Dissecting Bilski: The Meaning of the Supreme Patent Decision

By Gene Quinn
June 29, 2010

Having had some time, although admittedly not much time, to digest the Supreme Court’s decision in Bilski v. Kappos I am increasingly of the belief that the Supreme Court did an admirable job, at least insofar as they go. While I will reserve my right to change my mind, I am pleased by the Supreme Court decision, and bolstered in this belief by the fact that industry organizations such as BIO and LES are praising the decision, while at the same time anti-software patent advocates are apoplectic. So the Supreme Court must have done something right.

Yes, it certainly would have been nice for the Supreme Court to actually give us a test and not merely point out that the Federal Circuit got it wrong. We already knew the Supreme Court thought the Federal Circuit got it wrong when they granted cert. in the case. There is simply no other reason for the Supreme Court to choose to hear a case from the Federal Circuit given there could never be a split among the Circuits given that all patent cases go to the Federal Circuit. Having said that, I am glad the Supreme Court followed the physicians motto — do no harm — and if getting no test was required in order for there to be no harm then I suppose we ought to be well enough thankful. But what does the decision in Bilski v. Kappos actually mean?

Figuring out the meaning of the Supreme Court’s Bilski decision is complicated by the fact that Justice Scalia, who revels in being one who thinks the Constitution should mean what it meant in 1789, also seems to think that innovation ought to be what it was in 1789. Scalia has created a bit of confusion by not joining the majority opinion with respect to Sections II-B-2 and II-C-2, the sections that dealt with software, the fact that innovation progresses and the law cannot remain static and stagnant, and the desire not to destroy nascent technologies, and then joining Justice Breyers concurring opinion. This is compounded by the fact that Breyer clearly has open disdain for the State Street “useful, concrete and tangible result” test. So why then did Scalia join the majority with respect to business method patents?

Who knows what goes through the minds of anyone, let alone a cloistered Justice of the United States Supreme Court. What we do know, however, is that 5 Justices, namely Justices Kennedy, Roberts, Thomas, Alito and Scalia all agreed that business methods are patentable subject matter. All 9 Justices agreed that the Federal Circuit misread previous Supreme Court decisions when they mandated that the machine or transformation test be the only test for determining whether a process is patentable subject matter. All 9 Justices agreed that the Bilski application was properly rejected, with the majority agreeing that it was properly rejected because it was an abstract idea, and the concurring minority simply wanting to say that business methods are not patent eligible unless tied to an otherwise patentable invention (see Stevens footnote 40).

It is safe to say that business methods remain patentable subject matter, but potentially 5 Justices are either against or skeptical, which Justice Scalia being willing to tolerate some business method patents, but seemingly skeptical and wanting (or hoping) to stop the business method madness. With Justice Stevens now retired it is hard to see a shift in this balance in favor of doing away with business method patents in the foreseeable future, and with a chance that soon to be Justice Kagan may not share the same views as the other liberal members of the Court, particularly since this patent issue is not one of liberal vs. conservative, at least on the surface.


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If I had to guess I think Justice Scalia was lamenting the fact that he had to accept at least some business methods, and even more upset that he couldn’t provide any guidance to get rid of the ridiculous business methods Justice Breyer seemed to loathe. Bilski was a horrible case for the Federal Circuit to reach the decision it did because it was so clearly going to be unpatentable subject matter, and it seems clear that Scalia and the other members of the Court likely agreed on that point, being very careful not to make this an expansive case or ruling like the Federal Circuit did and really going out of their way to limit the decision to business methods, at least directly.

Personally, rather than talking about Bilski being an “abstract idea” I would have said it was nothing more than a concept, which Kennedy did do at least once. It was clear, however, that Kennedy and the majority tried to pull over the well established “you can’t patent an abstract idea” blanket tight over the Bilski application. This was necessary really because Bilski was not one of those crazy business methods where you teach a janitor how to clean using a vacuum cleaner. Bilski just was not defined enough, or concrete enough, to be an invention at all.

