No. 08-964
In The
Supreme Court of the United States
BERNARD L. BILSKI AND RAND A. WARSAW,
Petitioners,
v.
JOHN J. DOLL, ACTING UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND ACTING
DIRECTOR OF THE UNITED STATES PATENT AND
TRADEMARK OFFICE,
Respondent.
On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit
BRIEF OF AMICUS CURIAE
AWAKENIP, LLC
IN SUPPORT OF PETITIONERS
JEFFREY R. KUESTER
JOEL H. THORNTON
THOMAS, KAYDEN,
Counsel
of
Record
HORSTEMEYER &
THE THORNTON FIRM
RISLEY, L.L.P.
P.O. Box 129
600 Galleria Pkwy SE
Rome, GA 30162
Suite 1500
(706) 266-6836
Atlanta, GA 30339
(770) 933-9500
LEGAL PRINTERS LLC, Washington DC ! 202-747-2400 ! legalprinters.com
TABLE OF CONTENTS
Page
TABLE OF CONTENTS ........................................ i
TABLE OF AUTHORITIES ................................ iii
INTEREST OF AMICUS CURIAE ...................... 1
SUMMARY OF ARGUMENT ............................... 3
ARGUMENT ........................................................... 5
I. THE FEDERAL CIRCUIT HAS
CREATED AN UNWORKABLE
ABSTRACT IDEA TEST FOR
DETERMINING PATENTABILITY
THAT WILL UNDULY SUFFER LIKE
THE VAGUE COPYRIGHT
IDEA/EXPRESSION DICHOTOMY ......... 5
II. A BROAD, JUDICIALLY-MADE § 101
TEST WILL PRECLUDE PATENTS
AND STIFLE INNOVATION FOR
NEW TECHNOLOGY IN THE
UNPREDICTABLE FIELDS ................... 13
A. The Federal Circuit’s decision
negatively affects
biotechnologies, not simply
business methods .......................... 13
-i-
TABLE OF CONTENTS
(continued)
Page
B. Sections 102, 103, and 112 of the
Patent Act provide sufficient
guidance for determining
patentability in the
unpredictable fields ....................... 14
III. AMBIGUITY IN THE FEDERAL
CIRCUIT’S NEW MACHINE-OR-
TRANSFORMATION TEST HAS
ALREADY FOSTERED HARMFUL
CONFUSION AND UNCERTAINTY
IN THE CASE LAW AND USPTO
APPEALS THAT HAVE FOLLOWED ... 18
CONCLUSION ..................................................... 23
-ii-
TABLE OF AUTHORITIES
CASES Page(s)
Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d
1366 (Fed. Cir. 2009) ............................... 16, 17
Baker v. Seldon, 101 U.S. 99 (1879) ..................... 5
Broderbund Software Inc. v. Unison World, Inc.,
648 F.Supp. 1127 (N.D. Cal. 1986) ................. 7
Classen Immunotherapies, Inc. v. Biogen IDEC,
304 Fed. Appx. 866 (Fed. Cir. 2008) . 13, 14, 17
Classen Immunotherapies, Inc. v. Biogen IDEC,
2006 WL 6161856 (N.D. Md. Aug. 16, 2006) 14
Computer Assocs. Int’l v. Altai.,
982 F.2d 693 (2d Cir. 1992) ..................... 7, 8, 9
CyberSource Corp. v. Retail Decisions,
Inc., 620 F.Supp.2d 1068
(N.D.Cal. 2009) ........................................ 20, 21
Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204
(9th Cir. 1988).................................................. 9
DealerTrack, Inc. v. Huber, 2009 WL 2020761
(C.D.Cal. 2009) .............................................. 21
Diamond v. Diehr, 450 U.S. 175 (1981) ....... 11, 22
Ex parte Atkin, 2009 WL 247868 (B.P.A.I. Jan.
30, 2009) ......................................................... 20
Ex parte Barnes, 2009 WL 164074 (B.P.A.I. Jan
22, 2009) ......................................................... 20
Ex parte Competitive Techs., Inc., Appeal No.
2009-005519 (B.P.A.I. July 30, 2009) ........... 16
Ex parte Cornea-Hasegan, 89 U.S.P.Q.2d 1557
(B.P.A.I. 2009) ............................................... 19
Ex parte Gutta, 2009 WL 112393 (B.P.A.I. Jan.
