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ThomasHouFirstPaper 11 - 19 Nov 2011 - Main.ThomasHou
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< | Revisions are ongoing and should be finished by 19 November. Your comments or suggestions are welcome! | >
> | Revisions are ongoing and should be finished by 21 November. Your comments or suggestions are welcome! | | | | |
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< | Patentability of Software after Bilski, KSR, and the America Invents Act: Looking Back and Looking Forward | >
> | Patentability of Software after Bilski and KSR: Looking Back and Looking Forward | | | -- By ThomasHou - 19 Oct 2011
Section I: Bilski's Indirect Effect on Computer Software as Eligible Subject Matter | |
<
< | For patent law aficionados who were expecting the Supreme Court to make a definite pronouncement on the patentability of process patents such as computer software, the Court's decision in Bilski v. Kappos was a letdown. The Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal Circuit ("FedCir") to develop doctrine on the patentability of process patents according to the Supreme Court's precedents (including unpatentable subject matter, such as abstract ideas). For computer software, the Supreme Court and the FedCir? both failed to address whether a general purpose computer could satisfy the machine prong of the FedCir? 's machine or transformation test, or a machine specifically adapted to the claimed process was necessary. | >
> | For patent law and software aficionados who were expecting the Supreme Court to make a definite pronouncement on the patentability of process patents such as computer software, the Court's decision in Bilski v. Kappos was a letdown. The Court declined to "comment[] on the patentability of any particular invention" and left to the Federal Circuit ("FedCir") to develop doctrine on the patentability of process patents according to the Supreme Court's precedents (including unpatentable subject matter, such as abstract ideas). For computer software, neither the Supreme Court nor the FedCir? addressed whether recitation of a general computer could satisfy the "special purpose machine" of the FedCir? 's machine or transformation test, or a machine specifically adapted to the claimed process was necessary. | | | | |
<
< | Since Bilski, the PTO and BPAI have in fact begun to deny a large number of software-only patent applicationS, albeit without establishing clear doctrine. A July 2011 study of post-Bilski BPAI and district court cases on patentability found that a majority of software patent applications were invalidated, mostly because they were deemed abstract ideas. It is yet unclear the PTO and the BPAI's position whether a general purpose or a specially adapted machine is required. Most notably, the FedCir? has not had an opportunity to rule on the limits of patentability for pure software, which explains why the doctrine remains unsettled in this area. Nonetheless, a clear trend is observable that the Supreme Court's Bilski decision had trickle down effects on how lower courts assess patentability of computer software claims. | >
> | Nonetheless, decisions from the PTO, BPAI, and district courts are suggesting a more exacting review of software patent applications. Since Bilski, the PTO and BPAI have begun to deny a large number of software-only patent applications, albeit without establishing clear doctrine. A July 2011 study of post-Bilski BPAI and district court cases on patentability found that a majority of software patent applications were invalidated, mostly because they were deemed abstract ideas. On that level, the lower courts and administrative bodies are heeding the Supreme Court's earlier precedents, especially _ Gottschalk v. Benson_, which held that patentable inventions cannot substantially preempt the use of an abstract idea. The PTO and BPAI have not definitely commented on the contours of the "special purpose machine" definition from In re Bilski. Most notably, the FedCir? has not had an opportunity to rule on the limits of patentability for pure software, which explains why the doctrine remains unsettled in this area. | | | | |
<
< | Or, to put it another
way, that would be following the position of the Federal Circuit
itself, in the portion of its decision in Bilski to which the
Supreme Court's subsequent decision is not
incongenial. | >
> | In the upcoming years, I anticipate that the PTO and BPAI will continue to examine and adjudicate on various software patent applications, whose filings have not dropped. Although Jonathan Masur points to institutional incentives for the PTO to expand eligible subject matter, I find recent developments from the Supreme Court, FedCir? , and in fact Congress, tempering the PTO's ability. Ultimately, the FedCir? must rule on the patentability of software and define what constitutes "special purpose machine", either from patent applications denied from the PTO or invalidity arguments raised during one of these patent wars cases. Without settled doctrine from the FedCir? , much of the law will be in flux. | | | | |
<
< | However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts. | >
> | Section II: KSR's Heightened Nonobviousness Test to Bar Trivial Software Patents | | | | |
<
< | I don't think that
summarizes the position of the PTO or the BPAI correctly at all. I