This leads me to another observation. Initially I thought State Street has suffered a fatal blow, but the more I read, the more I think and the more I chat with others I am not convinced. I will confess to being the only one I have talked to that doesn’t think State Street it dead, and I understand why, but I can see the Federal Circuit breathing new life into State Street in a much more limited way; one that would lead to a test that blends patentability under 101 with the written description requirement of 112, which almost seems to be what the Supreme Court did in Bilski v. Kappos.

A fair reading of the Bilski case is that all 9 Justices said the claims in Bilski were not patentable because they did not represent an invention. The Bilski claims were nothing more than an abstract idea, or a concept. But could you have patented the Bilski process? Yes if there was a “there” there, which there was not unfortunately for Bilski.

Nevertheless, if a client came into your office could you get them a patent on the “innovation” present in Bilski? I think the answer is clearly yes. I said this to a former patent examiner I work with today and he initially laughed. By the end of the conversation I got him to come around to agreeing with me.

I’m not sure anyone could have saved the Bilski application, but if you could have written it yourself with an eye toward the Machine or Transformation test the specification would have been heavy on technology and processes that were tied to the technology. You would have made sure that there were process steps described in the specification and in the claims that could not have been carried out disembodied from the technology. In short, you would have removed the pen and paper argument by making sure that the innovation as described and claimed could not in any way be infringed by pen and paper only. So yes, I could have written an application that would have had patentable claims for Bilski, but it would have looked a lot different. I’m sure others could have done the same. The difference in the Bilski application as it was and the Bilski application as it could be is that it would have defined a concrete invention.

During the Bilski oral argument at the Federal Circuit then Chief Justice Michel kept asking what is meant by a “useful, concrete and tangible result.” A very good question really. Unfortunately the test uses the word “useful” and the word “result.” But utility is a separate requirement and doesn’t really belong in a patentable subject matter debate, and the word “result” focuses on the output only, almost in a product-by-process kind of way. The real magic and innovation that deserves to be patentable, if there is any, isn’t as a result of the output, and it is not because the output is useful. The magic of the innovation is in how a process achieves the result, and in order to satisfy the invention requirement that process needs to be concrete and tangible enough so that it can be defined with precision and comprehended by those of skill in the art.

Now I realize I have just done something I criticize many of doing, which is combining considerations under the patentability requirements to inform one particular requirement. I have criticized Justice Stevens for constantly trying to discuss whether something is new when he discusses patentable subject matter. I do think that makes no sense, but in the digital age where we deal with high tech processes isn’t the stumbling block whether there is an invention in the first place? If there is an invention then it ought to be patentable, right?

I think Sections II-B-2 and II-C-2 will soon enough become the law. There is no way but to recognize that patent laws need to advance and expansive views of the four categories of patentable subject matter is the only way to make sure we do not prevent unknown technologies from developing. But we are going to continue to be plagued with the question of whether or not there is an innovation in the first place, and the only way I can see to handle that is by borrowing concepts from 112 first paragraph and weaving them into the 101 patent eligibility determination, which is exactly what the majority of the Supreme Court did in Bilski v. Kappos, although I doubt they realize they did that.

By explaining that the ordinary meaning or process is what governs we now have a very expansive view of the types of high-tech, new processes that can be patent eligible. It was a good day for software, biotechnology and medical diagnostic innovations for that reason. We also know that business methods are patentable subject matter, and that even those 4 concurring Justices would not negative patent eligibility because an otherwise patentable innovation is capable of characterization as a business method. And we know that Bilski is an abstract idea.

Somewhere between Machine or Transformation and Bilski lies a bright line waiting to be discovered. That bright line can be discovered by realizing that what the Supreme Court was looking for was an invention. Perhaps they will know it when they see it, a la obscenity, but perhaps what they were looking for was just an articulation in the claims that was concrete enough and tangible enough in description to demonstrate that the process is not boundless, but defined so as to allow for proper and intellectually honest measuring of the other patentability requirements.

What ultimately becomes of Bilski v. Kappos will be written by the Federal Circuit for years to come, and perhaps another trip to the Supreme Court, or two.  For now what we know is that the Patent Office recognizes that all those Machine or Transformation rejections are not appropriate in and of themselves.  See USPTO Sends Memo to Examiners Regarding Bilski v. Kappos. If you satisfy Machine or Transformation you have patent eligible subject matter, if not then you get a 101 rejection with a request to explain why your claims do not represent merely an abstract idea.  So for now, until the Bilski Guidelines come down, we will live with burden shifting, which will certainly be easier to deal with than an inflexible Machine or Transformation test.