15, 2009) ................................................... 19, 20
-iii-
TABLE OF AUTHORITIES
(continued)
Gates Rubber v. Brando Chem., 9 F.3d 823
(10th Cir. 1993).............................................. 10
Gottschalk v. Benson, 409 U.S. 63 (1972) .......... 22
Harper & Row Publishers, Inc. v. Nation
Enterprises, 471 U.S. 539 (1985) ..................... 5
In re Alappat, 33 F.3d 1526
(Fed. Cir. 1994) ...................... 18, 19, 20, 21, 22
In re Bilski, 545 F.3d 943
(Fed. Cir. 2008) ............................ 18, 19, 20, 21
In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009) .. 19
In re Comiskey, 89 U.S.P.Q.2d 1641
(Fed. Cir. 2009) ............................................. 19
Lab. Corp. of Am. Holdings v. Metabolite Labs.,
Inc., 548 U.S. 124 (2006) ................... 11, 15, 16
Mazer v. Stein, 347 U.S. 201 (1954) ..................... 5
Nichols v. Universal Pictures Co.,
45 F.2d 119 (2d Cir. 1930) ............. 6, 10. 11, 12
Peter Pan Fabrics, Inc. v. Martin Weiner Corp.,
274 F.2d 487 (2d Cir. 1960) ............................. 6
Plains Cotton Co-op v. Goodpasture Computer
Serv., Inc., 807 F.2d 1256 (5th Cir.) cert.
denied, 484 U.S. 821 (1987) ............................ 7
Warner-Jenkinson Co., Inc. v. Hilton Davis
Chemical Co., 520 U.S. 17 (1997) ........... 10, 11
Wavetronix LLC v. EIS Elec. Integrated Sys.,
2009 WL 2245213 (Fed. Cir. 2009) ............... 20
Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc.,
797 F.2d 1222 (3d Cir. 1986) ........................... 6
-iv-
TABLE OF AUTHORITIES
(continued)
STATUTES
17 U.S.C. § 101 ...................................................... 6
17 U.S.C. § 102(b) ................................................. 5
35 U.S.C. § 101 .................................. 14, 15, 16, 23
35 U.S.C. § 102 ........................................ 12, 14, 16
35 U.S.C. § 103 ........................................ 12, 15, 16
35 U.S.C. § 112 ........................................ 13, 15, 16
OTHER AUTHORITIES
Federal Trade Commission hearings, The
Evolving IP Marketplace the Operation of IP
Markets, 6 Monday, May 4, 2009 ................. 17
H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54,
reprinted in 1976 U.S.C.C.A.N. 5659 ............. 6
Pub.L. No. 96-517, § 10(a), 94 Stat. 3028 (1980) . 6
Steven R. Englund, Note, Idea, Process, or
Protected Expression?: Determining the Scope
of Copyright Protection of the Structure of
Computer Programs, 88 MICH. L. REV. 866,
867-73 (1990) ................................................... 7
-v-
1
INTEREST OF AMICUS CURIAE
Pursuant to Supreme Court Rule 37, AwakenIP,
LLC (hereinafter "AwakenIP") submits this brief as
amicus curiae in support of Petitioners Bernard L.
Bilski, et al.1 All parties have consented to the
filing of amicus curiae briefs with this Court.
AwakenIP provides intellectual property
consulting services that help maximize the value of
intellectual assets. Furthermore, through its new
blog website at AwakenIP.com, it attempts to
reignite broader recognition of the full value of
intellectual property. Much criticism has been
levied against the usefulness of intellectual property
and its place in our new economy, but there are
those among us who continue to recognize the
wisdom of maintaining strong intellectual property
protection for worthwhile contributions that
“promote the progress of science and useful arts.”
While there has always been a need to
distinguish and properly limit the scope of protection
for worthwhile contributions, the pendulum of
protection has been swinging in the direction of
weaker protection for a number of years. It is time
for the pendulum to begin swinging in the other
direction, or the value of innovation and creativity
will eventually disappear. It is time for intellectual
1 Pursuant to Supreme Court Rule 37.6, counsel for amicus
curiae certifies that no counsel of either party authored the
brief in whole or in part and that no person or entity other than
the named amicus curiae or its counsel has made a monetary
contribution to the preparation or submission of this brief.
2
property and those who recognize our vital need for
it to wake up.
AwakenIP is very interested in the outcome of
the case before the Court and is concerned that the
Court of Appeals for the Federal Circuit obfuscated
Congressional intent by rigidly construing § 101 of
the Patent Act and imposing ambiguous and
arbitrary requirements on patent seekers.
3
SUMMARY OF ARGUMENT
1. The Federal Circuit’s decision held that a
process that is not tied to a particular
machine or fails to transform a particular
article is not patentable. This test requires
courts and examiners at the United States
Patent and Trademark Office (USPTO) to
distinguish abstract ideas from processes that
satisfy the machine-or-transformation test.
