As many of you already know, the CAFC
decided In Re Bilski this week. Some, including the PLI, claim that the decision spells the
end of software patents. I completely disagree. In fact, the majority addressed the continued patentability of software specifically:
"although invited to do so by several amici, we [also] decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court."The number of incorrect reports and predictions surrounding this decision is really quite remarkable. Bloomberg is
reporting that "In today's ruling, the appeals court overturned a 1998 decision involving State Street Corp. that made clear that business methods are entitled to patent protection." Not so. I agree with
Peter Zura, who states that "
State Street remains good law ...." While it is true that
Bilski curtailed the scope (and called into question the validity of) so called "pure business" method patents, the fundamental policy rationale of State Street remains good law (On this topic, the majority stated:
"[i]n State Street, as is often forgotten, we addressed a claim drawn not to a process but to a machine.")
The Bilski decision dealt specifically with a
method of hedging risks in commodities trading. Regarding these so-called "pure" business methods, the majority stated:
"[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances."
In order to be patentable after
Bilski, the claimed method
must
meet the "machine or transformation" test
. This
test is not a physicality test – i.e., a claim can still be patentable even if it does
not recite sufficient "physical steps." On the other hand,
Bilski holds that "a claim that recites 'physical steps' but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter." Thus, a claimed process where every step may be performed mentally is unpatentable.
"Of course, a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101."
Given the conventions of most "software" patent claims drafted within the last decade, including claims drawn to "computer readable medium," "computer systems," and other similar claims including claims to "computer networks," the vast majority of these patents remain unaffected by
Bilksi ... for now. The Supreme Court has yet to weigh in on this issue.
Labels: in re bilski, software patents
Apparently tooth brushes with rigid handles are a big problem for correctional facilities. Inmates routinely sharpen them into weapons to be used to stab and slash fellow inmates. Loops, LLC, solved this problem by developing a flexible toothbrush. (law professors take note, people are still coming up with new ways to make a toothbrush). Loops asserted infringement of US Patent No. 7,334,286 against Amercare Products, Inc., a competitor in the (lucrative?) market for safe inmate hygiene products. Loops moved for a preliminary injunction and Judge Martinez denied the motion based on Amercare's claims that it had only sold product prior to the patent's issue date of February 26, 2008. With no evidence of sales during the patent's term and no evidence of future sales that could be infringing, Loops could not show a likelihood of success on the merits.
