Deciding Bilski on Patentable Subject Matter is Just Plain Wrong

By Gene Quinn
February 21, 2010

I am sure it will come as no great surprise to anyone who is a regular reader of IPWatchdog.com, but let me be as clear as I can be and put my bias right out in the open. I am a true believer in the patent system and I like the US approach to patentability, which is one where practically everything is patentable. There are, of course, some notable exceptions in the US. For example, you cannot patent something that is only capable of use for an illegal purpose, but if you get a rejection based on this it shows an acute lack of imagination. You don’t patent burglar tools, you patent locksmith tools! In any event, you also cannot patent an idea, laws of nature (such as E=mc², or the law of gravity), mathematical equations or things that are merely discovered. Pretty much anything else is fair game though, including software, business methods, living matter and pharmaceuticals. Given that patent watchers and software folks are becoming increasingly impatient waiting for a decision from the Supreme Court in Bilski, allow me to focus on software and business methods.

From a conceptual standpoint why not allow for software and business methods to be patented? What is the harm? Why should we ever be making this a determination about what can or should be considered patentable subject matter? For crying out loud patentable subject matter is but one of the patentability requirements! There is absolutely no need to attempt to wrap all of the patentability requirements into a single 101 inquiry just because the subject matter of the invention happens to relate to a business method or piece of software.

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.

The patentability inquiries under 101, both patentable subject matter and utility, have always been, and are even now, threshold inquiries. When deciding whether a certain category of invention is patentable subject matter that is not ipso facto deciding that the invention should be awarded a patent, yet the nay sayers who despise software and business methods cannot be troubled with the other patentability requirements and prefer to cut to the chase and simply say software and business methods should not be patentable — period. But that would render an entire class of innovation unpatentable even if the resulting innovation were new, non-obvious and described adequately so that others of relative skill and experience would be able to follow along with the patent and be able to understand and even replicate the invention.

In truth, there are a lot of objectionable software patents out there but they are objectionable because they are either not new (probably rare), they are obvious (far more common) and/or they simply are not described so others could replicate the invention (extremely common if you ask me). A patent is not supposed to be a blueprint, but it has to be more then merely suggestive, which is where so many software and business method patents fall down. So why then decide any of these cases based on patentable subject matter? Beats me. It is clearly the wrong part of the patent laws to be focusing on.

The questions presented by 101, both for patentable subject matter and for utility, are nothing more than the patent equivalent of asking whether you are tall enough to ride the ride. We have all seen these signs at amusement parks before — You MUST Be “This Tall” to ride this ride. If you are tall enough end of inquiry. You qualify to ride, but the fact that you qualify to ride doesn’t mean that you have any likelihood of getting to the front of the line to actually get on the ride before the park closes. It also doesn’t guarantee that you will not lose loose items such as glasses, wallets, change, jewelry and/or any other object that you elect to bring on the ride with you.

Conceptually why should software and/or business methods be treated any differently than any other invention? We do not require that an apparatus satisfy the novelty, nonobviousness and description requirements under 101 before a patent can issue. This is not happenstance either. There is a very good reason that we do not require an apparatus to satisfy novelty, nonobviousness and description under 101; and that good reason is because these are NOT inquiries that come up under 101! So why then should we collapse all of the patentability requirements into one requirement, a requirement never intended to do anything other than be a threshold inquiry?

During oral arguments at the Federal Circuit Judge Rader was keeping his eye on the ball. The question before the Federal Circuit related to patentable subject matter, not ultimate patentablity. Rader went so far as to suggest in a passing comment while Mr. Chen was arguing on behalf of the government that he has real doubts that the Bilski invention would ever satisfy either 112 or 102. Nevertheless, Rader kept wanting to know why the statute clearly allows for process inventions to be patentable if a process requires a machine to be patentable. This is indeed an excellent question, and one that several of the Judges were interested in exploring on that day. Of course, we know what happened in that case and the majority of the Federal Circuit got it wrong, although Judge Rader and Judge Newman did get it right.

