In Re Bilski: Did Computer and Software "Machines" Get a Pass?

One certain takeaway from the Bilski opinion is that, if you expected any sort of closure whatsoever on 35 U.S.C. §101, you were sorely disappointed (see Rader dissent on that). While most practitioners have scoured Bilski to divine meaning from the opinion for computer software, it is becoming apparent that Bilski was not intended to resolve issues pertaining to computers, and especially ones considered "machines" for the purposes of section 101.

The issue before the CAFC in Bilski was broadly stated to cover "what the term 'process' in §101 means, and how to determine whether a given claim . . . is a 'new and useful process.'" However, it became apparent early in the opinion that this broad question was going to be chiseled into narrower subsets. The court immediately began to formulate and set aside narrowing rules that seemed to spiral out of control halfway through the majority opinion, and ended up in a Jacobellis-like impression that a patentable process was like pornography: we can't define it, but we know it when we see it.

Did the CAFC blow an opportunity to clarify 35 U.S.C. §101? Probably, but you can't really blame the court, given the circumstances of the case.

On problem the court had to deal with was Bilski's "all-in" approach towards the claim limitations and the resulting appeal. Bilski (just like Comiskey) openly conceded that computers/machines were not needed in the claimed process, and the CAFC used the concession to doom the application. Thus, Bilski opinion's unremarkable conclusion is that patents covering person-to-person business and/or legal transactions are not patentable.

But what if the Appellants argued (and the specification supported) that the process could also be performed on a computer?

The CAFC's majority opinion quietly punted this issue. What was very interesting was the opinion's observation in footnote 23: "We also note that the process claim at issue in this appeal is not, in any event, a software claim. Thus the facts here would be largely unhelpful in illuminating the distinctions between those software claims that are patent-eligible and those that are not." Well.

The majority opinion carefully avoided addressing software explicitly and directly (the word "software" only appears in the footnotes). Just as the CAFC needed to clarify in Bilski that State Street "addressed a claim drawn not to a process but to a machine," (see footnote 18), it is not unreasonable to conclude that Bilski was meant to address processes not tied to a specific machine. Indeed, the court was careful to point out the "issues specific to the machine implementation part of the test are not before us today" (p. 24). Since Bilski conceded that machine implementation was nonexistent, the court's invalidating decision was based only on the "transformation" leg of the Benson test (see p. 27: the operative question before this court is whether Applicant's claim 1 satisfies the transformation branch of the machine-or-transformation test").

So what types of "transformations" qualify as patentable subject matter? Well, if you're physically manipulating "stuff" in a process (e.g., curing rubber, reducing fats into constituent acids and glycerine), you're safe. If you're manipulating "public or private legal obligations or relationships, business risks, or other such abstractions", with nothing more, you are in trouble.

Certainly, computer software may satisfy the "transformation" test (see, e.g., claims 5-6 in Abele), but chances are that practitioners, in a practical sense, would rather rely on the "machine" leg of the Benson test. Alas, the CAFC will have to address this test another day:

[W]e agree that future developments in technology and the sciences may present difficult challenges to the machine-or-transformation test, just as the widespread use of computers and the advent of the Internet has begun to challenge it in the past decade. Thus, we recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies. And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied.

NOTE: Given the opinion in Bilski and the test requiring "transformation or reduction of an article to a different state or thing," would a Method For Swinging On A Swing be patentable subject matter? You decide.

1. A method of swinging on a swing, the method comprising the steps of:

a) suspending a seat for supporting a user between only two chains that are hung from a tree branch;

b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch;

c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and

d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch.