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Broken Record, No Bilski for You Today


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: June 7, 2010 @ 11:01 am

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Do you remember back in the day when music came from pointy abrasive means, sometimes referred to as a “needle”? It was placed on a rotatably spinning, substantially circular piece of vinyl with groves disposed thereon, sometimes referred to as a “record.”

As I tried to come up with clever and entertaining ways to once again say that the Supreme Court of the United States has once again not issued a Bilski decision, what immediately came to mind was a broken record. Then I wondered if I might have to actually explain what a “record” is and how one operates a record to understand exactly why Bilski-watching is like an annoying broken record.

Yes, as hard as it is to admit I am getting older.  Doing some modest yard work yesterday reminded me of that, as if I needed any reminding.  I also went into the local ABC store this weekend to purchase some adult beverages for consuming in a High Stability Cocktail Glass, which may make you chuckle if you are familiar with the PLI Patent Bar Review Course, which many take prior to taking the patent registration exam.  As an aside, to this aside, John White is working on an article detailing the history of the High Stability Cocktail Glass and Method of Use, coming soon to IPWatchdog.com… but I digress.

Where was I?  Oh yes, hanging on the wall at the ABC store was a sign that said “You may not purchase alcohol if you were born before June 5, 1989.”  How can that be correct?  That being the case, this entire generation that is coming of age has likely never played a record.  They might not have even seen a record other than in a museum or in an old movie.  Could it be true that young patent attorneys and patent agents don’t even know what a “record player” is?

You see, no matter how careful you were with your favorite album (another favorite old-time term for “record” and frequently reserved for things you really liked or thought to be artistic) just playing the album would eventually destroy it because you played it with a needle.  The needle would glide across the grooves and sound would emanate from loudspeakers connected thereto through assorted electronic and mechanical means.  But if the album got a scratch, which was inevitable eventually, the needle would skip.  Sometimes this skip would not be forward, but rather would be backward and then a loop would be established.

Early in the life cycle of the scratch it might repeat once and then bounce forward.  Later in the life cycle of the scratch, or if the scratch was of a substantially well defined structure with clean edges this loop could go on and on… and on… and on… until you actually had to get up out of your seat, walk over to the “record player” and do something, anything to stop this endless loop.  Yes, we lived like barbarians back in the day.  No remote control, our favorite albums would wear out and copies of an album on cassette tapes were definitely no substitute for the original.

So we are in one of the feedback loops right now, where everyone in the industry thinks today is going to be the day.  It almost feels like Spring used to feel in Boston prior to the Red Sox breaking the 86 year slump, which was actually a curse for trading Babe Ruth for cash so the owner could put on a Broadway play.  Hope would spring eternal every year, the faithful would feel like this was the year and it was going to be different.  Why they would think that was always a mystery to me, the Sox had demonstrated for generations a special level of ineptitude.  By August the city would be hostile most years because it was clear the Sox had let them down again.

So every Monday we all get excited and by 11 am our hopes are dashed.  Today it was only about 10:12 am when it became clear no more decisions would issue today and that none of the four that were issued were styled Bilski v. Kappos.  But unlike the Red Sox faithful, those waiting for this enormously important patent case will get a decision, one way or another, within the next few weeks.  There are three more days on which the Supreme Court is all but certain to issue decisions — June 14, 21 and 28.  No one expects Bilski to be held over until next term, but then again… nope… I refuse to go there… at least not yet.

Whenever the Supreme Court decides to issue the Bilski decision is for them to know and the rest of us to find out.  In the meantime what I can say with great authority, as if I am peering at you from behind a counter and wearing a white apron and using the thickest Arabian accent I can conjure up, is this: No Bilski for you… at least not today!

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Posted in: Bilski, Fun Stuff, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, US Supreme Court

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

31 comments
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  1. ESTRAGON:
    Charming spot. (He turns, advances to front, halts facing auditorium.) Inspiring prospects. (He turns to Vladimir.) Let’s go.
    VLADIMIR:
    We can’t.
    ESTRAGON:
    Why not?
    VLADIMIR:
    We’re waiting for Bilski.

