A Bird’s Eye View of the Bilski Oral Argument

By John White
November 10, 2009

Unlike Gene I did not really plan very well. I did not have credentials and am not (yet) a member of the Court. So, I was in line with the public. A patent centric public, but the public none-the-less. My fellow line standers included: Law students headed to taking the patent bar; a Finnegan partner (made me feel a little better about my failure to plan), and other patent world folks. The highlights: for this argument, the general admission line formed before midnight on Sunday! Only the 1st 40-50 of the 300+ people in line were admitted. The rest of the seats were taken by press, court members, and those with reservations. So, it was, even in the world of the Supreme Court, a big case. The line for admission became the 5 minute (sightseeing/tourist) line in short order. We were shuffled through, some re-cycling themselves in line so as to hear as much of the argument as they could. Real dedication here. Outside, tourists had asked what was so important that had all the people lined up; when told it was a patent case, universally none could understand why that would matter, and generate such a line!

When outside, a forgotten sleeping roll caused a bit of a stir as the snaking line was relocated (re-snaked) and bomb sniffing called in! I think that hastened my own admission and I was in by the close/rebuttal. I heard some of the PTO position (craziness in a suit) and then heard Mike Jakes, for Bilski, wrap-up. A single comment from Justice Thomas noted that among the steps included in Bilski could be merely a phone call, etc. That is, nothing really of moment was called for in the steps. Jakes was quick to point out that it wasn’t the phone call that was claimed, it was what happened on the call, the outcome, as it were, and the selling of the commodity. The case was then submitted and the courtroom rapidly cleared.

It is interesting to note that the 1st patent granted in the U.S. was for a method, to wit: of reducing potash for soap making. Arguably, in its day, a “method of doing business”. None-the-less the wrapping argument of the anti-method side was that the economic activity of the U.S. might not have been all that different over the years had this subject matter not been patentable. That seemed like abject speculation to me. It seems particularly poor speculation as well; in the time since State Street opened the door, the PTO was summarily swamped by applications of that very type. It cannot be debated that an awful lot of economic activity has been occurring in and around this field owing to the existence of patents that secure, at least somewhat, the creative efforts in this field. Hopefully the Supreme Court could see straight through that argument.

The Bilski side was well presented in terms of why a hard and fast test or set of criteria could not be the litmus for whether a method should be eligible for patent protection. Times and technologies change more rapidly than a formulaic test could (ie, iPhone apps multiply like rabbits in terms of variety and scope). I think this approach will appeal to the Supreme Court because they are fond of decisions that point to the messiness of human existence and the necessity for “hard work” on the part of life’s participants. I point out that the Festo decision used almost the same rationale that although an approach (case-by-case) is tough to administer, sometimes that’s just the way life turns out. Messy.

I am on both sides of whether the Supreme Court is really up the challenge here. I do not think they are collectively intellectually competent to handle this case and this subject matter. Obviously (what a pun), I am still smarting from the KSR v. Teleflex, which will take a generation to sort out and distinguish into oblivion. But, they are all we’ve got, and some entity has to sort out the CAFC and their meat cleaver Bilski decision!

I, along with all of you, await the Spring 2010 decision.

The Author

John White

John White is a Director at Soryn IP, a patent advisory and finance firm that, among a host of patent-centric offerings, assists parties in identifying and acquiring patent portfolios that satisfy strategic and business needs. Mr. White is also a US patent attorney and a principal lecturer/author of the PLI Patent Bar Review Course. Since John began teaching patent bar review courses in 1995, he has personally taught nearly 50% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in litigations and is regarded as a leading authority on patent practice and procedure. For more information please see his profile page.

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 39 Comments comments.

  1. mmm November 10, 2009 2:31 pm

    Mr. White –
    I disagree with one of your final points. I believe that the Court clearly showed that it is, in fact, intellectually up to the challenge of tackling the patent law issues. I’m not sure why us patent attorneys think that our law is so much more complicated than other areas. Just because we have a conception of what the law ought to be does not mean that it is correct. Moreover, its not clear that we have an objective view of the legal landscape.

    In general, the questions seemed on-point. Sure the justices had a hard time drawing the line between 101 and 102/103 issues, but they are not alone in that problem.