see lots of rejections that suggest a different reading of the
"machine or transformation test" and doubt about whether "the
Internet" is a machine either. So if your position here results from
your own assessment of evidence, it would be good to read more about
what you looked at and how you reached your
conclusion. | >
> | Even though Bilski and eligible subject matter are dominating headlines in the patent law world, they are not the sole area in flux. After all, patentability also requires utility, novelty, and nonobviousness, the latter of which has long been the gatekeeper for patentability and the hardest for patentees to satisfy. The Supreme Court's fairly recent decision in KSR Int'l Co. v. Teleflex Inc. is having a similar effect as Bilski on determining the nonobviousness of patents, including computer software. | | | | |
<
< | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents | >
> | Several aspects of KSR are similar to Bilski and point to similar trickle effects on lower courts and the PTO and BPAI. First, the Court emphasized that its precedents called for a flexible and functional approach and rejected the FedCir? 's rigid, narrow test for obviousness. Second, the Court advised courts to look broadly at various factors, such as "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." Third, the Court recognized that market demand will often drive design trends, especially in the informational economy: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." This insight may be particularly pertinent to computer software. Finally, the Court reemphasized looking at its precedents on nonobviousness and by applying them to the facts of the case, instructed lower courts to do the same. | | | | |
<
< | Before software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its Graham v. John Deere Co. decision. In the early case of Dann v. Johnston, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. The Court's most recent case on nonobviousness is illustrative and useful for testing this requirement against claimed computer software.
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court considered the nonobviousness of a patent for an adjustable electronic pedal with a fixed pivot point used for vehicle control. The Court emphasized that its precedent called for a flexible and functional approach and rejected the Federal Circuit's exclusive reliance on its teaching, suggestion or motivation test. For patents claiming combinations of prior art elements, courts should be cautious and look at "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." The Court recognized that market demand will often drive design trends: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." The Court held the patent at issue obvious and cautioned courts not to stifle the progress of the useful arts by applying rigid and narrow tests for obviousness.
Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the Federal Circuit to follow. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In Muniauction, Inc. v. Thomson Corp., the Federal Circuit considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the Federal Circuit invalidated the patent. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close.
You begin by talking about scope, or section 101 if you want to be statutory about it, and then move without any transition to obviousness under section 103. That these involve entirely different procedural environments for challengers passes without discussion, which it shouldn't.
Nothing here discusses the real importance of Bilski, which is not its effect on new patent applications, but the light it sheds on the validity vel non of tens of thousands of high-abstractness patents created in a more lenient period, when the state-granted monopoly was available to anyone corrupt enough to apply for it. Even after the Supreme Court dithered its way to the conclusion that there may be patents on software and business method claims that are valid even though there is no special-purpose machine or transformation of matter, the litigation prospects of patents that evidently don't contain any such graces, like the ones that are purely patents on mathematical operations, are lousy. Yet patents of that type are currently being brandished by all sorts of fools trying to extort all sorts of parties (including even some free software developers), and are being sold as weapons at pretty high prices. If you're really trying to figure out the significance of Bilski, that's where you'd want to look. | >
> | An empirical study has found the FedCir? has invalidated more patents for obviousness because of KSR. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close. | | | But I still don't know, after two full readings of the essay, what
it is about. Case summaries don't teach me anything, and what | | | how to use the remainder of the essay to explicate it, respond to
its critics, and indicate its implications. | |
<
< |
Section III: How the America Invents Act Ducks the Questions Regarding Computer Software Patents | | |
You are entitled to restrict access to your paper if you want to. But we all derive immense benefit from reading one another's work, and I hope you won't feel the need unless the subject matter is personal and its disclosure would be harmful or undesirable.