Self proclaimed protectors of the integrity of software advocate for free and open source and no proprietary rights. Many of those in the financial sectors also advocate against business method patents. What a wonderful world it would be if real world investment, innovation and technical advancement would follow good ideas and processes whether they are or can be protected. That is not the world we live in though. There cannot be market opportunity without proprietary rights, and if the Supreme Court returns us to pre-State Street law and does away with the patenting of all business methods that will be bad for our economy, not to mention outright inconsistent with the well established law associated with patentable subject matter.

Bilski should not be about patentable subject matter, or if is decided on patentable subject matter the grounds for the decision should be extremely narrow and tailored to the facts of the case. If the Supreme Court wants to issue a decision saying the Bilski invention is not patentable subject matter the decision should be no more than a few pages. Set up the facts and procedural history and then issue a one line holding, namely that purely mental processes are not patentable. Observe, think, react should not be patentable, at least in my opinion. But even then the Supreme Court needs to be very careful because an overly broad decision making mental processes and the like unpatentable could impact diagnostic methods, which would be enormously negative. We desperately needs research and funding into diagnostics. Without diagnostics you cannot develop treatments, so diagnostic methods must always come before treatments. If we want to push the innovative envelope with ever more treatments and cures, we must have diagnostic treatments, so Supreme Court beware!

Who knows when we will have a decision in Bilski. It could be soon though. I have heard rumors that a decision will be out within a couple weeks, but in truth there is really no way to tell. I suspect that just means everyone is anxiously awaiting word, and if you ask me a decision cannot come soon enough. District courts are starting to do the responsible thing and stay litigation pending resolution by the Supreme Court. So there is great hope that a decision will actually be enlightening, rather than a non-decision that gives scant guidance and kicks it back down the ladder for further consideration. That would be the worst possible outcome. I sure hope that doesn’t happen.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments.

  1. Mark Nowotarski February 22, 2010 2:57 pm

    For those on the front lines, here is the current guidance examiner’s are using for 101

    http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf

    http://www.uspto.gov/patents/law/comments/2009-08-25_interim_101_instructions.pdf

  2. pop February 22, 2010 3:12 pm

    [This is a monster comment, so please excuse any typos or mistakes or lack of coherent structure. I’m writing this in bits and pieces at work so it isn’t’ exactly a polished product.]

    I certainly cannot claim to be an expert on patent law, however, I have had an evolution of opinions about the subject when it comes to software, almost entirely due to an increasing understanding of it. I think the reason why most anti-software patent advocates believe what they do, is because they lack an understanding of what patent law says, what it means, and what it is supposed to accomplish. This isn’t always the case however, as there are individuals out there like Richard Stallman who clearly possess a firm grasp on the subject, but hold opinions against software patents out of philosophical zealotry. People listen to individuals like him speak, who have authority and respect in the computing world, and adopt the speakers opinions for their own without looking into the subject for themselves. I once fell into this camp myself. Luckily, I am not the sort of person who enjoys taking things on faith and have spent a considerable amount of time working out the facts for myself.

    My current opinion is that we need a reform in the way patent law is interpreted at the USPTO and in the way patents are enforced in court, and not a reform in the law itself. There seems to be a chain effect when several parts of the law are allowed to be lax. If section 103 and the full disclosure (37 USC 1.71) and utility requirements were honestly enforced, I personally believe it would weed out the vast majority of bad software patents. People seem to be able to get away with claims in the software world that wouldn’t cut muster in other fields. If a pseudo-physicist tried to file a patent for a teleportation device, the USPTO would rightly demand a working demonstration. This, however, doesn’t seem to be a problem for software patents, no working copy need be enclosed.

    Companies like Affinity Labs file many patents which, once the claims have been read, are either directly ripping off things that have been around for a lot longer than a year, or, they never were demonstrated to work at the time the application was filed. The reason whey they, and other large company’s which do produce products, are allowed to get away with these shifty patents is because of a lack of enforcement of section 103, utility, and full disclosure. How can you fully disclose a procedure, process, or product you have never attempted to create or use? These types of patents are laid out by the truck full, and the owners simply wait for somebody who would deserve the patent to make the thing possible, and then they sue.

