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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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  • Diana Ross was not available for comment's. Rejoicing software developer's liberally apply apostrophe's in the street's but are they celebrating too soon [groklaw.net]?
  • by ceswiedler (165311) * <chris@swiedler.org> on Monday June 28, 2010 @11:41AM (#32717170)

    Dear Mister Language Person: What is the purpose of the apostrophe?

    Answer: The apostrophe is used mainly in hand-lettered small business signs to alert the reader than an "S" is coming up at the end of a word, as in: WE DO NOT EXCEPT PERSONAL CHECK'S, or: SUPREME'S THROW OUT BILSKI PATENT. Another important grammar concept to bear in mind when creating hand- lettered small-business signs is that you should put quotation marks around random words for decoration, as in "TRY" OUR HOT DOG'S, or even TRY "OUR" HOT DOG'S.
                    -- Dave Barry, "Tips for Writer's"

    • Re: (Score:2, Funny)

      by FooAtWFU (699187)
      The scary part is when you read, TRY OUR "HOT DOGS".
    • by Jay L (74152) * <{mf.yaj} {ta} {hsals+yaj}> on Monday June 28, 2010 @12:25PM (#32717730) Homepage

      an "S" is coming up at the end of a word

      Funny, but incorrect. The grocer's apostrophe can also be used in the middle of a word if that word was originally a compound; for instance, I once saw a convenience store advertising "NEW'SPAPERS".

  • by russotto (537200) on Monday June 28, 2010 @11:42AM (#32717190) Journal

    punted.

    Bastards. Bilski is invalid, machine-or-transformation is thrown out, but the court explicitly provides no further guidance either way.

    • Re: (Score:2, Interesting)

      by Anonymous Coward

      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

      • by Trepidity (597) <.delirium-slashdot. .at. .hackish.org.> on Monday June 28, 2010 @12:03PM (#32717440)

        In practice, it's not clear how much they've cleared the way for business-method patents. Scalia signed the separate Breyer concurrence, which emphasized that the machine-or-transformation test is still the main test to be used, and that huge ranges of supposed business-method patents are absurd and clearly impermissible--- the opinion ended with a list of 4 or 5 such absurd business-method patents, like a dating-system one. So it seems five of the justices (Scalia, Stevens, Breyer, Sotomayor, Ginsburg) have a general presumption against business-method patents, and would probably hold that any specific patent that made it to them was not legit.

        (Scalia also didn't join all of the majority/plurality opinion.)

        • In practice, it's not clear how much they've cleared the way for business-method patents. Scalia signed the separate Breyer concurrence, which emphasized that the machine-or-transformation test is still the main test to be used, and that huge ranges of supposed business-method patents are absurd and clearly impermissible--- the opinion ended with a list of 4 or 5 such absurd business-method patents, like a dating-system one.

          But the ones he listed as "absurd" had to do with dating, and toilets, and other "absurd" subjects... He didn't say why they were absurd. It was mere dicta.

          So it seems five of the justices (Scalia, Stevens, Breyer, Sotomayor, Ginsburg) have a general presumption against business-method patents, and would probably hold that any specific patent that made it to them was not legit.

          (Scalia also didn't join all of the majority/plurality opinion.)

          Four - Stevens is out now, so, going forward, it's 4-4-2 and the question is where Kagan would sit.

          • by Trepidity (597)

            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.

            • Re: (Score:3, Interesting)

              by Theaetetus (590071)

              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 cr

              • by Trepidity (597)

                I'd actually prefer that approach--- strengthen review for obviousness instead. But I don't really see anyone on the court advocating for that approach. It's possible that Breyer and Scalia would agree that the patents they list are invalid for reasons other than section 101, but the list comes entirely in a discussion of section 101, and they don't mention 102 or 103 at all, so it seems they're thinking of 101 as the bar as they write that list? If they're thinking of a different section, they surely don't

                • Re: (Score:3, Interesting)

                  by russotto (537200)

                  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 term

      • by jedidiah (1196)

        > 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.

        There is no "legislating" being done when the court declares that "YES the law should actually be enforced" and the intent or literal language of the statute should be upheld.

        Patenting the previously un-patentable is not quite so bad as allowing the patenting of the clearly obvious.

        There is definitely a lot of room in the judiciary's mandate to allow for them to actual

    • After all that was said has been analyzed; "everything canceled out."

  • "journalism" (Score:3, Insightful)

    by Lord Ender (156273) on Monday June 28, 2010 @11:42AM (#32717194) Homepage

    How could you write a blurb about the "Bilski patent" without explaining what the Bilski patent actually is? How could the editors pass on such a terrible blurb unmodified?

