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Supreme Court Throws Out Bilski Patent 232

Posted by CmdrTaco
from the well-isn't-that-special dept.
ciaran_o_riordan writes "The US Supreme Court has finally decided the Bilski case (PDF). We've known that Bilski's patent would get thrown out; that was clear from the open mockery from the judges during last November's hearing. The big question is, since rejecting a particular patent requires providing a general test and explaining why this patent fails that test, how broad will their test be? Will it try to kill the plague of software patents? And is their test designed well enough to stand up to the army of patent lawyers who'll be making a science (and a career) of minimizing and circumventing it? The judges have created a new test, so this will take some reading before any degree of victory can be declared. The important part is pages 5-16 of the PDF, which is the majority opinion. The End Software Patents campaign is already analyzing the decision, and collecting other analyses. Some background is available at Late-comers guide: What is Bilski anyway?" More analysis of the decision is available at Patently-O.
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Supreme Court Throws Out Bilski Patent

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  • by AtlantaSteve (965777) on Monday June 28, 2010 @11:59AM (#32717380)

    While Bilski lost, the Supreme Court did not throw out software or method patents. The Supreme Court actually re-opened the door just a bit after the Federal Circuit had left it cracked.

    The actual majority opinion is only 16 pages long, and really doesn't say much. They more or less like the "machine or transformation" test that the Federal Circuit had come up with... wherein a method patent must tie any abstract ideas to a "particular" machine or transformation of matter, such that the abstract idea may be combined with other machines or transformations not protected by the patent. However, the Supreme Court now says that while this test may get the job done most of the time, it is not necessarily the only possible test (and they don't say what the other tests might include.

    Most important for software patent watchers, the Supreme Court completely ignored In re Alappat and the impact of "Beauregard claims" on the Federal Circuit "machine or transformation" test. That older Alappat decision opened the door for patentee to write claims for software as being articles of manufacter. This "Bearegard" format is basically a sneaky trick... saying that you haven't invented software on a hard drive (which should be analyzed as a method), but rather you've invented a hard drive that has software on it (which should NOT be treated as a method). This is how most software still gets in the door, as the PTO gives it a wink and a nudge doesn't treat it as being "software" at all! This was the issue that software patentees were watching mostly closely, and Supreme Court was completely silent and left the status quo untouched.

    Nice headline, but it does not reflect the total picture. This opinion is NOT a victory whatsoever for the anti-software patent crowd.

  • by Anonymous Coward on Monday June 28, 2010 @12:00PM (#32717392)

    Machine-or-transformation is thrown out as the *exclusive* test, which is what the Federal Circuit was doing. In doing so, the Supreme Court has cleared the way for ongoing patenting of business methods (and software, although not stated directly).

    Regardless of where you stand on the matter, this case is a major win for a restrained judiciary that does not legislate from the bench. The statute is VERY clear that the concept of patentable subject matter is extremely broad, to include business methods (and software, natch). If you want this to change, you're wasting your time by arguing about it with the USPTO or the courts. Congress defined patentable subject matter as broad, and it is what it is.

    The only impact of this decision on business as usual will be some extremely confused examiners now that the machine-or-transformation test isn't the end-all-be-all.

  • Re:"journalism" (Score:1, Interesting)

    by Anonymous Coward on Monday June 28, 2010 @12:03PM (#32717436)
    Bilski's been mentioned on here so many times, and really the only important part -- that the decision could kill or have severe implications for all software patents -- is mentioned. Although I'd emphasize that earlier and more clearly in the summary, it's really not that bad. The particulars of the patent are immaterial for a general audience, or even a technical audience (who would presumably have already heard of Bilski). It could be a software patent on modeling rabid ducks for all I know, despite being this case's possible ability to set us all free.

    (I am getting ready to form a company and release software I've developed over the past few years. Given the litigious climate, I'm specifically not releasing any already-developed features that would generally be novel, outside the platform. If software patents were invalid, the list of features I'd release would be longer and more interesting; instead, the novel ones will stay locked-up for only me to use.)
  • Most important for software patent watchers, the Supreme Court completely ignored In re Alappat and the impact of "Beauregard claims" on the Federal Circuit "machine or transformation" test. That older Alappat decision opened the door for patentee to write claims for software as being articles of manufacter. This "Bearegard" format is basically a sneaky trick... saying that you haven't invented software on a hard drive (which should be analyzed as a method), but rather you've invented a hard drive that has software on it (which should NOT be treated as a method). This is how most software still gets in the door, as the PTO gives it a wink and a nudge doesn't treat it as being "software" at all! This was the issue that software patentees were watching mostly closely, and Supreme Court was completely silent and left the status quo untouched.

