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[Isaac]

The tests overlap considerably in my opinion.  The clearest way to show a "useful, concrete and tangible result" is to show a transformation of matter.  Of course, whether having the result of more efficient processing of a computer appears to be an open question.

I think the only clear result from Bilski is that the State Street test is no longer good law.

Again, I'm at a loss for understanding why computers are singled out.  If I have a fuel-injection nozzle design (claimed as a method for injecting fuel into a combustion chamber for whatever reason), the fact that the car accelerates faster with better fuel efficiency is completely adequate to get past Section 101.  However, if I have a method in a computer that allows me to sort data 10 times faster than earlier methods, I have extra hoops to jump through.  Why?

You're preaching to the choir!

[JimIvey]

I think the only clear result from Bilski is that the State Street test is no longer good law.

I agree if you're referring to Bilski (Fed Cir).  I disagree with respect to Bilski (SCt).

From the Bilski v. Kappos:

Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles.

The Court of Appeals incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test.

This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

As a result, in deciding whether previously unforeseen inventions qualify as patentable “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries.

While the Court declined to lay down a particular rule for application of Section 101, they followed the pre-emption notion of Benson:

Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. 

With specific respect to State Street, the Court merely avoided endorsing it:

And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357.

Regards.

[khazzah]

[quote from Benson]

Transformation and reduction of an article "to a different state or thing" is the clue to the patentability of a process claim that does not include particular machines.

OK, I stand corrected. JimIvey showed that the transformation test has been around since at least Benson. I learned something new! :-)

Before In re Bilski, the test was "useful, concrete and tangible result" from the Fed Cir's State Street decision.

That's a portion of the Walter-Freeman-Abele test I keep mentioning.  My understanding is that both tests peacefully coexisted until Bilski (Fed Cir).

OK, I stand further corrected. JimIvey showed that the UCT test goes back to Walter-Freeman-Abele.

The tests overlap considerably in my opinion. 

Agreed. 

What is so special about computer technology that justifies its own special rules?

I know there are folks who make policy arguments for why software is different. The one that jumps to mind is Ben Klemens, who wrote an entire book on the subject ("Math you can't use"). There are probably others.

[khazzah]

Unless you're using a computer and software to perform some physical transformation like in Diehr, I think all software claims have been thrown into limbo whether they're the process, system, or medium claims.

I'll respectfully disagree with this.  I see nothing in the case law that suggests that any of the analysis of method claims applies in any way to articles or machines. 

I'm worried that the abstract idea exception will be viewed as applying to all statutory categories.

Bilski v. Kappos refers to "exceptions for laws of nature, physical phenomena, and abstract ideas," and then goes on at some length about abstract ideas. Though Bilski was about a method, as were Flook and Benson, I interpret the exceptions, including abstract, to apply to all statutory categories, not just methods.

But I admit I haven't spent the necessary time to understand all these cases in detail. So maybe Bilski v. Kappos' abstract discussion is limited to methods. If so, I would feel better.

[JimIvey]

What is so special about computer technology that justifies its own special rules?

I know there are folks who make policy arguments for why software is different. The one that jumps to mind is Ben Klemens, who wrote an entire book on the subject ("Math you can't use"). There are probably others.

I admit I'm not familiar with that book, but I'm very familiar with the argument that software patents diminish a software engineer's freedom to do whatever seems best from an engineering perspective (sounds like the brunt of the argument from the title, "Math you can't use").

I don't consider those to be arguments as to why software should be treated differently; those are arguments against patents for all technologies.  Patents for any technology inhibit what others are free to do.  Software patents are no different in that respect.  Such arguments tend to be limited to software due to the egocentrism of the author(s) -- they don't mind patents blocking availability of generic drugs or availability of any other type of technology; they only care about their own ability to use whatever technology they like when constructing software. 

I say that as a former (and current amateur) software engineer.  And, I don't think software engineers are unique in their frustration with patents interfering with what they want to do.  Most scientists and engineers feel the same way.

If the inhibitions imposed upon us by patents are not justified by the benefits, then let Congress change the patent laws -- for all technologies. 

I have not yet heard of an argument as to why software is different than other technologies and specifically why such differences compel a distinct application of patent law.  Note that I've heard many, many arguments against software patents, just none that explain why patent law should apply differently to software. 

Regards.

[Isaac]

OK, I stand corrected. JimIvey showed that the transformation test has been around since at least Benson. I learned something new! :-)

While MOT is not new, it was never a test.   With respect to MOT, I think the only thing the SC did was confirm the clear reading of their past cases.

But I find Jim's comments about State Street to be very surprising.  I thought Bilski clearly claimed an invention with a useful, tangible, concrete, financial result which should have satisfied the State Street test, yet the SC found the invention to be unpatentable.

Further, while Kennedy's opinion merely fails to endorse old CAFC law, IMO, his calling out of State Street by name as unendorsed is very telling.  Further, the majority of the Justices signed onto concurring opinions that were far more dismissive of the patentability of business methods than was the main opinon.  I read the overall opinion to be that the specific test stated in State Street is quite dead even if the invention claimed in State Street remains patentable.