This task of distinguishing abstract ideas from
protectable subject matter suffers from the
same vagaries that plague the copyright
idea/expression dichotomy. The Federal
Circuit’s decision threatens to transform
patentable subject matter analysis from a
once bright-line rule to a complicated and
unworkable analysis that currently haunts
copyright law.
2. The Federal Circuit’s machine-or-
transformation test resonates negative
implications across fields beyond business
methods. For instance, courts have
experienced difficulty in applying the rigid
test to unpredictable fields such as
biotechnology. Moreover, existing
patentability guidelines proscribed by sections
102, 103, and 112 of the Patent Act provide
clear and adequate direction for determining
patentability in the unpredictable fields. In
fact, courts have recognized the importance of
sections 102, 103, and 112 in evaluating
4
patent applications in the unpredictable
fields.
3. The Federal Circuit’s machine-or-
transformation test has created superfluous
confusion among lower courts and the
USPTO. Consequently, the Federal Circuit
has disrupted long-settled court precedent. As
such, this Court should resolve the pending
action in favor of Petitioners.
5
ARGUMENT
I. THE FEDERAL CIRCUIT HAS CREATED
AN UNWORKABLE ABSTRACT IDEA
TEST FOR DETERMINING
PATENTABILITY THAT WILL UNDULY
SUFFER LIKE THE VAGUE COPYRIGHT
IDEA/EXPRESSION DICHOTOMY
The machine-or-transformation test is forcing
the well-defined concepts of patentable subject
matter toward the complex abstract idea analysis
that has frustrated copyright attorneys for decades.
Specifically, following the Federal Circuit’s decision,
the task of relegating protected elements and
abstract elements in computer program patent
infringement claims will soon mirror the baffling
and multifarious procedures of computer program
copyright analysis.
It is a fundamental principle of copyright law
that copyright protection does not extend to an idea,
only to the expression of the idea. See 17 U.S.C. §
102(b); Mazer v. Stein, 347 U.S. 201, 217 (1954);
Baker v. Seldon, 101 U.S. 99 (1879). In recent years
the limitation on ideas has developed into the
“idea/expression dichotomy.” As this Court stated in
Harper & Row Publishers, Inc. v. Nation Enterprises,
quoting the Second Circuit’s analysis,
“idea/expression dichotomy strike[s] a definitional
balance between the First Amendment and the
Copyright Act by permitting free communication of
facts while still protecting an author's expression.”
471 U.S. 539, 556 (1985).
6
Computer programs are regulated under the
same laws, and no special exceptions exist.
Legislative history specifically states that copyright
laws protect computer programs only “to the extent
that they incorporate authorship in programmer’s
expression of original ideas, as distinguished from
the ideas themselves.” See H.R.Rep. No. 1476, 94th
Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N.
5659, 5670. Confirming this principle, a definition of
the term “computer program” was added to 17 U.S.C.
§ 101 as an amendment to the 1976 Copyright Act.
See Pub.L. No. 96-517, § 10(a), 94 Stat. 3028 (1980).
Through years of analyzing the idea/expression
dichotomy, the courts have struggled with
attempting to define what is protected under
copyright law and what is simply an abstract idea
regarding computer programs. Judge Learned Hand
noted that “[n]obody has ever been able to fix that
boundary, and nobody ever can.” Nichols v.
Universal Pictures Co., 45 F.2d 119, 121 (2d Cir.
1930). Thirty years later Judge Hand concluded
“[o]bviously, no principle can be stated as to when an
imitator has gone beyond copying the ‘idea,’ and has
borrowed its ‘expression.’” Peter Pan Fabrics, Inc. v.
Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.
1960). Instead, no bright line test exists and
“[d]ecisions must therefore inevitably be ad hoc.” Id.
In 1986, the Third Circuit in Whelan Associates,
Inc. v. Jaslow Dental Laboratory, Inc., tried in vain
to utilize the idea/expression dichotomy with
software programs. 797 F.2d 1222, 1237 (3d Cir.
1986). The court was tasked with determining
which aspects of a computer program were ideas and
7
which were expression. Id. at 1234. The court
observed “the purpose or function of a utilitarian
work would be the work’s idea, and everything that
is not necessary to that purpose or function would be
part of the expression of the idea.” Id. at 1236. This
attempt to simplify an already impossible
examination with an even more complicated series of
tests was immediately criticized by subsequent
courts and even the academic community at large.