    While I agree with your other paragraphs, I disagree here for two reasons... Most software claims are not written as Beauregard claims, but as either method or system claims (or both), cause your second clause - that the PTO gives them a wink and a nudge - is incorrect. The PTO most certainly applies the machine-or-transformation test to Beauregard claims, and I've received several application rejections that cite the Fed. Circ's decision in Bilski against them. So, since we still have had to address that test, there's no reason to write a claim as a Beauregard claim when a method or system would work equally well and be arguably broader.

    /I am a patent agent; I am not your patent agent; this is not legal advice, etc.

  • by NZheretic (23872) on Monday June 28, 2010 @12:11PM (#32717542) Homepage Journal
    The patent in question was effectively denied, but the court would not impose further limits on patenting.

    No. 08-964. Argued November 9, 2009--Decided June 28, 2010 [supremecourt.gov]

    Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act's text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable "process," beyond pointing to the definition of that term provided in 100(b) and looking to the guideposts in Benson, Flook, and Diehr.

    Which is about the same as saying ( Justice Potter Stewart, concurring opinion in Jacobellis v. Ohio 378 U.S. 184 (1964)), [wikipedia.org]

    "I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description ["hard-core pornography"]; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the motion picture involved in this case is not that."

  • Re:Fucked-up title (Score:3, Interesting)

    by Lunix Nutcase (1092239) on Monday June 28, 2010 @12:17PM (#32717626)

    Except that "Supreme is Throw out Bilski Patent" makes no sense. Also it make no sense if you take the 's as meaning possession either.

  • by FlorianMueller (801981) on Monday June 28, 2010 @12:21PM (#32717668) Homepage

    Here are some quotes from my analysis [blogspot.com] (I'm the founder and former director of the NoSoftwarePatents campaign):

    • "Unfortunately, the Supreme Court delivered an opinion that doesn't help the cause of partial or complete abolition of software patents at all."
    • "[T]he court's majority position is about the most liberal reasoning that it could have been. Only a decision to uphold the Bilski patent could have been any less restrictive.
    • "The decision announced today makes it clear that a majority of the Supreme Court wanted to give the abolition of even only a small percentage of all software patents the widest berth possible."
    • "This US decision is even more disappointing when taking into account the global trend." [then mentions political process in New Zealand and court decision in Germany]
    • "The position that software patents should be abolished isn't nearly as popular among judges and politicians as it is in the free and open source software community."
    • The upcoming Defensive Patent License (DPL) is recommended at the end of the blog posting.

    Again, here's the full text. [blogspot.com]

  • by AtlantaSteve (965777) on Monday June 28, 2010 @12:37PM (#32717902)

    Sorry, I didn't mean to imply that the machine-or-transformation test is not at all applicable to Beauregard claims. However, BPAI rulings and District Court decisions over the past year have been all over the map on it. Some view Alappat and Beauregard doctrine as turning a "general-use" computer into a "particular" machine, satisfying that first prong. Others opinions "pierce the veil" so to speak, and consider the particularity of the machine apart from merely having software on it (e.g. Cybersource in California).

    Regardless, when you invent software and install it on a general-use computer... in my opinion it's fundamentally disingenuous to say that you have a "particular machine". Even if Beauregard claims offer weaker protection than claims written in method or system form, the fact that a patent issues at all creates a chilling effect because most parties will simply consent to a licensing shakedown rather than spend the $4+ million required to litigate validity or non-infringement. Beauregard is simply terrible doctrine, and it would have been nice for everyone (even those who disagree) to get some finality on its status either way.

  • Some view Alappat and Beauregard doctrine as turning a "general-use" computer into a "particular" machine, satisfying that first prong. Others opinions "pierce the veil" so to speak, and consider the particularity of the machine apart from merely having software on it (e.g. Cybersource in California).

    Regardless, when you invent software and install it on a general-use computer... in my opinion it's fundamentally disingenuous to say that you have a "particular machine".

    What's a "general use computer" as opposed to a "particular machine"? The Fed. Circ. ignored that, and SCOTUS unfortunately never addressed it.

  • I agree it's mere dicta, but I think it's a clue to Scalia's sentiment on the subject: it's not the kind of laundry list you'd get from someone who generally feels business method patents are valuable. At the very least, it's suggestive of someone who feels that business-method patents have gone too far.

