Living in the DC area is nice because you’re close to a lot of interesting action. Yesterday, I visited the Court of Appeals for the Federal Circuit for oral arguments of the much-anticipated CLS v. Alice en banc case. Interesting arguments and questioning show that “abstract idea” is being over-used and how the expansion of the §101 patent ineligibility doctrine is bad for the patent system.
An early exchange illustrates how abstract ideas being over-used. Counsel for CLS (Mark Perry) kicked off the hearing by arguing that Alice patented an abstract idea. He argued that initially Alice’s patent applications included method claims that were rejected as “abstract ideas” under §101 until Alice amended the claims to recite a computer. Thus, Perry contended that the patented claims were nothing more than an abstract idea dressed up in machine claim clothing. But Judge Moore intervened as if on behalf of Alice, asking whether a claimed system in an asserted patent that recited a computer and specific hardware limitations qualified as an abstract idea. Perry answered very confidently that this system claim was nothing more than an abstract idea. Judge Moore could not believe it, pointing the Counsel not only to the specification that detailed the hardware, but to the flowcharts that detailed the steps to be performed. To Moore, if there was ever a valid software patent, this was it. But Perry responded that the claim was simply a method claim dressed up as a system claim to overcome 101. Moore rhetorically asked, “But don’t we look at the language of the claims?” Good question. Yes, claim language does matter people. Judge Moore’s next point brought up an example of the first calculator that solely performed addition functions after which someone else comes along and reconfigures the calculator to perform subtraction. If a first-of-its-kind machine or computer is not an abstract idea, why are improvements of it?
This exchange illustrates why it doesn’t make sense to characterize claims directed to computers as abstract ideas. No matter the generality of the steps the computer performs, if a claim claims a computer, then it is no longer an idea. Historically, the only type of claim that has been subject to the abstract idea exception has been method claims. See, e.g., Benson, Flook, Diehr, Bilski, and Mayo. This makes sense, especially in light of what an “idea” has long been understood as. An idea is a concept or a principle. You can’t touch it with your hands. Like a method, an idea is something that you hold in your mind. See e.g.,Tilghman v. Proctor, 102 U.S. 707 (1881) (“The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “[conceptions] of the mind, seen only by [their] effects when being executed or performed.”). If a claimed method is recited at such a high-level of generality, such as in Bilski or Mayo, then it is an abstract idea. But it makes little sense to categorize a claimed tangible machine, such as a computer, as an idea. Thus, generic computer claims should not be referred to as “abstract ideas” because it goes against the common usage of the word “idea.” If a judicial exception is going to exclude computer claims on the grounds of patent-ineligibility, another exception should be created, such as an “abstract computer” exception.
But such a new judicial exception is neither necessary nor desirable. The current system does a fine job of remedying abstract ideas from getting patented. CLS’s counsel argued that it would be a shame for someone to patent the abstract idea of a car that drives itself only to have Google, having spent a billion dollars on actually developing the car, get sued for infringing this abstract idea patent. However, under the current system, such a scenario is unlikely because §112 requires a sufficient disclosure for the claimed invention. Abstract ideas that use computers are also unlikely when an Examiner does the job because they are relatively easy to find prior art against. The Examiner has the right to construe claim language as broadly as reasonably possible consistent with the specification when assessing prior art. See MPEP §2111. And Examiners are pretty good at finding prior art, especially in their particular areas of technology. So if someone has really claimed something at a high-level of abstraction, it’s likely that an Examiner can find a disclosure that anticipates or would have rendered obvious that concept. CLS’s counsel even admitted that he had arguments for showing that Alice’s patent was invalid under §§102/103. Why not proceed with the already well-developed and relatively objective area of law?
Increasing the focus on §101 discourages a level playing field. A big disadvantage of expanding the §101 doctrine of patent eligibility instead of relying on well established patent code sections is that §101 is highly subjective, and other sections of the patent code can prevent abstract ideas from getting patented. Section 101 has become a lightning rod for anti-patent folk who quickly want a particular patent to go away. It’s scary to see judges experimenting with the §101 doctrine; it’s even scarier to think about patent examiners doing so.
The Board of Patent Appeals and Interferences takes into account a number of authorities when deciding appeals. First at the BPAI’s disposal are the higher courts of the Federal Circuit and Supreme Court. Then there are the rulemaking guidelines issued by the PTO. Then of course there’s the MPEP. I’ve been interested in the whether the Federal Circuit affects the BPAI in terms of the number of rejections the Board issues.
Appeals before the Board are initiated after an examiner rejects a claim at least twice. The applicant, rather than continuing to spend time arguing with the examiner, can elect to appeal to the Board where a panel of three judges will hear both arguments. The Board then has three options. It can reverse the rejection, it can affirm the rejection, or it can introduce a new rejection. Since Bilski v. Kappos has been decided, the Board has used § 101 to reverse 95 times, affirm 166 times, and introduce 65 new rejections. Up until today, the percent of new rejections to how many times the Board has acted is about 20%.
To see whether the Board is affected by Federal Circuit cases, I divided the time frames up into intervals roughly 6 months apart when big Federal Circuit cases were decided. Here are the Federal Circuit cases: Research Corp v. Microsoft, Ass’n for Molecular Pathology v. Myriad, and Ultramercial v. Hulu. At times, there were two Federal Circuit cases decided within a short period of time, which I just combined.
A little about the time frames. The first time period is from June 28, 2010 to December 9, 2010, starting with the Supreme Court case Bilski v. Kappos and ending with the first big Federal Circuit decision decided on the merits of § 101. In this time period, the Board introduced new rejections 22.4% of the time, higher than the overall average. This was likely a result of the recent Supreme Court case and the PTO publishing post-Bilski guidelines a month after Bilski. In addition to these factors, two Federal Circuit cases that did not receive that much attention mentioned § 101 subject matter patent-eligibility: Intervet v. Merial Ltd included a dissent with a 101 focus and Astrazeneca v. Apotex was mostly decided on other grounds, but did mention subject matter. Both cases used 101 to poke holes in the patent at issue and the effect may have been felt at the BPAI.
