IEEE-USA Joins Bilski Amicus Brief
By Lee Hollaar
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.
Last month’s Today’s Engineer provided a
good overview of the case before the Court.
I had previously discussed the problem here
in the context of IEEE-USA’s current position
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
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.
On 1 September 2009, an
amicus brief written by me and joined by
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
The brief initially notes that
the Supreme Court’s trilogy of software patent
and the lower court decisions trying to
reconcile them, have led to over three decades
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
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
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.”
And at least two district courts
have invalidated patents whose claims were
directed to a “computer aided method.”
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
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
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.
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.
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
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.
 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.
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).
been observed that “brief” may be the only
one-word oxymoron in the English language,
although the Supreme Court puts hard
limitations on them, no more than 9,000
words for an amicus brief.
Gottschalk v. Benson, 409 U.S. 63
(1972), Parker v. Flook, 437 U.S. 584
(1978), and Diamond v. Diehr, 450
U.S. 175 (1982).
parte Langemyr, Appeal 2008-1495 at 24,
89 USPQ2d 1988 (BPAI, 2008). Perhaps the
Board held the way that it did in hopes that
the applicant would appeal to the Federal
Circuit and have that court say what it
means by “a particular machine or
In re Alappat,
33 F.3d 1526, 1545 (Fed. Cir. 1994).
Cybersource v. Retail Decisions, 2009
U.S. Dist. LEXIS 26056 (N.D. Cal. Mar. 26,
2009) and DealerTrack v. Huber, 2009
U.S. Dist. LEXIS 58125 (N.D. Cal. Jul. 7,
Diehr, 450 U.S. at 185.
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
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