  2. Bilski’s have a lot of patience. Just look at what his cousins did:

    http://www.amazon.com/Bielski-Brothers-Defied-Village-Forest/dp/0066210747

  3. No one expects Bilski to be held over until next term, but then again… nope… I refuse to go there… at least not yet.

    If…

    How would Stevens stepping down impact such a scenario?

  4. Anon-

    Stevens has historically been the most anti-software patent Justice, and routinely in the camp that wants to limit patentable subject matter. He authored the opinion in Parker v. Flook, and dissented in Diehr, so the thinking would be that if the case were held over it would favor an expansive view of patentable subject matter. Curiously, he was in the majority in Chakrabarty, and spoke in fond terms of what Judge Rich wrote in this area. Early Judge Rich follwed Parker v. Flook to the letter, but that changed over time obviously.

    I doubt Kagan has any record on the issue, but it would be hard to imagine she is more anti-patentability than Stevens, and hopefully she would understand that 101 and 102 are separate; something that Stevens never seemed to grasp.

    For more see: http://www.ipwatchdog.com/2009/11/12/exploring-justice-stevens-patent-past-for-clues/id=7252/

    I can’t imagine they would hold it over, but from an economic and scientific perspective this case is as important as any the Supreme Court has ever had. Say the wrong thing and medical advances will cease. Similarly, massive value would be irreparably lost, causing tremendous damage to corporate valuations, which would affect stock price, which affects retirement accounts and so on. Not to mention the jobs and shutting off of capital. The longer this goes the more worried I get, particularly given so many others in the government seem almost giddy with the prospect of dismantling capitalism and significantly setting back the US economy.

    -Gene

  5. “No one expects Bilski to be held over until next term, but then again… nope… I refuse to go there… at least not yet” – please do it. I am really curious as to what may happen if the decision does not come out in this term. Has that happened before? Stevens will not be a part of the decision if not issues in the current term? How about the new justice (possibly Kagan for example) – will be a part of the decision somehow?

  6. Gene,

    Can I get an attaboy or some such recognition for calling this? Way back in January I said that this decision wouldn’t be announced until very late in the term.

    http://www.ipwatchdog.com/2010/01/06/offering-help-a-solution-for-addressing-the-patent-backlog/id=8242/

    http://www.ipwatchdog.com/2010/01/06/offering-help-a-solution-for-addressing-the-patent-backlog/id=8242/

  7. John-

    Yes, you did make that prediction. I am surprised it has gone this way. I am not sure whether to be grateful they are taking their time and thoroughly considering such an important issue, or to be terrified that they are thoroughly considering the issue.

    -Gene

  8. Ceyda (and others)

    I have received a couple requests to speculate on whether the Supremes will hold Bilski over and what that means in a post Justice Stevens SCOTUS. I will likely put something together over the next couple days.

    The short answer to you would be this… if they hold it over they are almost certainly going to have it re-argued, which would allow Kagan to participate. I have to do some research into it. This happened in the Brown v. Board of Education case back in the 1950s.

    Thanks for reading.

    -Gene

  9. With all respect:

    Justice Stevens will not allow a delay because of him, a hold over of something as important as Bilski is, and has become. Justice Stevens will depart the Court with respect, I have no doubt about that.

    The high Court needs balance, Stevens though his views of patents are less desirable in this patent centric world, was part of the balance. Balance, meaning that not all Justices are “patent lovers”, and as a result, not having the rest of us sit by with no other choice or say.

    As for any harm if the Court gos against software patents, will be small seen next to the harm software patents are doing to “real” innovation now. Because, litigation is a poor innovation engine, offering only limited growth potential and substantial cost. Substantial cost that adds the the bottom line of some, while driving out others that cannot meet the cost of fighting in Courts just to develop and / or remain in business.

    Thanks.

  10. Have another glass NewHere.

  11. Gene, you are getting older. The hottest club DJs around the world still use vinyl and vinyl records are continually being pressed and repressed.

  12. Johnny-

    Yes, I know. They just couldn’t do what they wanted to do with digitized recordings. The love to put the needle on the record… needle on the record…

    By the way, in a former life I used to be a mobile DJ. Another story for another time, but it was great money during college!