Research Corp v. Microsoft was a subject matter game changer in the sense that it broadened the Bilski analysis by saying that unless the invention was very obviously an abstract idea, the invention should be statutory subject matter. As noted on Ryan Alley’s blog, the case looked as if it would affect the BPAI’s decisions when followed by the BPAI. Prometheus v. Mayo was decided over a week later which was also favorable to patent-eligible subject matter, especially for diagnostic methods. This time period saw new rejections dip to 18.4%.
Next, AMP v. USPTO. The now-famous gene patenting case is familiar to most. While the take-home message from this Federal Circuit case is that the District Court was wrong in concludingi gene patents are not statutory subject matter, the method claims which were affirmed received far less attention. As noted on the Patents4Life blog post, the method claim analysis was very brief and the arguments not very well developed. Very shortly after AMP, the Federal Circuit decided Cybersource v. Retail Decisions. These two cases seemed to propel the BPAI forward with new rejections, cresting to 24.3%.
Ultramercial v. Hulu was another game changer. Like Research Corp, Ultramercial was another Judge Radar decision which seemed to broaden the 101 analysis from the earlier cases of AMP and Cybersource. This decision until the present has seen a dip in the number of new rejections at the BPAI to 16.7%.
In conclusion, it is interesting to see how the patent tides of change can be felt not only in the higher courts, but at the Board and the effect most likely trickles down to each examiner. I found that differences in rejections in the different time frames were interesting and expected, but not all the time frames were statistically significant at an acceptable confidence level.
All data was mined from the website http://www.bpai101.com/decisions. The word “affirmed” was searched in the outcome field for those decisions that were affirmed. The word “reversed” was searched for reversed decisions and the word “new” was searched for new rejections. Some cases performed multiple operations in one decisions, such as affirming one claim, reversing another or introducing a new rejection. In such cases of multiple operations, I included each operation separately. For instance, one decision could potentially yield a reversal, affirmation, and new rejection. Most decisions, however, had only one operation.
I stumbled upon an interesting article (Can Beauregard Claims Show You The Money?) detailing the rise of the Beauregard claim. From its humble and shaky beginnings in 1995, the Beauregard claim had become a popular and successful style of claim for patent practitioners claiming inventions that involve computer programs. Last year, the claim seemed to have reached its zenith in, Finjan v. Secure Computing, 626 F.3d 1197 (Fed. Cir. 2010) where the Federal Circuit held that not only was it okay for a computer-readable medium with instructions on it to be enforced, but that the code needn’t even be active.
We fast forward to today, where the Federal Circuit decided Cybersource v. Retail Decisions. CyberSource brought suit against Retail Decisions, Inc., alleging infringement of its patent. Retail Decisions thereafter initiated an ex parte reexamination of the patent. The suit then resumed and the district court granted summary judgment for Retail Decisions of non-statutory subject matter. The CAFC affirmed the decision coming to its decision in an unprecedented way–that computer readable media with computer instructions should be treated as a process claim. Here is the analysis on why:
[P]rogramming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.
Anyone else confused by this analysis? Can’t all software be performed in the human mind if you break it down to the code?
I don’t agree with Judge Dyk’s analysis. This section of the opinion was extremely complicated, more complicated than it should have been. Claiming computer programs is not simple. In fact, the Beauregard claim is a very unique claim that doesn’t fit very nicely into a 1952 class of subject matter. Software claims resemble method claims in the sense that a series of methods are performed. But in this case, a computer is performing the methods, not a human. And in the case of a Beauregard claim, even though each task that a computer performs is a process, that’s not what is being claimed. Looking at Cybersource’s claim should put things into perspective.
2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
a) obtaining credit card information relating to the transactions from the consumer; and
b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,
wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;
[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
[b] constructing a map of credit card numbers based upon the other transactions; and
[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.
This claim should not be examined as a method claim because it more closely resembles an article of manufacture. The preamble is man-made–a computer readable medium containing computer instructions. It is also a manufacture. Therefore, the case should be closed. Judge Dyk should have consulted Occam’s Razor that the simplest answer is most likely the correct answer in deciding this case.
I think that the struggle that the Federal Circuit is having is how to reject a patent when the judges don’t think that the complexity or inventiveness exceeds the basic level. However, just because what the machine does is abstract does not mean that a 101 analysis is in order. An article of manufacture was nonetheless created and 101 is thus satisfied. The Patent Act contains many other provisions that can be relied on to kick out the claim. That’s what we have 102, 103 and 112 for.
Today the Beauregard claim has experienced a setback. But after being around for more than 16 years, it seems unlikely that it has met its demise so abruptly.
I have been closely monitoring cases before the Board of Patent Appeals and Interferences since June 28, when the Supreme Court decided Bilski. The Board has been on fire, deciding 183 cases that deal with the merits of subject matter patent-eligibility. And many of these decisions were Board-initiated. I decided to look at the preambles of the claims at issue (or representative claims) to get a sense of how big of a factor the preamble plays. The preamble, the short introductory phrase that frames the context of the claim, is comparable to the subject in a typical English sentence. I found that the preamble does not have that big of an effect on whether the claim is statutory or not because a more important factor is what is included in the specification. For instance, the preamble “computer readable medium” can be statutorily OK if the specification limits this to not include a signal. Otherwise, the broadest reasonable interpretation standard is used and the claim falls outside the statutory subject matter. Furthermore, preambles are often narrowed in the body of the claim. For instance, “an article of manufacture” seems pretty broad, but “an article of manufacture comprising: a computer readable medium” could be patent-eligible subject matter.
I have included preambles from all 183 cases. I have divided up the claims into those that the Board held were non-statutory and those that were statutory (reversing the examiner). There are about three times as many non-statutory claims as statutory. For more information regarding these preambles, like the case they came from, the full claim, the citation to the decision, or the application number, please email me and I would be happy to provide you that information. It is simply too much to publish in one blog post.