    The conventional thinking in software is that you don’t need to disclose a working program because a programmer of average skill should be able to develop the implementation themselves, which has lead to almost no disclosure at all in software patents, at least not any that I can find. Most of the time, the patent claims are so broad that an implementation could be done in infinitely many ways. Going back to a hypothetical teleportation patent for a second, image a claim that described a machine which recorded the exact number, location, and composition of atoms in an object, sent the information to a separate location, and then another machine uses that information to create a new object of the same composition.

    Nobody in their right mind would expect a physicist of average skill to be able to build something like that, yet that sort of vague disclosure is all that is required of most software patents. Consider this ridiculous line from an Affinity Labs patent abstract, “The disclosed system may include a digital engine operable to maintain data representing the selected information in a digital format.” What a bunch of techno-babble nonsense! Terms like “client”, “server”, “medium”, “storage”, “transmission”, and other such vague terms provide infinite permutations of how such a process can be implemented. When a process has been abstracted to the point that there are an infinite number of ways to arrange steps to accomplish it, then I would personally say that it isn’t a process anymore, but merely a process idea that has yet to be fleshed out. Simply stating a process for going to the moon with a rocket still leaves you a long ways out from actually building one that will take you there.

    Let us for a moment consider the Apple app store*. There isn’t anything revolutionary about this service. Unix like systems have been delivering programs in package format to their users through server based repositories for a very long time, but have lacked any ability to purchase the programs because they are all free of charge. At the same time, purchasing things online has also been a long established practice. Merging the two ideas together, does not, in my opinion constitute an invention or process that should make it through section 103. The reason why repository maintainers never included a store with their service, is because it wasn’t required, but if commercial software which cost money had made its way into these repositories, it isn’t a stretch of the imagination to assume they would have figured out how to add a store to the service to handle that software. The idea wasn’t non-obvious, it was just unnecessary, which to me is a huge distinction.

    Let us assume for a minute that I have seating for 8 people in my living room and that no more than 8 people have ever been in said living room at one time. One day, somebody files a patent for a method of providing additional seating for guests by having all guests who exceed the maximum seating arrangement sit on the floor, and it makes it through. You will have to suspend your disbelief for a moment in exchange for a simplified example. I think it is safe to assume that if 9 people had ever come over to my house, we wouldn’t all be standing around scratching our heads trying to figure out seating. Section 103, as I see it, is supposed to protect against such nonsense.

    As things stand now, people submit patents for such nonsense that shouldn’t make it past 103 without providing any disclosure either! Clearly you can see the problem here. If either one of these safeguards were working, it might filter out a good portion of the bad patents, but because both are failing, in practice, the floodgates have been opened for nonsense on a epic scale. Just like the company’s who buy up thousands of domain names, parasite company’s like Affinity Labs and wealthy corporations are able to file thousands of patents on things that should be obvious and never disclose any part of it. Later, when the chips fall, some of them will cover innovations happening in the field, and the cash out they claim more than pays for the duds.

    As a result of all of this, programmers are trapt into tiny boxes. Any obvious path outside that box may be blocked off, and if they try to innovate, they may find somebody else has taken the credit without doing the work. I have no problem with software patents which are tall enough to ride the ride, but the real problem is the drugged up attendant who keeps letting the children on while turning a blind eye.

    * I realize that Apple is actually the one being sued over their app store and not the ones doing the suing, at least as far as I can find by searching the net, but the Apple app store seems like a great example for the sort of thing that does happen and I thought we could all use a reprieve from the Amazon one-click dead horse which basically just lumps using cookies and an online store together in the same way the app store just lumps software repositories and online stores together.

  3. Gene Quinn February 22, 2010 4:12 pm

    POP-

    Well said. I agree with pretty much everything you say. I think your observation that previously unnecessary cannot mean non-obvious today is profound, and exactly at the heart of the business method debates. Old processes enabled by new technologies shouldn’t result in a new invention that is distinct from the new technology.

    Do you have any thoughts on an appropriate test for obviousness in the software area? As someone skilled in the art what would you consider to be the line between innovation and something that is trivial/obvious? I have an idea, but before I taint your reply I would like to hear your thoughts, and the thoughts of others.

