Patent Law

Bilski v. Kappos (Supreme Court 2009) 08-964bsUnitedStates.pdf

In its responsive brief, the Obama Administration asks the Supreme Court to confirm that a patentable process must be tethered to technology - either "directed to the operation of a particular machine or apparatus" or "involve the transformation of matter into a different state or thing."

Interpreted in light of the historical scope and development of the patent laws, as well as the statutory context, the term ?process? encompasses all technological and industrial processes, broadly conceived. But it does not extend patent-eligibility beyond those bounds, to methods of organizing human activity that are untethered to technology?e.g., methods by which people conduct economic, social, or legal tasks, such as entering into contracts, playing poker, or choosing a jury. Such methods fall outside of the broad expanse of technological and industrial fields that ?the statute was enacted to protect.? Parker v. Flook, 437 U.S. 584, 593 (1978). Because petitioners? hedging method relates solely to human conduct, untethered to any technology?any machine or transformation of matter?it falls outside the coverage of Section 101.

. . .

This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing.

Although Bilski's claim does not relate directly to software, the machine-or-transformation could be seen to limit the patentability of software processes acting on a general purpose computer (as opposed to a "particular machine"). The Government brief suggests that the Federal Circuit test leaves software substantially patentable when tied to a general purpose computer - citing favorably to In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc) (?[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.?).

In any event, the machine-or-transformation test contemplates that many forms of ?software? inventions are patent-eligible. . . . [However,] software code that is claimed by itself, uncoupled from any storage medium or computer, may be nothing more than ?an idea without physical embodiment,? and therefore would not be patent-eligible.

Here, the brief did not address the reality that a software process can be "technological and industrial" without be limited in its association to a particular computer.

As a fall-back, the Government appears to suggest an additional exception to the patentable subject matter test for "methods of organizing human activity."

Methods of organizing human activity are not patent-eligible ?process[es]? within the meaning of Section 101.

The brief spends a considerable amount of time focusing on the statutory interpretation on the word "process" and its predecessor "useful arts" - paying special attention to provide an originalist style analysis. Here, the government attempts to show that finance (i.e., business methods) were not originally considered useful arts. Additionally, the government argued that even though tremendous advances took place in finance and insurance industries during the 18th and 19th centuries, those innovations were not traditionally patented.

In sum, because the initial patent statutes were intended to foster the ?useful arts,? they were directed to technological and industrial inventions, as opposed to fields of purely human activity?including financial and economic activity unconnected to technology?which fell within the sciences or liberal arts.

Amicus briefs in support of the government position are due this Friday.