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 26 Comments comments.

  1. step back June 29, 2010 6:25 am

    But what does the decision in Bilski v. Kappos actually mean?

    Gene,

    Like you, I prefer to take time in reading and re-reading the decision before jumping to conclusions.

    There are some fundamental conclusions however, that can be reached even in the early stage:

    1. MOT is now a safe harbor provision for affirmatively proving eligibility under 101 even though it cannot be used to establish ineligibility.

    2. Ding dong, the Fuddy Duddy horse and buggy era of Stevens is over. This was his last Hurrah and thankfully he has exited stage left out of the Mis_information Age without doing more harm.

    3. Unlike Stevens, the Kennedy majority appears to have realized they were operating in a realm outside of their competency zone and therefore they followed the cautionary tale: First do no harm. (However, they may have caused a minor amount of unintentional harm nonetheless.)

  2. hpm June 29, 2010 7:07 am

    Step Back,

    Scalia refused to join the part of Kennedy’s opinion discussing information-age patents. So I think it is best described as unclear what Scalia thinks (and he is the deciding vote). He clearly unjoined himself from that section for a reason. Maybe it was simply because he didn’t want to decide the question now, or maybe it says something more about Scalia’s opinion on these issues. We won’t know until another case arrives at the Supreme Court.

  3. Bobby June 29, 2010 8:24 am

    The results seem a bit confusing, which may be why some on both sides are declaring victory and bemoaning defeat. The way it seems to me from the opinions and the PTO response is that MoT is not an exclusive test, but it is the only test we have, at least for the time being, and it seems that if something doesn’t pass MoT, it is rejected by default. There is an open possibility for ideas that don’t pass MoT that aren’t abstract, but what ‘abstract’ regarding patents isn’t that clear to me, and it seems to me that MoT or something quite close to it would be the way one would determine said matter. Perhaps there is a difference between legal and dictionary definitions of ‘abstract’ that I’m not aware of, though.

    In regards to the ‘do no harm’ principle you cite, which is against any harmful intervention, I must say I don’t think your usage applies. Ultimately, patents ARE the intervention that can possibly do harm, and all the Supremes could do is intervene with the intervention of the USPTO . More specifically, the changes SCOTUS makes would be changing the CAFC decision (SCOTUS would be intervening with the intervention of the CAFC with the BPAI’s intervention in a hole in the bottom of the sea), and not intervening would be not taking the case or affirming the CAFC decision, which would be something you wouldn’t have liked.

  4. Andrew Cole June 29, 2010 8:27 am

    -Gene

    ” I do think that makes no sense, but in the digital age where we deal with high tech processes isn’t the stumbling block whether there is an invention in the first place? If there is an invention then it ought to be patentable, right?”

    I think you hit the nail on the head with this one. I think blending in 112 (or outright combining 112 and 101), might be a great idea. I don’t know about business method patents so much, but software patents always tend to skimp on 112 as far as I can see. Some of them don’t, but I think a lot do. Just like MoT might be a useful clue, maybe 112 can be a useful clue as well? If they can’t articulate anything deserving of 112, then maybe they shouldn’t deserve to get past 101. Maybe that could be saved for after it fails MoT, so the procedure could look like this: Pass MoT ? 102 : 112 (sorry, a bit of programmer humor there). I’m just throwing ideas out at this point, but I doubt the “make them explain why it isn’t an abstract idea after failing MoT” is going to last. I think another test will be developed. They almost seemed to be encouraging another test.

    Andrew

  5. scrappy June 29, 2010 9:30 am

    I think the SCT clearly wanted to do away with (at least prospectively) non-transformative business method patents, but to do so would have perhaps constituted an equitable (if not legal) “taking” of property that had been (rightfully) secured by patent applicants in proper reliance on State Street for the last decade…. (The SCT seemed to notice Newman’s dissent which was concerned with such a taking, indicating “Only Judge Newman…” twice.)

    Perhaps in Scalia fashion, the government (SCT and the courts) will do no such thing, but will rather send a signal to the free-market, and the free market will take care of the non-transformative business method patents.

