10.09

On 9 November 2009, the Supreme Court of the United States will hear oral arguments in perhaps the most important patent case in decades: Bilski v. Kappos.[1] Last month’s Today’s Engineer provided a good overview of the case before the Court.[2] I had previously discussed the problem here[3] in the context of IEEE-USA’s current position statements.

At the oral arguments, only Bilski’s attorney and the Solicitor General of the United States, representing the patent office, will be presenting their positions, but the Court has also received over 40 amicus curiae (or friend of the court) briefs[4] from a wide range of people and organizations with an interest in the outcome of the case. Rule 37 indicates what the Supreme Court wants to see in an amicus brief:

An amicus curiae brief that brings to the attention of the Court relevant matter not already brought to its attention by the parties may be of considerable help to the Court. An amicus curiae brief that does not serve this purpose burdens the Court, and its filing is not favored.

Most of the submitted briefs either supported Bilski getting his patent, or were otherwise in disagreement with the opinion of the Federal Circuit.[5]

On 1 September 2009, an amicus brief written by me and joined by IEEE-USA[6] was filed. IEEE-USA’s participation in the brief was authorized by the IEEE-USA Board of Directors, based on the review and recommendations of IEEE-USA’s Intellectual Property Committee (IPC), chaired by Keith Grzelak. The IPC is comprised of engineering practitioners and attorneys with expertise in intellectual property law.

The brief urges the Supreme Court to affirm the Federal Circuit’s decision that Bilski’s claims were not patentable because they were not directed to statutory subject matter. The brief also asks the Court not to follow the reasoning of the Federal Circuit, but instead affirm based on clearer grounds.

The confusion caused by past cases

The brief initially notes that the Supreme Court’s trilogy of software patent cases,[7] and the lower court decisions trying to reconcile them, have led to over three decades of uncertainty.

One only has to look at the multitude of United States Court of Customs and Patent Appeals (CCPA), Federal Circuit, Board of Patent Appeals and Interferences, and district court opinions, as well as law review articles and briefs in this case, all claiming to be following the Court’s trilogy of opinions and yet getting dramatically different results (both Bilski and the Federal Circuit claim fidelity to those opinions), to see that those three opinions have produced nothing but confusion.

Whether something is statutory subject matter is just the first of many filters used to determine whether something should be granted a patent. Given the limited time an examiner has to process a patent application to either issuance of a patent or a final rejection — on the average, less than twenty hours — it is important that a determination of whether a claim is statutory subject matter be simple to make.

The problems caused by the Federal Circuit’s opinion

As the brief points out, the Federal Circuit’s opinion in this case just creates new confusion over what it means to be “tied to a particular machine.” Already, we are seeing collateral damage to software-based patents, with the Patent Office denying patents and district courts striking down granted patents.

Is a general-purpose digital computer a “particular machine or apparatus” or is something more required? The Patent Office’s Board of Patent Appeals and Interferences apparently thinks something more is required. In an “informative opinion” last year, the Board found that a claimed method that is “not tied to ‘a particular machine,’ but rather is tied only to a general purpose computer” is not patentable.[8] It is not clear what characteristics of a computer need to be specified to make it a “particular machine,” especially when the Federal Circuit has previously held that “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.”[9]

And at least two district courts have invalidated patents whose claims were directed to a “computer aided method.”[10] Tens-of-thousands of patents that claimed software-based inventions as methods are now open to question.

There is no indication that Congress intended that anything that can be described as a series of steps should be entitled to patent protection. Yet for software-based inventions, claiming by describing the particular steps of a method provides the clearest notice of what the inventor regards as his invention. 

Where to draw the line?

The tests suggested by Bilski and in many of the other amicus briefs (“method of doing business,” “abstract/applied,” “practical application” or “useful, concrete and tangible,” or “technological”) portend more decades of uncertainty, as the Patent Office and the Federal Circuit try on a case-by-case basis to apply those terms to determine where the boundary really lies.

