Thursday, October 30, 2008

CAFC Decides Bilski, Rules In Favor Of the USPTO

Read all the opinions (9-3, 132 pages) here

HIGHLIGHTS:

** Freeman-Walter-Abele "inadequate" and "should no longer be relied on"

*** HOWEVER, "'useful, concrete and tangible result' inquiry is [also] inadequate." Noted the CAFC: "As a result, those portions of our opinions in State Street and AT&T relying solely on a 'useful, concrete and tangible result' analysis should no longer be relied on (emphasis added)."

**** CAFC reaffirms Benson approach : claims are patent eligible under 101 if (1) it is tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing

State Street still good law, but methods must be implemented on a machine. Noted the court in footnote 18: "In State Street, as is often forgotten, we addressed a claim drawn not to a process but to a machine."

"PURE" BUSINESS METHODS IN JEOPARDY:

From p. 28 of the opinion:

Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.
RETURN OF "TECHNOLOGICAL ARTS" TEST?

Heck no. The CAFC clearly rebuffed the PTO in this regard:


[W]hile we agree with the PTO that the machine-or-transformation test is the correct test to apply in determining whether a process claim is patent-eligible under § 101, we do not agree, as discussed earlier, that this amounts to a "technological arts" test . . . Neither the PTO nor the courts may pay short shrift to the machine-or-transformation test by using purported equivalents or shortcuts such as a "technological arts" requirement. Rather, the machine-or-transformation test is the only applicable test and must be applied. (p. 29)
UPDATE:

The PLI Blog is pronouncing "Federal Circuit Decides Software No Longer Patentable" - I disagree with this completely. The opinion clearly provides that if some machine exists and a well-defined data structure is manipulated, 101 will be satisfied. The large majority of software patents will be just fine.

Bloomberg is reporting that "In today's ruling, the appeals court overturned a 1998 decision involving State Street Corp. that made clear that business methods are entitled to patent protection." Again, this is not correct - the CAFC clearly stated that State Street remains good law (i.e., nothing was overturned).

I won't get into the preliminary reactions from the anti-software patent crowd, but they may want to read the opinion a little more closely before popping their champagne corks . . .

Tuesday, October 28, 2008

Update From the 271 Patent Blog

Many readers have been wondering what happened to the blog, as I have not posted anything for the last month. The short answer is that the blog is alive and well and postings will resume shortly.

So what happened? Well, the longer answer is a bit more complicated.

Around Labor Day, doctors found masses in my body, and I underwent surgery to remove them. About a week later, the doctors confirmed that the masses were cancerous. Thereafter, I began a regimen of radiation therapy, which continued until last week. I am currently in the process of recovering from the therapy, and I anticipate being my normal self very soon.

That being said, I consider myself quite lucky. The cancer was caught in a very early stage, and the doctors anticipate that I will make a full and complete recovery. Tests showed that there was no metastization of the cancer, and, as of this moment, I am cancer-free. I am also blessed to have many supportive friends/co-workers/colleagues (and, dare I say, concerned readers) that helped me and my family through this difficult time. I can't thank you enough for your thoughts and prayers.

- Peter

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