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The Post-Bilski Era Gets Underway 94

Posted by kdawson
from the method-in-their-madness-but-no-apparatus dept.
bfwebster writes "A set of pharmaceutical process patents for 'evaluating and improving the safety of immunization schedules' (Classen v. Biogen et al.; see US Patents 6,420,139; 6,638,379; 5,728,385; 5,723,283) were held to be invalid due to unpatentability. The decision was appealed to the US Court of Appeals for the Federal Circuit, but was upheld with a terse citation to In re Bilski (which decision we discussed here). Here's the entire text of the appeals decision: 'In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court's grant of summary judgment that these claims are invalid under 35 U.S.C. 101. Dr. Classen's claims are neither "tied to a particular machine or apparatus" nor do they "transform a particular article into a different state or thing." Bilski, 545 F.3d at 954. Therefore we affirm.' It will be interesting to see what happens when these same standards start getting applied to software-related patents."
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The Post-Bilski Era Gets Underway

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  • One of the links doesn't work, gives an HTTP 404 error.
  • by clarkkent09 (1104833) * on Saturday December 20, 2008 @03:47PM (#26185679)
    For us non-laywers and not interested enough to spend time looking up those court cases but interested enough to understand what the significance of this is, can someone please translate the summary into plain English?
    • Re: (Score:3, Interesting)

      by David Gerard (12369)

      As a rule of thumb, when a judge answers you with a single paragraph of "go away," you were stupid to even bring the case and pushing it is likely to lead only to heartbreak (and paying attorneys' fees) for you and your client.

      I heartily recommend a diet of Groklaw [groklaw.net], to teach you as a technologist WTF the lawyers mean.

    • In other words... (Score:5, Informative)

      by maz2331 (1104901) on Saturday December 20, 2008 @04:02PM (#26185789)

      It's a virtual invention and gets no protection. Patents after Bilski pretty much have to be tied to a particular machine or change something in meat-space.

      • Re: (Score:2, Interesting)

        It's great to see the judgment for this case, however, it will not stop virtual patents in the pharma world (or in software either). Patent lawyers know the system very well, and will use what they learned here to make sure that all virtual patents are tied to a mechanical process or an apparatus. In this case, specifically for US Patent 6420139, evaluating the safety of immunization could become using a simple lab on a chip (the apparatus) that will take the samples from all patients and evaluate their e
        • Unless It Hits KSR (Score:4, Interesting)

          by maz2331 (1104901) on Saturday December 20, 2008 @07:19PM (#26187099)

          It still will need to pass the hurdle of "obviousness" under KSR, which basically lays down a standard of using commonly known components in accordance with known techniques and getting the predictable result is highly likely to be "obvious" and thus fail patentability.

          What I found interesting in this case is that the courts have told the patent attorneys in this case that the Bilski ruling actually means what it says, and that trying to game their way around it will result in summary execution of thier case.

          The rules have fundamentally changed.

    • Re: (Score:1, Informative)

      by Anonymous Coward

      It might help if the given link actually worked. Prior slashdot discussion here: Federal Circuit Appeals Court Limits Business-Method Patents [slashdot.org]

      Basically, in re Bilski is a Federal Court decision which stated that in order to be patentable, the invention must be (in the words of the summary) "tied to a particular machine or apparatus [or] transform a particular article into a different state or thing." In effect, in re Bilski invalidates a range of software and business patents.

      The point of this story is not

  • by CaptainPatent (1087643) on Saturday December 20, 2008 @03:48PM (#26185683) Journal
    As a software examiner I can say that this honestly doesn't change a lot in our art unit. If the implementation could occur in someone's head then no physical transformation takes place (i.e. software steps that aren't claimed to be on a computer.)

    There are only a small amount of applications this effects and it's very easy to overcome, although I unfortunately can't go into much more depth than that.
    • by DigiShaman (671371) on Saturday December 20, 2008 @04:43PM (#26186075) Homepage

      What about a business processes such as Amazon's 1-Click. Surely this will be next now that there is a precedent.

    • Re: (Score:3, Interesting)

      There are only a small amount of applications this effects and it's very easy to overcome, although I unfortunately can't go into much more depth than that.

      I don't think you meant anything controversial but there's just something about that line that makes me grumpy. It sort of implies that the inner machinations of the patent system aren't meant for regular people to understand. It plays to the feeling, common around here, that the only thing that regular people, the kind that might start small software shops, need to know about software patents is that they can kill your business if your competitors are big.

      I know that's not what you meant, it's probably you

    • by Jane Q. Public (1010737) on Saturday December 20, 2008 @05:39PM (#26186443)
      Properly, software, as a written work, should be covered by copyright and not patents anyway. This was true in the past, and the changes that allowed software patents to become common are precisely the cause of all the problems everybody is now trying to fix.

      If the current Bilski ruling does not change this effectively, then reasonable people will continue to push until it is changed. In other words, our goal (no joke or exaggeration) is to put you out of a job.
      • by samkass (174571)

        Properly, software, as a written work, should be covered by copyright and not patents anyway.

        Actually, it's source code as a written work should be (and is!) covered by copyright. Once it's compiled and running through a particular state machine to accomplish certain transformations of data, it's most certainly a method and apparatus. There's no particular reason in my mind why a machine has to be physical to somehow magically be patentable.

        • Not so (Score:5, Interesting)

          by Jane Q. Public (1010737) on Saturday December 20, 2008 @06:37PM (#26186835)
          either legally or conceptually. This identical issue was settled by the courts almost 150 years ago, when the "music industry" of the time was up in arms about piracy of music for player pianos.

          Industry argued that the paper rolls should be patentable, because they constituted physical items that controlled a physical machine. The courts ruled (quite properly, in my opinion) that the physical form of the music is irrelevant; it might be possible, for example, to make a machine that could read music directly off the paper it was written on. Does that make it fundamentally a "different" product or work from the original? The answer was unequivocally "NO".

          The same holds for written vs. compiled software: there is no fundamental difference between the results of software that is run in realtime by an interpreter (which reads the source code directly), and the results produced by the same program when compiled. If the interpreter and compiler are constructed properly, the output is identical. Therefore there is no legal (or moral, or ethical, or logical) difference. For all practical purposes they are the SAME.

          It is precisely because industry has managed, after all this time, to finally get the courts to be sympathetic to the position that software should be patentable that we are having all these troubles. During the long period when it was understood and accepted that software was a copyright issue rather than a patent issue, such problems seldom arose. Now they are everywhere. Also, software patents have a chilling effect on innovation; we have seen this time and again, even some really egregious examples. It is clear by now that software patents have very little if any societal benefit, in proportion to the harm that they cause.
          • by samkass (174571)

            The same holds for written vs. compiled software: there is no fundamental difference between the results of software that is run in realtime by an interpreter (which reads the source code directly), and the results produced by the same program when compiled. If the interpreter and compiler are constructed properly, the output is identical. Therefore there is no legal (or moral, or ethical, or logical) difference. For all practical purposes they are the SAME.

            That is where we disagree. While there are isomorphisms between source code and instructions running through a state machine, I hold that the instructions + state machine form its own patentable process. The source code, and even the binary code, is copyrightable, as you say. But the algorithms and approach are almost by definition a methodology, and when they run on a machine to accomplish some purpose they are a novel invention.

            The problem with music is that it is very difficult to prove that it accomp

            • But it still doesn't make any practical difference. Legally, it's still all the same. Technically, what is being patented is the "process", not the software... and that is what the Bilski decision was all about.

              And I would like to explain one reason for my disagreement. First off, I can agree that algorithms can be considered a "process" or "methodology". But the question here is whether they are patentable processes or methodologies. And there are a number of rules for patentability that most algorithms
              • by samkass (174571)

                One of these standards is novelty. A patentable invention or process cannot (legally) be merely an assemblage of other items or processes already in common use. For example, a bottle opener welded to a pry bar is not eligible for a utility patent as a new kind of carpenter's tool. It is merely the combination of two already existing, common tools.

                Actually, I'm no lawyer but I'm fairly sure that's not the definition of novelty. Although the standards are different from country to country (some countries patent devices for a particular purpose, others patent only the device itself no matter what it's used for), generally novelty can be proved in a variety of ways, the most common being whether the resulting product is commercially successful. It is presumed (in the United States, at least), that if you're being successful due to a patented product t

                • Actually, I'm no lawyer but I'm fairly sure that's not the definition of novelty. Although the standards are different from country to country (some countries patent devices for a particular purpose, others patent only the device itself no matter what it's used for), generally novelty can be proved in a variety of ways, the most common being whether the resulting product is commercially successful. It is presumed (in the United States, at least), that if you're being successful due to a patented product tha
        • Re: (Score:1, Troll)

          by rsborg (111459)

          Once it's compiled and running through a particular state machine to accomplish certain transformations of data, it's most certainly a method and apparatus.