In control framework having a plurality of nodes, a subset of said plurality of nodes associated with a displayed portion of a graphical user interface (GUI), a method for tracking said plurality of nodes
A data processing system to search for Web pages within a Web site
A computer program product for installing at least one file onto a data processing system
A system for performing query operations
A method for verifying accuracy of a component that is implemented from a model
A program product
A computer implemented system for detecting memory management antipatterns
A graphics optimization system
A method of playing a game
A system for presenting an image of a receipt to a consumer
A computerized method for measuring a consumer’s perception of a commercial entity’s brand equity, logo, trademark, tradename, tag line, product name and the like
A program storage device readable by machine
A computer implemented method supporting competitive intelligent analyses of information
A method making use of play on a board game for training a sales representative to make a sales call on a selected type of prospective purchaser
A process of informing potential consumers of a new product
A method for producing a subject-specific skeleton from an external measurement data set and a generic skeleton, the generic skeleton comprising a plurality of parameters
A system for interpreting scan data
A computer-based method for representing a project
A computer program product
An article of manufacture for storing digital content in a clientside cache
A computer-implemented system for measuring per-flow traffic delay between two routers having synchronized clocks
An electronic document management system
A computer implemented method for presenting information associated with a trademark search for a first trademark
A hosting environment abstraction method
A method for maintaining anonymity of a purchaser during a purchase transaction
A computer-implemented method carried out on a computer readable medium
An interactive viewer to view interactively a multi-media program derived from a real-world environment
An autonomic grid comprising a plurality of hosting services communicatively coupled to one another
A method for generating object classification models to be utilized to predict object classes in an adaptive learning object classification data processing system
A method of processing electronic assurances involving a requestor, a provider and an authority interconnected via a network, wherein the requester, the provider, and the authority are separate entities from one another
A data carrier
A tangible medium comprising information encrypted according to a method as claimed in Claim 1.
A method of detecting intrusions in a computer network
A tool for developing litigation discovery materials
A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA)
A tool for recommending a decision in litigation
A method of identifying optimal times for an end user to contact a target user of a messaging system
A method for administering insurance claims and monitoring claim-related data in a database
A reseller program utilizing a computer network for allowing a plurality of Customers to register one or more domain names via a registrar web site
A computer program product
A method for maintaining integrity of course data during offline utilization of a learning management system
A computer-readable medium
A method for performing a money transfer transaction via a wireless communication device
A computer program product for secure communications in a message source, the computer program product having a computer readable medium with a computer program embedded thereon
A computer implemented method for comparing a first object and a second object in an object-oriented operating system
A method for communicating between two endpoints connected to a network
A computer readable medium including instruction for operating a computer that controls a laser source
A method for autonomic management of system resources on a grid computing system
A knowledge system for solving a problem identified by a user
A method for modeling distributed generation for a customer
A computer memory device storing an image produced by the method of claim 1
A computer program product in a computer readable medium for monitoring and correlating transactions
Method of compiling Dictionaries for inputting into the memories of electronic speech-recognition devices
An article of manufacture
A method of managing assets controlled by members of an organization, said organization having a central server configured to access data and software systems of said organization
A method of controlling processing of data
A program storage device readable by machine, tangibly embodying a program of instructions executable by the machine to perform program steps for decoding video signal data for a picture having a plurality of motion blocks
A method for detecting fraud in relation to stored value products
Method for purchasing and authenticating an electronic ticket
A computer readable storage medium
A component based data processing system
A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA),
A computer-readable medium tangibly encoded thereon a data structure
A method for improved decoding of a binary representation of a[n] XML-based document
For a client/server system having at least a client including a graphical user interface to display a content of virtual hosted stores to a user, the virtual stores being stored in databases managed by a database management system in a resource manager, the graphical user interface being operatively connected to an application server having a business logic module to select the content to be displayed, a method of managing the content of the hosted virtual stores
A discussion forum resource
A drawing conversion management and assignment system
A method for determining similarity between portions of gene expression profiles in a computer
A tangible computer readable storage medium on which is embedded one or more computer programs
A method of presenting data relating to skills distribution in an enterprise
An online sales promotion method used in a system to purchase a product over a network
A machine-readable medium tangibly embodying a program of machine-readable instructions executable by a digital processing apparatus to perform a method of data retrieval in a computer
A method of option creation for an asset that has a value that varies over time
A computer system for controlling access to certain files by processes
An intelligent electronic mail (e-mail) gateway
A method of determining a price at which a supplier provides a commodity to a customer
A computer readable storage medium comprising program instructions, or triggers to launch execution of program instructions
A processor-based method of applying a policy
A fire fighting system comprising
A program product
In a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the web, a system for controlling access activity from activated hyperlinks and their respective Web document source sites
A method for determining relative positions of nodes of a network
A computer-implemented method for facilitating procurement functions over a computer network
A method of preparing a wire harness production
A method of tetrahedral interpolation
A system for converting slide show presentations for use within non-presentation applications
A hierarchical grouping system
A computer-implemented method for creating rules for the administration of end-user license agreements (¿EULAs’)
A method of operating a decision feedback equalizer having a feed forward filter and a feedback filter
A method of evaluating a proposed solution to a constraint problem
A computer program product storable on a medium readable out by a computer system
A method for maximizing opportunity sales by moving a purchaser off an original travel reservation purchase choice and onto a substitute travel reservation purchase
A computer implemented method for generating an electronic equipment demanufacturing price quote
A system for benefits management
A financial instrument issued by a stock company and held by a holder, shares of stock of the company trading at a price, the instrument having a market price
A system for authenticating a transaction
A method for managing the assets of holders of rights in a property
A method for encouraging transactions between a customer and a business entity, each of at least one transaction having an assigned value
A computer program product for displaying explain data for an SQL query of a database, the compute program product disposed upon a computer readable, signal bearing medium
A computer program product for evaluating a software component adapted to interact with a resource-residing in a production environment
A computer program product
A method for managing membership in a collaborative computing environment community
A method of searching a database
A system searching a database
A computer program product for searching a database
A method for integrating file system events into a database management system (DBMS)
A system for integrating file system events into a database management system (DBMS)
A computer programming product for integrating file system events into a database management system (DBMS)
A method of analyzing a sub-model of a full system model
A method implemented in a computer for calculating a probability that one ore more automobiles will be sold by a future date
1. A markup language enabled device included within an environment of physical objects. A device according to claim 1
A service level agreement (SLA) breach value estimator
A method for processing a life insurance facultative case summary submission over a network between a ceding company and a reinsurer
A method of generating employment market statistics from a network
A method for ensuring airline safety while safeguarding personal passenger information
A system for communicating a message
A computer program product for mirroring database statistics, the computer program product disposed upon a signal bearing medium
A system for discovering I/O bus capabilities on a computer system via ACPI
A terminal module for using services at a terminal, at which services can be called up via a user interface, wherein the terminal module contains a program code which can be carried out by control means of the terminal
A program product
A system of providing ancestor information in a remembrance program which will continue automatically and extend to their genealogy for all current direct descendants
A computer usable medium having a computer readable program for remote access by a remote computer system to a shared resource over a communications channel, the remote computer system having a plurality of commands including a plurality of resource commands and a plurality of local commands
In a data processing system including distributed processing units, a method of analysis of performance of the data processing system
A method of reporting the presentation of data
A data processing system for retrieving data
A transmittable signal comprising information encrypted according to a method as claimed in Claim 1.
A method of classifying tissue in a magnetic resonance image
An apparatus for displaying supplemental information particular to a user regarding displayed web pages for the user
A method for name searching within an employee records database
An apparatus for name searching within an employee records database
A computer-readable medium
A computer program product
A method for frequency planning in a wireless cell network
An operating center for managing a group of individual distributed databases
A memory storing program instructions
A computer-readable medium having stored thereon a data structure
A computer program product to estimate the cost of distributing software updates
A computer readable medium having computer-executable instructions for combining a precision estimate of a database entry’s coordinate value with the coordinate value into a single index
A computer program for providing computer archive system accountability
A keyword generation method
A computer program product comprising program instructions recorded on a computer readable medium, wherein upon execution on a computer, said program instructions decide whether to make a loan to an applicant
A content data structure stored on a recordable medium
A method for transcopying data
A knowledge system for solving a problem identified by a user
A method of implementing a value-added service (VAS) in a warehouse management system
A method for allocation of channels by a cellular network operator to base stations, where each of the base stations is assigned within one of a plurality of base station cells of a tiered cellular communications system
A method for providing detailed information regarding the preparation of mail entities and the processing of mail entities
A gaming method
A method of managing assets using at least one policy
A computer program product tangibly embodied in a machine-readable medium, the computer program product including instructions that, when executed, perform a method for providing a scratchpad window in a graphical user interface (GUI) while using an application that manages an interaction between an agent and an individual
A service discovery system
A computer program product, intended for use in performing an automated method of control for a configuration bridge system
A method for providing customized health information to an individual
A computer program product
A method for managing health services
A computer-readable medium
A computer data signal representing a sequence of instructions
A method for identifying competencies (soft skills) required for superior performance for a given job
A computer implemented method of determining the consequences of an investment transaction to a potential total future tax liability of a user
A method for providing a Mailer, Post or Recipient with detailed information regarding attributes of mail entities
A method of filtering an image
A computer readable medium tangibly embodying program instructions for managing images within an image manager
A computer program product for managing a remotely located, independent data storage system
A storage medium which stores program instructions, wherein the program instructions are executable by a programmable control device
A method of conducting transactions
A computer readable medium encoded with computer executable instructions
An audio file stored in a computer readable medium
A computer-readable medium containing instructions for performing a method for managing calls directed to one or more communications devices associated with a user of a communications network
A computer system for ranking service offerings in a service-oriented architecture, in which said service offerings are offered by a Service Broker to a Service Requestor
A tangible, computer accessible medium storing program instructions computer executable to implement a distributed data system client
A program for facilitating a purchasing transaction between a medical resource supplier and a client
A computer program embodied on a computer-readable medium, wherein the computer program comprises a plurality of instructions
A World Wide Web (Web) hypertext document including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the Web
A computer useable medium having a computer readable program stored thereon for controlling access activity from activated hyperlinks and their respective Web document source sites in a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the Web,
A method for providing a benefit program
A computer readable medium encoded with computer executable instructions
A computer-implemented method of constructing a hedge fund index
A system for processing a request by a researcher to perform a data processing function
A usage history description scheme for at least one of an audio, an image, and a video comprising a plurality of frames
An electronic publishing system to offer an item for sale, over a network
A system for forming a target error model to facilitate spell checking input text to a target collection
A lightweight pattern validation system for a client device receiving markup defining a form
A computer-implemented method for evaluating routing diversity
The 2010 post-Bilski guidelines seek to provide a comprehensive analysis of determining if an invention is statutory subject matter. However, part of the problem of using these guidelines is that some terms are supercharged with more-than-meets-the-eye meaning. “Practically applied” is one such term, which I found four times in the Guidelines. While the concept that you can only patent an application of an idea is basic to patent law, I wanted to see how this exact term came into existence and the subsequent history of the term for US law. I found that when used with regards to subject matter patent-eligibility, there has been some definite developments. Initially, the term was used in conjunction with all the judicial exceptions to subject matter (e.g., abstract ideas, laws of nature, natural phenomena, mental steps). However, before State Street Bank v. Signature Financial Group, the term was infrequently used. Now, the term is much more frequently used, but with a focus more on laws of nature and abstract ideas.
