Supreme Court Review of Bilski Heats Up

I Don't Believe in Imaginary Property writes "The Supreme Court's review of In Re Bilski (discussed here numerous times) is heating up, having attracted no less than 44 friend-of-the-court briefs from almost everyone with a stake in the patent system. Patently-O provides a nice summary of who is arguing against Bilski. The two questions before the Supreme Court are whether or not a process must satisfy the particular machine or transformation test, and whether this test improperly excludes many business methods in spite of the wording of 35 U.S.C. 273, which specifically allows business-method patents. So far, the case has attracted legal filings from nearly every large company or group whose patents might be threatened. You can read briefs from Yahoo, IBM, Borland, Dolby Labs, the BSA, and many others, even one from some guy claiming to speak on behalf of the State of Oregon."

Comments

A wiki for Bilski and other swpat issues

[H4x0r Jim Duggan]

I'm documenting this here: swpat.org/wiki/Bilski. All help appreciated.

Re:A wiki for Bilski and other swpat issues

[SlashWombat]

I was always under the impression that patents were to protect novel ideas that were unlikely to be obvious to anyone that was working in the field. This I find acceptable usage of patents! However, many patents that are granted by the USPTO are NOT novel. The problem with business and software patents is that they are either obvious but have been applied to computing, or they are well known but no-one has applied for the patent before, since it was "obvious". The obvious fix is that any patent that is granted should perhaps have a two year probationary period, during which the patent office could receive objections from other interested parties. The patent should then be reviewed, based on any/all received information. This would freeze out many of the bogus patents that are issued (mainly to trolls who would never use the patent they own anyway!

Re:A wiki for Bilski and other swpat issues

[testadicazzo]

I was always under the impression that patents were to protect novel ideas that were unlikely to be obvious to anyone that was working in the field. This I find acceptable usage of patents!

You have always been mistaken. The purpose of the patent system is to encourage investment into research and development, and thus encourage and promote human progress and invention. Allowing ideas to be patented slows innovation, while allowing the patent of an invention which has required much time, effort, and or money to develop, provides a financial incentive for for R&D, and thus encourages innovation.

Thus patents should protect inventions which require a significant amount of research and development, not ideas. To quote Thomas Jefferson:

It would be curious then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation.

If you wish to correct your ignorance, I can suggest the book "Math you can't use" as an excellent text on the subject.

Re:A wiki for Bilski and other swpat issues

[DJRumpy]

Agreed. Any patent that can be duplicated just from hearing about the idea, is to my mind 'obvious' and should not be patentable. There are also rulings that allow for reverse engineering and in some cases, the courts even went so far to state that reverse engineering is desirable to innovation, and market competition.

Is Reverse Engineering Legal

Patents are out of control when you can patent "A system for categorizing information in a 'database like' structure for easy retrieval at a later date'". Note I totally made that up, but as far as I know such patents exist or are applied for on a regular basis. At some point, someone needs to step in and put on the Sanity Brakes.

Yeaaa. and we independent developers get to see

[unity100]

who's the enemy of innovation, open source, new participative pluralist internet culture and freedom, and who is a friend.

the verdict of the masses are silent, but irreversible. and no court can make innumerable developers who can make or break a new web/it tech your friend by force.

Don't hold your breath

[xednieht]

As techies ./-ers would expect an outcome that reflects logic and reason. Remember, of the scum-sucking leaches that are lawyers the supreme court represents the elite.

Better to be a forum troll, than a patent-troll any day of the week.

Re:Don't hold your breath

[CorporateSuit]

Better to be a forum troll, than a patent-troll any day of the week.

Yeah, who needs yachts to drive on their oceans of money and naked women when we have strangers getting upset over what we think about Linux distros?

Re:Don't hold your breath

[hairyfeet]

Or as my dad says

" Son, there is no point in being a racist. Most folks are total assholes and will happily give you a reason to hate them personally!"

And I have found no truer words were ever spoken.

Re:Don't hold your breath

[nacturation]

Better to be a forum troll, than a patent-troll any day of the week.

Yeah, who needs yachts to drive on their oceans of money and naked women when we have strangers getting upset over what we think about Linux distros?

Don't do that. Besides not being very nice, it's quite the waste because you'll just end up having to buy more naked women to drive over.

USPTO has already been taking Bilski into account

[ProfBooty]

The office has been sending out quite a few 101 rejections based on the district courts decision. This is something that both the Office and the Bar want clearly resolved as the Bar has been very creative in the past few years in claiming what is essentially software only claims.