    (When both the CAFC and the SCT refuse to uphold State Street, that’s a big deal, to quote the Veep.)

  6. New Here June 29, 2010 10:19 am

    Gene,

    with all do respect, all I can say is, it seems to me the patent world wishes to remain in pre-Bilski status quo. The aforementioned anti-software patent advocates, are knowledgeable about the current broken patent system as well the impact of the “status quo” approach that does nothing for the quality of any patents. That soon once again, the status quo approach will end back in front of the SCOTUS with just yet another example of a “Bilski” case, or maybe a bigger one… seems a waste of time and money for those of the patent world to go through this time and again; that is to those of us “anti-software patent advocates”, with such predictability. I feel it is an imbarasment.

    Software patents, the Court didn’t want to crush because they are a form of creative work(s). I respect them for that, even though I am anti-software patent.

    Gene, the anti-software patent advocates have deep concerns about the system that has patents rolling out with less attention to examination and more on passing a test, and such an approach for some time now has required to seriously questioned patents and take some actions as one, re-examinations. I will continue my support of actions that through the Legal system may make a difference in the quality of patents.

  7. Michael Risch June 29, 2010 10:52 am

    For the record, the amicus brief submitted by Mark Lemley, Polk Wagner, Ted Sichelman, and me suggests that this claim was “abstract” rather than “applied” because it was not enabled.

  8. patent leather June 29, 2010 11:05 am

    This is probably one of the most straightforward and short Supreme Court majority opinions I have ever read, unlike the Fed Circuit Bilski which was long winded and at times caused some confusion (remember the transformative gobbledygook?)

    Gene, I bet the PLI lecture is going to be pretty straightforward to put together! Unless you are going to cover the “dissent” (which probably isn’t even worth the bother).

  9. Mark Guttag June 29, 2010 11:25 am

    >So why then did Scalia join the majority with respect to business method patents?

    Because Section 273 mentions business method patents. Scalia would have had to agree with Stevens that you can simply remove the part of Section 273 that acknowledges that one type of method is a “method of doing or conducting business.”

    As an originalist with respect to the Constitution it is logically consistent that Scalia would feel bound by Congress’ language in Section 273. If Congress had wanted to eliminate business methods, Congress could have written a law to do so. Instead, in Section 273, Congress recognizes that business methods are one type of patent eligible type of method.

    Mark

  10. Moshe June 29, 2010 4:07 pm

    The CRUCIAL question for patenting software – Assuming that State Street has been overruled (there is some debate about this, but let’s assume so for now), does “In Re Alappat” remain good law in the US today?

    Many believe that “In Re Alappat” is the precursor to State Street – to the best of my knowledge, Alappat was NOT addressed in either the CAFC Bilski opinion from 10/08 or in yesterday’s SCOTUS opinion.

    In Re Alappat ruled that

    Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that 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. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.”

  11. Gene Quinn June 29, 2010 8:13 pm

    New Here-

    You say: “the status quo approach will end back in front of the SCOTUS with just yet another example of a “Bilski” case, or maybe a bigger one…”

    The Supreme Court has spoken on business method patents and that won’t be back. The next case or cases up will likely relate either to software directly (unlikely) or to where the bright line for patentable subject matter is between MoT and abstract idea (very likely). This interstitial space between MoT and abstract idea may indirectly related to software, but I think a fair read of the opinion is that 8 of the Justices, perhaps only Scalia left out, think software is patentable. Clearly Kennedy, Roberts, Thomas and Alito think software is patentable and said as much. Stevens, in footnote 40, suggest a saving interpretation of State Street that would have it not expansively allow business method patents but which would find that Judge Rich meant the otherwise patentable innovation in State Street would not be denied patent status because it relates to a business method. The underlying invention in State Street was software related processes, so that would mean that the software processes were patentable despite the fact that they related to a business method, thus making software patentable in the view of Stevens, Ginsberg, Breyer and Sotomayor.