    I believe that, if there is a decision at all, the SCOTUS will come to an unanimous decision. The Bilski claims will be rejected under 101. But, after some reflection, I think that they’ll largely avoid the “tough” questions at this juncture and grant later cert on a case with a more appropriate posture than Bilski–the Bilski claims barely pass the laugh test.

  2. Adam November 10, 2009 2:36 pm

    “It is interesting to note that the 1st patent granted in the U.S. was for a method, to wit: of reducing potash for soap making. Arguably, in its day, a ‘method of doing business’.”

    Can anyone explain how this is true? The patent in question was for a way of making a physical substance. This substance could then be sold, given away, or dumped in the ocean. In what way was it a “method of doing business?”

  3. 2600examiner November 10, 2009 2:46 pm

    “Outside, tourists had asked what was so important that had all the people lined up”

    I kept telling them it was Coke vs. Coke Zero regarding taste infringement. I think some of them may have believed me.

  4. Gene Quinn November 10, 2009 3:15 pm

    mmm (with the fictitious e-mail to remain anonymous)-

    Patent attorneys are not of the opinion that the Supreme Court is not up to the challenge. Patent attorneys KNOW the Supreme Court is not up to the challenge. All you have to do is read Supreme Court patent cases to understand that they are clueless. Here are but 2 recent examples:

    1. Festo — in order to demonstrate that you are entitled to claim equivalent infringement you must now demonstrate that it was impossible to write a claim to cover the equivalent at the time you filed a patent application. So in order to prove entitlement to the doctrine of equivalents you must conclusively prove that your patent application was defective under 112 first paragraph. Clearly the Supreme Court had no idea what they were saying.

    2. KSR — under the literal test announced inventors can only obtain a patent if they accidentally stumble across something or if they set out knowing that failure was guaranteed but some how it worked. If an inventor attempts to create something and they expect there is a chance that it would work it is obvious. Absolutely ridiculous.

    You say “us patent attorneys” as if you are a member of our club. I find that impossible to believe and to think that the Supreme Court knows what they are doing in this area. While they may get this case correct, they have done much damage to patent law over recent years and everyone in the patent bar knows (or should know) that is the case.

    -Gene

  5. Gene Quinn November 10, 2009 3:19 pm

    Adam-

    You really have no idea how reducing potash for soap making is a process in furtherance of business?

    You can keep your head in the sand if you like, but the reality is that it is impossible to define what a business method is. You appear to be of the opinion that because there is something that could be dumped into the ocean that means it should be patentable and not a business method. Under that rationale if Bilski had a step requiring note taking he should deserve a patent, because the notes could be dumped in the ocean.

    -Gene

  6. patent leather November 10, 2009 4:22 pm

    Seems like the entire proceeding really missed the boat. This case is all about Congress’ intent when enacting the Patent Act. The word “intent” was only present twice in the entire transcript (both attributable to Sotomayor). The Supreme Court has no authority to legislate and institute a test that they think works best.

    There is little probative legistative history. However, the most telltale sign of all is that while all these business method patents were being issued, Congress not once took any step to prohibit them. So Congress has basically spoken by inaction.

  7. Dale B. Halling November 10, 2009 4:27 pm

    Adam makes a great point about the lack of a definition of business method. All patents relate to how a business is going to operate its business. Bilski was dealing with real world objects the pricing a sale of energy. Energy is clearly physical has real world effects, as do pricing schemes.

    I second Gene that it is clear that Supreme Court is completely incapable of understanding the issues involved in a patent. I doubt any of the justices could draft a claim correctly and most probably could not correctly determine if a product infringed a claim. The comment by Justice Stevens “you cannot say a computer using new software is a new machine” – clearly shows he does not understand computers and software.

  8. Adam November 10, 2009 5:06 pm

    Gene,

    “You really have no idea how reducing potash for soap making is a process in furtherance of business? ”

    Anything you can get someone to give you money for doing could be called a “process in furtherance of business.” You might be able to get someone to pay you money to breathe, or sleep, or do nothing at all. Does that make these things “methods for doing business?” If so, then the term is completely vacuous, and Mr. White’s comment about the potash patent is void of meaning.