    -Gene

  4. pop February 22, 2010 5:30 pm

    -Gene

    The biggest problem with trying to define a test for obviousness is the subjective and constantly changing nature of what it is. If you want to know what a hard task is at hand, just ask Justice Stewart, who famously said that he couldn’t define porn, but, “I know it when I see it.”

    I actually think 103(a) does a pretty good job of attempting the task.

    “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

    The key phrase for me is “the subject matter as a whole.” If the only contribution your process makes is to tape together several existing processes, then I have to assume that it would probably be obvious to people of ordinary skill in the art. The only exception I would place on that is the possibility that a person is using a pre-existing process in a new and non-obvious way when paired with another known process, and the whole thing meets all the other requirements. In other words, you must be contributing something new, either a new process or a new way of using an existing one.

    Programming is a lot like playing with Lego’s. Truly new, non-obvious, and useful algorithms are rarely created, but, instead a lot of older ones are put together in a way that makes them useful for a specific task. In, addition, using things in the way they were intended doesn’t seem to me to deserve any special credit. XML is designed to be very flexible and to hold any kind of data, so I don’t think any claims for using XML to store data for this or that purpose should be patentable because XML was intended to be used for all purposes of data, new and old, known and unknown. There really aren’t any ways you can use XML other than for what it was intended, to describe data and documents. The word “eXtensible” is the in the acronym for crying out loud!

    Another good thought exercise is to replace all the computers with people, and all the signals and messages and codes with words and messages, like those exchanged between people all the time everyday and then ask yourself if it still meets the requirements. Sometimes you have to cut away all the fancy jargon of “saving to a database”, and “communicating a message from the server to the client”, and “data engine”, and ask yourself what it is actually doing without being confused by the way all programs accomplish their tasks, which is to say, saving things to disk, sending information over a network, displaying things on the screen, etc.

    I hate to bring up the one-click patent, especially since I tried to avoid it before, but it makes such a good example that I can’t help myself. What exactly is the process behind the one-click patent? Well, as far as I can tell, it looks like this.

    1) Assign a unique number to each customer for the customer to store

    2) Associate the customer info with the number

    3) When the customer wants to buy something they use their unique identifier

    4) The server uses the identifier to get the customer info so the transaction can take place in one step.

    Lets see here, what other well established process looks like this? Maybe the credit card system?

    1) Assign each customer a unique card number, when they store on their card

    2) Associate the customer info with that number at the main office

    3) When the customer wants to buy something they use their number on their card

    4) The main office uses the unique number to bill the customer in one step.

    Going back to my argument that just taping things together is not sufficient, lets look at how this is accomplished by Amazon. They used cookies to store information about the customer, which is what cookies were designed to do, and rest of the process was just standard e-commerce that any site selling things would have to do. The patent says that the whole thing doesn’t use the shopping cart model, but how are they defining shopping cart model? All the same steps take place as in a normal shopping cart process, except that they used cookies in a fashion for which they were designed in order to “cache” one of the steps so the user didn’t have to type their info in every time they wanted to buy something.

    Now, that patent has been mocked and laughed out of credibility many times already, but many patents which pilfer the same idea of putting an existing process on a computer and patenting it remains alive and well.

    Maybe somebody should get a patent on the process of creating new patents by stitching old patents together! Remember Bill Maher and his Snugwow? The Snuggie made of the Shamwow material?

    I would say that another problem is that people assume that because nobody else has done it yet, that it must be non-obvious. Demand is what drives innovation and production, not obviousness. It does take some special skill to figure out what is going to be in demand in the future, but that shouldn’t land you a patent on it. If you can manage to create a new market on something that wasn’t popular, but was obvious, then good for you, but that doesn’t mean you invented or created anything; you just took a risk on the unconventional and won. The fickle nature of consumer popularity shouldn’t be used as qualifier in deciding what is, and what isn’t patentable.

    I may have more to say later, but I’m curious as to what you have to say and I think I’ve written enough for now.

    /—————————————————————————————————————————————/

    *A comment on the guidance memo Mark posted*

    To me, this seems to be a huge contradiction of intents..

    “The machine should implement the process, and not merely be an object upon which the
    process operates.”