    • by ivucica (1001089) on Monday June 28, 2010 @11:49AM (#32717270) Homepage
      This is Slashdot. Like 4chan, we have a collective consciousness. No explanation needed. Bilski, what is it? I have a new tagline:

      Slashdot. We Know.
      • by jd (1658)

        Given the stuff geeks drink, I think "consciousness" may be incorrect word usage.

    • Re: (Score:3, Informative)

      by TheRaven64 (641858)
      Because the Bilski patent itself is irrelevant, the important thing is the precedent that may or may not be set by the decision (I can't tell, the link that would answer this is Slashdotted already). For those unaware of this, the submitter helpfully included a link at the end explaining what this case is about.
    • Re: (Score:2, Insightful)

      by 0racle (667029)
      Google too difficult for you?
      • Difficult? No. Needlessly inconvenient? Yes.

        There is good writing and there is bad writing. If you need to send your readers off for even the basics, you are a bad writer.

        • Except this isn't an article, this is a paragraph summary.

          Do we also need US Supreme Court defined? Patent? Why it's a Supreme Court case?

          The key point here is "Bilski decided by Supreme Court." Anything else is superfluous in the paragraph because this is not about 'what Bilski is.'

  • by Rivalz (1431453) on Monday June 28, 2010 @11:46AM (#32717234)

    Let's make a Patent that Patents the system for which Patent Lawyers & Patent Registers Circumvent Common Sense and are awarded Patents. That way anyone who files one of these ridiculous patents are infringing upon my patent. Anyone who defends the patent is also infringing upon my patent.
    I'll see you in court Bitches. (That is step 6 of my process)

    • by spitzak (4019)

      Jokes about making patents that control patents is a patented idea, and you are no longer allowed to make them without a license! So please stop before you are sued.

  • by kfogel (1041) on Monday June 28, 2010 @11:46AM (#32717240) Homepage

    The Software Freedom Law Center has a great response [softwarefreedom.org] up. From SFLC chairman Eben Moglen: "The confusion and uncertainty behind today's ruling guarantees that the issues involved in Bilski v. Kappos will have to return to the Supreme Court after much money has been wasted and much innovation obstructed."

    (I hope they'll be providing a deeper analysis later on; the above came out like ten minutes after the decision, so obviously it's just based on the summary of the decision.)

    -Karl Fogel

    • by TripleDeb (1240154) on Monday June 28, 2010 @12:35PM (#32717870)
      Is also worth reading. [tieguy.org] Basically, while this is not a hands down win for opponents of software (or business method) patents, the upholding of the older cases (Flook, Diehr, etc.) could give some guidance on future cases that may help them rule out abstract ideas and algorithms. Villa also talks a bit about how the lower courts may see this and how he thinks they may be handling future patent cases.
    • This hoping the Supreme Ct will invalidate software patents is clutching at straws anyway. Go and ask your lawmakers to explicitly write a law to exclude software patents.

      Rich.

      • by kfogel (1041)

        Good point, but also remember that legislators didn't explictly allow software patents in the first place either, IIRC. Most of the important decisions along the way were made by what is effectively a regulatory body (the USPTO) or by the courts. Asking the Supreme Court to correct the mistakes of either a regulatory agency or of lower courts is not quite the same as asking it to overrule explicit Congressional direction.

      • by russotto (537200)

        This hoping the Supreme Ct will invalidate software patents is clutching at straws anyway. Go and ask your lawmakers to explicitly write a law to exclude software patents.

        Sure. Just as soon as I finish squaring the circle and I get done holding back the tide. Oh, wait, I'm also supposed to be emptying the Mississipi this afternoon, and I've misplaced my teaspoon.

  • by mcgrew (92797) * on Monday June 28, 2010 @11:47AM (#32717246) Homepage Journal

    Supreme's Throw Out Bilski Patent

    How many time's [sic] do I have to sic Bob [angryflower.com] on you?

  • by random coward (527722) on Monday June 28, 2010 @11:49AM (#32717272)
    This supreme court is stacking up to being the best one ever!
  • No new test (Score:5, Informative)

    by Theaetetus (590071) <theaetetus.slash ... m ['ail' in gap]> on Monday June 28, 2010 @11:52AM (#32717302) Homepage Journal

    The judges have created a new test...

    No, the judges said that the "machine or transformation" test that the Federal Circuit used to reject Bilski wasn't the exclusive test, but merely an important tool... And then they left it at that, and didn't specify a new test.

    The important parts to take away here are that this decision carefully tiptoed away from software, and did affirm that some business methods are patentable.