See Broderbund Software Inc. v. Unison World, Inc.,
648 F.Supp. 1127, 1133 (N.D. Cal. 1986); Plains
Cotton Co-op v. Goodpasture Computer Serv., Inc.,
807 F.2d 1256, 1262 (5th Cir.) cert. denied, 484 U.S.
821 (1987); See generally Steven R. Englund, Note,
Idea, Process, or Protected Expression?: Determining
the Scope of Copyright Protection of the Structure of
Computer Programs, 88 MICH.L.REV. 866, 867-73
(1990).
Seeing the Whelan court’s failed attempt, in 1992
the Second Circuit created the abstraction-filtration-
comparison test in Computer Associates
International v. Altai as an attempt to clarify some
of the confusion surrounding the idea/expression
dichotomy for computer program protection. 982
F.2d 693, 707 (2nd Cir. 1992). According to the
Second Circuit, Whelan's approach of separating idea
from expression in computer programs "relies too
heavily on metaphysical distinctions" and "a
satisfactory answer to this problem cannot be
reached by resorting, a priori, to philosophical first
principals." Id. at 706. The Altai case involved a
copyright infringement claim where the defendant
8
enlisted clean room programmers2 to produce code
designed to operate like the plaintiff’s code. Id. at
700. The Second Circuit implemented a new
substantial similarity test to determine whether the
defendant had infringed the plaintiff’s protected
expression, as opposed to permissibly using the
unprotectable ideas. Id. at 701. That is, the court
applied the abstraction-filtration-comparison test,
which offers one way to determine which aspects of
the computer program involve ideas and which are
expressions. Ultimately, no copyright infringement
was found as a result in that case.
It is instructive to appreciate the complexity that
is involved in distinguishing protectable subject
matter from abstract ideas in the copyright context
under this test. First, the abstraction step of the
abstraction-filtration-comparison test requires that
“a court should dissect the allegedly copied
program’s structure and isolate each level of
abstraction contained within it.” Id. at 707. The
implementation begins with the lowest level of
abstraction, the physical code, and ends with the
highest level of abstraction, the program’s ultimate
function. Id.
Once the levels of abstraction have been
determined and separated, the filtration step is then
used to separate protectable expressions from non-
protectable material. Id. A “successive filtering
method” is first implemented to “examine the
structural components at each level of abstraction.”
On a per level basis, particular inclusions are
2 Programmers with no direct access to the original code.
9
determined to be “[an] ‘idea’ or . . . dictated by
considerations of efficiency, so as to be necessarily
incidental to that idea.” Id. Courts must consider
the “structural content of an allegedly infringed
program for elements that might have been dictated
by external factors.” Id. at 710. Courts must also
consider elements dictated by efficiency through
examining “‘whether the use of this particular set of
modules is necessary efficiently to implement that
part of the program’s process’ being implemented.”
Id. at 708. If the court finds elements dictated by
efficiency, then “the expression represented by the
programmer’s choice of specific module or group of
modules has merged with their underlying idea and
is unprotected.” Id. Courts must then filter out
unprotectable material that is determined to be “free
for the taking and cannot be appropriated by a single
author even though included in a copyrighted work”.
Id. at 710.
Finally, the comparison step occurs once courts
have filtered out “all elements of the allegedly
infringed program which are ‘ideas’ or are dictated
by efficiency or external factors, or taken from the
public domain.” Id. at 710. What remains is
considered the “core of protectable expression.” Id.
This ‘core of protectable expression’ is then compared
to the alleged infringing work to determine whether
the defendant copied any aspect of the protected
expression. Id. If all similarities in expression arise
from external factors, elements of efficiency, or use
of common ideas, then no substantial similarity can
be found. Data East USA, Inc. v. Epyx, Inc., 862 F.2d
204, 208 (9th Cir. 1988).
10
One year after the Altai decision, the Tenth
Circuit reaffirmed the abstraction-filtration-
comparison test in Gates Rubber v. Brando
Chemical. 9 F.3d 823, 830 (10th Cir. 1993). The
court in Gates Rubber divided the levels of
abstraction into six categories: “(i) the main
purpose, (ii) the program structure or architecture,
(iii) modules, (iv) algorithms and data structures, (v)
source code, and (vi) object code.” Id. at 835. The
imposition of abstraction levels allows for some
generalities regarding filtering. For example, the
program’s purpose, the highest level of abstraction,
will generally always be filtered out because it is
simply an abstract idea. Similarly, the object code,
the lowest abstraction, if copied, will generally
always lead to copyright infringement. However, the
intermediate levels require complex and ad hoc
filtering examination.