    -Gene

  13. Actually I’m hoping that Stevens and the court comes down hard on this, and brings American law in line with Canadian law. Let’s take it step by step:

    1) Software should not be patentable (it’s only math).
    2) The Obviousness Standard needs to be raised (KSR v Teleflex is a good example, where the invention was a minor change in location of a switch)
    3) Business Methods shouldn’t be patentable – anything that a human does isn’t patentable.
    4) Genes are a fact of nature, and shouldn’t be patentable – yeah right, someone owns the patent on my bald spot, how logical is this?
    5) Machines are what patents are about. But they have to work – anyone remember the Dean Drive?

    The bar needs to be raised. A lot of the patents that are being issued at the current time are garbage. I know of a guy who got a patent for putting an automotive fuel system on a tractor. There was no innovation involved, all he did was take the fuel system off one engine, and put it on another.

    Consider the hydrogen ram jet space ship drive – at present someone could patent this. The problem is that the idea is 50 years old…

    Wayne

  14. @The Mad Hatter

    “Consider the hydrogen ram jet space ship drive – at present someone could patent this. The problem is that the idea is 50 years old…”

    Nothing is far from reach, when “innovation” can be attached as easy as a few well placed words in the claims.
    Words, that patent test(s) have done nothing more then to show the stones in the water to walk across; that have allowed more such “garbage” patents you mentioned.

  15. “1) Software should not be patentable (it’s only math).”

    Hardware is only physics.

    Drugs are only chemistry.

    “4) Genes are a fact of nature, and shouldn’t be patentable – yeah right, someone owns the patent on my bald spot, how logical is this?”

    I don’t think you know what a gene is. Kind of ironic, what with the big discussion on Patently-O about how Canadians are so much better educated.

    Also, genes (or software or business methods) being unpatentable would not be in line with Canadian law.

    “5) Machines are what patents are about.”

    Also processes, manufactures, and compositions of matter.

    “I know of a guy who got a patent for putting an automotive fuel system on a tractor. There was no innovation involved, all he did was take the fuel system off one engine, and put it on another.”

    That’s not a legal problem, it’s a problem of the examiner searching only tractor engines and not car engines.

    “Consider the hydrogen ram jet space ship drive – at present someone could patent this. The problem is that the idea is 50 years old…”

    If the idea is 50 years old, why could someone patent it now? What would they have to add to their disclosure or claims that is not in the volumes of prior art? Was the prior art not enabling?

  16. 1) Software should not be patentable (it’s only math).”
    Hardware is only physics.
    Drugs are only chemistry.

    Ah, but your Constitution specifically covers those – read it.

    “4) Genes are a fact of nature, and shouldn’t be patentable – yeah right, someone owns the patent on my bald spot, how logical is this?”
    I don’t think you know what a gene is. Kind of ironic, what with the big discussion on Patently-O about how Canadians are so much better educated.
    Also, genes (or software or business methods) being unpatentable would not be in line with Canadian law.

    I’ll skip telling you all of the biology course I took – you wouldn’t believe me. And at present software, business methods, and genes are not patentable in Canada. Therapies based on genetics are patentable, as are machines that include computers (such as televisions, microwave ovens, etc.).

    “5) Machines are what patents are about.”
    Also processes, manufactures, and compositions of matter.

    Agreed – I tend to think of machines mostly because that’s my major background.

    “I know of a guy who got a patent for putting an automotive fuel system on a tractor. There was no innovation involved, all he did was take the fuel system off one engine, and put it on another.”
    That’s not a legal problem, it’s a problem of the examiner searching only tractor engines and not car engines.

    No, it’s a system problem. The USPTO is possibly the most incompetent federal government agency besides the MMS.

    “Consider the hydrogen ram jet space ship drive – at present someone could patent this. The problem is that the idea is 50 years old…”
    If the idea is 50 years old, why could someone patent it now? What would they have to add to their disclosure or claims that is not in the volumes of prior art? Was the prior art not enabling?

    Because the USPTO is incompetent. The agency seems constitutionally incapable of checking patents properly. Admittedly part of the problem is that there is no punishment for attempting to patent something that you know has already been invented, see the JMRI case.