    • Re: (Score:3, Funny)

      by Nerdfest (867930)
      Anything that gives us more unemployed lawyers and fewer unemployed engineers is a step forward.
  • They've basically declined to create a new test. The "majority" opinion, in its strongest parts, which leaned more in favor of business-method patents, only got 4 votes (Scalia didn't join those parts). The main concurring opinion (by Stevens), which leaned more strongly against business-method patents, also only got 4 votes. Scalia joined a separate opinion by Breyer which emphasized the common points between the two opinions, but leaned slightly against business-method patents. It agreed with the majority that the "machine or transformation test" wasn't the sole test, but still thought it was the main useful one. That opinion also ended up with a list of examples of ridiculous business-method patents that are definitely not legit, so it doesn't seem Scalia would actually uphold most specific business-method patents that came across his desk.

    • They've basically declined to create a new test. The "majority" opinion, in its strongest parts, which leaned more in favor of business-method patents, only got 4 votes (Scalia didn't join those parts). The main concurring opinion (by Stevens), which leaned more strongly against business-method patents, also only got 4 votes. Scalia joined a separate opinion by Breyer which emphasized the common points between the two opinions, but leaned slightly against business-method patents. It agreed with the majority that the "machine or transformation test" wasn't the sole test, but still thought it was the main useful one. That opinion also ended up with a list of examples of ridiculous business-method patents that are definitely not legit, so it doesn't seem Scalia would actually uphold most specific business-method patents that came across his desk.

      Two things to bear in mind... First, this was Steven's last opinion, and Kagan seems to be more pro-software.
      Second, as you note, Breyer cited some ridiculous patents, but merely called them "dubious", not "definitely not legit". He also didn't go into the "why", and I'd argue that invalidity in several of those may be based on obviousness, rather than subject matter.

    • However it should be noted that the decision was unanimous in that entire court agreed that the Bilksi patent should not have been patentable. They disagreed on why and on which parts. Judge Kennedy wrote the opinion but other justices wrote why they disagreed on certain parts or clarified their position as you noted.
  • 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.

    • 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.

      • Re: (Score:2, Interesting)

        by AtlantaSteve (965777)

        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 i

        • Re: (Score:3, Interesting)

          by Theaetetus (590071)

          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.

    • by drewhk (1744562)

      A more appropriate name instead of Supreme Court would be Oracle of Delphoi.

    • by Myopic (18616) on Monday June 28, 2010 @12:29PM (#32717784)

      not necessarily the only possible test (and they don't say what the other tests might include.

      You just made all Lisp programmers very, very nervous.

      • by jd (1658)

        Since LISP is based on a stack machine, and since being tied to a machine is one of the tests, it would follow LISP programs are always patentable.

        • I believe GP was referring to the missing close parenthesis...

          • by jd (1658)

            Oh, well, in that case the lack of balanced parentheses is a business model and it's doubtful that could be patented.

      • by steelfood (895457)

        Works fine on the IE6 version.

      • and you didn't make them any less nervous. )

    • 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.

      • Re: (Score:3, Interesting)

        by Theaetetus (590071)

        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.

  • too bad we are at the border of the abyss.
  • by Drakkenmensch (1255800) on Monday June 28, 2010 @12:02PM (#32717426)
    Is the real story that Bilski case got thrown out over machine-or-transformation test failure, or that the article contains "Supreme's" in the name?
    • by mea37 (1201159)

      If it has to be one of the two, I suppose it's the latter. If you RTFA, you'll see that the "machine-or-transformation" test was rejected as a reason to throw out the Bilski patent.

  • One moment they are called SCOTUS, next they are the Supreme's

    Why not refer to it as "The Supreme Court"

    • by jd (1658)

      Because much singing and dancing was involved around the issues.

  • 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."

  • 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 pavera (320634) on Monday June 28, 2010 @01:37PM (#32719042) Homepage Journal

    So... essentially the court accepted a case and then wasted everyone's time doing the USPTO's job, and declared the patent invalid in this specific case because it wasn't patentable material... Something the USPTO should have done in the first place...

    No new precedent, no new tests, no new rules... So everything will stay exactly as it is, and the USPTO will continue to approve bogus patents just like this one... Great! I love America!

  • I read the whole text - the minority opinion really gives a lot of insight into the majority opinion. Here's the basic summary as I read it:

    The court rejects "machine or transformation" as a defining test, which is ultimately a test if the patent is concrete. At the same time, they strongly oppose abstract ideas as patentable and it's really awkward to see what's in between those. They give a broad interpretation of process, arguably because "times change" and we're in the "Information Age" despite that the

  • The Court explicitly narrowed the ruling to avoid setting a precedent that would change anything with respect to software or business methods. Nothing has changed.

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