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ThomasHouFirstPaper 9 - 17 Nov 2011 - Main.ThomasHou
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> | Revisions are ongoing and should be finished by 19 November. Your comments or suggestions are welcome! | | | | |
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< | Patentability of Software after Bilski: How the Federal Circuit Will and Should Refine Patentable Subject Matter and Nonobviousness Doctrine to Encourage Free Software | >
> | Patentability of Software after Bilski, KSR, and the America Invents Act: Looking Back and Looking Forward | | | -- By ThomasHou - 19 Oct 2011 | |
<
< | Section I: Bilski's Minimal Effect on Computer Software as Eligible Subject Matter | >
> | Section I: Bilski's Indirect Effect on Computer Software as Eligible Subject Matter | | | | |
<
< | The Supreme Court's decision in
Bilski v. Kappos was anticipated to remake the groundwork for patentable
subject matter, including that of computer software. The Court had to
decide whether a method of hedging risk in commodities trading
constituted a "process" under Section 101 of the Patent Act, which the
Federal Circuit answered no according to its machine-or-transformation
test. The Court affirmed but criticized the Federal Circuit for
relying exclusively on the machine-or-transformation test, and also
held that business methods were not per se unpatentable. The Court
relied on its earlier precedents on process patents to hold that the
claimed invention was an unpatentable abstract idea. For computer
software, the Supreme Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal
Circuit to develop doctrine on the patentability of process patents.
Except for the section
title, one gains no idea from the introduction to your essay what the
idea of the essay is. That's a waste of one of the two most
important places in the essay. The first paragraphs are where you
catch the reader's attention and provide an idea that makes the
reader want to keep going. We need to know what you have to offer,
and if what you have is summaries of cases we've read, that won't
hold our attention worth a damn.
The Federal Circuit has recognized the patentability of computer software ever since its en banc decision in In Re Alappat.
"Ever since" calls for a
date. Making someone read the case to find out you're talking about
1994 is a bad idea.
Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt.
Really? That's why the
Supreme Court keep reserving the question in one decision after
another and the PTO has started denying large-numbers of
software-only applications? I'm not so sure. Maybe you should have
stated the ground for this conclusion.
In its most recent decision on this matter, Cybersource Corp. v. Retail Decisions, Inc.,
"Most recent" will
become wrong immediately. At least one important case has come down
since. If you really need to write about cases, which I'm not sure
you do because I still don't know what your idea in this essay is,
how about "In a recent decision, ..."
the Federal Circuit considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The Federal Circuit held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the Federal Circuit emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability.
Still no idea of yours,
just case summaries....
Going forward, the Federal Circuit will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the Federal Circuit will likely be flexible in its approach and look at the software claims holistically.
Meaning what? Is this your thesis: "The result of Bilski is holism?" If that's the thesis, you should design the word.
Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test.
"Software" is singular.
Whether this sentence is true depends on whether the "special purpose
machine" of Bilski means "a general purpose machine with no special
purpose." In that case, your statement might be correct. But that
would be a peculiar interpretation, don't you think?
| >
> | For patent law aficionados who were expecting the Supreme Court to make a definite pronouncement on the patentability of process patents such as computer software, the Court's decision in Bilski v. Kappos was a letdown. The Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal Circuit ("FedCir") to develop doctrine on the patentability of process patents according to the Supreme Court's precedents (including unpatentable subject matter, such as abstract ideas). For computer software, the Supreme Court and the FedCir? both failed to address whether a general purpose computer could satisfy the machine prong of the FedCir? 's machine or transformation test, or a machine specifically adapted to the claimed process was necessary. | | | | |
<
< | Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. | >
> | Since Bilski, the PTO and BPAI have in fact begun to deny a large number of software-only patent applicationS, albeit without establishing clear doctrine. A July 2011 study of post-Bilski BPAI and district court cases on patentability found that a majority of software patent applications were invalidated, mostly because they were deemed abstract ideas. It is yet unclear the PTO and the BPAI's position whether a general purpose or a specially adapted machine is required. Most notably, the FedCir? has not had an opportunity to rule on the limits of patentability for pure software, which explains why the doctrine remains unsettled in this area. Nonetheless, a clear trend is observable that the Supreme Court's Bilski decision had trickle down effects on how lower courts assess patentability of computer software claims. | | | Or, to put it another
way, that would be following the position of the Federal Circuit | | | Supreme Court's subsequent decision is not
incongenial. | |
<
< | To encourage more free software, the Federal Circuit should rule for the latter.