While the abstraction-filtration-comparison test
likely constricted the unfixable boundary analogized
by Judge Hand in Nichols, it is still far from
concrete. Furthermore, the additional levels of
analysis provide even more opportunity for
uncertainty. In stark contrast, prior patent law has
successfully steered clear of the complexities and
vague procedures that have hindered copyright
abstraction analysis. Patents, on the other hand,
have claims that are intended to provide just such a
bright line. Whereas the abstraction-filtration-
comparison test determines what is protected and
what is an abstract idea for copyright infringement,
a potential patent infringer need only construe the
patent’s claims for notice of protected subject matter.
As best stated in Warner-Jenkinson Co., Inc. v.
11
Hilton Davis Chemical Co., “[t]he presumption we
have described . . . gives proper deference to the role
of claims in defining an invention and providing
public notice.” 520 U.S. 17, 33-34 (1997).
The Federal Circuit’s decision threatens to
transform patentable subject matter analysis from a
once bright-line rule to a complicated and seemingly
impossible analysis. By requiring a process to meet
its arbitrary machine-or-transformation test, the
Federal Circuit has rejected this Court’s definition of
patentable subject matter: “anything under the sun
that is made by man” except “laws of nature, natural
phenomena, and abstract ideas.” Diamond v. Diehr,
450 U.S. 175, 182, 185 (1981). This test now
requires District Courts, and even examiners at
United States Patent and Trademark Office
(USPTO), to determine whether a process passes the
complex machine-or-transformation test.
How can we possibly expect USPTO examiners
and District Courts to distinguish abstract processes
from process that satisfy the machine-or-
transformation test when this Court has noted its
own struggles in examining this issue? Dissenting
from the Court’s dismissal in Laboratory Corp. of
American Holdings v. Metabolite Laboratories, Inc.,
Justice Breyer conceded the difficulty of defining
non-patentable subject matter such as mental
processes and abstract intellectual concepts. 548
U.S. 124, 134 (2006). Drawing this conclusion, he
analogized those categories of subject matter to
similar categories within copyright law. Id. To
support his contention, Justice Breyer cited Nichols
v. Universal Pictures Corp.: “[W]e are as aware as
12
anyone that the line [between copyrighted material
and non-copyrightable ideas], wherever it is drawn,
will seem arbitrary.” Id. Further, Justice Breyer
recognized that “all conscious human interaction
involves a mental process” and as such “many a
patentable invention rests upon its inventor’s
knowledge of natural phenomena,” and “many
‘process’ patents seek to make abstract intellectual
concepts workably concrete.” Id. Much as copyright
law’s approach to determining protectable material
resides in a quagmire of uncertainty, Justice
Breyer’s recognition reveals that a similar approach
to patents would create similar confusion.
In truth, words are themselves abstractions of
reality, so it is logically futile, or at least immensely
problematic, to attempt to use abstractions to define
meaningful and workable distinctions between
different types of abstractions, or between un-
protectable "fundamental principles" and protectable
"applications" of those principles. Indeed, the words
"fundamental principle" and "application of a
fundamental principle" can almost always be applied
to the same claim terminology since there usually
exist both higher and lower levels of abstraction in
most situations, regardless of the context. This
Court is urged not to make the mistake of attaching
additional words that beg further definitions, such
as merely claiming a "result" or "effect," since such
scope analyses are more appropriately handled
under Title 35 U.S.C. § 102 novelty and §103
obviousness. Similarly, claims also should not be
considered abstract simply because of their
vagueness or lack of specificity since such analyses
13
are more appropriately handled under Title 35
U.S.C. § 112.
As such, the Federal Circuit’s holding creates a
further undefinable standard that brings the once
concrete patentable subject matter analysis an
unfixable boundary similar to that between abstract
idea and expression that currently haunts copyright
law. Instead, the Court should stick very close to the
statutory phrase "useful process" for evaluating the
statutory subject matter question for processes. This
Court should leave behind all other abstractions of
abstractions.
II. A BROAD, JUDICIALLY-MADE § 101
TEST WILL PRECLUDE PATENTS AND
STIFLE INNOVATION FOR NEW
TECHNOLOGY IN THE
UNPREDICTABLE FIELDS
A. The Federal Circuit’s decision
negatively affects biotechnologies,
not simply business methods
It will be difficult to apply the machine-or-
transformation test to biotechnology inventions,
where patentable subject matter challenges often
allege preemption of a natural phenomena or law of
nature. In Classen Immunotherapies, Inc. v. Biogen
IDEC, claims were directed to methods for
determining an optimal immunization schedule by
comparing the observed incidence of immune-
14
mediated disorders in treatment groups subjected to
different vaccination schedules. 304 Fed. Appx. 866,
866 (Fed. Cir. 2008); Classen Immunotherapies, Inc.
v. Biogen IDEC, 2006 WL 6161856 at *1 (N.D. Md.