But as the brief points out, Judge Dyk’s concurrence in this case provides an excellent discussion of how this test was the understanding at the time of the Patent Act of 1793, on which the current statutory language is based, of when a process is statutory subject matter. Judge Dyk also notes that “methods of organizing human activities” were never considered patentable at the time the patent statutes were written, even though they clearly existed at that time.

The test is both simple and does not take a “definitional” approach as the other briefs have suggested. That is especially problematic when a lower court has to try to develop a definition while trying to follow the Supreme Court’s confusing trilogy.

My brief calls on the Supreme Court, which is not bound by its past decision as the Federal Circuit is, to use Bilski to repudiate those unfortunate cases (and thereby the opinions below based on them) and go back to the original clear and simple test for determining when a process is statutory subject matter:

A process is patentable subject matter when it involves making or using a machine, manufacture, or composition of matter.

Although this test is over two centuries old, because the concepts of “machine, manufacture, or composition of matter” have evolved with technology, so has this test. It provides a good and clear line for even the most cutting-edge technology.

With respect to “using,” that means that at least one step of the claimed process is performed by a specified machine or the person performing the method uses a specified machine, manufacture, or composition of matter in order to perform at least one step of the claimed process. Software-based inventions would be clearly statutory under this test if they were claimed as running on a digital computer, which is a type of machine.

Such a simple and clear test is needed so examiner time can be spent more productively on the critical questions of novelty and nonobviousness and not trying to determine if a process is statutory.

Further clarifying the law

The brief also suggests that the Court take this opportunity to restate three principles related to that test:

Claims drawn to the other categories (machine, manufacture, or composition of matter) are always statutory subject matter.

Machines, manufactures, and compositions of matter are all concrete things. They will never be “laws of nature, physical phenomena and abstract ideas,” the exceptions to statutory subject matter.[11] This will keep lower courts from importing the restrictions on processes into another category where they shouldn’t apply.

A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter.

This means that in the broadest reasonable reading of the claim, it must involve making or using a machine, manufacture, or composition of matter. This new test could be satisfied by an applicant by simply reciting in the claim’s preamble that the method operates on, or uses, a digital computer system. But another principle should be make clear:

While using a machine may make a claim statutory, if the method itself is known in the prior art, simply adding a machine to perform the method does not necessarily make the claim nonobvious.

What’s next

The U.S. Government will file its brief no later than 25 September 2009, and other amici that support affirming the Federal Circuit’s decision not to allow Bilski to have a patent on his invention as claimed have a week after that to submit briefs. It is unlikely that many more amicus briefs will be filed, but perhaps they (and the Government) will support the approach in my brief after they have had a chance to review it. (That’s one reason why it was filed before the deadline.)

After oral arguments on 9 November 2009, we will all have to wait as the Supreme Court develops its opinion on when a process should be patentable. That could come in as little as a month, or not until the end of the term, currently scheduled for 29 June 2010.

Hopefully, the Court will adopt the simple and clear approach urged by IEEE-USA and me in the brief.

References

[1] The case has had various names. When it was heard by the Court of Appeals for the Federal Circuit, the court that hears all patent appeals, it was called In re [in the matter of] Bilski. At the Supreme Court, its name was originally Bilski v. Doll, the latter being the Acting Director of the Patent and Trademark Office. When the new Director, David J. Kappos, assumed the office, the name was changed to Bilski v. Kappos.

[2] Steven Rubin, “Here’s an Idea, Why not Patent It? A Brief Summary of the Issues and Complexities of Bilski v. Doll,” Today’s Engineer, September 2009 (available at http://www.todaysengineer.org/2009/Sep/Bilski.asp).

Lee Hollaar is a member and past chair of IEEE-USA's Intellectual Property Committee. He is a professor in the School of Computing at the University of Utah, where he teaches intellectual and computer law in addition to technical courses. A senior member of IEEE, he joined in 1966 as an electrical engineering student at the Illinois Institute of Technology. He received his Ph.D. in computer science from the University of Illinois at Urbana-Champaign in 1975. Prof. Hollaar is a registered patent agent and the author of Legal Protection of Digital Information, available online at http://digital-law-online.info.

Comments may be submitted to todaysengineer@ieee.org.