Big Baboon Battles Bilski, Court Cites Morse Code

Debate over the patentability of process patents, particularly those having claims drawn to software inventions, continues to rage in the wake of the U.S. Supreme Court's decision to accept certiorari in Bilski.  The state of the law is in flux.  Portfolios of patents hang in the balance while patent lawyers across the U.S. extend time on pending applications, waiting to see what the Supreme Court will do in Bilski.  In Seattle, one can almost hear the wheels of software innovation screeching to a halt, as companies and investors decide whether it makes sense to invest in new software ideas, not knowing whether their investments will even be eligible for patent protection.

A particularly thorny issue raised by Bilski is the patentability of a process implemented by a machine, the so-called "machine prong" of Bilski's two-part test for patentability under 35 U.S.C. 101.  In application, "[a] claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed."  This begs the question, what software algorithm does not "pre-empt uses . . . that do not also use the specified machine or apparatus in the manner claimed?"  Put another way, what is it about the computer, computer network, system, or other "programed device," that makes software eligible for patent protection?

District Judge Stephen Wilson is wrestling with this issue in a case styled Big Baboon Inc. v. Dell, cv-09-1198 (USDC CD Cal.), where a small software company is pitted against Dell, HP, UPS, Fed Ex, Amazon, and others, alleging infringement of U.S. Patent Nos. 6,115,690 and 6,343,275, patents for "Integrated Business-to-Business Web Commerce and Business Automation."  At first glance, Claim 1 of the '690 patent seems to claim everything e-commerce: "[a]n automated end-to-end business process for product sales that uses a relational database management system, the process comprising the steps of  [inputting a payment record and generating an invoice] and qualifying user inputs using experiential constraints, based on the then-current state of the database as a whole."  Not so, says Big Baboon, which offers an interpretation of the claims that "incorporate[s] specially programmed computers using an integrated database structure ("schema") specifically programmed into a database management system."  This "integrated database management system," according to Big Baboon, is the "particular machine" that fully satisfies both section 101 and Bilski's machine prong.

Judge Wilson appears to be favoring Big Baboon's argument for now.  Recently, he asked for supplemental briefing, citing O-Reilly v. Morse, 56 U.S. 62 (1853), where the U.S. Supreme Court allowed Morse to patent his code as used via the telegraph.  In his original 1837 petition to the Commissioner of Patents, Morse described his fifth claim as "[a] dictionary or vocabulary of words, numbered and adapted to this system of telegraph." 56 U.S. at 82.  In an 1848 reissue, Morse's fifth claim changed to recite "the systems of signs, consisting of dots and spaced, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences."  Id. at 86.  When the subject matter of Morse's fifth claim was challenged as not patent eligible, he responded by saying that it was "for telegraphic purposes; being an improved instrumentality in the art of telegraphing by electricity or galvanism."  Id.

Calling it a "remarkable body of dicta,"  Judge Wilson appears unpersuaded that "one may not patent a process that merely operates a piece of machinery."  See e.g. Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 557 (1898) ("where the process is simply the functionally or operative effect of a machine, the . . . cases are conclusive against its patentability.").

It will be interesting to see what develops. Suffice it to say that the Defendants take issue with Judge Wilson's description of this body of case law as "dicta," but it remains to be seen how this dispute over patent eligible software will be resolved.