    On the other hand, we could assume it might be useful to talk about processes that are purely for conducting business, and try to come up with a definition that would describe that class of processes. For example, we might say a business method is a process that can only be used in an attempt to make money. In this case, hedge funds would be business methods, but making popsicle stick sculptures would not be. This is probably a bad definition, but the point is that we could try to agree on one, instead of just saying that anything you might do in a business is a business method.

  9. John White November 10, 2009 5:06 pm

    If you do not believe software creates a new “machine”, you obviously haven’t seen many of the iPhone applications. They change the device, utterly, from flashlight, to compass, to level, etc. None of these machines bear relation to one another, yet they are the same from a “hardware” standpoint. To say none of it is patentable because, in the end, a new machine is not created demonstrates a profound lack of appreciation for what software can accomplish. In my own experience, I have observed software on gear cutting machines extend the utility of the device 20 years. No other changes being made.

    John

  10. Adam November 10, 2009 5:31 pm

    “If you do not believe software creates a new ‘machine’, you obviously haven’t seen many of the iPhone applications.”

    All of your examples are of changes of use, not changes of the machine. That’s like saying that turning the steering wheel in a car changes it from the old machine that drives straight to a new machine that turns to the right, and that the two have no relation to each other. That’s absurd.

    I’m not saying the “machine or transformation” test is a good one, but to suggest that an iPhone app that changes all of the pixels on the screen to white (flashlight app) makes it a new machine is silly. The original machine was one that could change the color of its pixels, so exercising the original, designed functionality doesn’t change what machine it is.

  11. Dale B. Halling November 10, 2009 6:03 pm

    Adam you clearly do not understand how software works. The arguments against software patents have a fundamental flaw. As any electrical engineer knows and software developer should know, solutions to problems implemented in software can also be realized in hardware, i.e., electronic circuits. The main reason for choosing a software solution is the ease in implementing changes, the main reason for choosing a hardware solution is speed of processing. Therefore, a time critical solution is more likely to be implemented in hardware. While a solution that requires the ability to add features easily will be implemented in software. Software is just a method of converting a general purpose electronic circuit (computer) into a application specific electronic circuit. As a result, to be intellectually consistent those people against software patents also have to be against patents for electronic circuits.

  12. Dale B. Halling November 10, 2009 6:07 pm

    Adam you prove our point

    For example, we might say a business method is a process that can only be used in an attempt to make money. In this case, hedge funds would be business methods, but making popsicle stick sculptures would not be. This is probably a bad definition, but the point is that we could try to agree on one, instead of just saying that anything you might do in a business is a business method.

    There is no coherent definition of a business method patent. If Bilski designed his system for charitable reasons, then it is used to not just make money. You were right when you said your definition is a bad.

  13. Adam November 10, 2009 9:39 pm

    “As any electrical engineer knows and software developer should know, solutions to problems implemented in software can also be realized in hardware, i.e., electronic circuits.”

    As any electrical engineer knows and software developer should know, solutions to problems implemented in software can also be realized with pencil and paper, i.e., by humans. This does not mean that we should necessarily treat human actions and electronic machines the same under the law.

    “If Bilski designed his system for charitable reasons, then it is used to not just make money.”

    Incorrect. Then it would still be used just to make money, just not for himself. In any case, you recognize that my point is not to present a lasting definition for a business method, but to say that it might be a useful term that we can define. Simply asserting repeatedly that this is false does not make it so. You have yet to give a reason why it’s an undefinable term.

  14. Dale B. Halling November 11, 2009 11:39 am

    Adam,
    “You have yet to give a reason why it’s an undefinable term.”

    The burden on you to provide a workable definition. I have provided a definition – a patent that relates to a how a business operates – and it includes all patents. So unless you are arguing that we should not have a patent system, the burden is on you to provide another definition that can be applied consistently and does not cover every patent.

  15. sparky November 11, 2009 11:46 pm

    @Adam – It doesn’t change the computer EXCEPT its now loaded with innovative software that breathes new life into the computer providing it with new functionality and features. Don’t believe me, try running a PC with Windows 97 or even Vista and then try Windows 7. Nothing different but the new innovative software. You can try the same with an Apple computer.

