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November 10, 2009


J. Michael Jakes had one helluva day being slammed with well-deserved shots from Supreme Court Justices in oral arguments Monday. Jakes represents Bernard Bilski in his quest for a patent on a ridiculously vague claim for managing risk. On the government's side, Deputy Solicitor General Malcolm L. Stewart's position was stiff as a board in supporting the CAFC's rigid machine-or-transformation test for patentable methods. But that was not entirely a bad thing.

Stewart wanted the damage from Bilski contained, arguing that this particular case should not be the vehicle for circumscribing software patents or medical diagnostic techniques as patent-eligible. "To say that business methods are categorically ineligible for patent protection would eliminate new machines, including programmed computers, that are useful because of their contributions to the operation of businesses."

Chief Justice John G. Roberts Jr. took issue with that, asking why the "most tangential and insignificant use of a machine" might be patentable. "That's like saying if you use a typewriter to type out the process, then it is patentable."

Computer whiz Justice Stephen G. Breyer chimed in. "All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it's a machine."

New face on the bench, Justice Sonia Sotomayor took a long view, worrying out loud that the machine-or-transformation test could foreclose patenting of technologies not yet imagined. Sotomayor's ex-husband is patent maven and blogger Kevin Noonan. "Once you announce an exclusive test, you're shoe-horning technologies that might be different. So help us with a test that doesn't go to the extreme the Federal Circuit did, which is to preclude any other items, something we held open explicitly in two other cases, so we would have to backtrack and say now we are ruling that we were wrong, and still get at something like this."

Remarking on Stewart's admission that the CAFC Bilski opinion "didn't answer all of the hard questions," Justice Breyer added his own nail to the coffin of the CAFC's machine-or-transformation test: "They've left much unresolved."

The Justices repeatedly ridiculed Jakes advocacy of intangible method patentability. Justice John Paul Stevens straight up: "None of our cases has ever approved a rule such as you advocate."

In a rhetorical scold, Justice Breyer beamed about not being boring, getting a laugh in the process: "I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. It was fabulous. And I could probably have reduced it to a set of steps, and other teachers could have followed it. That you are going to say is patentable, too?"

Justice Breyer rightly observed that Jake's logic would leave room to patent practically any method of doing business. "Every successful businessman typically has something. His firm wouldn't be successful if he didn't have anything that others didn't have.... And your view would be... anything that helps any businessman succeed is patentable?" To which Jakes replied, "yes."

Chief Justice Roberts considered Bilski's claims going to centuries-old commodity hedging. "I mean, I could patent a process where I do the same thing. I initiate a series of transactions with sellers. I initiate a series of transactions with buyers. I buy low and sell high. That's my patent for maximizing wealth."

The often scalding Justice Antonin Scalia was relatively subdued, content to state the mundanely obvious, that patents are for inventions for manufacture, "not someone who writes a book about how to win friends and influence people." Justice Sotomayor added the example of a method of speed dating as being patentable under the Jakes/Bilski regime.

But Justice Scalia did backside kick the hapless Jakes. "Let's take training horses. Don't you think that some people, horse whisperers or others, had some ... insights into the best way to train horses? Why didn't anybody patent those things?" Jakes retorted: "I think our economy was based on industrial processes." "It was based on horses, for Pete's sake!" Scalia snorted. "I would really have thought somebody would have patented that."

The machine-or-transformation test, Jakes said, "would exclude some valuable inventions that I think everyone would agree are technological under any test, such as data compression, such as FM radio." Justice Anthony Kennedy and Chief Justice Roberts then inquired what part of the Morse code would be patentable under Jake's formula. In the 1840s, Samuel Morse did receive a patent for the electrical telegraph, but a later process patent on the Morse code failed to pass muster because it failed to recite any machinery, relying upon "electromagnetism, however developed".

"You think you can patent an alphabet because it is a process of forming words," queried Chief Justice Roberts. "It could be, yes," Jakes answered. But, Jakes added, that such a claim would have to be novel and non-obvious.

Time and again, Jakes refused to draw a line excluding any process for patentability. His position left the justices questioning whether he was advocating the "ownership" of basic human activities.

The root of the justices' concerns was not opening the gates of patentability to abstractions, coupled with a concern to not be so rigid as to close the door on new technologies unforeseen.

There is no doubt that Bilski's claims will be buried, alongside the CAFC's machine-or-transformation test. It is quite unlikely that the Court will swing wide and terminate software patents. Stewart made it clear that that government was not looking to overturn the CAFC's 1998 State Street decision, which opened the door to patenting software.

The Bilski case has been the subject of intense interest by patent practitioners, drawing nearly 70 amicus briefs, including a succinct brief from Patent Hawk, asking the Court to remain true to itself and affirm its previous precedents.

The Hawk's conservative position is that the CAFC had, by dilution, rendered §112 ¶2 milksop, that putting teeth back into the definiteness requirement would take care of the Bilski ilk. Supreme Court precedent on §101, by contrast, has been quite permissive, not wishing to shut out unforeseeable new technologies from patent protection. The best possible news would be that the Court's damning of Bilski be less about patentability, other than affirming abstract ideas as out of of bounds, and more about banishing vagueness, requiring clear and definite claims.

Posted by Patent Hawk at November 10, 2009 12:14 AM | § 101


I just wish to hell people would stop saying "software patents" and "patenting software."

There are no software patents. There are process patents in which one or more steps includes some sort of software limitation. That is still a process patent.

There are article of manufacture patents in which some hard drive has software written on it. That is still an article of manufacture.

There are machine patents in which a computer is "modified" by some sort of instructions.

Why is it patent professionals, examiners, courts and wise-ass justices have so much trouble with the elementary concept that there are only 4 statutory categories, and software isn't one of them?