    Wayne

  17. Mirroring IANAE,

    Processes are only _______

    Feel free to fill in the blank, realizing as you do that this is a fundamental category of patents..

  18. -Gene

    Where do you live? I only ask because you mentioned ABC and we just saw a ton of them in Hawaii on our honeymoon. I assumed they were only in Hawaii since I had never heard of them before. They mostly only sold touristy crap in Hawaii, but maybe the ones near you sell something more substantial?

    As far as software patents are concerned, for those not familiar with me since I haven’t posted in a while. I have come to the conclusion that software patents should have the same fate as process patents and that it should be the process which is considered and not the software. I don’t think there should be software patents in the sense of things which are purely software, which should put them in the math category.

    In other words, there shouldn’t be patents on mathematical ideas that used as the basis for language design, or file system design, etc.. If a program is written for the medical field that executes some process to transform or display data is someway, then it should be allowed because it is the process that matters, not the fact that it happens to be in software form. A computer is a medium for processes to execute, but it shouldn’t be seen as anymore than that. The mathematical ideas that allow that medium to work and allow those processes to execute should not be patentable.

  19. In recent years I’ve taken a serious interest in the patent process. I find interpretation has much to with it.

    On interpretation, of “process”, and a patent obtained upon one. Question:

    I take a hammer for an example, the tool, that drives a nail into wood. If this process were being accomplished with a pneumatic, or some other device doing the same task, would not really be the object of a process patent.

    If I ignore all implements in this case, then left with only the interpretation of the task as being a process, therefore being patentable; so is granted a patent on that interpretation alone ?

    The question for me, becomes critical when an interpretation is being made without specificity of a “process”, of what is patentable. “Unique ideas” are a very good case in point here, something outside of current knowledge without reference(s); what basis would an interpretation have ?

    I believe that processes are not patentable, not without a clear examination of the full impact of the process, upon all other areas it does / may involve. This I believe is the problem with patent claims, that are far reaching with language that involves many areas around them.

    I hope I have been clear, I do try to be !
    Thanks.

  20. NewHere,

    I applaud the attempt at being clear, given how easy it is to be snarky on the subject. It seems that you are taking a step in understanding, as has pop, that “process” and “software patent” have a larger context (I say this even at the risk of lost sales).

    However, I am not sure I understand your position on “process” patents and why you think they are not patentable, as they are one of the fundamental patentable items (and have been ever since we have had a patent system).

    Can you provide more background to your views?

    Thanks,

  21. -NewHere

    You seem to have it figured out pretty well, at least as far as software patents are concerned. I’m not really familiar with other kinds. Copyright protects specific code, but nothing beyond that. My code for decoding say, some audio codec, could be completely different than yours, including being in a different language, but the processes should be the same, otherwise it wouldn’t be the same codec. Patents protect these processes so that other people can’t use your processes in their code, even if the code is different.

    Your example about the hammer is specific, like a copyright, but the process of driving a nail into a piece of wood lets say, is more general and could include other objects. When it comes to physical objects, I think patent applicants are supposed to include suggestions of materials and their best explanation of how the thing could be done, where a hammer could be introduced as an example; this is because the invention actually has to work. You can’t get a patent on a time machine. This seems to be on the honor system though and almost completely void in software patents.

  22. POP-

    I would LOVE to live in Hawaii. I have been there twice, last time on my honeymoon as well. Gotta love the ABC stores there. Nothing fancy to be sure, but they seem to have the stuff that you are most likely to have forgotten or planned on buying there rather than bringing with. Which island did you go t?

    I live in Northern Virginia (Loudoun County). The ABC stores here are liquor only.

    Your software patent views have certainly matured and it seems we agree. Focus on the process with software. If you do so much of it will fall out anyway as not being new or as being obvious.

    Would still love to have an article from you. It would be great to get the perspective of someone in the industry who once was a skeptic but has gone through the journey to acceptance. This would particularly be great reading because it seems you have thought about the issue so much you cut straight to the chase and can parse out the mathematical ideas and the difference between the language/code and the implemented process.