    I can’t get why software developers are against software patents, except maybe:

    a. They want everything open and free. Well, sounds like a great utopia but doesn’t last. The “everything is free” internet is dying with the NY Times and WSJ putting up paywalls and many sites (including MySpace and Hulu) considering pay models. It might have worked when money was flowing and copycat startups were getting funding left and right. Not sure works effectively now.

    b. They get employed by all the copycat sites. A dozen sites with the same basic model employs more than a few.

    c. They hate frivilous patents. We’re agreed here. The obviousness standard has recently been tightened A LOT. It’s much more difficult to get a patent today vs a few years ago. Moreover, we should push more for open examinations, easier reexaminations, improved licensing practices and more sophiscated damage rules.

    d. They don’t understand patents. Likely, as I see many complain about patents referring only to titles. The exclusive right provided by a patent is limited by the claims. Justice Robert’s characterizing of Bilski claim 1 was incorrect. It is more specific than the Justice suggested, but might still be unpatentable.

    e. They don’t understand that although they can easily develop an innovative application or website, its extremely difficul to get traction before being squashed by a big guy.

    Consider what occured to a large number of startups during just the last month:

    Google’s Latitude
    http://www.techcrunch.com/2009/11/10/google-latitude-now-tells-you-where-youve-been/

    See John G’s comment:

    What does this do to all the other location based startups?

    Destroys them. I think most people will rather have a service track them rather than constantly check in all the time(like Foursquare). We’ll see though. Every startup these days probably worries about Google more than anyone else. They will continue to dominate the entire web at the rate they’re going.

    Constant Contact Enters the Online Event Registrations and Marketing Area

    “Startups, take note

    Considering the company’s already vast customer base, I think it’s a logical step for Constant Contact to take and one that will likely provide them with another steady revenue stream. For Internet startups who operate in this field, the announcement of the new feature isn’t exactly going to be the best of news.”

    http://www.techcrunch.com/2009/10/26/constant-contact-enters-the-online-event-registration-and-marketing-arena/

    Google Tackles Mortgage Market with New Comparison Ads

    “As Leadcritic points out, Google’s entry into this space is obviously going to be bad news to lead gen services like LendingTree, and they aren’t the only newcomers looking to get in on the action — we hear that Billshrink will….”

    http://www.techcrunch.com/2009/10/29/google-tackles-mortgage-market-with-new-comparison-ads/

    Google’s New Mobile App Cuts GPS Nav Companies at the Knee

    http://www.techcrunch.com/2009/10/28/googles-new-mobile-app-cuts-gps-nav-companies-at-the-knees/

    I don’t know if any of the above threatened companies had patents. Moreover, Google and Constant Contact have a right to design around any existing valid patents or steamroll over invalid patents. Better examples might be the twitter apps than can be turned off and copied by twitter, etc.

    Might point is if you are a developer and invent an innovative new feature or concept, I think you should have the option to patent if new, nonobvious, and useful.

  16. Mark Nowotarski November 12, 2009 8:54 am

    Regarding the first US patent on an improved process for making potash.

    What makes the US first patent special was that in England at the time, you could not patent a new process for making a known item. You could only patent new “vendable items”. Clever English patent attorneys recognized their client’s needs for patents on new processes, so they couched the invention desecriptions in terms of vendable items. The courts wrestled with the distinctions until eventually, processes were also patentable in England.

  17. Adam November 12, 2009 9:42 am

    “The burden on you to provide a workable definition.”

    I disagree with this statement; a claim that a concept is undefinable is so strange and unusual that the burden of proof surely lies with you. However, it seems like it might be fun to try to define it, so here we go:

    Business Method Patent. def. A patent containing one or more claims that describe one or more of the following:

    a) a financial transaction or the consideration of one or

    b) interaction with a customer or potential customer, where customer is defined as someone with whom a financial transaction is performed or

    c) interaction between employees of and/or owners of, shareholders of, or investors in the same business entity.

    Financial transaction. def. An action between two parties involving the investment, trade, or gift of money, monetary instruments, or objects of significant monetary value.

    Please note that I know next to nothing about legal technical terms, so if any of the above overloads an existing term in a strange way, I probably don’t mean the accepted legal definition. Also, I suspect that this definition is sufficient, but not necessary (i.e. everything it describes is a business method patent, but there are business method patents it doesn’t describe.) Hopefully it could be expanded so it is also necessary.

