Posts Tagged: "Bilski"

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!

In what is turning into a broken record, the Supreme Court once again did not issue a decision in Bilski v. Kappos. Perhaps we should be thankful that the Supreme Court is taking so long and treating it as the overwhelmingly important case we know it to be. On the other hand, perhaps we should be afraid that the Supreme Court is giving it so much scrutiny. Let’s face it, the Supreme Court has not done much over the last decade to evidence anything other than glib familiarity and vague understanding of patent law. I sure hope they break with that tradition in Bilski.

After 6 months and 15 days we still wait for a decision in Bilski v. Kappos, perhaps the most anticipated Supreme Court patent decision of all time. So, once again, it seems as if the patent story of the day will be the one that never materialized. The difficulty the Supreme Court is facing is in all likelihood this: how do they kill the Bilski patent application as being unpatentable subject matter without also killing the US economy. A decision that is too broad not only could put an end to the pure business methods akin to the Bilski “invention,” but could also put an end to the patentability of software, business methods and medical innovations. Thus, it is hardly an overstatement to observe that the Bilski case, if decided improperly, could destroy an already fragile US economy and set back medical research decades.

Today the United States Supreme Court issued four decisions, and none of them were Bilski v. Kappos. If you look back at the lag time between oral argument and decision over the last 17 Supreme Court patent decisions the average is 2.82 months. KSR was 5.07 months and as of today Bilski is 6.29 months. Does this mean Bilski will be more earth shattering than KSR, which is the biggest patent decision of at least the last generation?

The pen and paper myth goes like this: software should not be patentable because anything that can be done with pen and paper is not an invention and exclusive rights should not be given to any one person or entity. Presumably the thought process here is that if you patent software you would prevent someone from engaging in the method using pen and paper. Of course, that is not true, but why would a little thing like reality get in the way of making an otherwise absurd and provably incorrect statement? Such provably wrong statements are rampant in the patent world today, particularly in light of what appears to be an all out media assault on technology and innovation that would make the persecutors of Galileo proud.

Months ago I predicted that the Supreme Court would issue the decision on the day that is least convenient for me. That is what always seems to be the case with big news items. They seem to happen when I am away from my computer and attending to other matters, traveling or teaching. Based on the belief that the decision will issue on either April 19, 20, 21, 26, 27 or 28, my prediction is April 21, 2010. That would be the most awful day for me because of my calendar of events on April 21 and 22. So if you are going to start up an office pool on when Bilski will issue I would beg, borrow and plead for April 21.

Unfortunately, the ACLU appears to have found an “ally” in Judge Sweet, who is the district court judge handling the AMP case. In my view, Judge Sweet has either been duped by the ACLU, or is more likely complicit in accepting the ACLU’s warped view of what these patents cover. That became evident when Judge Sweet denied the motions by Myriad and the USPTO to dismiss this case for lack of subject matter jurisdiction, lack of personal jurisdiction, and failure to state a claim upon which relief can be granted.

When embarking on a software development project it is critical to understand that in order to maximize the chance of obtaining a patent you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law. Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response. Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable.

Earlier this week, on February 23, 2010, Facebook was granted US Patent No. 7,669,123, which covers a patent on a method for dynamically providing a news feed about a user of a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then.

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.

On January 21, 2010, the United States District Court for the Central District of California issued a ruling in Big Baboon, Inc. v. Dell, Inc. et al, staying further consideration on the motion for summary judgment for invalidity until such time that the United States Supreme Court issues its much anticipated decision in Bilski v. Kappos. This is exactly what I have been suggesting (see Offering Help), and it has amazed me that other district courts and the United States Patent Office are plowing ahead and making Bilski rulings.

It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball…

At the end of 2009 I did a two part series setting forth what I believed to be the Top 10 Patent Stories of the Decade, see Top 10 – #1 to #5 and Top 10 – #6 to #10.  At the time I promised to do a third in the series, which would discuss the “Honorable Mentions.”  After taking…

It serves no purpose to retroactively kill patents and applications that could have satisfied the standard announced in In re Bilski, but were written to satisfy the now defunct State Street test. That is changing the rules in mid-stream and violates all ideals of fundamental fairness and due process.

The patent backlog and all of the associated problems that go along with it, such as the increasing length of time it takes to obtain a patent, is the largest single problem facing the United States Patent and Trademark Office.  In fact, this problem is not unique to the US Patent Office.  Other Patent Offices around the world are also…