Nonsense. Free software has less at stake in the massive foolishness that is patenting of software than proprietary software has. Our production processes don't depend on revenue-bearing operations that can be held up for royalties, so we are in general not worth suing. Our processes are also inherently international and non-hierarchical, so we are resistant to the very limited forms of available injunction. Downstream from our producers there are commercial redistributors and large enterprise users who are subject to disruption, but that's true of the users whether they are using free or proprietary software, and the redistributors have interests aligned with but severable from our own.
Free software makers—and I on their behalf—were early and vigorous opponents of patenting software, because we are vigilant about freedom, but as the present patent wars are showing, we are hardly the primary victims of the system's madness.
| | | However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts.
I don't think that | | | | |
>
> | Section III: How the America Invents Act Ducks the Questions Regarding Computer Software Patents | | |
You are entitled to restrict access to your paper if you want to. But we all derive immense benefit from reading one another's work, and I hope you won't feel the need unless the subject matter is personal and its disclosure would be harmful or undesirable.
To restrict access to your paper simply delete the "#" on the next line: |
|
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ThomasHouFirstPaper 8 - 07 Nov 2011 - Main.EbenMoglen
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| META TOPICPARENT | name="FirstPaper" |
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< | One layer of changes just to correct unreadable markup. Citations are now set correctly.
| | | Patentability of Software after Bilski: How the Federal Circuit Will and Should Refine Patentable Subject Matter and Nonobviousness Doctrine to Encourage Free Software | | | patentability of any particular invention" and left to the Federal
Circuit to develop doctrine on the patentability of process patents. | |
<
< | The Federal Circuit has recognized the patentability of computer software ever since its en banc decision in In Re Alappat. Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt. In its most recent decision on this matter, Cybersource Corp. v. Retail Decisions, Inc., the Federal Circuit considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The Federal Circuit held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the Federal Circuit emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability. | >
> | Except for the section
title, one gains no idea from the introduction to your essay what the
idea of the essay is. That's a waste of one of the two most
important places in the essay. The first paragraphs are where you
catch the reader's attention and provide an idea that makes the
reader want to keep going. We need to know what you have to offer,
and if what you have is summaries of cases we've read, that won't
hold our attention worth a damn.
The Federal Circuit has recognized the patentability of computer software ever since its en banc decision in In Re Alappat.
"Ever since" calls for a
date. Making someone read the case to find out you're talking about
1994 is a bad idea.
Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt.
Really? That's why the
Supreme Court keep reserving the question in one decision after
another and the PTO has started denying large-numbers of
software-only applications? I'm not so sure. Maybe you should have
stated the ground for this conclusion.
In its most recent decision on this matter, Cybersource Corp. v. Retail Decisions, Inc.,
"Most recent" will
become wrong immediately. At least one important case has come down
since. If you really need to write about cases, which I'm not sure
you do because I still don't know what your idea in this essay is,
how about "In a recent decision, ..." | | | | |
<
< | Going forward, the Federal Circuit will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the Federal Circuit will likely be flexible in its approach and look at the software claims holistically. Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test. Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. To encourage more free software, the Federal Circuit should rule for the latter. However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts. | >
> | the Federal Circuit considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The Federal Circuit held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the Federal Circuit emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability.
Still no idea of yours,
just case summaries....
Going forward, the Federal Circuit will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the Federal Circuit will likely be flexible in its approach and look at the software claims holistically.
Meaning what? Is this your thesis: "The result of Bilski is holism?" If that's the thesis, you should design the word.
Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test.
"Software" is singular.
Whether this sentence is true depends on whether the "special purpose
machine" of Bilski means "a general purpose machine with no special
purpose." In that case, your statement might be correct. But that
would be a peculiar interpretation, don't you think?
Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents.
Or, to put it another
way, that would be following the position of the Federal Circuit
itself, in the portion of its decision in Bilski to which the
Supreme Court's subsequent decision is not
incongenial.
To encourage more free software, the Federal Circuit should rule for the latter.
Nonsense. Free software has less at stake in the massive foolishness that is patenting of software than proprietary software has. Our production processes don't depend on revenue-bearing operations that can be held up for royalties, so we are in general not worth suing. Our processes are also inherently international and non-hierarchical, so we are resistant to the very limited forms of available injunction. Downstream from our producers there are commercial redistributors and large enterprise users who are subject to disruption, but that's true of the users whether they are using free or proprietary software, and the redistributors have interests aligned with but severable from our own.
Free software makers—and I on their behalf—were early and vigorous opponents of patenting software, because we are vigilant about freedom, but as the present patent wars are showing, we are hardly the primary victims of the system's madness.
However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts.
I don't think that
summarizes the position of the PTO or the BPAI correctly at all. I
see lots of rejections that suggest a different reading of the
"machine or transformation test" and doubt about whether "the
Internet" is a machine either. So if your position here results from
your own assessment of evidence, it would be good to read more about
what you looked at and how you reached your
conclusion. | | | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents | | | Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the Federal Circuit to follow. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In Muniauction, Inc. v. Thomson Corp., the Federal Circuit considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the Federal Circuit invalidated the patent. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close. | |
>
> | You begin by talking about scope, or section 101 if you want to be statutory about it, and then move without any transition to obviousness under section 103. That these involve entirely different procedural environments for challengers passes without discussion, which it shouldn't. | | | | |
>
> | Nothing here discusses the real importance of Bilski, which is not its effect on new patent applications, but the light it sheds on the validity vel non of tens of thousands of high-abstractness patents created in a more lenient period, when the state-granted monopoly was available to anyone corrupt enough to apply for it. Even after the Supreme Court dithered its way to the conclusion that there may be patents on software and business method claims that are valid even though there is no special-purpose machine or transformation of matter, the litigation prospects of patents that evidently don't contain any such graces, like the ones that are purely patents on mathematical operations, are lousy. Yet patents of that type are currently being brandished by all sorts of fools trying to extort all sorts of parties (including even some free software developers), and are being sold as weapons at pretty high prices. If you're really trying to figure out the significance of Bilski, that's where you'd want to look.
But I still don't know, after two full readings of the essay, what
it is about. Case summaries don't teach me anything, and what
little here isn't a glorified West headnote is passing
editorialization, with no discipline or data specified. What we most
need here is a thesis, after which it should be possible to figure out
how to use the remainder of the essay to explicate it, respond to
its critics, and indicate its implications.
| | |
You are entitled to restrict access to your paper if you want to. But we all derive immense benefit from reading one another's work, and I hope you won't feel the need unless the subject matter is personal and its disclosure would be harmful or undesirable. |
|
|
ThomasHouFirstPaper 7 - 07 Nov 2011 - Main.EbenMoglen
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| META TOPICPARENT | name="FirstPaper" |
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<
< | Ready for edits and comments. | >
> | One layer of changes just to correct unreadable markup. Citations are now set correctly.