  18. Adam November 12, 2009 9:53 am

    “It doesn’t change the computer EXCEPT its now loaded with innovative software that breathes new life into the computer providing it with new functionality and features.”

    I think we can all agree that software changes the functionality of a computer. One of the amazing things about a computer is the extent to which this is true. Of course, it’s true to a lesser extent with many other things. Screwdrivers are meant to turn screws, but I might turn it over and use it to pound a nail. You can use a leaf blower to suspend balls in the air. Pie tins can be thrown as flying discs. These are changes in functionality that the designer likely didn’t intend, but they don’t create new objects.

    The point is not that functionality of a computer always stays the same, it’s that changing functionality does not create a new machine. Therefore, designing a new CPU is a fundamentally different task than writing software. And, as Gene says, it’s intellectually dishonest to pretend that it is.

  19. Adam November 12, 2009 10:51 am

    The last sentence of my last post wasn’t very clear. I meant to write, “And, as Gene says, it’s intellectually dishonest to pretend that they are the same.”

  20. Dale B. Halling November 12, 2009 12:18 pm

    Adam,
    Your definition is:
    “a) a financial transaction or the consideration of one or
    b) interaction with a customer or potential customer, where customer is defined as someone with whom a financial transaction is performed or
    c) interaction between employees of and/or owners of, shareholders of, or investors in the same business entity.”

    Your definition is unworkable unless you want to exclude almost all modern technology. For instance:

    b) So a patent for web browser that can be used to interact with a customer is not allowable? Software for managing customer contacts, or for accounts receivable management is unpatentable? A phone system that is used to interact with a customer is not patentable? How about a variable message sign for advertising?

    c) So email applications are unpatentable? Methods of printing that can be used for interaction between employees, owners and shareholders are not patentable? Telephones are unpatentable?

    Basically all forms or communication and storage of information can be used for these purposes and according to you would be unpatentable.

    If your argument is that only if the communication system is used for the purpose of interaction in a financial situation is it unpatentable, why does it matter if the information is financial. For instance, why should legal information or technical information (voltage, energy, power, DNA structure, coding information) be patentable, but not information related to financial matters?

    The clear answer is there is no reason to differentiate between different types of information. Financial information is not fundamentally different form other types of information. Excluding it from patentable material just encourages the lack of innovation and herd mentality that resulted in our present financial crises. For more information see http://hallingblog.com/2009/10/08/bilski-financial-patents-the-financial-crisis/.

  21. sparky November 12, 2009 12:27 pm

    @Adam19 – re “The point is not that functionality of a computer always stays the same, it’s that changing functionality does not create a new machine.” Huh? Imagine a computer device without any software loaded on it. It’s worthless. Load it with Software A, it will be now able to perform functions A. Load it with Software B, it will be able to perform functions B. A computer without software is just a pile of silicon, metals and plastic. It’s the software technology that breathes life into it and provides its technical functionality.

    So, Computer A loaded with the special sauce software is not the same a Computer B without such software. That thing, computer, device, etc. is different. Example, would you buy the same HP laptop model with Vista vs one with Windows 7 for the same price? No, they are DIFFERENT COMPUTERS even though the same exact models.

    A claim directed to “Computer with Special Sauce A” doesn’t cover computers without, just those with the innovative specific software.

  22. Dale B. Halling November 12, 2009 12:34 pm

    Excellent points sparky

  23. Adam November 12, 2009 1:26 pm

    “Imagine a computer device without any software loaded on it. It’s worthless.”

    Imagine a computer device that isn’t plugged in. It’s worthless. Plug it in, and it can now perform all of its normal functions. Does this make it a new machine?

    Is a car without gas in it worthless? What about a car in 5th gear that’s standing still? I say no, because you can reconfigure these machines, making them useful, and without making a new machine. However, in every case, there’s a point in time where they’re configured differently and are useless.

    We seem to be miscommunicating, because you define “new machine” differently than I do. You think that if a machine can do something different now than it could in the past, then it’s a new machine. I say that it has to actually be a different machine, since many everyday machines change in their functionality over time, depending on time and context, without becoming a “new machine.” A sailboat out of water can’t move by itself, but putting it into water doesn’t make it a new machine, even though it gains the functionality of movement. There’s a difference between reconfiguration and modification, and I don’t understand why you think loading software modifies a computer into a new machine.

