The Canadian case, Amazon.com, Inc. v The Attorney General of Canada and The Commissioner of Patents (October 14, 2010) refers to the Bilski decision and determines that Amazon's one-click purchasing method is patentable subject matter in Canada.
The Canadian case, Amazon.com, Inc. v The Attorney General of Canada and The Commissioner of Patents (October 14, 2010) refers to the Bilski decision and determines that Amazon's one-click purchasing method is patentable subject matter in Canada.
Posted at 08:36 AM | Permalink | Comments (0) | TrackBack (0)
Not saying, "We told you so, but..."
A decision from the Central District of California in August in the Ultramercial v Hulu case showcases a concern that we expressed about how cursory reliance on a claim being unpatentable because it is "abstract" can lead to unfortunate results. An amicus brief we filed in the Bilski case warned of the problems that could result if the Court applied the term "abstract" without providing a clear indication of the sense in which that term was being used. See amicus brief of On Time Systems (also can be found in the Supreme Court Proceedings tab of this blog).
A claim that is just a vague expression of a concept may be considered "abstract" and therefore correctly be held unpatentable. On the other hand, there are many claims that clearly are eligible for patent protection even though they deal with abstractions. For instance, any use of a sensor deals with something that is abstract - the example we gave in the brief was that a signal produced by a wind sensor is an abstraction of the force of air molecules striking the sensor. Just because a claim is based on a signal from a wind sensor does not mean that it is abstract and therefore unpatentable.
Unfortunately, the apparent deadlock among the Justices that led to the Bilski decision turning on a cursory statement that Bilski's claims were abstract, rather than either a detailed discussion of what that meant or a different ground (e.g., one of the issues presented as the ones that were before the Court) has encouraged other courts to likewise look to a quick "abstract" route to invalidating patents.
In the Ultramercial case, the court undertook analysis to determine whether the method claims in suit satisfied the Machine or Transformation Test, and found that they did not. Recognizing that under Bilski this is not the sole test, the Ultramercial court nonetheless did not attempt to consider any other subject matter test. Instead, it followed the formula the Supreme Court used in Bilski and took another analytical path - considering whether the claims were "abstract."
Actually, the Ultramercial court's approach was not even that precise, as it spoke in several places about how the method "disclosed in the patent" was abstract, apparently not even really focusing on the specific language of the claims but on the disclosure (i.e., the "teaching" part of the patent) instead. Indeed, the Ultramercial court expressly stated that it could make its determinination without putting the claims under the rigor of a Markman analysis to determine what the claim terms meant.
More importantly, though, even if one reads the Ultramercial opinion as focusing on the claim language, the court's treatment of whether the subject matter is "abstract" was limited to generalizations rather than specifics. For example, the analysis in this area began, "At the core of the ‘545 patent is the basic idea that one can use advertisement as an exchange or currency." The court immediately characterized this "core principle" of the patent as an abstract idea, without providing any basis for its reasoning. Instead, the court in the next sentence provided what sounds like a prior art argument, stating, "public television channels have used the same basic idea for years." The one-paragraph analysis concluded by asserting, "At its heart, therefore, the patent does no more than disclose an abstract idea."
In the next paragraph, the court essentially ignored the "added features, examples and limitations" of the patent as not limiting it "in a meaningful way." Such broad and conclusory analysis is contrary to the careful parsing and detailed review of specific claim terms that courts typically undertake before countering a patent's presumption of validity and holding it to be invalid.
We can only hope that future courts do not take up the Bilski decision's invitation to summarily rubber-stamp as "abstract" claims that just seem to them, at a gut level, to be not the sort of thing they would like to have patents protect. One wonders whether future courts will even bother going through the motions of the Machine or Transformation Test if they can just jump directly to the "abstract" rejection as an alternate ground.
Posted at 09:07 AM | Permalink | Comments (0) | TrackBack (0)
What is the future for business method patents? Will Europe's "Technical Effect" test become the law in the U.S.? Robert Hulse examines these issues and analyzes the implications that the Bilski could have on future patent law in a blog post published on PLI's Patent Law Practice Center website.
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Strafford will be offering a webinar entitled "Bilski: Implications of the Supreme Court's Long-Awaited Ruling: Strategies for Prosecuting or Challenging Patent Process Claims Going Forward" on August 11, 2010, 2010 from 1:00 - 2:30 PM (EDT). Erika H. Arner of Finnegan Henderson Farabow Garrett & Dunner; Leigh J. Martinson of McDermott Will & Emery LLP, Boston; and Daniel R. Brownstone of Fenwick & West LLP will provide guidance for counsel and companies concerning the implications of the Supreme Court's recent decision in Bilski v. Kappos, and outline best practices for defending patent applications -- or challenging them --given the continuing lack of clear guidelines for patentability. The webinar will review the following questions:
• What are the implications of Bilski for patent eligibility?
• What is its anticipated impact for past patent eligibility decisions?
• What strategies should patent applicants employ to improve the likelihood of a successful patent application going forward?
• What are the best practices for challenging patents following the Bilski decision?
The registration fee for the webinar is $297 ($362 for registration and CLE processing). Those registering by July 23, 2010 will receive a $50 discount. Those interested in registering for the webinar, can do so here.
Posted at 07:42 AM in Bilski News & Updates | Permalink | Comments (0) | TrackBack (0)
Since the Supreme Court's ruling, there has been a flurry of media coverage about Bilski and its implications. Here are two news articles that we found especially interesting:
Top Court Rejects Business Method Patent (Reuters)
Supreme Court issues Mixed Ruling on Method Patents (Wall Street Journal)
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In a brief filed on Friday, September 25, Solicitor General Elena Kagan and her staff said that because a patent application filed by inventors Bernard Bilski and Rand Warsaw related solely to human conduct, untethered to any technology, it was not process eligible.
However, the government never really claims that the Bilski test should be the only test. Instead, they're focusing on the fact that human endeavors by themselves may not be appropriate for protection. The Solicitor General's brief didn't contain any ringing endorsement of, 'Oh, the Federal Circuit was absolutely right.'
In fact, it's a narrower brief than one might have seen if the government really loved the machine-or-transformation test. Perhaps this is because the Federal Circuit has been chastised several times by the Supreme Court in recent years for giving us tests that are too rigid.
Posted at 08:57 AM in Bilski News & Updates, Supreme Court | Permalink | Comments (0) | TrackBack (0)
On September 14, the new Director of the USPTO, David Kappos, will address the IP Owners Association at its annual meeting. Kappos is widely expected to address changes he intends to implement now that he has been confirmed in his new position. It will be interesting to see whether he chooses to comment on the likely position of the Government in the Bilski case. The Government's brief is due at the end of September.
Posted at 10:04 AM in Bilski News & Updates | Permalink | Comments (0) | TrackBack (0)