Aug. 16, 2006). The Federal Circuit summarily
applied its new machine-or-transformation test to
find the claims to be outside the scope of § 101.
Classen, 304 Fed. Appx at 866. Unfortunately, the
court provided no framework for future analyses.
This § 101 test is clearly incompatible with many
biotechnology inventions, as they do not require
machines (in the customary way of thinking about
machines). However, the claims do arguably involve
a transformation. Claim 1 of the Classen patent
recites a “method . . . which comprises immunizing
mammals in the treatment group of mammals with
one or more doses of one or more immunogens.” The
immunization of a mammal clearly effects a
transformation of a particular article (a mammal)
into a different state (a state of induced immunity).
Classen is a good demonstration that the
machine-or-transformation test fails to function in
the unpredictable fields.
B. Sections 102, 103, and 112 of the
Patent Act provide sufficient
guidance for determining
patentability in the unpredictable
fields
For an inventor to be entitled to a patent on a
claimed invention, the inventor must, at the very
least, meet the utility, novelty, non-obviousness, and
disclosure requirements of sections 101, 102, 103,
15
and 112 of the Patent Act. It is important to
emphasize that the issue in this case is only whether
a claimed invention is statutory subject matter
under § 101.
Recently, this Court considered addressing the
merits of a § 101 dispute and clarifying what is
patentable in Lab. Corp. 548 U.S. at 124. This
Court granted certiorari but dismissed the case
before reaching the merits. Id. Wishing to address
the merits, three dissenting justices objected to the
claimed process as being unpatentable. Id. at 133.
Writing for the dissent, Justice Breyer stated: “[The
patent] embod[ies] only the correlation between
homocysteine and vitamin deficiency that the
researchers uncovered. In my view, that correlation
is an unpatentable ‘natural phenomenon,’ and I can
find nothing in [Lab. Corp.’s] claim 13 that adds
anything more of significance.” Id at 137-138.
Specifically, Lab. Corp.’s claim 13 recites:
A method for detecting a deficiency of
cobalamin or folate in warm-blooded animals
comprising the steps of:
assaying a body fluid for an elevated level of
total homocysteine; and
correlating an elevated level of total
homocysteine in said body fluid with a
deficiency of cobalamin or folate.
Id at 129.
Although Justice Breyer determined that Lab.
Corp.’s claim 13 was unpatentable as being a
“phenomenon of nature,” he conceded that
categorizing non-patentable “phenomena of nature”
16
is difficult. Id. Considering then the difficulty of
categorizing non-patentable “phenomena of nature,”
it stands to reason that Justice Breyer’s thoughtful
concern as to the patentability of Lab. Corp.’s claim
13 may be misplaced.
In Lab. Corp., there was a specifically tailored
use derived from the phenomena by the creativity of
man. This was why the lower courts and the
USPTO affirmed the validity of the claim,
illustrating further that the issue of patentability is
better dealt with through novelty, obviousness and
written description inquiries. In addition, the patent
owner, Competitive Technologies, Inc., subsequently
initiated reexamination in the USPTO. Id. at 128;
Ex parte Competitive Technologies, Inc., Appeal No.
2009-005519 (B.P.A.I. July 30, 2009). Upon
reexamination of the patent, the Board of Patent
Appeals and Interferences (BPAI) reversed the
examiner’s § 103 rejection. Ex parte Competitive
Technologies, Inc., Appeal No. 2009-005519.
Determining that the claims are patentable under §
103, this decision by the BPAI provides evidence
that sections 102, 103, and 112 of the Patent Act
provide sufficient guidance for determining
patentability in the unpredictable fields.
In Ariad Pharms., Inc. v. Eli Lilly & Co., the
Federal Circuit found that the claims were invalid
for violating the written description requirement of §
112. 560 F.3d 1366, 1376 (Fed. Cir. 2009). Ariad
Pharms and Classen together demonstrate that
reviewing patentability through §§ 102, 103, and 112
provides clearer guidance than a § 101 analysis.
That is, the Federal Circuit provided clear standards
for reviewing written description and enablement
17
standards in Ariad Pharms but failed to articulate
the application of the machine-or-transformation
test to unpredictable arts in Classen. This Court
faces the question of whether a judge-made test is
appropriate, or for that matter necessary, in light of
other statutory tests that are clear, articulate, and
well established, especially in the unpredictable arts
where scientific advances are, by definition,
unpredictable and likely to suffer from rigidly
applied tests.
Finally, the timing delay implications for ad hoc
determinations of statutory subject matter can be
particularly harmful for biotechnology inventions.