While the first use of “practical application” was technically in Le Roy v. Tatham, 55 U.S. 156 (1853) (“The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. . . . In the case before us, the court instructed the jury that the invention did not consist “in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.””), the concept started long before. A number of cases set the precedent that you can only patent an applied invention. See Lowell v. Lewis, 15 F.Cas.1018 (Cir. Ct. Mass 1817) (“It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory; it can only be for such a theory reduced to practice in a particular structure or combination of parts.”); Evans v. Eaton, 16 US 454 (U.S. 1818)(“[A] patent may be for a new and useful art; but it must be practical, it must be applicable and referrable to something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent.”); Earle v. Sawyer, 8 F. Cas. 254 (Cir. Ct. Mass 1825) (“The thing to be patented is not a mere elementary principle, or intellectual discovery, but a principle put in practice, and applied to some art, machine, manufacture, or composition of matter.”); Whitney v. Emmett, 29 F Cas 1074 (Circuit Ct. E.D. Penn. 1831) (“Nor is a discovery of some new principle, theory, elementary truth, or an improvement upon it, abstracted from its application, a new invention. But when such discovery is applied to any practical purpose . . . .”). After Le Roy v. Tatham, other notable cases solidified the concept. O’Reilly v. Morse, 56 U.S. 62 (1954) (holding that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could); In re Henry, 11 F. Cas. 1150 (Cir. Ct. DC 1856) (“A well-known principle or truth of natural science, as well as a newly-discovered one, is patentable to the first applicant of it in the useful arts . . . .”); Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) (“idea of itself is not patentable, but a new device by which it may be made practically useful is”); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ 199, 202 (1939) (“While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”).
More recently, Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) dealt with a claim involving the natural phenomenon exception:
He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”
The practical application language was reiterated in Gottschalk v. Benson. Benson’s limitation of his claims to a computer machine environment overcame the rejection bottomed on a “mental steps” theory. Because operation of a formula-solving computer constituted the only practical use of the involved algorithm, however, the Supreme Court deemed unpatentable what it considered claims to an algorithm performed in a computer, i.e., claims to the algorithm itself.
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. (409 U.S. at 71-72, 93 S.Ct. at 257, 175 USPQ at 676.)
The practical application term was used in reference to the abstract idea exception. In sum, the Court held that you can patent an invention that has an abstract idea in it (or here mathematical algorithm) only when it is practically applied.
The practical application standard was later further expounded upon in the CCPA case of In re De Castelet, 562 F.2d 1236, 1240-41 (C.C.P.A. 1977):
That language is interpreted by the solicitor and the board as foreclosing patentability of the appealed claims because, as de Castelet admitted at oral argument, the only practical application of the involved algorithm (equations) is in the claimed method. But the notion that the “ nutshell” language makes a method nonstatutory whenever it involves mathematical equations having their only practical use in the method is neither impelled by the rationale of Benson nor supported by precedent.
This court, in In re Benson, 441 F.2d 682 (1971), recognized that the only practical use of Benson’s method was in conjunction with a computer, but stated why that fact would not support a “mental steps” rejection:
Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines the computers are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? (Emphasis in original. 441 F.2d at 688)
In re De Castelet, 562 F.2d 1236, 1241 (C.C.P.A. 1977). Here practical application is used with regards to abstract ideas, mathematical algorithms, and mental steps.
Then in Diamond v. Diehr, the practical application doctrine was used to uphold the machine the invention that contained an abstract idea. Diehr, 450 U.S. at 187, 209 USPQ at 8 (“application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
The term practical application continued to be sparsely used until State Street Bank v. Signature Financial Group, which significantly strengthened the doctrine.
In Diehr, the Court explained that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, i.e., “a useful, concrete and tangible result.” Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.
Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”-the smooth waveform.
Similarly, in Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992), we held that the transformation of electrocardiograph signals from a patient’s heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing-the condition of a patient’s heart.
Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”
-a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.
State St. Bank & Trust Co. v. Signature Fin. Group, Inc, 149 F.3d 1368, 1373 (Fed. Cir. 1998).
State Street set the practical application doctrine in motion at the BPAI. Prior to 1998, there were no references to practical application regarding subject matter. Since then, there has been 98 decisions. The PTO’s 2005 subject matter guidelines were laced with the term practical application. It is likely that these guidelines steered the Board into further defining the practical application standard. Some recent BPAI decisions are notable in developing the practical application standard.
In In re Gutta, 93 U.S.P.Q.2d 1025, 2009 WL 2563524 (B.P.A.I. 2009), the Board applied the “real world use” test and the “substantially all practical applications” test to the claims at issue. With regard to the real world use test, claim 14 failed to recite any tangible practical application in which the mathematical algorithm is applied that results in a real-world use.
14. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising:
a memory for storing computer readable code; and
a processor operatively coupled to the memory, the processor configured to:
compute a variance of the symbolic values of the plurality of items relative to each of the items; and
select the at least one mean item having a symbolic value that minimizes the variance.
In re Gutta, at *1.
Most recently in Ex Parte Ruby, in addition to practical application, the standard included “real-world-use”:
When we consider these claims as a whole, we find nothing in the language of claims 1 and 17 to support Appellants’ presumption that because “the result is tangible plus the fact that the result is useful (e.g., in the context of video compression) and concrete (e.g., repeatable),” that this suffices “to establish that the claims relate to a practical application of the formula and not to the formula itself.” (Reply Br. 13, ¶2).
To the contrary, we find that merely storing the result of a mathematical operation in a register is insufficient to establish a tangible practical application having real-world use. See Gutta, 93 USPQ2d at 1026-27. Because the information contained in Appellants’ “result register” is not positively recited as being used to perform any function, we find that tangibly transforming the state of Appellants’ “result register” (claims 1 and 17) by storing the result of the combined compare and tally mathematical operations does not perform any tangible practical application that results in a real-world use. Moreover, while Appellants strenuously argue that the result is useful, e.g., in the context of video compression, we find representative claims 1 and 17 are each silent regarding any video compression. (Reply Br. 13, ¶2).
Ex Parte Lee, APL 2009-003697, 2010 WL 363234 (B.P.A.I. Jan. 29, 2010).