    Great to have you back posting.

    -Gene

  23. @Blind Dogma

    I want to take an extra step back and start with my example, where I failed to provide, as I see now some important information.

    The information is the context, the tool (hammer) is being used; as for my example it would be in construction. I believe now that would fit better with using “process” at that point, with a tool (hammer) as one function of many to a result ?

    As a whole, tasks tools handle in cooperation as in construction; I will guess any one of them could be viewed on an individual basis, as a single process ? The driving of a nail with a hammer, takes knowledge experience and skill when the task is in cooperation with others as in construction.

    I believe then, that the task that requires a “hammer” is more about the person using it, then any interpretation of it as being a process. A process patent here, would involve such persons with all attributes as mentioned above and would impact them.

    Again, only to bring this all together: Processes are not patentable, not without a clear examination of the full impact of the process, upon all other areas it does / may involve.
    Thanks.

  24. NewHere-

    You say: “I believe that processes are not patentable, not without a clear examination of the full impact of the process, upon all other areas it does / may involve. This I believe is the problem with patent claims, that are far reaching with language that involves many areas around them.”

    That is exactly right, and you are focusing on the perfect part of the problem.

    There is no justifiable reason that software should not be patentable subject matter, but that is only the first, very low, threshold inquiry. Where software, and every other invention for that matter, typically falls out is under novelty (i.e., newness under Section 102) and obviousness (i.e., triviality or common sense under Section 103). What you are focusing on here is novelty and obviousness.

    Nothing is supposed to be patented without consideration of whether the claims are so broad that they cover other areas and implementations in such a way that they are so broad that they capture things in the prior art. So to the extent there has historically be problems with software, and let’s be honest… there have been problems indeed, it is because the patent claims are so broad and cover implementations that are in the prior art. A lot of times the most revolutionary patents are not the problems that the industry makes them out to be though because by the time they come to light and get litigated it is a decade after the fact, and back when the patent was filed it was new and non-obvious. But many times there are problems.

    The trouble with all of this is that the patent examiner is supposed to do what you suggest. They are supposed to look at everything, but we give them about 15 hours per case, perhaps a little longer in complicated areas, but not much longer. There is only so much they can do in that amount of time and it is not satisfying. So many (if not most or even all )patents do not get the scrutiny they should to be presumed valid. It just doesn’t make sense to do a no stone unturned examination when somewhere between 94% to 98% of patents wind up not being commercially relevant.

    More developed reexamination procedures at the USPTO can help, but that process is so slow. In the end it comes down to funding. The USPTO is the innovation agency and can create wealth at will that would spur the economy, particularly if they can get it right, but Congress under funds them and then raids the funds to pay for pet projects that have nothing to do with innovation. Pathetic.

    Stepping off my soap box… for now…

    -Gene

  25. Thanks Gene,

    I enjoyed your time on the soap box… really, because I learn and gain a larger picture !

  26. Bilski not out …. again
    .
    .
    Bilski not out …. again
    .
    .
    Bilski not out …. again
    .
    .
    Bilski not out …. again
    .
    .
    Bilski not out …. again
    .
    .
    Sorry … broken record.

  27. My latest No Bilski today post looks at whether they might be holding the case over. Review of Marbury v. Madison and Brown v. Board of Education, both of which were held over.

    See: http://www.ipwatchdog.com/2010/06/14/speculating-no-bilski-decision-this-term/id=11154/

  28. Gene,

    But if software can be covered by patent, it should not be covered by copyright. In Canada we call that Double Dipping.

    Wayne

  29. Mad Hatter-

    Yes, that is an argument we hear all the time, although I will say you have articulated it FAR better than anyone else ever has. Usually it is “copyrights are good enough,” which is not true, but what I think they are trying to say is something like you have articulated.

    It is hard to argue that there is double dipping. You are right, but that is a fact of life, at least here in the US. The code is protected as expression and believe it or not is actually entitled to First Amendment protection. Perhaps our First Amendment is to blame for why we are different, not sure.

    In the US double dipping is allowed in a number of IP areas. For example, you can get a utility patent on the functionality of a device, and a design patent on the ornamentation of the device. So in the US at least intellectual property is best understood as a web of overlapping protections.