    You say: “seems a waste of time and money for those of the patent world to go through this time and again…”

    To some extent I agree, but that is the system we have. Judges are only to rule on the cases and issues before them, and software was not squarely before them on the fact of Bilski. That is why the CAFC decision was so vilified. It went far further than necessary and by doing that Judges always risk saying things overbroad that seem innocuous on the facts of the case before them but on different facts they would see what they have said doesn’t make sense. So you can think it is a waste, but it is the fundamental basis of the entire US judicial system. The US judicial system employs a conservative approach and decides only what is squarely before the Court.

    You say: “I will continue my support of actions that through the Legal system may make a difference in the quality of patents.”

    Laudable, but I don’t see how an anti-software patent stance translates into patent quality. It is true that we pretend that patents are valid when examiners are given maybe 20 hours to review the entire file and all the prior art. That shouldn’t mean that they are not patentable subject matter. There are far better solutions to that than killing an entire class of innovation.

    One more thought, perhaps gratuitous. The problem with anti-software patent advocates is they don’t know and refuse to be educated about patent law. You, however, are different because I see you trying to learn and probing with questions. The chief problem is they almost universally do not look at the priority date of the application and instead look at the issue date of the application and then say that what is covered has been known for some time. Sometimes they look at the immediate filing date, but usually there are generations of filings and the ultimately issued patent is entitled to the benefit of the first filing a decade earlier, sometimes even earlier. So they point at patents the pop out but don’t understand that it is the slow patent process and at the time the application was filed, when priority attached, the innovation was in fact new.

    -Gene

  12. patent leather June 29, 2010 8:33 pm

    “This leads me to another observation. Initially I thought State Street has suffered a fatal blow, but the more I read, the more I think and the more I chat with others I am not convinced. I will confess to being the only one I have talked to that doesn’t think State Street it dead, and I understand why, but I can see the Federal Circuit breathing new life into State Street in a much more limited way; one that would lead to a test that blends patentability under 101 with the written description requirement of 112, which almost seems to be what the Supreme Court did in Bilski v. Kappos.”

    In my opinion, this Opinion killed State Street. Footnote 1 of Stevens’ “dissent” and the Breyer, Scalia concurrence both renounce State Street. That’s five justices. Of course you could say that the “abstract idea” test (which isn’t currently well developed) and the “useful, concrete, tangible result” test may be similar. This leads me to the conclusion that since “useful, concrete, tangible” is not the test, then the abstract idea test must be something more than just useful, concrete, and tangible. The ability to preempt an entire field will probably be very relevant in determining whether something is an abstract idea or not. I also think that in order to avoid being abstract, a claim would also still have to be tied to some type of machine or apparatus. The USPTO’s view that the MoT test requires “machine implementation” is hopefully out, but some tie to a machine or apparatus would hopefully suffice (e.g., a medical diagnostic method would still be tied to an x-ray machine).

    As far as the State Street test, what does “concrete” mean anyway?

  13. One Former Examiner June 30, 2010 9:47 am

    patent leather,

    Based completely on my memory so I may not be 100% accurate, “concrete” within the context of State Street means that the results are repeatable. The case law leading up to the “concrete” requirement deals with cold fusion and the inability to reproduce the results.

  14. New Here June 30, 2010 10:57 am

    @Gene-

    “You say: “I will continue my support of actions that through the Legal system may make a difference in the quality of patents.””

    “Laudable, but I don’t see how an anti-software patent stance translates into patent quality. ”

    Gene,

    not back to just argue, but I see you may not understand me. A anti-software patent stance does not translate into patent quality – not alone obviously ? What would such a stance mean without the Law or the Courts ?

    ” The problem with anti-software patent advocates is they don’t know and refuse to be educated about patent law.”

    I agree, to a point Gene. Making no correlation, I ask if I were a contractor and a client questions my work, should I require them to get a contractors license to argue the questions – and make the conclusion they refuse if they don’t have the license ? Point, is that many people are impacted by what gos on around them. So, while ignorance of the Law is one thing, but when something is at first a perceived harm is being done, people take some action to prevent or otherwise minimise the full potential of the perceived harm. What degree of Law would someone need to call the Police, stop a fight or even just remove a fire hazard ?

    While patents are not as simple as the last mentioned above; business, large and small as well individuals know what is going on around them with patents, and taking an anti stance because control is not something they have access. This is has been part of the basic past and current makeup of the USA.

