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July 27, 2009

Lever

Bernard Bilski and his buddy got a nebulous notion about risk management. So they hired a run-of-the-mill prosecutor to scratch a sketchy spec and draft some bodaciously crappy claims. The PTO pitched the poop. But then the CAFC fouled the plumbing with precarious precedent, so the Bilski bauble floated to the top, where the Supreme Court has the final flush, but the only needed motion is reiteration.

Amici briefs aplenty. Cogently potent in its brevity and conservatism, one weighs in at a mere 2,381 words.

Summary of Argument

Bilski's claims are not patentable first and foremost because they lack definiteness, and so are not valid under 35 U.S.C. §112 ¶2. Finding this dispositive on narrow grounds, the Court need not reach to the broader issue of §101.
But dicta by the Court on §112 ¶2 and §101 are crucial, because the current guidelines from the Federal Circuit for both §112 ¶2 and §101 stray from statute and well-grounded Supreme Court precedents.

The law broadly affords patentable subject matter under 35 U.S.C. §101: "...any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof..." The Court affirmed this with regard to process patentability in Diamond v. Diehr. The Federal Circuit instead has inflexibly interpreted as mandate what the Court had indicated as but "clues."

The law specifically states that the quid pro quo of a patent grant requires "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The Federal Circuit instead has eviscerated this requirement, finding that a "claim will be found indefinite only if it 'is insolubly ambiguous, and no narrowing construction can properly be adopted....'" 4

This brief suggests nothing more than the Court affirm its long-standing precedents on §112 ¶2 and §101, and so put the patent grant back on the firm ground of requiring clarity while promoting "the progress of Science and useful Arts." 5

4 Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
5 U.S. Constitution, Article 1, § 8.

1. Applying Statute In Construing Claims & Their Validity

There is a logical sequence for construction of claims. The first step is understanding what a claim means. This is essential to establishing the boundaries of the claim. As such, the first hurdle in claim construction is §112 ¶2, determining the clarity of the claimed boundaries.

Upon passing that first test, the second hurdle is whether a claim is supported by its attendant specification, under §112 ¶1. So, §112 serves as the first gatekeeper, that claims are clear and enabled.

The hurdle then becomes whether the claim is patentable subject matter under §101. While §112, the first gatekeeper, is stern, §101 is an obliging gatekeeper, proscribing only "laws of nature, natural phenomena, and abstract ideas." 6

Finally, the worthiness of a claim is tested for its novelty in light of §102 and §103. This third gatekeeper requires "more than the predictable use of prior art elements according to their established functions." 7

As such, the sequence of claim analysis arcs from matters of law to a matter of fact, all from the perspective of "any person skilled in the art to which it pertains."

6 Diamond v. Diehr, 450 U.S. 175, 185 (1981).
7 KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

Read the entire amicus brief.

Posted by Patent Hawk at July 27, 2009 3:26 PM | § 101

Comments

Well put.

I would only change the flow of the argument, as the "gatekeeper" function has traditionally been held as 101 (wide open gate - everyone invited to the party).

We agree on the importance of 112 as a strict requirement. Flip that flow and we follow fine.

Posted by: Noise above Law at July 27, 2009 4:42 PM

You really hate 101 don't you Hawk? Sorry about your case man.

Posted by: 6 at July 28, 2009 12:01 AM

"As such, the first hurdle in claim construction is §112 ¶2, determining the clarity of the claimed boundaries."

I respectfully disagree. The first thing you decide is: "What is being claimed?" And until you can figure that out, and drop it in a stat category, there is a problem.

Then, you move on to deciding if you can understand the boundaries, or scope of the claim, definitely.

It's the dad did it, it's how America does it, and it's worked out pretty well so far.

I also like how they cheerfully neglected the prohibition on signals. Which is a very valid prohibition.

Posted by: 6 at July 28, 2009 12:14 AM

Hawk,

Enjoyed the brief. I agree. The Supremes are going to toss the Fed. Cir.'s "decision" and simply reiterate that the test for 101 eligibility is abstract idea, law of nature, whatever. We'll know it when we see it.

Unfortunately we're going to be stuck with this idiotic Fed. Cir. decision probably for another year. I guess we'll just have to work our way through it.

Posted by: JohnDarling at July 28, 2009 6:38 AM

"The Supremes are going to toss the Fed. Cir.'s "decision" and simply reiterate that the test for 101 eligibility is abstract idea, law of nature, whatever. We'll know it when we see it."