In Ex Parte Talbot, APL 2008-004894, 2010 WL 2157832 (B.P.A.I. May 27, 2010), appellants argued that the claims need not be limited to a particular application, only that a practical application be tied to the claims by way of the specification. Appellants stated the specification noted the decision network is tied to security applications and retail sales tracking. (App. Br. 6) Appellants then asserted the claims recite memory or means for storing, a processing unit or means for processing, or a computer readable medium, stating these limitations clearly constitute patentable subject matter. The Board rejected these arguments and used the Gutta rule that a “claim must be limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use and be limited so as to not encompass substantially all practical applications of the mathematical algorithm.” Id. at *3.
In Ex Parte Yazaki Corp., APL 2009-007532, 2010 WL 3072975 (B.P.A.I. Aug. 4, 2010), the applicant argued that the path plan had a practical application in its use for producing a wire harness. The Board rejected that argument by stating that “even if the step of “outputting the path plan” were interpreted as requiring the production of the plan on a tangible medium, that production constitutes nothing more than mere insignificant post solution activity. Such activity does not transform an unpatentable principle into a patentable process.” Id. at *3.
Most recently, in Ex Parte Sun, 2009-008503, 2011 WL 1211177 (B.P.A.I. Mar. 30, 2011), the applicant argued that claim 1 was directed to practical applications such as assisting a doctor’s investigation to a patient’s situation or a federal agent evaluating a possible terrorist attack. App. Br. 31.1 The Board rejected this by stating that the claims were not directed to anything more than an abstract idea. Id. at *5.
The most recent guidelines from the USPTO require that the invention either subscribe to the machine-or-transformation test, which requires a particular machine or transformation of a particular state or thing. To clarify what this means, these guidelines refer to the 2009 guidelines, where reference to practical application is used. The practical application focus of the 2009 guidelines is directed to abstract ideas that do not satisfy the machine or transformation test. “This ensures that the machine or transformation imposes real world limits on the claimed method by limiting the claim scope to a particular practical application.” The 2010 guidelines use practical application in reference to both abstract ideas and laws of nature:
Factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied. 75 F.R. 143, 43925 (July 27, 2010).
Law of nature
Factors weighing toward eligibility:
The claim is directed toward applying a law of nature.
Law of nature is practically applied.
Practical application is a term easy to say, harder to apply to an invention. This seems especially true as innovation these days is not always easily distinguishable from an abstract idea. While initially used as a standard fairly infrequently before State Street in the case law, the test has shown a recent surge in popularity because of the focus that the USPTO subject matter guidelines have placed on it. Most recently, this focus has been on the two subject matter exclusions abstract ideas and laws of nature.
Last September, I studied and helped write an Amicus brief for the Federal Circuit case Ass’n for Molecular Pathology v. PTO. As I reviewed Judge Sweet’s opinion, it struck me how sweeping and nonconforming to patent law his opinion was. In that light, I’ve been interested in knowing how this case will be decided because with the lower court’s opinion, there seems to be a lot of directions that the court could go in straightening the edges. I just listened to the oral arguments at the Federal Circuit and here are some thoughts. Judges Bryson, Lourie and Moore made up the panel.
First oralist, Myriad
Representing Myriad, Greg Castanias first talked about jurisdiction. He stressed how there was no immediate threat to the plaintiffs. Plaintiffs who would carry out tests (could or would engage in competitive activities), but there were no real consequences. Courts require actions or meaningful preparations by the declaratory plaintiffs AND affirmative acts taken. One letter was sent out since in 1998. This is against MedImmune’s immediate threat. But is it still a continuing threat? It wasn’t sufficient, according to Castanias.
Next, Castanias made an interesting and new redressability argument. The plaintiffs perceived the threat from the patents as a whole and not individual claims. Why? They wanted to invalidate the whole patents, even though some of the claims were valid.
Next, the debate that garnered the most attention, the composition claims. Isolated DNA never exists in nature, Castanias powerfully articulated. Product of human ingenuity, should be the test. Then there was a discussion on rocks and of course covalent bond breaking. I think that Castanias’ test is a good one that fits the court’s precedent cases. Before the Patent Act of 1952, and indeed even after, courts would kick out inventions as not patentable, but confuse it with terminology of obvious, not useful, or not novel. These cases probably should have used subject matter as their argument, but now that they didn’t, we are stuck with trying to make sense of a couple centuries of patent law.
On to the method claims, a little bit of time was spent on how sequences is not information. I agree with this. The specification, for instance, talked about specific technological methods that can be used to compare and analyze. I agree that this might pass the same analysis as Prometheus.
It was funny when in a hypothetical, Judge Moore referred to how God made her product, not man. I thought that the ACLU crowd might not be too pleased with this analysis!
Second up? ACLU
The ACLU’s Christopher Hansen was next. He first spoke about how Myriad has all but conceded the first half of standing for a declaratory judgment, which I got the sense as well from listening to Castanias. But does Myriad meet the second part of being willing? One declaration says that they will consider. Hmm. To me, this is not enough.
In response to the redressability argument, Hansen said that Myriad doesn’t identify claims that get in the way. Probe and primer claims aren’t identified specifically.
I wished there was more time spent on the merits of the case (my background makes such topics quite interesting to me), but Hansen did discuss how isolating is not purifying. All Myriad does is snip the gene out of the body. It should not matter what instrument is used, if the product is the same as its natural state, it should not be patent-eligible. Applying this to the case at hand, a kidney should not be patent-eligible in much the same way as an isolated DNA is patent-eligible. Whether the method is using tweezers, scalpels, or genomic methodologies.
Solicitor General Neal Katyal on behalf of the US government
The test articulated is the now-famous magical microscope test. If you could see the exact claim in nature, then that is a product of nature. CDNAs are fine because the magical microscope won’t find it.
Even though this oral argument went pretty smoothly for the most part, the government’s position was kind of awkward. This wasn’t really pointed out until the end, but I found it kind of funny. I love Judge Moore’s “you’re not changing anything with this theory of yours? What about the last 35 years buddy? What you are advocating goes against what’s on the PTO’s website right now.”