    I perceive most software patents a danger, so I take an overall anti-software patent stance because the PTO has such a limited scope of prior art and what is going on in the world outside their doors. As they continue to allow patents that just claim ownership of just about anything even though having been around in use for many years in one form or another… patented, because its now… innovation – because of a late-date patent’s claims !.

    Current, the PTO in my opinion has nothing that offers protection for those out the patent world, just wish to get a patent backlog out the doors and the question of quality is to be translated through fights in the Courts after the litigation value runs out – or a patent re-exam has a say about it. Most software patent litigations today, have nothing to do with protecting innovation, because after following a few of these cases (best I can), find most of the patents are not even in use, making any difference “good” or “bad” in the world. I wish they did !, then I could better understand it. The future from here well, more of the same I guess.

  15. IANAE June 30, 2010 11:05 am

    “I perceive most software patents a danger, so I take an overall anti-software patent stance because the PTO has such a limited scope of prior art and what is going on in the world outside their doors.”

    Wouldn’t a more appropriate stance be to advocate for examiners to have better access to searchable prior art in the field? You’re looking at a garbage-in-garbage-out system and saying we should scrap the system because you don’t like the quality of the output.

    If a software patent satisfies 101, 102, 103, 112 considering its priority date, it is absolutely entitled to issue. Nobody expects it will still be novel by the time it issues, mainly because it’s already been published, and examination takes several years at the best of times.

  16. New Here June 30, 2010 11:37 am

    @IANAE

    “Wouldn’t a more appropriate stance be to advocate for examiners to have better access to searchable prior art in the field?”

    I feel that the stance is clear enough, because better access to searchable prior art is something the PTO should have done aleady, seek those opportunities – better access to searchable prior art – without it having to be advocated outside the office.

    If the PTO would meet just half way on this today… I will change my stance today.

  17. Bobby June 30, 2010 2:19 pm

    @IANAE
    Sometimes it’s easier to tear down and rebuild than to fix an existing system. That’s something people who deal with software have to realize, whether it’s a single computer or development of a project. The software industry claims to be suffering $9 billion a year due to piracy, and as I understand they are still reporting sizeable profits, so I think they could survive halting software patents for a few years until we can implement a better system.

  18. IANAE June 30, 2010 2:34 pm

    “The software industry claims to be suffering $9 billion a year due to piracy, and as I understand they are still reporting sizeable profits, so I think they could survive halting software patents for a few years until we can implement a better system.”

    By the same logic, we could abolish pharmaceutical patents pending a complete redesign of the patent system. Or electronics patents. Or copyright on music.

    Just because the aggrieved party has “only” lost less than everything they have, that doesn’t mean they don’t have a legitimate concern.

  19. Bobby June 30, 2010 4:29 pm

    @IANAE
    Patents exist to HELP promote innovation, but innovation can occur without it, and if the increases in innovation are not significant, then patents in that field would not be justified. I am doubtful that the software industry sorely needs the incentives of software patents, especially in their current form. The BSA claims that it would harm the industry in a major way, but they also claim that piracy has made the software industry lose $9 billion. However, a recent GAO report says the claims use flawed methodology, and their claims of how it would harm innovation the software industry have even less evidence.

    as for the other fields, I would say they probably don’t need to be rebuilt because they aren’t hugely broken. Pharmaceuticals need some minor reform in re-patenting the same drug with a minor modification, but the original drug is at least available as a generic. I’m not well versed in electronics patents, but I’d guess there are considerably less issues with prior art than there are in software. For music and copyright in general, it just needs to be a good bit shorter and the DMCA should probably be repealed or at least scaled back.

  20. Blind Dogma June 30, 2010 8:24 pm

    Slogging my way through the supporting documents on the Bilski Opinion, the reference to a Judge Rich work destroys the notion of promote</b that is exemplified by the typical anti-software patent position noted by Bobby.

    Some very hefty patent-philosophy stuff…

  21. Just visiting June 30, 2010 11:02 pm

    Funny … I’ve been waiting for this decision for months and months and months, and now that it is out — it’s like ho-hum … a pretty inconsequential decision by SCOTUS.

