws limitations and conditions which the legislature has not expressed.
It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.
SCOTUS KSR was an admonishment of CAFC rigidity in viewing obviousness. SCOTUS MedImmune was an admonishment of CAFC rigidity in limiting declaratory judgment actions when actual controversies exist. SCOTUS eBay was an admonishment of CAFC rigidity in taking injunctive relief as an intrinsic right of a patent holder without considering circumstances.
The CAFC's Bilski take on patentable subject matter was rigid in enumerating patentable subject matter. Hopefully the Supreme Court sees it that way. Otherwise, the Court betrays its own precedents.
Posted by Patent Hawk at June 6, 2009 8:07 PM | § 101
Fundamentally, Bilski boils down to the issue of what is inside the "useful arts" and what is outside of that category.
Is a method for organizing activities between people useful?
Let's say there had been a claim for a computer implemented method of routing emergency patients to hospital ERs so that no ER is overwhelmed? Is that a useful art? (Query: What are examples of "nonuseful" arts?)
In Bilski, they are organizing activities as between buyers and sellers of commodities. Is that useful? Why not?
Posted by: step back at June 7, 2009 10:15 AM
"The process requires [450 U.S. 175, 184] that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence." Cochrane v. Deener, 94 U.S. 780, 787 -788 (1877)."
A more damning quote I have never seen against software related claims. I assume that this doesn't mean quite what it seems to mean since we lack overall context.
In any event, it is good to see you taking such an interest in Bilski Hawk. I agree with you for the most part, the CAFC rule is much too rigid, there are far more things which should be invalidated than get caught in the machine/transformation net, mostly because people fail to properly utilize the machine/transformation net. The USSC will overturn the ruling and be more stringent in a less specific way. Bad news for you :(
If you value your patents you will murder Bilski, soon. Should Bilski die, we know who is at the top of the list of suspects :)
I wonder though Hawk, could you explain what the issue with 112 2nd is? I haven't read the claim in awhile, but I don't recall noticing one and this is the first I've heard about there being one.
Posted by: 6 at June 7, 2009 11:27 AM
The most important point besides the generally contradictory nature of SC precedent in the area is that, in Benson, SCROTUS failed to adopt the machine or transformation test; saying that is was just a clue.
Posted by: Just sayin' at June 7, 2009 8:41 PM
Well, well there, Mr. 6. The year 1877 was certainly an interesting one.
But why stop there on your journey to wayback? Why not read to us from the scriptures on the walls of your dwelling, you know, the cave? "Woe beeth to he who hath dreams and innovates beyond this one hole in the wall that man was meant to occupy and grovel in. Leave not this cave and shun all who dareth to teach thee new and useful arts." (-author unknown, copyright 10,000 BC)
At the time Congress passed the Patent Act of 1952, Einstein had already written his famous 1905 papers. Some in Congress might have been aware of E=mc^2. Some might have anticipated that new understandings of the universe and its makeup were about to be unleashed. And yet they wrote "ANY" new and useful process. Imagine that.
(And far worse, years later Congress enacted a section 273 that dared to acknowledge "business methods" as being patentable subject matter. Imagine that.)
Posted by: step back at June 8, 2009 2:15 AM
"The last time the Supreme Court took up patentability was in 1981, in Diamond v. Diehr, 450 U.S. 175."
JEM Ag Supply v. Pioneer Hi-Bred Int'l, 534 US 124 (2001).
Cites Diamond quite a bit, expansive view of 101. Specifically, the Court finds that other law granting patent-like protection for plants does not preclude 101 from encompassing plants.
Posted by: anonymous at June 8, 2009 5:07 AM
"At the time Congress passed the Patent Act of 1952, Einstein had already written his famous 1905 papers. Some in Congress might have been aware of E=mc^2. Some might have anticipated that new understandings of the universe and its makeup were about to be unleashed. "
"And yet they wrote "ANY" new and useful process."
They aren't always the most articulate people :( The fact of the matter is that it seems, from the various analysis which I have read, that the intention was not to change which processes were covered, but merely to update the language into what had become more fashionably used.