In hearings by the Federal Trade Commission on
Intellectual Property in the Marketplace, Assistant
Vice Chancellor for Intellectual Property & Industry
Research Alliances Carol Mimura stated that “in the
area of early-stage patents . . . these [biotechnology]
patents are very crucial to the success of start-up
companies that are spawned from university
research.” Federal Trade Commission hearings, The
Evolving IP Marketplace: The Operation of IP
Markets, 6 Monday, May 4, 2009. The patent
application in the present case was filed in 1997.
Twelve years have transpired, and the ad hoc
analysis continues. When patents are so important
to the growth of entire industries, the determination
of patent eligibility—a gateway question—must be
clear.
18
III. AMBIGUITY IN THE FEDERAL
CIRCUIT’S NEW MACHINE-OR-
TRANSFORMATION TEST HAS
ALREADY FOSTERED HARMFUL
CONFUSION AND UNCERTAINTY IN
THE CASE LAW AND USPTO APPEALS
THAT HAVE FOLLOWED
The Federal Circuit’s decision held that
processes not transforming a particular article must
be tied to a particular machine. In re Bilski, 545
F.3d at 954. However, the Federal Circuit declined
to offer guidance on what is meant by “particular
machine,” including the question of whether reciting
particular software suffices to tie a process to a
particular machine. Id. at 962.
Prior to the Federal Circuit’s decision, it had
been well-settled law that a computer programmed
with particular software was patentable subject
matter. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir.
1994). In the front-page holdings, the Federal
Circuit expressly “abrogated” Alappat by name. In
re Bilski, 545 F.3d at 943. However, the only
negative treatment offered in the body of the opinion
was directed toward Alappat’s role in establishing
the “useful, concrete and tangible result” test, from
which the Federal Circuit now departs. Id. at 959.
No mention was made regarding Alappat’s guidance
on machines particularized by programming, despite
Judge Newman’s dissent urging the majority to
clarify what exactly was being abrogated. Id. at 994.
The majority simply left the question to future cases.
Id. at 962.
19
The Federal Circuit again declined to provide
clarity in In re Comiskey. 554 F.3d 967 (Fed. Cir.
2009). Faced with an arbitration system
implemented with various software modules and a
database, the court held that “under the broadest
reasonable interpretation” the system represented a
machine. Id. at 981. However, the Federal Circuit
panel nevertheless remanded to the USPTO for
determining whether the system claims were
statutory as machines. Id. at 971. Dissenting from
the en banc decision, Judge Moore sharply criticized
the majority for remanding the case on this issue
since In re Bilski, in her opinion, did not affect
whether machine claims were statutory under
Alappat. In re Comiskey, 89 U.S.P.Q.2d 1641, 1650
(Fed. Cir. 2009).
The result of this ambiguity has been confusion
and conflict in the USPTO and lower courts, with
rampant uncertainty for American inventors. The
USPTO still seems to regard particularized software
as sufficiently particularizing a machine for § 101
purposes. In Ex parte Cornea-Hasegan, the Board of
Patent Appeals and Interferences considered a
method for routing computations to either software
or specialized hardware, based on which of the two
would be best suited for the task. 89 U.S.P.Q.2d
1557, 1558 (B.P.A.I. 2009). The BPAI rejected the
claims for merely reciting a “processor” because a
general purpose processor is not patentable when
programmed in an “unspecified manner.” Id. at
1560-61. Subsequent BPAI decisions reiterated that
claims reciting a general purpose processor are
unpatentable unless they specify the manner of
programming with particularity. See, e.g., Ex parte
20
Gutta, 2009 WL 112393 (B.P.A.I. Jan. 15, 2009); Ex
parte Barnes, 2009 WL 164074 (B.P.A.I. Jan 22,
2009). Additionally, in Ex parte Atkin, the BPAI
established that sufficient particularity may exist
when referring to the patent specification via means-
plus-function language. 2009 WL 247868 at *9
(B.P.A.I. Jan. 30, 2009).
Fissures have also emerged at the district court
level as judges attempt to decipher the new
landscape. In March of 2009, the Northern District
of California granted summary judgment in an
infringement action involving a process for detecting
credit card fraud in online transactions.
CyberSource Corporation v. Retail Decisions, Inc.,
620 F.Supp.2d 1068, 1071, 1081 (N.D.Cal. 2009).
Judge Patel viewed Bilski as abrogating more than
those portions of Alappat that laid the foundation for
State Street’s “useful, concrete and tangible result”
test. Id. at 1080-81. Indeed, she viewed all portions
of Alappat as abrogated entirely, including the
software question which the Federal Circuit’s
decision in In re Bilski expressly deferred to future
cases. Id. at 1080-81.