| | | Patentability of Software after Bilski: How the Federal Circuit Will and Should Refine Patentable Subject Matter and Nonobviousness Doctrine to Encourage Free Software | | | Section I: Bilski's Minimal Effect on Computer Software as Eligible Subject Matter | |
<
< | The Supreme Court's decision in _Bilski v. Kappos_ was anticipated to remake the groundwork for patentable subject matter, including that of computer software. The Court had to decide whether a method of hedging risk in commodities trading constituted a "process" under Section 101 of the Patent Act, which the Federal Circuit (the "FedCir") answered no according to its machine-or-transformation test. The Court affirmed but criticized the FedCir? for relying exclusively on the machine-or-transformation test, and also held that business methods were not per se unpatentable. The Court relied on its earlier precedents on process patents to hold that the claimed invention was an unpatentable abstract idea. For computer software, the Supreme Court declined to "comment[] on the patentability of any particular invention" and left to the FedCir? to develop doctrine on the patentability of process patents. | >
> | The Supreme Court's decision in
Bilski v. Kappos was anticipated to remake the groundwork for patentable
subject matter, including that of computer software. The Court had to
decide whether a method of hedging risk in commodities trading
constituted a "process" under Section 101 of the Patent Act, which the
Federal Circuit answered no according to its machine-or-transformation
test. The Court affirmed but criticized the Federal Circuit for
relying exclusively on the machine-or-transformation test, and also
held that business methods were not per se unpatentable. The Court
relied on its earlier precedents on process patents to hold that the
claimed invention was an unpatentable abstract idea. For computer
software, the Supreme Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal
Circuit to develop doctrine on the patentability of process patents. | | | | |
<
< | The FedCir? has recognized the patentability of computer software ever since its en banc decision in _In Re Alappat_. Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt. In its most recent decision on this matter, _Cybersource Corp. v. Retail Decisions, Inc._, the FedCir? considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The FedCir? held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the FedCir? emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability. | >
> | The Federal Circuit has recognized the patentability of computer software ever since its en banc decision in In Re Alappat. Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt. In its most recent decision on this matter, Cybersource Corp. v. Retail Decisions, Inc., the Federal Circuit considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The Federal Circuit held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the Federal Circuit emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability. | | | | |
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< | Going forward, the FedCir? will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the FedCir? will likely be flexible in its approach and look at the software claims holistically. Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test. Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. To encourage more free software, the FedCir? should rule for the latter. However, the PTO has endorsed the general purpose computer option and with few contrary indications from the FedCir? , meager disagreement exists about the subject matter eligibility of computer software, at least in the courts. | >
> | Going forward, the Federal Circuit will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the Federal Circuit will likely be flexible in its approach and look at the software claims holistically. Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test. Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. To encourage more free software, the Federal Circuit should rule for the latter. However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts. | | | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents | |
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< | Before software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its _Graham v. John Deere Co._ decision. In the early case of _Dann v. Johnston_, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. The Court's most recent case on nonobviousness is illustrative and useful for testing this requirement against claimed computer software. | >
> | Before software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its Graham v. John Deere Co. decision. In the early case of Dann v. Johnston, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. The Court's most recent case on nonobviousness is illustrative and useful for testing this requirement against claimed computer software. | | | | |
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< | In _KSR Int'l Co. v. Teleflex Inc._, the Supreme Court considered the nonobviousness of a patent for an adjustable electronic pedal with a fixed pivot point used for vehicle control. The Court emphasized that its precedent called for a flexible and functional approach and rejected the FedCir? 's exclusive reliance on its teaching, suggestion or motivation test. For patents claiming combinations of prior art elements, courts should be cautious and look at "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." The Court recognized that market demand will often drive design trends: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." The Court held the patent at issue obvious and cautioned courts not to stifle the progress of the useful arts by applying rigid and narrow tests for obviousness. | >
> | In KSR Int'l Co. v. Teleflex Inc., the Supreme Court considered the nonobviousness of a patent for an adjustable electronic pedal with a fixed pivot point used for vehicle control. The Court emphasized that its precedent called for a flexible and functional approach and rejected the Federal Circuit's exclusive reliance on its teaching, suggestion or motivation test. For patents claiming combinations of prior art elements, courts should be cautious and look at "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." The Court recognized that market demand will often drive design trends: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." The Court held the patent at issue obvious and cautioned courts not to stifle the progress of the useful arts by applying rigid and narrow tests for obviousness. | | | | |
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< | Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the FedCir? to follow. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In _Muniauction, Inc. v. Thomson Corp._, the FedCir? considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the FedCir? invalidated the patent. To encourage free software, the FedCir? and PTO should not relax the high threshold for nonobviousness. Furthermore, the FedCir? has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The FedCir? should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close. | >
> | Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the Federal Circuit to follow. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In Muniauction, Inc. v. Thomson Corp., the Federal Circuit considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the Federal Circuit invalidated the patent. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close. | | | |
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