"And far worse, years later Congress enacted a section 273 that dared to acknowledge "business methods" as being patentable subject matter. "
I must have missed the portion in 273 which "acknoledge[d]" business methods as being patentable subject matter. All I have been able to cipher from 273 is that, in the event that a business method case is for some reason issued, perhaps even mistakenly, then there will be a defense. Perhaps you could point out the clause specifically which supports your position?
Besides all of that, the reason the quote is damning is because it suggests that it is process claims, rather than functionally defined apparatii, or product claims, which are what requires certain things be done in a certain order. That is, in addition to the tidbit about "certain substances" :)
Posted by: 6000 at June 8, 2009 5:40 AM
Help me understand the basis of your logic in trying to refute 273 and business methods.
You state "in the event that a business method case is for some reason issued, perhaps even mistakenly,". This implies that business method cases will issue. Do you agree?
They may issue both mistakenly and/or on purpose. Clearly, this does not say that ALL issues of business method patents are by mistake. Yet, that is wher your logic seems to indicate to go. Am I mistaken with your logic?
The clause itself (in its entirety) specifically supports the position stated. Why have a clause if you cannot have business method patents to begin with?
It is unclear what your base is for the logic you are trying to use to indicate that defense clauses are for mistakenly issued patents.
Posted by: breadcrumbs at June 8, 2009 9:07 AM
"This implies that business method cases will issue. Do you agree?"
No, it implies only that congress has witnessed the travesty happen. And it also shows directly that although they have not necessarily reached a concensus on whether or they should be allowed, and thus haven't mentioned them in the important statutes (101 for instance), they have at least decided that the poor saps that get hit with them should have a prior use defense.
"Clearly, this does not say that ALL issues of business method patents are by mistake. "
But it doesn't say that even some issues of business method patents are permitted by law either.
"Why have a clause if you cannot have business method patents to begin with?"
Because they don't have the balls to ban them outright. They at least concede that should a prosecutor bend the laws enough to get one issued, and a litigator bends the laws enough to sap a court into helping it out with an infringment claim, then there should be a prior use defense.
This is pretty simple, and it isn't a position which I myself came up with.
"It is unclear what your base is for the logic you are trying to use to indicate that defense clauses are for mistakenly issued patents."
I didn't say that it necessarily does say that. I say that seperately, outside of this discussion, there are grounds to cast doubt on the validity of many patents one might deem a "business method" patent. And further I say that the 273 clause doesn't change the analysis of their validity for the worse or for the better.
You've no doubt heard the legion of grounds on which they are challenged, I won't bore you with them here.
Suffice to say, 273 is irrelevant to the discussion of the validity of such patents. It is only relevant to what happens in a litigation of such a patent, should one happen to issue before congress gets its act together and speaks to the subject.
Posted by: 6000 at June 8, 2009 12:22 PM
Your post at 12:22 on 6/8/09 is clearly the winning and compellingly logical argument (not).
And congratulations. As typical, you have succeeded in diverting attention away from the fact that your 1877 court case quote above, arose well before the 1952 Act was enacted and well before modern physics came into being. But hey, who's paying attention to minor details like that in the first place?
I'm glad we had this frank and open discussion here under Hawk's roof. There are, of course, "other" blogs where your opinions seem to be much supported while dissenting voices are quashed by censorship. Perhaps those other blogs are funded by some coalition for "fairness" or the like? The poor Hawk's blog is apparently not. (It appears that some member of the fairness coalition is at the moment pissed off at the Hawk. Can't imagine why.)
Posted by: step back at June 9, 2009 3:47 AM
I aksed you to help me understand the basis of your logic in trying to refute 273 and business methods. Your answers use sentences and logic that are not coherent.
You answered: "No, it implies only that congress has witnessed the travesty happen."
The "only" implication is one of your creation. Obviously, it was more than only witness - congress put a law on the books.
"And it also shows directly that although they have not necessarily reached a concensus on whether or they should be allowed,"
You dabble in circular logic - whether they are allowed is the logic you are trying to point out - you use that logic(?) in stating that logic. What is this "concensus" you speak of? What is being shown directly? How is a law of congress indicative of "not necessarily"? Obviously, some concensus was reached - a law was passed. Obviously, business methods are allowed. Case law fully indicates such. Congress indicates such. You are being asked for logic that shows otherwise. How does your handwaving show otherwise?.
"and thus haven't mentioned them in the important statutes (101 for instance),"
This also does not make sense. 101 is broadly inclusive ("any"). It seems that you are trying to have the people write laws as you would write laws rather than you trying to understand what has been written.
"they have at least decided that the poor saps that get hit with them should have a prior use defense."
Here also, your logic is not coherent. Why just a prior use DEFENSE? A defense against what? Clearly, a defense against business method patents. Why JUST a prior use defense? If, as you posit, business method patents were NOT allowed, there would be no need for prior use defense. The only defense needed would be that the business method patent simply is not valid. In litigation, the more powerful argument would be used, so your statement that 273 is irrelevant also lacks logical foundation.
You posit that congress wanted to do something about the travesty of business methods. Then you surmise that they did not have the balls to ban them outright (there must be a story in your head why it would take balls to ban them outright and possibly some conspiracy that prevented them from doing so). If they are not banned outright, then they must be allowed. It's sort of like being somewhat pregnant, to use the phrase (you either are or you are not).
"But it doesn't say that even some issues of business method patents are permitted by law either."
You are dancing to a semantics tune that is playing only in your head. 6, perhaps a refresher course on simple set theory would help you put your logic together to explain your position. Currently, that position is not tenable with the simple reduction in logic.
Your answer does not set the logic straight.
Posted by: breadcrumbs at June 9, 2009 3:59 AM
Crumbs, is there any mileage in an explanation that Congress lacked the will to ban all "business methods" per se from patentability, so wrote a law providing that, to the extent that a business method claim gets through to issue, there is an extra defence for the accused infringer.
That falls short of Congress positively announcing "There are no constraints on the patentability of computer-implemented "pure" business methods, other than that they be new, non-obvious and enabled".
In other words, nothing yet from the Congress, that would modify 35 USC 101. SCOTUS has an open field, in which to perform its heavy lifting.
Posted by: MaxDrei at June 9, 2009 4:41 AM
Where would you take that mileage?
The logical issue to settle is simply: Are business method patents allowable by congress?
Your mileage would indicate the answer is Yes and the discussion concludes (going the extra step about "to the extent" and "gets through to issue" are non-sequitors to the base issue). The fact that Law 273 exists needs to be logically squared with the supposition that business method patents are NOT allowable by congress. I simply have not seen any logic at all (compelling or otherwise) that squares the simple premise.
Posted by: breadcrumbs at June 9, 2009 5:54 AM
"And congratulations. As typical, you have succeeded in diverting attention away from the fact that your 1877 court case quote above, arose well before the 1952 Act was enacted and well before modern physics came into being. But hey, who's paying attention to minor details like that in the first place?"
Hey man, I wasn't the one who cited it.
"Crumbs, is there any mileage in an explanation that Congress lacked the will to ban all "business methods" per se from patentability, so wrote a law providing that, to the extent that a business method claim gets through to issue, there is an extra defence for the accused infringer.
That falls short of Congress positively announcing "There are no constraints on the patentability of computer-implemented "pure" business methods, other than that they be new, non-obvious and enabled".
In other words, nothing yet from the Congress, that would modify 35 USC 101. SCOTUS has an open field, in which to perform its heavy lifting."
There is infinite milage in that explanation but he is incapable of seeing it.
Here crumbs, in short. Congress passed the original patent act. It did not include "process" or "method". It used the term "art".
"any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter."
Is the actual quote. Now, you may notice how business methods probably don't fit under the word "art" right here. Thus, you didn't have too many yahoos submitting apps for one, and the ones that did were likely rejected and their app never got published. Fast forward many years and congress is drafting a new patent act. Many of them see the word "art" and realize that the term "art" isn't used in that manner anymore, and so replace it with process. According to the scholarly work on the matter, and tidbits in judicial decisions (Ex Parte Lyell might be one off the top of my head) you can see that congress's intention was not to change the scope of 101, it was merely to update the wording into commonly used terms. Fast forward 20 years, some geniuses like myself decide to get cute and start filing for methods of performing business divorced from substances, machines, or transformations etc. so they can troll more effectively. 10 years later some of these start to get through the patent office (not all examiners are on their game you know). A few court cases appear to support them being issued and litigated. Around 1999 Congress has this situation brought to their attention, the concerned folks do not necessarily have the entire congress behind them to pass a law contradicting the likes of SS/ATT's etc. support for business methods and place a straight up ban on them. (You may recall from your civics class that congress doesn't always exactly come to an immediate decision amongst its several hundred representatives.) But, at least an acceptable amount of them do agree that business methods would often times be covering processes which were being performed by businesses since before the FD/ID and since this is the case, they decide to make it a defense to infringment in such cases to have been using the process prior to the patentee inventing it. The pres signs it into law and thus, 273 was born. You notice that in all of this long chain of events, congress never spoke to the matter of them actually being patentable under 101, except in so far as recognizing that indeed some cases had issued before they passed the section.