    I don't know... Take the classic "method of exercising a cat" or "method of swinging on a swing" - shouldn't those have been rejected under 35 USC 102 as already known, or at least under 35 USC 103 as obvious? 35 USC 101 is just the barest gatekeeper - both are clearly "methods" and pass 101. Similarly, the absurd things he listed - toilet reservations, notifications of dating status - are clearly "methods" and should pass 101, but perhaps be invalid as neither new nor nonobvious.

    I think there are valid criticisms of many business method patents, but I think they are really based around obviousness. It's tough to articulate though, so it's a lot easier to claim that methods of doing business aren't patentable in general, but I think that misstates the law.

  • by radtea (464814) on Monday June 28, 2010 @01:03PM (#32718258)

    While Bilski lost, the Supreme Court did not throw out software or method patents.

    If anything they suggested software and method patents have a place in "the Information Age", saying: "The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals."

    What they say in the last sentence is actually false: it would not "create uncertainty" but rather almost certainly rule out patentability. This is the court giving a wink and a nudge to the new slavery: ownership of ways of organizing human beings.

    Patents in their up-until-recently form were intended as protection for ways of organizaing brute matter, not living things and not in particular not human beings. Patenting business processes and ways of thinking (which in the Age of Functional Programming is transparently all that software is: mathematical functions that can be represented in their entirety as thoughts) is nothing but a "form of tyranny over the human mind."

    Business process patents and patents on ways of thinking restrict humans in ways that if they were implemented by any other means would be considered obviously acts of tyranny.

    The good thing about the decision is that it suggests the scope of such tyrannical patents is likely to be viewed as narrow, and the minority concurring decision has much stronger language on the meaning of "process" that leaves the door open to sanity and liberty carrying the day in the end.

  • by russotto (537200) on Monday June 28, 2010 @01:57PM (#32719456) Journal

    I'd actually prefer that approach--- strengthen review for obviousness instead.

    Obviousness is a trap. As soon as you declare a patent "obvious", patent defenders sneer that "Oh yeah, it's real obvious now that you have the patent in front of you. If it's really so obvious why hadn't it been done before?". And that last challenge moves you from obviousness to novelty, where novelty is so narrowly defined that you have to have an example of something done in exactly the same way using exactly the same terms in exactly the same field of endeavor.

  • Patenting business processes and ways of thinking (which in the Age of Functional Programming is transparently all that software is: mathematical functions that can be represented in their entirety as thoughts) is nothing but a "form of tyranny over the human mind."

    Business process patents and patents on ways of thinking restrict humans in ways that if they were implemented by any other means would be considered obviously acts of tyranny.

    That's actually what the CAFC was trying to get at in their "machine or transformation" test: if the claimed process was abstract enough that it could be done solely by thinking, then people could be infringing in their mind... and how do you get an injunction to stop people from thinking? So, instead, by requiring that the claim be "tied to a machine", you ensure that it's impossible that someone could infringe just by thinking.

  • Re:My read... (Score:3, Interesting)

    by John Hasler (414242) on Monday June 28, 2010 @05:43PM (#32723110) Homepage

    I'd say there is a 5-4 majority in favor of dodging the issue of business method patents.

  • by TheTurtlesMoves (1442727) on Tuesday June 29, 2010 @12:41PM (#32732666)

    And inventors, and corporations, and consumers. The only people who don't benefit from this system are people who lack the creativity to invent something, but still want to piggyback on others' hard work for free.

    So are you claiming the FSF and kin (and me) are only interested in piggybacking on others hard work? Perhaps you think OSS license damage copyright too.

    I release a lot of *my* hard work with BSD. I have worked for a engineering company that where getting litigated by a NPE for stuff we came up with quite independently. Where is the reward for *our* hard work. The company went bust when an injunction *was* awarded. Later they (the NPE) took a different company to court and the very patent that made our company go under was eventually thrown out (after 3 years!).

    When it comes to patents, only lawyers win. So of course you defend it. Your winning. You get lots billable hours with the current system.

  • by Anonymous Coward on Wednesday June 30, 2010 @07:08PM (#32751302)

    Why are you citing a site (techrights) whose material largely consists of cites to their own prior articles, and when there is actually an external reference, the majority of times it does not back up what techrights is claiming?

    Speaking of trolls 4 hire, why won't techrights disclose who is providing financial backing for the site? Yes, they claim there is no backing and its all done as a hobby. But they also claim to spend over an hour on average researching and writing each post. That works out to nearly 60 hours a week on average over the last 3 years. (That's average, The volume of posting there has gone up over the last few months, indicating its more like 80 hours a week now. Unpaid hobby my ass).

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