[JimIvey]

But I find Jim's comments about State Street to be very surprising.  I thought Bilski clearly claimed an invention with a useful, tangible, concrete, financial result which should have satisfied the State Street test, yet the SC found the invention to be unpatentable.

Parts of State Street that I think are still good law (at least with respect to Bilski):

• No categorical prohibition against "business method" patents.
• Arrhythmia Research continues to articulate a test by which utility can be determined.

Parts of State Street that I think probably did not survive Bilski:

• This part:  'Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"--a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.'

To the extent that's what Isaac is referring to, I stand corrected.  In effect, State Street said that "discrete dollar amounts" are "useful, concrete and tangible."  Bilski appears to suggest otherwise.

However, I submit that the SCt is wrong in that respect.

I hereby respectfully ask anyone who doubts that discrete dollar amounts are concrete and tangible to send me something completely abstract and not at all tangible, namely, one thousand US dollars (US$1,000).  Send me a private message and I'll give an e-mail address by which these silly abstract notions can be sent to me via PayPal.

I'll post here how many people agree that "discrete dollar amounts" are not "useful, concrete and tangible."

I should write the SCt and most certainly the Federal Circuit.  That should get things moving.

Regards.

[Isaac]

However, I submit that the SCt is wrong in that respect.

I hereby respectfully ask anyone who doubts that discrete dollar amounts are concrete and tangible to send me something completely abstract and not at all tangible, namely, one thousand US dollars (US$1,000).  Send me a private message and I'll give an e-mail address by which these silly abstract notions can be sent to me via PayPal.

The SCt did not say that money was not tangible/concrete.  Instead Bilski says that the State Street test does not address a relevant inquiry.  According to the Justices, patentability is not determinable based simply on the concrete nature of the inventions output.

[JimIvey]

The SCt did not say that money was not tangible/concrete.  Instead Bilski says that the State Street test does not address a relevant inquiry.  According to the Justices, patentability is not determinable based simply on the concrete nature of the inventions output.

Okay, I'm going to need help here.  I may go back and read the opinion again, but I didn't see any clarification of "the" test for subject matter eligibility.  I just read that the particular machine or transformation of matter (M|T) is not the only test.  I didn't see any particular test alternatives or clarifications other than suggestions to go back and read the tea leaves of Benson, Flook, and Diehr.  And, I don't recall any disparagement of Arrhythmia Research (the test on which State Street relied) or of State Street itself.

And, purely as a semantic matter, I'll have to disagree that patentability is not determinable based simply on the concrete nature of the invention's output as an invention whose output involves a transformation of matter clearly comports with Section 101.

If M|T's not the only test, what are some of the others?  I'm pretty sure the biggest candidate test other than M|T was (is?) the concrete result test.  Could someone point me in the general direction of authority -- where the Justices indicated which other tests might be still valid?  If M|T's the only test (affirming the Fed. Cir.), can someone point me to authority for that?

Thanks in advance.

[Isaac]

Okay, I'm going to need help here.  I may go back and read the opinion again, but I didn't see any clarification of "the" test for subject matter eligibility.

There is no clarification.  The Justices agreed that Bilki's claims recited an abstract invention but the Court provided almost no guidance on how to reach that conclusion in other cases.  Justice Stevens opinion criticizes the majority for doing so little. 

I don't recall any disparagement of Arrhythmia Research (the test on which State Street relied) or of State Street itself.

When Bilski's claims were held to be unpatentable, State Street took a substantial hit.  Arrhythmia Research took a lesser hit IMO.

If M|T's the only test (affirming the Fed. Cir.), can someone point me to authority for that?

Thanks in advance.

M/T is not a test at all.  Post Bilski, there are no tests.  Just clues. 

[JimIvey]

Ah, I see.  You're reading between the lines, reading the tea leaves.

I don't see it that way.  The Federal Circuit implicitly overturned Arrhythmia Research by stating the M|T is the sole test.  Here's what the SCt said about that:

The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible "process."

While the rest of the opinion is a bit nebulous, that statement is rather clear.  I see Arrhythmia Research as being resurrected.  I see no weakening of State Street either.

I think the clear distinction between Bilski and State Street is that Bilski asserted (or at least the Fed. Cir. found) that the claims did not require a computer.

What I don't know is on what the Federal Circuit has set its sights -- is the lack of the computer determinative?  Or will the Federal Circuit continue to stretch SCt authority to exclude computer-implemented inventions?  That, I don't know.  It may depend entirely upon the makeup of the specific panel hearing specific cases.

Regards.

[Isaac]

I see no weakening of State Street either.

You've already acknowledged that parts of State Street are not good law. 

I think the clear distinction between Bilski and State Street is that Bilski asserted (or at least the Fed. Cir. found) that the claims did not require a computer.

That might have changed things at the federal circuit, but since the SC did not apply MOT, I don't think it is fair to conclude that the SC would have found that distinction determinative.  I think Benson and Fluke suggest that simply tying an invention to computer hardware is not sufficient.