I got the sense that this case will be decided on jurisdiction from Judge Moore’s question next: Why not Congress? The Federal Circuit doesn’t need to make policy on such a controversial issue as gene patenting. The smartest thing for them to do is kick it out on jurisdiction and have Congress or the PTO make policy on it. Katyal answered that this is a pure question of law, but I don’t really agree. I think that a lot of research should go into deciding whether genes should be patent-eligible.
Finally, I love how Judge Hand made it in to this case. It’s been 100 years and he’s still a legend.
I got the sense that Judge Moore didn’t understand probes and primers. Correct me if I’m wrong, but you can use a non-CDNA nucleotide as a probe, can’t you? The way she was questioning at this point made it appear that only CDNAs are probe and primer material. Castanias answered that the definition of isolated answers the question that it’s not the entire sequenced genome.
A funny aside, I thought it was funny how everyone seemed to pronounce BRCA differently. When I studied this gene in college, I always went with how Greg Castanias pronounced the acronym, which I think is how Myriad prefers to pronounce it too: Bracka. But Judge Moore used Bricka-1, Judge Bryson used Berca-1 and attorney Hansen decided to not risk it at all, by just spelling it out B-R-C-A.
A good presentation by all parties, overall. I got the sense that the judges were leaning toward standing as the most important issue, even though the ACLU and government wished to talk about other things. That may not be a good thing for their case! I think jurisdiction will prove to be the most powerful argument in favor of Myriad.
There’s an old saying about those who forget history. I don’t remember it, but it’s good. Stephen Colbert
When I took the class Patent Law a couple years ago, our class (probably like all other patent law classes across the country) studied the three iconic cases that dealt with the subject matter of processes: Benson, Flook, and Diehr. There seemed to be no controversy when we went over Benson, the “can’t patent an algorithm” case. The redacted opinion in my textbook had no dissent (Even though the opinion was unanimous, three justices did not participate in the decision). Furthermore, the professor, like Justice Douglas’s opinion, seemed to generalize the invention into an algorithm that converts numbers into binary. This was a very “obviously” unpatentable invention, at least that was my sense at the time.
Now, in revisiting this grandfather of subject matter cases (refer to how much Bilski still deferred to this case), I am noticing that the claims tell a different story. An interesting observation of Benson is that the CCPA in In re Benson, 441 F.2d 682 (C.C.P.A. 1971), which upheld the invention as patent-eligible, specifically cited to and focused on the claims at issue (claims 8 and 13). The Supreme Court did not even cite to the claims in the opinion, but rather attached them in the appendix to the opinion. How could the Supreme Court paint the invention in such clear terms without referring to the actual claims which make up the invention?
The claims at issue are as follows:
The method of converting signals from binary coded decimal form into binary which comprises the steps of
(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
(3) masking out said binary ‘1’ in said second position of said register,
(4) adding a binary ‘1’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”
A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of
(1) testing each binary digit position ‘1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary ‘0’ or a binary ‘1’;
(2) if a binary ‘0’ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(3) if a binary ‘1’ is detected, adding a binary ‘1’ at the (i + 1)th and (i + 3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and
(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.
Looking at the invention from the claims rather than from what the Supreme Court or a patent law professor tell you provides a different story. If I were the PTO today, I might go ahead and issue Benson’s application today. Let me explain why.
Back in 1968, the board rejected Benson’s application using the “mental processes” and “mathematical steps” doctrines. But when looking at the claims above, I don’t really see how the claims don’t fit within the framework of § 101. I agree with Judge Rich’s analysis: “Would a reasonable interpretation of the claims include coverage of the process implemented by the human mind?” The answer clearly is “No, for claim 8 is for a method to be practiced in part on particular apparatus specified to be a ‘reentrant shift register.’ Claim 8, moreover, refers to the operations of storing, shifting, and masking ‘signals’ which, by a reasonable interpretation in the light of the specification, can only mean signals of the kind upon which the disclosed electronic digital computer hardware operates.” Id. at 1142.
With regards to claim 13, which dealt with converting one representation into another representation, the board rejected it as “mental,” but Judge Rich’s analysis is enlightening. “The process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer.” It makes one wonder how the claim could be interpreted as broader than a digital computer, for instance having the recording medium be pencil and paper or red and blue poker chips, considering the specification makes no mention of other implementations besides a digital computer.
Fast forward 40 years. Today the PTO, the board, and other courts now prefer to use the term “abstract idea” to reject claims like this. But is it possible that the Federal Circuit today is similar to its CCPA predecessor then? Could Judge Rader be the new Judge Rich? The recent RCT v. Microsoft decision seems to imply so. Granted, Benson is different than RCT because RCT had already been issued patents and thus deserved a higher level of validity while Benson, on the other hand, involved the application stage. The RCT court refused to define abstract but said that “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” The court went on to show that the following claims were patent-eligible:
1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.
2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.
11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.
1. [not asserted] A machine comprising a computer readable storage device which stores a dither matrix for use in halftoning image information and a comparator responsive to said computer readable storage device, said dither matrix comprising at least one array, said at least one array, when thresholded at a number of levels produces a number of dot profiles, a plurality of said number of dot profiles each having a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.
4. The machine of claim 1, wherein substantially all of said number of dot profiles have a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.
57. [not asserted] A computer readable memory device comprising a thresholdable halftoning mask, said halftoning mask designed to produce a plurality of visually pleasing dot profiles when thresholded at a number of levels and a comparator responsive to said computer readable memory device.
63. The computer readable memory device of claim 57, wherein said halftoning mask is designed to produce substantially all visually pleasing dot profiles when thresholded at a number of levels.
29. Apparatus for the halftoning of color images comprising a comparator for comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministric, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein an output of said comparator is used to produce a halftoned image.