Best quote

[Anonymous Coward]

I think the brief submitted by Mark Lemley et. al sums up my opinion the best.

The distinction on patentable subject matter should be based on the distinction between applied and abstract inventions.

It doesn't get much simpler than that in my mind. If you are patenting an applied method, applied algorithm (read: implementation), applied design (blueprints or machines) etc. then sure, you should be able to patent it. Barring prior art, public domain, etc.
But if all you have is an idea, too bad- do something with it.
I guess the thing that surprised me was, when I was taught about patents back in high school that is essentially what they told me the criteria was all along. Then I grew up & found out how twisted it really is, and then IP and software patents got into the mix, and because the politicians & courts had no clue what they were talking about, managed to hose the whole thing.

Re:Best quote

[radtea]

I think the best quote is: a general purpose computer should be considered a "particular machine."

This is the core contention behind the justification of software patents. It incorrectly treats all of the specific coding of any algorithm implementation as irrelevant to the patentable subject-matter, because the algorithm could theoretically be made to run on any Turing architecture.

Anyone who has ever actually implemented an algorithm, much less anyone who has invented one, knows that this is nonsense: algorithms are not implementations, and to be "useful" an algorithm has to be properly implemented in a specific language and, frequently, on a specific machine or limited range of machines, because real computers are not Turing machines. Turing machines don't have interrupts, amongst other things, which is why they are deterministic and mathematically tractable.

Re:Best quote

[slashqwerty]

The Accenture brief states:

Machine or transformation test is not a reliable indicator of anything relevant. The standard for patentability should usefulness as set forth in the Constitution, in the patent statute, and by the Court.

But this ignores the constitutional requirement that it promote progress:

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

Teles AG says:

Further, the global nature of todays economy strongly recommends that the United States patent system be harmonized with robust patent systems of other nations wherever possible.

This is the same argument used in favor of the Sony Bono Copyright Term Extension Act yet at the time the United States was one of very few nations to actually extend copyright to such a length. In this case the U.S. is one of very few nations to support software patents.

Re:Best quote

[Grond]

But this ignores the constitutional requirement that it promote progress:

It is not obvious that business method patents hinder the progress of the useful arts, and merely stating it does not make it so. But if you have a good argument for why business methods are contrary to the constitutional purpose of patents, then by all means compose and submit an amicus curiae brief in support of the Respondent. The due date is October 2nd. You don't have to be an attorney to submit an amicus brief on your own behalf.

In this case the U.S. is one of very few nations to support software patents.

This case is not about software patents. Here are the questions presented in the case:

1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."

2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. 273.

Now it is true that the case has implications for software patents, diagnostic method patents, etc, but concerns about software patents and the like will be, at most, secondary public policy considerations in the Court's decision making process.

That said, the point about international harmonization is that other countries and the EPO have broad definitions of patent eligible subject matter. The EPO, for example, says "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step" with the further proviso that the invention must be of a technical character. Now, the EPO has a specific exclusion for business methods, but it is just that: a specific exclusion. The test of patentable subject matter remains broad. The argument is that the US should do the same: broad patentable subject matter with (if necessary) specific exclusions as determined by Congress rather than the courts. As it so happens, there are many good arguments that Congress has not yet excluded (and might never exclude) business methods from patent eligibility.

Full Disclosure: I work for the team that wrote the amicus brief of Dr. Ananda Chakrabarty (he of the Diamond v. Chakrabarty Supreme Court case that established the patentability of genetically modified organisms).

Re:Best quote

[jedidiah]

> It is not obvious that business method patents hinder the progress of the useful arts

You declare ownership of a new business process. Because of this you can prevent
EVERYONE ELSE WHO DOES BUSINESS from benefiting from that new process. Alternately
you can FORCE EVERYONE to waste money licensing your process. Alternately, companies
lose the motivation to innovate because they might be sued by some jerk like you.

Every patent allows the patent owner to cause trouble for everyone else for the next 17 years.

It's far better that Dell can't patent build to order rather than being prevented from
inventing it in the first place because a bunch of bogus process patents choked him when
he was a startup.

Software patents are a clear counterexample to your rubbish idea that the other side
of the argument is just making empty claims.

Patents exist to encourage inventors to disclose useful information, not to enable large
corporations to be bridge trolls.

The most frightening idea in all of those amicus briefs is the idea that medical procedures
might be patented. That's about the most horrific and destructive idea you could possibly
come up with. Doctors invent because they take their oath to Hypocrates seriously, not because
they identify with Crassius Maximus.

Re:Best quote

[Antique Geekmeister]

A general tool of almost any kind, used in a different way, is _not patentable_. It's using the tool for what it was designed for, it does not change the physical construction of the machine nor its number of parts nor its general capabilities.

The "actually implemented algorithm" is protected in its specific implementation by copyright, and should not receive the double protection of patent law against writing similar algorithms.

Re:Best quote

[Grond]

You declare ownership of a new business process. Because of this you can prevent EVERYONE ELSE WHO DOES BUSINESS from benefiting from that new process.

Suppose someone invents a new mechanical device and patents it. The patentee can now prevent everyone else from making a business out of making, using, selling, offering to sell, or importing the patented device. In that sense, all patents declare ownership over a new business process. Business method patents are just applied economics in the same way that mechanical device patents are applied physics.

Others are also free to design around the patent by inventing their own substitute mechanical device or business method. Theirs may even be a superior device or method, which is better for everyone. And they have an incentive to do so: not only can they avoid infringement or licensing fees, but they can exclude or license to others in turn.

And of course, no one is actually forced to do anything. A patent is only valid if it claims something new, useful, and non-obvious, which means it can't cover anything that others were already doing. No one ever has to change their business in response to a patent: that which infringes if later anticipates if earlier.

Every patent allows the patent owner to cause trouble for everyone else for the next 17 years.

20 years from the date of filing.

The most frightening idea in all of those amicus briefs is the idea that medical procedures might be patented...Doctors invent because they take their oath to Hypocrates seriously, not because they identify with Crassius Maximus.

Medical procedures can already be patented, but practitioners and 'related medical entities' (e.g., the hospital, clinic, etc where the practitioner works) has a defense against infringement. Anyway, lots of doctors invent out of a sense of self interest as well as a desire to help people. I work with medical researchers on a regular basis, and the commercialization of their work is what ultimately funds the labs they work in.

Just FYI, it's "Hippocratic oath," and it's not sworn to Hippocrates but rather to various gods, particularly Apollo.

Re:Best quote

[Theaetetus]

A general tool of almost any kind, used in a different way, is _not patentable_.

A hammer isn't patentable? Of course it is. What you're quibbling over - and why this is going to the Supreme Court - is the definition of a "general tool". Is a hammer a general tool, or a specific tool? It can't be used to screw in screws... So, is a screwdriver a general, or a specific tool? Well, it can't be used to hammer in nails... at least not well. Finally, is a computer a general, or a specific tool? It's not very good at hammering or screwing, after all.

I realize this is all semantic bullshiat, but when the original Bilski case said that an algorithm tied to a specific machine is patentable, while one tied to a general machine isn't, you're purely in the semantic bullshiat area.

My take:

The point of this whole argument is to say that we don't want to make algorithms patentable. Specifically, we don't want someone's mental process to be infringement of a patent. If you patented the concept of 2+2=4, then someone reading your patent and understanding that when you add two to two, you get four would be infringing. This is a thoughtcrime, and that's bad. To be more realistic, we similarly don't want it to be an infringement when you read someone's patent on a method of diagnosing a disease and understand the method, or read a patent on a method of running a business and understand the method. Instead, it shouldn't be an infringement until you actually perform the method. But if it only requires mental steps, then understanding it is performing the method...

So that leads us to Bilski: it must be tied to a specific machine. Patenting 2+2=4 makes merely understanding addition a thoughtcrime. However, patenting "using a computer configured to add a first number, equaling two, to a second number, equaling two, to achieve a result, equaling four" could never be infringed by someone thinking through the steps, or even using a pen and paper. It requires a specific machine, so there can be no possibility of a thoughtcrime. You're not patenting the algorithm - you're patenting the computer performing the algorithm. Do it by hand, and you're not infringing. This allows inventors to improve on the design without infringing the patent, and simultaneously allows the inventor to exploit his invention without stifling innovation.

Re:Best quote

[russotto]

A general tool of almost any kind, used in a different way, is _not patentable_. It's using the tool for what it was designed for, it does not change the physical construction of the machine nor its number of parts nor its general capabilities.

Evidentally you missed the article on Microsoft getting a patent on using XML as a file format for a word processing document, including certain specific new tags. Yep, they extended the eXtensible Markup Language (and not even in a particularly original way) and got a patent on their particular extension.

Re:Best quote

[naasking]

Turing machines don't have interrupts, amongst other things, which is why they are deterministic and mathematically tractable.

Just a correction: our computers aren't Turing machines because they have finite memory, not because they have interrupts. Analyzing arbitrary machine code is tractable on a real Turing machine with infinite memory, it's just that any such analysis may not run within the bounds of current computer memories, and even if it could, its runtime or resource consumption may not make the analysis actually useful.

Re:Best quote

[aztektum]

A patent on a hammer is fine. A patent that says I can't use it to hammer things a certain way is bogus. I paid money for the hammer. I should be able to use it how I see fit and share that knowledge unencumbered.

Re:Best quote

[Antique Geekmeister]

The hammer itself is patentable. The new use of a hammer, without fundamental modification to the hammer itself, is not. So now that general purpose computers exist. That's part of what Bilski is revealing: the patenting of usages of tools, without modifying the tool itself, is a serious issue that should block the patent.

35 U.S.C. 273

[Anonymous Coward]

35 U.S.C. 273 refers to business method patents but *does not* specifically allow them. Whether 35 U.S.C. 273 approves of business method patents implicitly is left as an exercise for lawyers writing supreme court briefs...

Re:35 U.S.C. 273

[TakeyMcTaker]

Based on the section title, I would say that 35 USC 273 has nothing to do with patents being *allowed*:

http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_273.htm
"35 U.S.C. 273 Defense to infringement based on earlier inventor."

This section is defined by the words "defense to infringement", an act that has nothing to do with getting a patent granted. Since proof of this defense shows that prior-art existed for the patent in question, it should actually invalidate any patent that this defense is successfully used against. It looks like it was written to a rare edge-case where the prior-art was put in practice yet not publicly documented, but I would still argue that such a prior implementation would also show the patent's obviousness (if this defense is validated, that means the patent claims in question were obvious to someone other than the patent filer, at least one year before filing). This whole section is written specifically to get businesses out of court who are determined to have "infringed a patent" at least one year BEFORE it was filed, without ever having contacted the filer. I don't see any way any court (or even a prejudiced but reasoned lawyer) could ever construe anything under a title like this to determine what kinds of patents the USPTO should *accept*. Being able to avoid infringement claims is the opposite of being able to have a patent granted.

More amicus briefs to come, probably

[Grond]

The 44 amicus curiae briefs that have been filed so far are only those submitted in support of the Petitioners (i.e., the inventors Bilski and Warsaw) or in support of neither party. Amicus briefs in support of the Respondent (i.e., the Patent Office) will be submitted after the Respondent's merits brief is submitted, which will occur on or before September 25. Once the merits brief is submitted, amici have 7 days to submit briefs in support of the Respondent.

While I don't expect there to be quite the same volume of briefs supporting the PTO as the Petitioner, there will probably be at least a few.

Here is the the Supreme Court docket for the case.

Full Disclosure: I work for the team that wrote the brief of Dr. Ananda Chakrabarty (he of the Diamond v. Chakrabarty Supreme Court case that established the patentability of genetically modified organisms).

Anonymous Coward

[Anonymous Coward]

FYI -- the Bilski patent application is not considered a "software" patent application. Instead, it is considered a pure "business method" (i.e., a method of performing some business-related task that it not necessarily tied to any specific hardware, e.g., a computer).

If the Supreme Court strikes down the patent under 101, this particlar fact pattern and the resultant decision will not necessarily lead to the death of software patents. However, if the Supreme Court determines that that Bilski patent application is patent eligible, then software will be patentable unless Congress eliminates software patents by law. The reason for this is that pure business methods are considered closer to "abstract ideas," which are not patentable, than software patents since software is always used on a machine (i.e., a computer).

The whole case could turn on the 35 U.S.C. 273 issue. The Supreme Court can rely on some very technical rationale for deciding a case, and one of these is called "statutory construction." One such rule is that a statute will be interpreted so as to be internally consistent such that a particular section of the statute shall not be divorced from the rest of the act. 35 U.S.C. 273 refers to a defences to infringement with regard to business methods. It would appear to be internally inconsistent to have a "business method" be nonstatutory under 35 U.S.C. 101 while still provide a defense for someone infringing a business method. If one cannot patent a business method, then one cannot infringe a business method. If one cannot infringe a business method, there is no need for a defense against infringement.

Re:Please tell me...

[jedidiah]

> Say an inventor comes up with a brilliant new algorithm for efficiently and accurately modeling
> fluids on a computer. There are many possible applications: computer graphics, weather simulation,
> etc. The inventor would like to maximize his or her profit from the invention.

This presumes that the crass entrepeneur is the driver of innovation in software.