    The way I would attempt to argue that there is no double dipping is that different things are being protected. This is a legally true statement, but admittedly not satisfying when you observe correctly that software can enjoy 2 types of protections. The protections cover different things though. I suspect this is probably why some have wanted some type of sui generis protection for software and computer databases and information.

    -Gene

  30. Yes, that is an argument we hear all the time, although I will say you have articulated it FAR better than anyone else ever has. Usually it is “copyrights are good enough,” which is not true, but what I think they are trying to say is something like you have articulated.

    Why isn’t it true? I’ve never heard anyone give a decent explanation of why this is so.

    It is hard to argue that there is double dipping. You are right, but that is a fact of life, at least here in the US. The code is protected as expression and believe it or not is actually entitled to First Amendment protection. Perhaps our First Amendment is to blame for why we are different, not sure.

    I don’t think that the First Amendment to your Constitution has anything to do with this. It appears (to an outsider) that the issue is more that you have what is effectively a One Party political system, with power being passed between the right and left wings of what is a corporate ogilarchy.

    In the US double dipping is allowed in a number of IP areas. For example, you can get a utility patent on the functionality of a device, and a design patent on the ornamentation of the device. So in the US at least intellectual property is best understood as a web of overlapping protections.

    And a software patent on the software inside the device. The question is whether or not this meets the constitutional basis on which the patent system exists.

    The way I would attempt to argue that there is no double dipping is that different things are being protected. This is a legally true statement, but admittedly not satisfying when you observe correctly that software can enjoy 2 types of protections. The protections cover different things though. I suspect this is probably why some have wanted some type of sui generis protection for software and computer databases and information.

    I’m a cynic. I do not see how this meets the constitutional basis that the patent system exists under. In fact looking at how the system works, I would say that the effect is the reverse of what the framers of the constitution intended, and that it is doing tremendous damage to the economy of the United States, with spill over effects on your trading partners.

    Wayne

  31. -Wayne

    Unfortunately, it is up to the supreme court to decide how to interpret the constitution, not you, or me, or even Gene. The most say we can have is when we vote left or right for the presidential election and there happens to be an appointment or two during his term(s). I’m not saying that in an in your face sort of way, but rather pointing out the fact that it must be interpreted by somebody, and that somebody is not us, so while it is fun to speculate and argue over it, our opinions don’t matter much.

    I’ll admit that there are many problems with IP and software, including copyrights. The vast majority of software is never sold to consumers, but either written in house or contracted to be written for in house use. It isn’t likely that anybody outside the agency is ever going to look at that code, although there have been some cases involving contractors “writing” code they stole from open source projects for companies like Microsoft, Sony, Best Buy, and others. Unless you are an open source advocate and user like me, or a programmer, then there probably isn’t any source code on your computer (with the exception of some possible interpreted code like javascript).

    Binary files are still a kind of code, but they can hardly be counted the same as the source code that was used to produce them since different compilers will turn the same code into different binary files, and the same compiler will turn the same code into different binary files based on optimization options and other such conditions. That is what makes up most of the software on a persons computer, not source code.

    Unless your code is open source, there is no reason why anybody, including end users, should have access to it to copy it in the first place. They can however steal the processes your software implements, which were probably developed before the software was even written and probably pertains to the processing, transformation, and analysis of special data.

    Consider tax software for a moment. It is hard to imagine many new processes being patented for doing taxes since taxes have been around forever, but I don’t know much about that. It does however make a great example since the processes in a tax program are really independent of the software itself. If you accept that a process for doing a persons’ taxes should be patentable, then you should also accept a patent for software that does a persons’ taxes.

    The patent should cover the processes involved in actually figuring out the taxes, and the copyright should cover the actual code that implements that process. In a sense, they are protecting two different things since the only way to infringe that patent is to implement the process for calculating taxes.

    I do however feel that patents need to keep their nose out of our implementation methods. Data structures, algorithms, database design, language design, etc… are based in the maths and deserve protection, if you will excuse the term, from patents. Specific combinations of those methods are protected under copyright.