Like Benson, the claims when read in a vacuum could reasonably be interpreted as “mental” or “mathematical.” But in the context of the specification, it is clear that the invention was tailored to a machine and was not abstract. Indeed the RCT court, without agreeing to define what abstract meant, provided perhaps the best definition to date: “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” Id. at 868. The invention was not that.
In my opinion the PTO, or at least the Federal Circuit, in following its own subject matter jurisprudence, could hold that Benson’s invention is patent-eligible today. The invention sure wouldn’t survive other provisions of the Patent Law today, such as 102, 103, and 112, among others. But it’s useful to revisit Benson’s decision because to me the “unanimous” decision to hold Benson’s invention as non-statutory subject matter was not inevitable. It could have gone the other way.
It’s been a year since the USPTO issued guidelines stating that the claim “computer-readable medium” should not be statutory subject-matter because viewed in its most broad interpretation, the claim includes transitory embodiments such as signals. And since In re Nuijten held that signals do not fit into a statutory class of subject matter, the claim fails. I already made my thoughts known about this here, but today I wanted to give a report of the aftermath. The BPAI has certainly been busy, and especially since Bilski, in striking down patents related to software. Searching through the BPAI decisions, I found 132 cases that have been decided on the merits of subject matter. Interestingly, these cases are coming through the BPAI on a very regular basis. From the time I first performed my search (two weeks ago) to today, 17 more results appeared. This is definitely a hot topic right now. Software patents seem to be very much alive and well, however, a critical element of claiming computer-program related inventions is what you include in your specification.
While conducting this research, a few things struck me. First, the most common rejection was that there was insufficient limitation in the patent or the claim could be interpreted into non-statutory matter. Second, avoid having your claims get pegged with the label “software per se.” It’s bad. Next, RCT v. Microsoft was finally cited in a most recent BPAI decision. Ex Parte Clifford R. Jack & Peter C. Obrien, 2009-015192, 2011 WL 486179 (Bd. Pat. App. & Interf. Feb. 7, 2011). It appears that the BPAI has finally caught up to this recent and very important Federal Circuit case.
Next, initially after Bilski was decided, there was a trend towards rejecting claims that related to software. This trend seems to be going the other direction (although perhaps there has not been sufficient time to tell) since RCT v. Microsoft. Next, your patent, whether in the claims, or in the specification, needs to require that the invention be limited to some embodiment or on some particular apparatus. The limitation just can’t be construed as including a signal or else your claim is toast. Finally, you can claim a “computer-readable medium” if your specification limits the invention to being performed on a non-transitory medium. Otherwise, game over.
I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: [download id=”2″] The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.
Briefly about how I searched, it was difficult to search for “software patents” because of how unpredictable the wording of a claim might be. One of these days, we’re going to come to a point where you send your computer a telepathic vibe of what you want and a query will then return results for you. But we’re not to that point yet, so I conducted a very broad search of all 101 subject matter cases. Then I refined the search manually. Almost all of the subject matter was computer-related, to my satisfaction. Only a couple cases were purely abstract, involving how to play a game. If you want to perform the search for yourself, I used Westlaw:
advanced:(101 & “subject matter”) & DA(after 06-28-2010).
Some of you may recall my fascination last year with the distinction in software between a license and a sale. I argued that it makes more sense to consider computer program transactions as sales rather than licenses. Well since my post, a lot has changed in the patent-eligibility landscape. The Supreme Court in Bilski went deep into analyzing process patents. Even though the Court sidestepped software, opening it up for a future time, some of the issues it raised with regards to general process claims were quite interesting.
Just the other day I was reading about particular exercises used to optimize the human body in certain ways. True to my patent-law geek form, I immediately thought about the patentability of such exercises as novel techniques. As the dissent in Bilski pointed out, a couple hundred years ago, processes people would not have thought about patenting, are today at least being considered for patentability. Without saying whether this is a good or a bad thing, it is interesting that process patents are finding their own niche in the realm of inventions. This refinement has a long ways to go in terms of defining what a non-patentable process is, such as an abstract idea.
I’d like to take you back to my post about the difference between sales and licenses. If I teach someone else how to do a process in exchange for something in return, is this a sale or a license? It may depend on how the arrangement is set up. According to the MPEP, however, it is per se a license. You see, I’m currently studying for the USPTO registration examination and I just read a section in the patentability section of the MPEP, discussing the 102(b) sale requirement.
A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. “‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the invention within the meaning of §102(b) because the process has not been carried out or performed as a result of the transaction.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). MPEP 2133.03(c) (8th Ed. 4th Rev.)
This simplifies process patents for now, applying a broad brush stroke to all process patents not being sales, but I am predicting that the delineation will soon need to be more precise. Some process patents are gray in their conceptualization and I sometimes like the challenge of exploring gray areas. More to come.
The recent technological buzz has been on Craig Venter’s recent construction of an entirely new cell completely synthesized from scratch. A basic overview of his thoughts can be found in this interview. Venter’s research is incredibly inventive. He created an entirely new architecture for life, or in his words, a biological operating system. As I have a bioinformatics background, I love the analogy to software that “genetic code is our software.” Venter’s synthesis of a cell by refashioning the basic building blocks of life in a novel sequence to produce a useful result is exactly what is done with software today. One sequence is read by the cell’s machinery, the other sequence is read by a computer. Such sequences are embodied in a concrete application. Both should be patentable provided they do not occur in nature.
The recent backlash against Myriad Genetic’s BRCA gene patents most likely stems from the fact that the gene is naturally occurring. Many people become uneasy at the thought of not being able to perform a test on your own biological material. It’s as if you don’t control your own body, and that is scary. Perhaps Myriad’s gene patents were improvidently awarded. Had Myriad somehow altered the gene, or constructed an entirely new gene, there would have been a different story. The result of the case is far from over, however, as appeals are now in the works.
One quote from Venter’s interview struck me as directly applicable to patent law: “We’re entering a new [technological] era that is limited mostly by our imagination.” The patent law system cannot limit this new era that is being ushered in. It needs to be flexible enough to promote this area of science.