Usually it's the exact opposite sort of person that drives software or scientific innovation. The
current patent regime threatens to mire this sort of person in a quagmire of pre-existing and largely
trivial patents. Even if this person were a genuine entrepenuer they would have to deal with the legal
minefield of patents and quite likely would be in a very weak position to deal with hostile potential
competitors with large patent portfolios to club him with.

Necessity is the mother of invention, not greed.

Re:Please tell me...

[russotto]

The PageRank algorithm on which the Google empire rests was invented by Larry Page and Sergei Brin. They published the algorithm, patented it, and went on to become incredibly successful 'crass entrepreneurs.' Google owns dozens of software patents on key technologies such as its Map-Reduce implementation and AdWords. Few would say that Google is not a driver of innovation in software.

Google's patented search algorithm is not a driver of innovation in software. They have carved out their own niche in searching, in which they stand alone; no one builds on their work.

And if they really have a patent on MapReduce, that's a bad one too. Distributed software has used the general idea since before Google existed. I haven't read their actual claims, however.

Why is the focus on patentability of processes?

[Wolfier]

I'd rather see submarine patents be got rid of or patent transferability restricted to get rid of the patent trolls and the "patent holding companies".

At least people who come up with these processes, come up with something. The trolls are just in the business of collecting patents and wait for their chance to cash in.

HUGE difference

[aepervius]

Suppose someone invents a new mechanical device and patents it. The patentee can now prevent everyone else from making a business out of making, using, selling, offering to sell, or importing the patented device. In that sense, all patents declare ownership over a new business process. Business method patents are just applied economics in the same way that mechanical device patents are applied physics.

The huge diference is that you cannot use a TRIVIAL mechanical process and patent it, or even use that patent to leverage money against ESTABLISHED other mechanical industry (Otherwise your mechanical device would not be an innovation but a copy of existing mechanical device). And this is the contention here : A lot of those business process patent are either trivial, already in use for decenny, copy of something existing but-with-computer or just plain mathematical application. You do not have such a problem with mechanical device patent.

The difference between theory and practice

[symbolset]

In theory, there is no difference between theory and practice. But, in practice, there is. -- Jan L. A. van de Snepscheut

A Turing machine is a form of thought experiment with utility in many aspects of information science and mathematics. It was never intended as a platform to prove algorithms. That it has uses for algorithms is part of the proof of its general utility - which in the modern day goes far beyond afield of computer science. Typically algorithms are expressed not as Turing Machine code but in a format similar to a mathematical proof, in an actual programming language or as something called "abstract code" which has similarities to actual programming languages but without the distractions of implementation details.

The assumption that a pure algorithm must use a Turing machine as a standard platform is revealed as an error in this way: Turing machines have not only infinite storage, but infinite performance - the time to perform operations is not important to the operation of a Turing machine. For algorithms though efficiency of performance in number of operations, and hence time, is second only (and sometimes not even then) to correctness. Efficient use of resources like memory is an important metric for evaluating fitness of an algorithm. The Turing Machine doesn't consider these metrics because its purpose is not to find fit algorithms, but rather to serve as a generic type of operator for mathematic functions dealing with information.

In his momentous paper "On Computable Numbers, with an Application to the Entscheidungsproblem"[14] (submitted on 28 May 1936), Turing reformulated Kurt Gödel's 1931 results on the limits of proof and computation, replacing Gödel's universal arithmetic-based formal language with what are now called Turing machines, formal and simple devices. He proved that some such machine would be capable of performing any conceivable mathematical problem if it were representable as an algorithm, even if no actual Turing machine would be likely to have practical applications, being much slower than practically realisable alternatives. - op. cit.

Although I agree with both you and the grandparent I feel you've missed some essence of the truth here.

On a completely different note: Determinism has some utility - it doesn't have all utility. Every lawyer and salesman knows that ambiguity can also be a useful tool.

Re:Novel Ideas

[TaoPhoenix]

Copyright protects Novel ideas. Patents protect the Automatic Author machine that produces Novel ideas.

Incorrect

[geekoid]

"Allowing ideas to be patented slows innovation,"

A) You can build on a patent, i.e. innovate
B) After about 20 years* anyone can make it.

The only thing it slows is distribution of the product because the holder can control who can make it. IT doesn't NOT IN ANY WAY prevent new products based on it from being patented.

"Thus patents should protect inventions which require a significant amount of research and development, not ideas.
No, and Yes.

No, it should not protect products based on how much it costs to develop,
Yes, it should not allow for the patent of ideas. This is counter to what patents are for, and undermines there value immensely.