    “would you buy the same HP laptop model with Vista vs one with Windows 7 for the same price? No, they are DIFFERENT COMPUTERS even though the same exact models.”

    No one is saying that software doesn’t exist or that it’s all the same. I might be willing to pay more for some software than other software, but that doesn’t mean anything about the computer it runs on. If I run Vista and Windows 7 at the same time on the same computer, I would argue that the computer isn’t two different machines at the same time, but I recognize that the two operating systems are different.

  24. TinkererJoe November 12, 2009 6:15 pm

    I think we need to have an agreement on the term “machine”. Are we talking about the conceptual term in computer science such as “the turing machine” or the noisy humming metallic box under my desk? If we are talking about the conceptual term then the patent should boil down to the method/process itself to be considered for novelty.

    If we are talking about a physical machine, then what’s claimed needs to be physical as well, i.e. “comprising of memory modules, reads instructions from stored medium…etc”

    I wonder if the issue can be solved by separating the utility patent into “method/process” and “machine/structure” categories. You can apply a patent under either, but not both categories. I think most valid patents fall under one or the other. For the ones with combination of method and structure, they need to submit two different patents disclosing novelty with respect to the categories.

  25. Adam November 12, 2009 6:59 pm

    Dale, you’ve misread what I said about business method patents in two ways. I’ll try to clarify what I said.

    1) I have never said that business methods shouldn’t be patentable or are not patentable. All I’m saying is that some people want to talk about them, and that they’re definable. Your assertion was specifically that the term “business method patent” couldn’t be defined in a way that didn’t apply to all patents, regardless of whether or not they should be patentable. I’m responding to that assertion only.

    2) My definition specifically says that a, b, or c must be described in a claim in the patent, which is a part you cut out of your quotation. It is not a list of things the invention could possibly be used for. In fact, that’s the mechanism that gives the definition the specificity you said can’t be had. It would be trivial to describe an email system in a patent without referring to financial transactions, customer relationships, or employees. In that particular example, you don’t even have to mention people or money at all, only computers and networks. It’s the same for all of your examples. This is actually the key mechanism of the definition. If you can possibly craft the claims without describing any of the fundamental parts of a business, then it’s not a business methods patent.

  26. sparky November 12, 2009 10:24 pm

    Adam – We’ll have to agree to disagree. I believe it took hard work (AND A LOT OF MONEY) and technical innovation to go from vista to Windows 7. The innovations are worthy of patent protection, assuming the other patent criteria (novelty, nonobviousness, etc.) are met.

    Regarding your car example, my car filled with diesel is different than my car filled with regular gas. Yes, it’s the same model and everything that’s solid is the same, but the fuel is different impacting how the car will act and perform. Taking a sailing cruise driven by me would be a lot less pleasant than one driven by an experienced sailor. Me after a big lunch is different than me after a small lunch. There’s hardware and software and they work together and are both highly technical in nature. I’ve got tremendous respect for chip designers, but also for innovative developers.

    I disagree 100% with your reasoning, but you appear to disagree 100% with mine. It’s ok

  27. Adam November 13, 2009 12:44 am

    “I disagree 100% with your reasoning, but you appear to disagree 100% with mine.”

    No, I agree with most of you wrote in this last post. But that’s because you stopped talking about creating new machines with software.

    Of course things are different when they’re different. But you’re still the same person before and after you eat, your car is not a new car when you put diesel in it, and just because you’re at the helm doesn’t mean a sailboat has become a new boat. I assume we agree on all of these points, it’s just when you apply the opposite reasoning to computers that we disagree.

    I understand that you think software deserves patent protection and that’s a completely legitimate view, though I happen to disagree with it. But regardless of whether or not that’s true, it doesn’t make any sense to me when people call a computer with new software a new machine. It is not a necessary step to think that software deserves patent protection. They’re not necessarily in contradiction.

  28. Dale B. Halling November 13, 2009 12:16 pm

    Adam,

    If I rearrange the transistors in an NOR gate and make them an NAND gate is that a different machine? Clearly, it is the same elements (4 transistors), just connected in another manner. But the function is completely different. That is what software does for a computer. It rearranges the connection to make a different machine – in that it performs a totally different function. In both cases the circuits are made up of transistors, but it is how those transistors are connected that determine what type of machine it is.