Exactly.

Posted by: Anonymous at July 28, 2009 7:57 AM

Friendly wager JD?

Terms?

Posted by: 6000 at July 28, 2009 10:57 AM

PH -
Well-written, Mr. Hawk. My two cents: the gatekeeper is 101. Consider the following claim: 1. An method of determining the speed of light comprising the steps of computing the square root of Energy divided by Mass.

It's unlikely we'd ever even reach the 112 analysis because 101 wouldn't let us through the "gate."

That said, I wonder if your briefs MIGHT draw some supporters from amongst the law clerk ranks for its brevity and thoughtfulness. For instance, if they might prod their justice to ask a few of the definiteness questions that you raise.

Posted by: Mike at July 29, 2009 5:37 AM

"Friendly wager JD?

Terms?"

I'm not sure what the wager is. I'm pretty sure that the Supremes are gonna say that Bilski's claims are not patentable under 101. I don't think there's any disagreement there. But I'm also pretty sure that there's no way in heck the Supremes are gonna affirm that the "definitive" test for patentable subject matter under 101 is machine-or-transformation. Their own precedent says that is not the exclusive, or even definitive, test.

The Supremes are simply going to wave their hands and declare, "The test is contained in our prior precedents" just like they did in KSR.

Book it.

Posted by: JohnDarling at July 31, 2009 6:19 AM

"But I'm also pretty sure that there's no way in heck the Supremes are gonna affirm that the "definitive" test for patentable subject matter under 101 is machine-or-transformation. Their own precedent says that is not the exclusive, or even definitive, test. "

Well we agree then. No bet I guess.

"The Supremes are simply going to wave their hands and declare, "The test is contained in our prior precedents" just like they did in KSR."

We might could find some disagreement there, but it probably isn't worth betting on. I say they'll add some to their precedent, just like in KSR (common sense lolz), and it will be worse for applicants than machine/transform.

Posted by: 6000 at July 31, 2009 6:53 AM

"I'll say they'll add some... and it will be worse for applicants than machine/transform."

Not sure what you are implying 6.

Can you offer any additional insight into what you mean?

Posted by: breadcrumbs at July 31, 2009 7:32 AM

"Can you offer any additional insight into what you mean?"

There isn't much to add. The USSC will find a way to make some precedent screwier than the one the Fed. Circ. dreamed up, and, to make the matter more interesting, they'll make it a subjective determination for kicks (kind of like particular machine).

Either that, or they will follow the history lesson in the concurence in Bilski.

They might merge the two above, by using that history lesson to craft the newly dreamed up criteria.

Even odds on any of the above. But a 0 percent chance that software/biz method clients will be happy about it (compared to SS/ATT).

Posted by: 6000 at July 31, 2009 7:50 AM

Each previous time the Fed. Cir. announced a bright line rule (amendment automatically invokes PHE and bars DOE in Festo and TSM in KSR) the Supremes gave the Fed. Cir. the back of their hand. Same will happen in Bilski. Fed. Cir. announces "definitive" machine-or-transformation test and it was DOA the moment cert was granted.

I think the only certainty is that nobody who has to actually live with the Supremes' decision is going to be happy. That idiot Scalia will pronounce "machine-or-transformation" to be "gobbledygook" and then prattle on about things which he knows not. Same as KSR.

In the end, the result will be: figure it out for each case as best you can by picking and choosing select quotes from the Supremes' decision. Same as KSR.

The PTO will come out with a "memo" including "guidelines" that will have like 6-8 "scenarios" where patentable eligible subject matter may be found, complete with whatever non-sequiturs they feel like lifting from the decision. Same as KSR.

Example: Whatever "infallible for life" black robed majician gets stuck with penning the majority opinion will write something incredibly insightful along the lines of, "We have previously stated that abstract ideas are not patentable. An abstract idea is an idea that is abstract." and the PTO will turn that into a form paragraph.

Have at it.

Posted by: JohnDarling at July 31, 2009 9:01 AM

"We have previously stated that abstract ideas are not patentable. An abstract idea is an idea that is abstract."

I always lol when I read that one.

One of my appeals specialists mentioned he'd like to know how many pre-appeals get the go ahead and never go to the board. Do you recall (maybe have faved) having seen a rough answer to that JD? Either in % or numbers over the course of a year or a few years?

Posted by: 6000 at July 31, 2009 10:49 AM