          Calling it a state machine doesn't make it any more physical.

          There's no particular reason in my mind why a machine has to be physical to somehow magically be patentable.

          However we're not discussing "in your mind" (unless you happen to be a judge hearing IP cases) but in terms of the law, which is based on judicial review and jurisprudence. This ruling

      • Re: (Score:1, Informative)

        by Anonymous Coward

        Software is a written work, but I firmly disagree that software should be covered by copyright and not patents.

        Copyright the creativity in a work. Copyright does not cover *functionality* or utility in a work. (The same is true for design patents.) So, for example, if I reverse engineer your program without looking at your source code, I won't be violating your copyright, even though I've stolen your idea and am now making $$$ off of it. An example of where you'll be able to get me for a copyright violation

        • that you have gotten it wrong. I do understand the difference between creative and functional, but apparently you are not familiar with the legal history of same, except perhaps only some that is pretty recent, which is exactly the problem I was pointing out. Please see my reply to the other respondent.
      • by Ironica (124657)

        Properly, software, as a written work, should be covered by copyright and not patents anyway.

        And as others have pointed out, it is. However, this gives no real protection.

        I could write a story about a boy who finds out he's a wizard, and goes off to a boarding school to learn magic, and has many adventures, and so long as it's not *too* much like JK Rowling's work (the adventures are different, the names are entirely dissimilar, etc.) I didn't violate copyright. The same is true for software: I could look at a program, then go about writing my own program that does the same thing, and without act

        • If you can write software that does the same thing as mine (as you say, without copying the "look and feel" TOO much), and even if you do it better... THAT IS WHAT A FREE MARKET IS ALL ABOUT. As long as you do your own work and do not steal mine, if the end result is similar... then you are my competitor. That is the way it works!

          As an honest businessperson (i.e., not one to try to use dishonest or coercive methods to take over the market), I welcome the challenge. As long as you are also an honest busin
  • Software patents, sadly, play by different rules than everything else. I'd imagine that software patents would still be granted and enforced, especially since they could just tie the process to the PC and meet the court's requirements. Meh.

    • by tonyray (215820)

      A computer is not a "specific machine". A washing machine, Westinghouse Model 293DQ, is. So, unless your software runs on only one make and model of computer, it isn't patentable.

      • Re:Irrelevant. (Score:4, Interesting)

        by pauljlucas (529435) on Saturday December 20, 2008 @04:34PM (#26186001) Homepage Journal
        For a software patent, "the machine" is the machine that results when the software is running on it. For example, when a computer is running a spreadsheet application, "the machine" is a "spreadsheet machine." (Don't believe it? Look it up.)
        • by tonyray (215820)

          Yes, but only if that is its ONLY function.

          • The spreadsheet application can only do spreadsheets. The fact that current OSs can multitask is irrelevant. (I could use a washing machine as an expensive paperweight also, but that fact is also likewise irrelevant.)
            • Re: (Score:1, Troll)

              by Joe U (443617)

              In Windows thanks to OLE, my spreadsheet (Excel) has a browser in it. A browser that can run Flash or Java.

              My spreadsheet application is nothing but a series of objects in an interlinked multipurpose computer.

              Yeah, I understand what you're trying to say, unfortunately it's broken.

            • Re: (Score:3, Insightful)

              by he-sk (103163)

              The spreadsheet application can only do spreadsheets.

              To the contrary, I bet most spreadsheets today are turing-complete, meaning they can conceivably simulate any computer program.

              It's not called general purpose computer for nothing, you know.

        • Re: (Score:3, Informative)

          Actually, the Wikipedia page for Bilski quotes the court as having said:

          "We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine."

          So I think the question remains open.

        • by russotto (537200)

          For a software patent, "the machine" is the machine that results when the software is running on it. For example, when a computer is running a spreadsheet application, "the machine" is a "spreadsheet machine." (Don't believe it? Look it up.)

          And that's the LESS-silly dodge.

          Many software patents also claim the media that contains the software as a patentable device.

          • Of course claiming media only makes it patentable when it meets certain other particular limitations (i.e. excludes signals, operates on a computer (thus excluding mental processes), etc.).

      • by tonyray (215820)

        Oops, have to reply to my own post. Not only would the software need to run on only one make and model of computer, it would have to be included with every instance of that computer. Think embedded firmware.

        • by mind21_98 (18647)

          But the case doesn't really prove anything [flywheelblog.com], at least, not until SCOTUS denies to hear it/agrees with the ruling. But even then, it could just be that patent writers have to be a bit more creative about the wording of their patents.

          • by tonyray (215820)

            The whole point of In re Bilski is that this court, which had several years ago expanded the definition of what was patentable and lead to the mess the USPTO is now in, has now stated that they were wrong in doing so and that they were now adhering to an earlier definition that did not expand upon those decissions that SCOTUS had handed down. Software was not originally patentable (believe me, I've been programming since 1968). If they adhere to an earlier definition, it follows that it is not patentable.

            • ....(believe me, I've been programming since 1968)...

              Right....

              You'd have a negative slashdot UID.... duh! :P

        • Not only would the software need to run on only one make and model of computer, it would have to be included with every instance of that computer.

          So in other words, Nintendo could make one of its games eligible for a patent by including it as a pack-in with one of its consoles. Is this correct?

  • âoeWe leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.â

    Direct citation from Bilski's case.

    • The real problem with these things is that they describe what is generally considered to be "what is being done" rather than "how it is done."

      If a patent were granted for "A method of lighting homes using electricity", it covers a lot more ground than "a method of lighting homes using electrically-heated coiled metal in a vacuum"

      In general, it's better to say someone has limited monopoly on "this thing they built" than it is to do so for "this idea they had", even if they built a thing based on the idea.

  • by theaveng (1243528) on Saturday December 20, 2008 @04:46PM (#26186101)

    Ooops. That says "post-Bilski" not "post-Bikini".

    Darn. And I was looking forward to visiting the bikini-free beach this summer. :-|

    • Re: (Score:2, Insightful)

      by Anonymous Coward

      Be careful for what you wish for. The alternative may be far worse.

      • by theaveng (1243528)

        Outlaw nudity for anyone over 150 (years or pounds).

        • Outlaw nudity for anyone over 150 (years or pounds).

          That might be sex discrimination. I would imagine that as a group, men over 150 pounds tend to be healthier than women over 150 pounds, if only because men are taller. Even Olympic swimmer Michael Phelps weighs about 200 pounds, largely because of his muscle.

    • by eclectro (227083)

      Sadly, the post-bikini era still remains but a dream for most nerds.

  • I've just glanced briefly at the first patent listed (6,420,139), and at its first couple of claims, and to me it seems they could be summarized as "apply the scientific method to immunization schedules".

    While I'm not actually opposed to all patents, even software patents, I do think there are a lot of crap patent applications being submitted (with many of them being granted), and my initial impression is certainly that this is likely to be one of them.

  • This case is nonprecedential so that could be why the opinion is so short. It would have been nice for the court to elaborate on why the patent fails the Bilski test.

    Here's the claim:

    1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:
    immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and
    comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

    As discussed here [patentlyo.com], it's difficult to see why immunization of animals is not transformative.

    • Hmmh ... (Score:1, Flamebait)

      by KwKSilver (857599)
      Transformative? What, pray tell, is novel about immunizing animals? WTF is novel about studying the effects of vaccines, to determine if they are effective?! Finally, can you suggest any sound reason why those who submitted this drivel should not have telephone poles shoved up their asses!!?
      • Novelty is not part of the patentable subject matter analysis. That is a completely different issue.
        • by KwKSilver (857599)
          Well knock me down and mod me flamebait! Oh, never mnd, somebody else already took care of that. If novelty is not a requirement for patentability, I'm moving my flag to the patents should be outlawed camp. Seems like a constitutional amendment would do it.

          Somebody should clue the USPTO about that though, so that they can take down or appropriately modify this page. [uspto.gov] Maybe just a footnote that says "the requirement for novelty shall not be used to keep well-connected parasites from getting a free rid
          • Novelty IS a requirement for patentability. Determining if something is patentable subject matter (what I said in my reply) is what Bilski concerned and it is part of the patentability analysis. Novelty is the next step. Look at the statute. 35 USC 101 is patentable subject matter, 35 USC 102 deals with novelty.
    • by Ironica (124657)

      Wow... so they want to patent the usual way of conducting medical research?

      1. Come up with an intervention
      2. Try that intervention on animals
      3. Collect data on what happens
      4. Analyze data and publish results

      The tiny conspiracy theorist in me thinks that someone wants to be able to quash rigorous scientific research on the long-term effects of vaccines.

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