  29. TinkererJoe November 13, 2009 1:12 pm

    I think a business method is only patentable when:

    1) the method/process is novel and not abstract (where to draw the line?),
    2) or the physical machine with novel/enhanced attributes within context of the machine(if it’s a printer, how does it do printing better. if it’s a computer, how does it load/execute instructions faster).
    3) or the act of deploying a known method to a known machine is non-obvious

    The bilski patent can only be considered under 3).

  30. Adam November 13, 2009 6:15 pm

    “If I rearrange the transistors in an NOR gate and make them an NAND gate is that a different machine?”

    I suppose that depends partly on what mechanism you use to rearrange them. Consider if the designer of the circuit included a button that would use physical arms to rearrange the transistors when you press the button. Then I don’t think you’ve created a new machine by pressing the button and reconfiguring as the designer intended, since that was always how the machine was supposed to work. However, if the circuit was intended to stay the same and you had to pull off the transistors and resolder them, you could probably convince me that you’ve created a new machine.

    I’d say it’s kind of like the wiring in a house. If you flip a light switch, you’ve closed a circuit and created new functionality in the light bulb (emitting light), but you haven’t created a “new machine.” Conversely, if you have to rip out the drywall and lay new cable to the lightbulb, then you probably have created a “new machine.”

  31. Dale B. Halling November 13, 2009 6:45 pm

    Adam,

    Sure the form matters – do you actually read what you write. You are so wedded to your point of view you are unable to be rational about the subject. A NAND gate and a NOR gate are different machine – period. It does not matter whether this is done in hardware or software.

  32. Adam November 14, 2009 5:10 pm

    “A NAND gate and a NOR gate are different machine – period.”

    You know as well as I do that software neither removes transistors from nor adds transistors to a computer, so I’m not sure why you even brought it up. Software merely changes which transistors the electricity flows through, like flipping a light switch. If you think flipping a light switch on your car makes it into a new machine, then we’re operating under such drastically different definitions of the word new that it will be very difficult for us to communicate.

  33. David Koepsell November 15, 2009 2:59 am

    I actually completely agree with Dale and Gene that software is just as patent-eligible as hardware, and my first book The Ontology of Cyberspace: Law, Philosophy, and the Future of Intellectual Property makes this point… there is no ontological distinction among utilitarian objects. Unfortunately, I am sure Dale and Gene will disagree with my conclusions about what this means for patent and copyright law in general, but at least there’s a bit of commonality here.

  34. breadcrumbs November 15, 2009 9:08 am

    Isn’t what matters here is the legal definition rather than the technical definition?

    …a foot in each world.

  35. Just visiting November 15, 2009 10:56 am

    A computer can be analogized to a bucket full of Legos (or perhaps an erector set). Pour the bucket on the ground and what utility do you have? Nothing.

    However, rearrange what Legos connect to each other, and you can create a functional device.

    Software is what transforms the computer (i.e., the bucket full of Legos) into a functional device.

    As well-known observation is that “virtually all [inventions] are combinations of old elements.” In re Rouffet, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998). The difference between what is old and what is new is how the items are combined. A computer program simply changes how the switches in a processor connect to each other.

  36. Dale B. Halling November 15, 2009 1:55 pm

    Just Visiting,
    Actually all patents are combinations of existing elements and connections (conservation of matter and energy). If you attempt to put a new element that is completely new into a claims, lets call it novel x, then the patent office will give you a 112 rejection. The appropriate rejection would be a 112 paragraph 1 rejection for failing to describe your invention so that one skilled in the art could practice the invention and 112 paragaph 2 rejection for any claim with novel x in the claims, because you failed to provide a claim that definite.

    Adam either does not understand how a computer works or he does not understand that inventions are combinations of elements and connection. Connections matter as my NAND and NOR example shows, but another example is stereoisomers. Stereoismers have exactly the same elements and almost the same connections (symmetrical connections), but if you are using a stereoisomer for its optical properties or its pharmacological properties if makes a profound difference if you have the left handed or right handed version. Things that appear similar to those not skilled in the art, such as Justice Steven and Adam, can be profoundly different and clearly deserving a patent.
    .