    And a bit later in the memo…

    “For computer implemented processes, the “machine” is often disclosed as a general
    purpose computer. In these cases, the general purpose computer may be sufficiently
    “particular” when programmed to perform the process steps. Such programming creates
    a new machine because a general purpose computer, in effect, becomes a special purpose
    computer once it is programmed to perform particular functions pursuant to instructions
    from program software. To qualify as a particular machine under the test, the claim must
    clearly convey that the computer is programmed to perform the steps of the method
    because such programming, in effect, creates a special purpose computer limited to the
    use of the particularly claimed combination of elements (i.e., the programmed
    instructions) performing the particularly claimed combination of functions. If the claim
    is so abstract and sweeping that performing the process as claimed would cover
    substantially all practical applications of a judicial exception, such as a mathematical
    algorithm, the claim would not satisfy the test as the machine would not be sufficiently
    particular.”

    I suppose there is some concession there with the last sentence, but honestly, not much.

    *sighs*

  5. Just visiting March 1, 2010 1:29 pm

    POP:

    Your 1-click patent is a classic example of someone abstracting an idea to such a high-level that it becomes just like everything else. A new-fangled earth-boring machine with multiple boring-heads and a complex mechanism to remove soil away from the head, can be abstracted as a ditch digger. A ditch digger (i.e., a shovel) has been around for thousands of years — ergo, not patentable.

    You use Amazon’s 1-click patent as an example, and your abstraction equates it to a credit card. However, you are ignoring the difference between buying a product online and buying a product in a store. In a store, the product is on-hand. Online, the product has to be shipped, which requires shipping information and shipping preferences (e.g., next day, ground, etc.). This is information that is needed in a request to order the item but not when an item is purchased. Also, Amazon’s system is an order system, no a billing system, like a credit card. You remind me of most examiners. It is easy to find something unpatentable when you ignore the distinctions between the invention and the prior art.

    “As a result of all of this, programmers are trapt into tiny boxes. Any obvious path outside that box may be blocked off, and if they try to innovate, they may find somebody else has taken the credit without doing the work.”
    Do you understand the concept of a strawman when it comes to arguing? If so, your strawman is about 50 feet tall. First, most programmers don’t care what has been patented. Second, most programmers, even if they cared, wouldn’t know where to look or understand what they found even if they did look. Don’t cry me a river over a fanciful delusion that doesn’t even approach reality.

    Regardless, my answer to anybody blocked by a patent is to do one of 4 things: (i) ignore the patent (odds are you won’t be sued); (ii) invalidate the patent; (iii) pay a license fee; or (iv) innovate around the patent. Despite Amazon’s 1-click patent, people still have found ways to buy goods/services off the internet.

    “Terms like ‘client’, ‘server’, ‘medium’, ‘storage’, ‘transmission’, and other such vague terms provide infinite permutations of how such a process can be implemented.”
    If you think those terms are vague, then you have issues. Are you programmer or a wannabe?

    “If the only contribution your process makes is to tape together several existing processes, then I have to assume that it would probably be obvious to people of ordinary skill in the art.”
    What you don’t seem to understand is that most inventions are built on combining old elements in new ways. As recognized by the Federal Circuit awhile ago, “virtually all [inventions] are combinations of old elements.” In re Rouffet, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998) (quoting Environmental Designs, Ltd. v. Union Oil, 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1993)).

    “If you can manage to create a new market on something that wasn’t popular, but was obvious, then good for you, but that doesn’t mean you invented or created anything.”
    Market success is a court-recognized indicia of non-obviousness. Coming up with a simple idea that makes a whole lot of money is an indicia that the idea (no matter how simple) was not obvious. As a matter of common sense, if it was obvious, someone would have done it. However, if you did come up with the idea first when so many other people had the opportunity and it was successful (i.e., valuable), then it really wasn’t that obvious. The question that rarely gets asked when determining obvious is the following: “if all the elements were already known in the art, why wasn’t this idea developed before being developed by the inventor?”

    “The fickle nature of consumer popularity shouldn’t be used as qualifier in deciding what is, and what isn’t patentable.” Consumer popularity, however, is a good indication as to what society believes is useful, and patent law is intended to promote the progress of “useful Arts.”