That is the "logic" or whatever ridiculousness you're looking for. All I give a sht about is what has actually occured, not "logically" crafting an argument to contradict your position. You're welcome to your position, but understand that you're on thin ice if you should take such a position. Once the USSC gets its hands on Bilski, you will not be a happy man.
Posted by: 6 at June 9, 2009 6:00 AM
"Are business method patents allowable by congress?"
The logical answer is that congress never spoke them into being allowed, but they never spoke them into not being allowed.
Thus, the courts step in. As they are about to. :)
Posted by: 6 at June 9, 2009 6:02 AM
"The fact that Law 273 exists needs to be logically squared with the supposition that business method patents are NOT allowable by congress. "
This indicates, btw, that your base problem is that you buy into the "everything under the sun made by man" fallacy. It was dicta lifted from some case, one judge's opinion on an issue not before him.
The actual issue at hand is not whether or not business methods are disallowed by congress, but whether they were ever allowed by congress in the first place. Patents don't just come naturally you know, their existence has to be specifically blessed by congress, anything not specifically blessed is suspect.
Posted by: 6 at June 9, 2009 6:05 AM
"Now, you may notice how business methods probably don't fit under the word "art" right here."
Actually, they seem to fit quite nicely - my MBA professors definitely thought the art of business was a discipline on equal par with the art of engineering. My engineering professors were interested in how to make money and did listen to the business folks, rather than dismissing them out of hand.
"Once the USSC gets its hands on Bilski, you will not be a happy man."
You have no idea what makes me a happy man. I have not indicated how I feel about Bilski. You also have no idea what the USSC will do with Bilski (think obliteration of CAFC bright line tests). You do seem to lack constraint both in your application of logic for both specific and general discussions. Would you agree that this is a sign of an immature mind?
""The fact that Law 273 exists needs to be logically squared with the supposition that business method patents are NOT allowable by congress. "
This indicates, btw, that your base problem is that you buy into the "everything under the sun made by man" fallacy. It was dicta lifted from some case, one judge's opinion on an issue not before him."
No, this indicates, btw, that you have ignored the base problem in your logic and wish to conflate the issue rather than square the logic. It also indicates that you are ignoring the use of the word "any" as is meant to be broadly inclusive - or are you sweeping that bit of jurisprudence out of sight?
Why do you wish to be difficult?
"anything not specifically blessed is suspect."
Oh really? How specific must one go? How specific is "any"? How do you then square the quote from Bilski: "We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court."?
Posted by: breadcrumbs at June 9, 2009 6:59 AM
"my MBA professors definitely thought the art of business was a discipline on equal par with the art of engineering"
No wonder you're so misguided :(
Bread, anyone who takes the position you do on Biz methods has already tipped their hand as to what would make them happy.
And btw, it wasn't me that conflated the issue. It was people that started filing biz method patents. I personally didn't conflate sht, I merely am pointing out how it is already conflated. And the jurisprudence directed towards "any" being broadly inclusive didn't say that it was all inclusive. And, I might submit that it really isn't me being difficult here, I'm just the sucker out of the millions of perfectly normal people out there taking the trouble to attempt set one poor misguided soul straight. Alas, my time to do so grows short.
Personally I believe "one", i.e. congress, must go pretty specifically when it comes to something as important as patents can end up being. As to Bilski it was right on point in so far as they rejected catagorical exclusions. The "exclusion" (read exclusion as merely things which weren't included) needs to be based on the merits of the claimed subject matter of the cases before it, not the catagory under which that subject matter falls. Thus, it is already in perfect square with my position, I can't further square it.
The one question that may bring this discussion into focus for you is:
If the USSC did decide to exclude biz methods (and software distinguished claims as a side dish) as a catagory, would congress override them statutorily in the next session (or any other session)? The answer is no, with a 100% chance of a no, and you know it.
That's all I've got for you man, sorry. I've got some work to do.
Posted by: 6000 at June 9, 2009 7:55 AM
"The "exclusion" (read exclusion as merely things which weren't included) needs to be based on the merits of the claimed subject matter of the cases before it, not the catagory under which that subject matter falls."
Are you sure?
The next two sentences in Bilski:
"We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76. We reaffirm this conclusion."
Posted by: breadcrumbs at June 9, 2009 8:42 AM
Bread, if you go to the IPKat blog, there you will find the new assertion (not tongue in cheek) that the EPO is now, thanks to Bilski, more accommodating to business methods than the USA, despite the narrow "per se" statutory exclusion of "methods of doing business". So, being European, I see the scope for permitting patents on some business methods (those that embody a solution by technical means of an objective technical problem) while refusing all others.
Aharonian is scathing, as might be expected but, hey, so what.
The EPO has just published a brochure that will help you get a feel for "technical". Since GATT-TRIPS uses "technology", to define what's patentable, that might be worth doing.
Posted by: MaxDrei at June 9, 2009 10:01 AM
"That's all I've got for you man, sorry. I've got some work to do."
Its about time you did some work. No wonder there's a backlog.
By the way you better be careful using those big impressive words like "conflate." People might mistake you for someone who actually knows something.
Na, I'm just kidding with you. That'll never happen.
Posted by: Just sayin' at June 9, 2009 6:22 PM
6 writes at June 9, 2009 6:00 AM:
"Fast forward many years and Congress is drafting a new patent act. Many of them see the word "art" and realize that the term "art" isn't used in that manner anymore, and so replace it with "process". According to the scholarly work on the matter, ... you can see that Congress's intention was not to change the scope of 101, it was merely to update the wording into commonly used terms."
Once again, 6's false fables don't square with firm facts.
Congress amended 35 USC 100 to read:
When used in this title unless the context otherwise indicates—
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
There is a simple operation many of us learned in high school Algebra. It is called substitution. When A is equal to B, one may substitute A for B. Let us try that simple operation on 35 USC 101. In view of section 100, we see that 101 reads as follows:
Whoever invents or discovers any new and useful [process, art or method, (where the latter 3) includes a new use of a known process, machine, manufacture, composition of matter, or material], machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
One does not have to be a rocket genius to see that where there was just one term, "art", by act of Congress there are now three terms, "process, art or method". One can see that Congress has not only added to the original word "art" which is still there, but that Congress has gone out of its way to make it clear that those terms are understood to "include" any new and useful "use" of a known process, machine, manufacture, composition of matter, or material.
Of course, 6 doesn't like facts of this kind. And therefore 6 retells again and again his false fable about Congress merely "replacing" art with the more modern word, "process". The deception meter pins to the red 100% falsehood end on this among 6's tall tales. But then again, what else is new about whatever is made by 6 under the sun?
Nice to have a blog where debate isn't quashed by censorship. This is so unlike that "other" blog where 6 and MM seem to have perpetual get-out-of-jail cards while voices of dissent get 'accidentally' erased.
Posted by: step back at June 15, 2009 1:07 AM
"One does not have to be a rocket genius to see that where there was just one term, "art", by act of Congress there are now three terms, "process, art or method"."
One does not have to be a rocket genius to read work already done on what happened by people who are not 6 and verify what he said was true.
Go forth grasshopper.
You might also brush up on your algebra. Substitution isn't always applicable.
Posted by: 6 at June 15, 2009 6:51 AM
6 != 6 ?
And yet he reads and defends himself by claiming that he is not himself? That what he wrote, he did not write? Hmmm. It could be possible. Stranger things happen in the realm of quantum mechanical reality.
Anyway. By my simpleton's count:
Any "art" = one broad term
Any "process, art or method" = three broad terms.
Substitution not always possible?
Then why call something (i.e. 35 USC 100(b)) a "definition"?
Posted by: step back at June 15, 2009 10:30 AM