    The 101 rejections I was able to get aound before, I am still able to get around now. Examiner’s aren’t going to be rejecting anything on 101 more than they are already. Finally, there are few things (and that includes Bilski’s invention) that I cannot couch in terms of 101-acceptable language so long as I have support in the specification.

    As I noted some time ago, the problem with the anti-patent crowd (now that Bilski has changed anything) is that by the time another court case goes up or they can catch the ears of enough in Congress, most of the broad software patents and poster children for anti-software patent advocates will be expired. Also, the anti-software patent advocates are going to have a tough time selling people on the notion that advances in software are being hindred by software patents. For the average layperson (i.e., the person who is going to be making these decisions), the advances in software have been unbelievable over the last 20-30 years. Considering that anyone who wants to change the status quo has a high burden of proof to overcome, I’m pretty confident in saying that software patents are about as safe as any other form of patents out there.

  22. step back July 1, 2010 5:50 am

    and now that it is out — it’s like ho-hum … a pretty inconsequential decision by SCOTUS

    JV,

    We were 1 vote shy of total disaster.
    I don’t think that’s worthy of a ho-hum.
    It was more like, whew –the US patent system was preserved by the skin of its teeth,
    not because ANY of the Justices “get it”, but rather because they are politically divided.

    None of the “concurring” opinions in the Bilski v Kappos 4-1-4 decision make any logical sense.

    There must have been sort of strange bickering going on in the back rooms and then a twisted compromise was reached. We may never know the full details. Maybe an anonymous clerk or two might squeal?

  23. Blind Dogma July 1, 2010 7:42 am

    Maybe an anonymous clerk or two might squeal?

    Maybe more like a death-bed confession.

  24. Just visiting July 1, 2010 9:39 am

    “We were 1 vote shy of total disaster.”

    However, Stevens is out … Ginsburg is not too far away herself, and I believe that this Sotomayor’s and Breyer’s joining of Stevens’ decision may or may not reflect their true opinions for reasons I discussed in another post. I’m not sure Breyer and Sotomayor would have signed onto Steven’s if they were in the majority. However, since they were in the minority of a 9-0 affirmation of the judgment, what they signed onto really didn’t matter.

    Regardless, the worst they could have done was to say business methods were unpatentable. However, I defy anybody to define a business method in under 20 words (actually I’ll give you 100 words) — a defintion that I cannot find a way to encompass a clearly statutory method.

    Regardless, I can classify software as a machine any day of the week … incredibly easy to do — so software patents are untouched by anything SCOTUS does. Such a decision may impact some of the medical diagnostic work, but one can still find a way to have a method meet the MOT test. Perhaps not the best claims, but still useful.

    This decision was all about not upsetting the apple cart. This is why it is ho-hum. Although I’ve already dealt with several 101 issues during prosecution since this decision came out, I haven’t felt the urge to cite this case — the reason being is that it hasn’t changed any of the tools are I already use to overcome those rejections.

    The real fun begins is when the Federal Circuit takes hold of this decision and fleshes out edges.

    However, if you want my take on what this decision means — it means that abstract ideas cannot be patented. A method of hedging risk is an abstract idea — beyond that, it is anybody’s guess.

  25. Gena777 July 6, 2010 3:44 pm

    I agree that a lot of patent drafting is a question of spin. A different drafter could probably have given Bilski a patentable invention.
    http://www.generalpatent.com/media/videos/general-patent-gets-results-its-clients

  26. step back July 6, 2010 8:09 pm

    A method of hedging risk is an abstract idea

    Dear JV @24

    Not a good idea to speak in absolutes.

    How about this:

    1. A method of hedging risk comprising:

    during a surgical procedure on a real patient, installing a first operative shunt that may be switched from an initially open state to a closed shut state by nonsurgical means external to the patient’s body; and

    during said surgical procedure on the real patient, installing a second operative shunt that may be switched from an initially closed state to an open state by nonsurgical means external to the patient’s body,

    whereby risk is hedged in that if the first shunt fails after the surgery completes, the failed shunt can be nonsurgically closed shut and the second shunt can be nonsurgically switched open.

    _____________________
    Remember. Only Sith lords speak in absolutes. (Star Wars, Revenge of the Clones) 😉