COJK’s Take on Bilski

Here’s the client alert that my firm is sending out for Bilski, hot off the presses!

Today the U.S. Supreme Court released its long-awaited decision in Bilski v. Kappos, a case that was expected to have wide-reaching impact in deciding the bounds of patentable subject matter, especially with regard to patents relating to business methods and software.  The Court affirmed that business methods and software are eligible for patent protection unless they are written to cover “laws of nature, physical phenomena, and abstract ideas.”  The Court held that the ‘machine-or-transformation’ test used by the Court of Appeals for the Federal Circuit is not the only test for determining patent eligibility. The decision appears to preserve the status quo and leaves the door open for patents directed to software and business methods.

The claims of the Bilski patent application are directed to a business method relating to hedging risk in the energy market.  Previously, the Federal Circuit held that the claims of the Bilski application were not eligible for patent protection, stating that a claim to a process must either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing.  The Federal Circuit held that this “machine-or-transformation test” was the sole test for determining patent eligibility of a process.

In an opinion written by Justice Kennedy, the Supreme Court agreed, as expected, that the claims of the Bilski application are not patent-eligible subject matter.  In interpreting Section 101 of the U.S. patent laws, the Court held that “the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but that the test is “not the sole test for deciding whether an invention is a patent-eligible ‘process.'”  The Court also held that “Section 101 similarly precludes the broad contention that the term ‘process’ categorically excludes business methods.”

While the Supreme Court left open the door to patent eligibility, it did little to clarify how to pass through that door.  Today’s opinion referred to legal principles given by the Court in its previous decisions in Benson, Flook, and Diehr.  Claims to software or business methods that do not pass the machine-or-transformation test may nevertheless be eligible for patent protection if an argument for patent eligibility can be made under those principles.  Nevertheless, it remains unclear exactly where the line is drawn.

In sum, it appears that the Supreme Court passed on the opportunity to make any large change in the patentability of software or business methods.  For software companies and other entities involved with patents in this area, this opinion appears to preserve the status quo.

A lot of the internal debate centered around whether the machine-or-transformation test is actually valid anymore. The Court never explicitly came out and said that it shouldn’t be used any more, but they did obliquely state that it is “atextual” and “not the sole test.”

It seems to me that, going forward, you can only rely on it to a point. An Examiner can reject a claim that passes the test, or allow a claim that doesn’t pass the test, so long as there is a compelling reason against or for the claim covering more than an abstract idea. If you’re fighting a rejection based on a failure to pass the test, arguing that it is or is not an abstract idea might be the way to go, even though crafting such an argument seems to be more than a little abstract in itself.

BPAI Upholds Process Claim under Bilski by Looking at Entire Claim

The Florida Patent Lawyer Blog pointed out a BPAI decision released today, upholding a claim directed to a method for displaying customer information and coupons at a weigh station.  Here’s the claim at issue:

17. A method for providing customer-specific information for a customer to a weigh station, the method comprising:

a) obtaining customer identification information for identifying a customer to be served at the weigh station;

b) storing a plurality of customer profiles for a plurality of customers  wherein each customer in the plurality of customers has an associated customer profile; and,

c) when the customer is in the plurality of customers, retrieving the associated customer profile for the customer using the customer identification information and providing associated customer-specific information based on the associated customer profile to a weigh station display, wherein the associated customer profile comprises, for each customer in the plurality of customers, a unique associated customer identifier, the customer-specific information comprises associated reward information, and the associated reward information specifies at least one of an associated coupon and an associated discount to be provided to the customer.

This claim was upheld under the “machine-or-transformation” test from Bilski.  Mark pointed out a basic takeaway from this case:

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner’s 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

I’d like to dive a little deeper into a subtle point, here.  When analyzing a claim for patent-eligible subject matter, it seems that examiners will sometimes review each element separately, decide whether that element alone would pass the “machine-or-transformation” test, and move on to subsequent elements.  If none of the elements alone would pass the test, the examiner would reject the claim.  Here, couldn’t that have happened?

The “weigh station” in the preamble would not likely be given patentable weight, because it is in the preamble.  Step (a) recites “obtaining information,” which is often considered insignificant pre- or post-solution activity.  Step (b) recites “storing” information, which can also be considered pre- or post-solution activity.  Neither of these steps are tied to the weigh station, since the weigh station does not perform either of the steps.  Step (c) recites “retrieving” information and “providing” the information to a weigh station display.   Since the weigh station is merely provided the information, no display is actually occuring in the claim, and the “weigh station display” is not required to perform any actions by the claim.

Given the current trend of disallowing claims that explicitly recite generic hardware performing steps of the claim as nevertheless not being directed to a “particular” machine, what makes this claim different?

Well, the board explains that, as a whole, the claim is tied to a weigh station:

Independent claim 17 recites a method for providing information to a weigh station. Claim 17 further requires that the weigh station include a weigh scale and a weigh station display, where customer specific information is provided to the weigh station display. That is, claim 17 recites a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 requires a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. . . . This is one of those cases where looking at the claim as a whole may lead to a different conclusion than analysis of the parts.

While I’m not sure why the claim language quoted above requires a “weigh scale,” the board’s point about taking the claim as a whole is instructive.  Even though each part of the claim might not itself look tied to a particular machine, as a whole, the argument that the claim is at least somehow related to something more particular than a general purpose computer and any generic data is more convincing.

So, something for the argument toolbox: when dealing with a Section 101 rejection of a method claim, try to argue that the claims as a whole are tied to a particular machine, even if it’s difficult to make the argument for individual recitations.

A Quick Shout-Out to Justice Scalia

Justice Scalia, in the Bilski oral arguments, wondered why there were no patents on methods of training horses, since we used to be a horse-based economy.

As usual, you can almost always be sure that there’ll be at least one issued patent about anything:

U.S. Patent No. 3,543,724, issued December, 1970:  Monitored and Controlled Conditioning and Exercise Method For Animals

An exemplary claim:

1. In a method of controllably conditioning an animal for periods of sustained optimum physical effort such as racing, the steps of exercising said animal by swimming during periods that are spaced by nonswimming recovery intervals during which the heart rate of the animal is allowed to reduce toward but not to normal, and monitoring the heart action of said animal continually during said periods and intervals, said monitoring step comprising continually observing the instantaneous heart rate of said animal during said periods and intervals to prevent rise of said heart rate above a predetermined safe maximum range during said periods and to start each succeeding period substantially immediately following a recovery interval at a point where the heart rate of the animal is in a relative high range as compared to normal but safely below said predetermined maximum range so that during the exercise periods following the initial period the animal exercises in a relatively high above normal heart rate condition.

MONITORED AND CONTROLLED CONDITIONING AND EXERCISE METHOD FOR ANIMALS