What did Thomas have to say, anyway?

Welcome back, Hawk. Hope it wasn't swine flu.

Posted by: Veritas at November 10, 2009 8:42 AM

Hi Veritas:

Thanks for the comment. October was busy with litigations, and it was a slow news month, patent wise.

You make a good point about "software patents." I use the term as a shorthand for "computer-implemented method," or its Beauregard (manufacture article) variant. The term 'software patents' needs to be considered a good thing, like 'patent troll' as a patent monetizer against corporations. The only people against software patents are corporate sycophants and paranoid copycat software developers who want a free ride on others’ ideas - open source as open season on software technology.

My report was culled from many other reports. No one mentioned Justice Thomas. He's often a quiet one in oral arguments anyway. The contemplative sort. ;-)

I did neglect to mention that Justice Ginsburg dashed vinegar into the proceedings with sharp-tongued skepticism, but no one reported vignettes worth reportage, hence the omission.

Posted by: Patent Hawk at November 10, 2009 10:18 AM

Veritas -

There are not four categories, there are eight:

"process, machine, manufacture, or composition of matter, or any new and useful improvement thereof

Posted by: David Boundy at November 10, 2009 10:48 AM

Please, fix the typo Sonia Sotomayo_r_ which is repeated more than once in the article.


Posted by: Filippo Rusconi at November 10, 2009 2:02 PM

Yeeeha, David! Touche'

My taxonomy is the 4 primary categories plus the 2 secondary categories you point out.

Your approach is not as accurate because it ranks uses and improvements equal to the 4 primary categories, whereas in actuality they are dependent upon the 4 primary category. You can't have an improvement of anything other than the 4 primary categories.

Incidentally, new uses must always be claimed as a method, so it is not actually a distinct category. It falls within methods.

Also incidentally, I classify novelty, non-obviousness, and utility as the three statutory qualities.

If CJ Roberts would organize some sort of taxonomy like yours or mine, he would have a lot easier time understanding that Bilski is not about obviousness.

Always good to hear from you, David.

Posted by: Veritas at November 10, 2009 4:08 PM

But David, what about 35 USC 100(b):

(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?

Now the accounting reaches the complexity of a Talmudic discourse on Passover night! If "process" counts twofold due to the 'any improvement thereof' provision, then surely that two count is multiplied by at least by 3 or 4 due to 100(b). Who truly can figure out the full count of how many areas of invention are permitted by 35 USC 101? And ah what a wondrous miracle 35 USC 101 is. It is with a strong arm and brilliant mind that Giles Rich continues to influence us even from that great patent office in the sky.

Posted by: step back at November 10, 2009 5:22 PM

There is no doubt that Bilski's claims will be buried, alongside the CAFC's machine-or-transformation test.

I couldn't agree more.

It is quite unlikely that the Court will swing wide and terminate software patents.

I would say unlikely to terminate "all software patents," but some are going down. Too many of the judges seemed concerned that any process (once added to a computer) becomes a machine and thus 101 subject matter.

I believe they are going to create a rule under which some claimed computers won't be 101 subject matter because their recited functions don't amount to a 101 process.

Posted by: anonymous at November 10, 2009 6:03 PM

"I believe they are going to create a rule under which some claimed computers won't be 101 subject matter because their recited functions don't amount to a 101 process."

That is actually a surprisingly likely course of events.

Posted by: 6000 at November 10, 2009 7:24 PM

What amazed me about the oral arguments is that none of the justices appeared to recognize the difference between what is "patent eligible" subject matter and what is "patentable." My understanding is that Jakes was advocating that processes such as claimed in Bilski's patent were "eligible" for patenting under 101. He in no way suggested or advocated that the utterly ridiculous hypotheticals postulated by the justices were, in fact, "patentable." To repeat, advocating that a process is patent eligible (i.e., potentially patentable subject matter under 101) is NOT the same thing as advocating that such processes are "patentable."

In my view, methods such as Bilski's are "patent eligible" under 101 because they are not merely an "abstract idea" or product of nature. Thus, they are more consistent with the court's Chakrabarty holding, where the court found that Congress intended the patent statute to cover "anything under the sun that is made by man." Granted, Chakrabary was drawn to a manufacture/composition of matter (a bacterium), but to me the result is the same when the analysis is applied to methods such as Bilski's. Indeed, such methods are not simply abstract ideas, but are working systems created by man. As such, I maintain that such methods are eligble for patenting under 35 U.S.C. 101, and that 102 and 103 are the battlefield on which the "patentability" of such methods should be waged.

Posted by: klaviernista at November 11, 2009 12:34 PM

The "fluff" which the Justices are worried about would not pass 102/103 muster so they should not be worried.

Posted by: patent prosecutor at November 11, 2009 10:12 PM

The typewriter analogy was a public admission that at least one chief justice on the bench had no idea what the case is about.

Justice Thomas was right on point, as usual in these USSCt donkey shows. The rest of them ought to re-read Mark Twain -- Keep your mouth shut and people will think you're clueless; open it and they'll know. The USSCt inquisition technique has gone waaay too far in the wrong direction.

When you get up there, Hawk, give them my love.

Posted by: Veritas at November 12, 2009 8:36 AM

"The USSCt inquisition technique has gone waaay too far in the wrong direction."

Hear, hear...

I start pulling few remaining hair on my arse every time I hear some "words of wisdom" coming from the SCOTUS bench

Posted by: angry dude at November 12, 2009 10:22 AM

"What amazed me about the oral arguments is that none of the justices appeared to recognize the difference between what is "patent eligible" subject matter and what is "patentable."


Very astute observation. Unless SCOTUS disconnects "patent-eligible" from "patentable," we could have a mess come from the Bilski decision.

Posted by: EG at November 13, 2009 6:46 AM