This view has carried a weight inordinate to a
lone California district court ruling. Judge Patel
was shortly thereafter invited to sit by designation
on the Federal Circuit bench, authoring the panel
decision for Wavetronix LLC v. EIS Electronic
Integrated Systems. 2009 WL 2245213 (Fed. Cir.
2009). Judge Patel’s views on In re Bilski and
Alappat may thus have more in common with the
direction in which the Federal Circuit is headed.
21
Even so, Judge Patel’s neighboring district gave
little deference to this CyberSource view three
months later. In DealerTrack, Inc. v. Huber, the
Central District of California granted summary
judgment against the patentee in an infringement
action involving an automated credit approval
process for automotive dealers. 2009 WL 2020761 at
*1 (C.D.Cal. 2009). The court correctly noted that
Bilski declined to adopt any new broad exclusion
over software, and that it has been well-settled law
that “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.” Id. at *3
(citing In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir.
1994)).
The Central District of California acknowledged
the CyberSource court’s holding that a process
performed “over the Internet” does not satisfy the
“machine” rubric of Bilski. Id. But the court
rejected the view that particularized programming
on a general purpose computer is no longer
patentable subject matter. Id. at *4. The court’s
determination of invalidity was expressly based on
the finding that DealerTrack’s patent did not specify
the programming with sufficient particularity to
meet the discussed Alappat standard. Id.
None of the present uncertainty is proper in light
of the plain language of § 101 and subsequent
legislative treatment of the statute, nor is it
necessary to meet the policy considerations behind
this Court’s precedent upon which the Federal
Circuit relied. At each step of the way in the Federal
22
Circuit’s analysis, the question of preempting
abstract ideas and other fundamental principles was
presented as the underlying Supreme Court concern.
See Diamond v. Diehr, 450 U.S. 175, 187 (1981)
(“[the inventors] do not seek to pre-empt the use of
that equation”); Gottschalk v. Benson, 409 U.S. 63,
72 (1972) (“the patent would wholly pre-empt the
mathematical formula”).
In broad terms, the preemption question is
already addressed by code sections pertaining to
anticipation, obviousness, and overbreadth. In the
specific field of software, it is addressed by Alappat
and its requirement that only particular software
can render patentable a process performed by
general purpose computers. By requiring inventors
to claim with particularity the “how and why” of
their software-driven inventions, other practitioners
remain free to practice non-infringing methods of
achieving the same result. Any underlying abstract
ideas are not monopolized or removed from the
public domain. At the same time, the patentee is
rewarded with limited-term protection for
contributing a particularly innovative means for
achieving the result to the public knowledge.
The Federal Circuit may be wary of emerging
technologies and unsure as to whether the USPTO
can successfully adapt to avoid issuing patents for
inventions that are anticipated, obvious, or overly
broad. However, the BPAI decisions discussed supra
illustrate that the USPTO is fully versed in Alappat
guidance and equipped to bar those patents that do
not claim the “hows and whys” with particularity
sufficient to avoid preemption.
23
If the problem is a lag between the emergence of
new technologies and the sources with which
subject-matter experts may search prior art, then
the solution is more resources for the subject-matter
experts to shorten this lag. The Federal Circuit’s
chosen alternative, fabricating a new restrictive §
101 standard, treats the skin rash with amputation.
Matters are made even worse when ambiguity and
silence leave questions as to what exactly has been
amputated.
CONCLUSION
Between the conflicting views of the BPAI and
lower courts and the ambiguity of the new exclusive
test from the Federal Circuit, the owners of tens if
not hundreds of thousands of patents now sit in
limbo regarding the legal status of their intellectual
property. Businesses and individual inventors are
clouded by uncertainty as to whether they would
receive the protection needed to recoup investment
in new innovation. Without the finality provided by
the customary presumption of patent validity,
opportunities for sale or licensing diminish as the
limited window of each patent’s protection dwindles.
Legal practitioners have no way to advise clients
when rigid-yet-ambiguous new § 101 rules place a
question mark atop wide swaths of the patent
landscape, and America’s leadership in global
innovation suffers as a result.
Neither the plain language of § 101 nor the cited
Supreme Court precedent support the new, exclusive
Federal Circuit standard. Further, other statutory
tools are readily available to protect the policy
24
concerns of overly broad preemption. This Court
should therefore rely on those tools and quiet the
confusion and uncertainty imposed by the Federal
Circuit’s decision below by reversing that decision.
Respectfully submitted,
JOEL H. THORNTON
Counsel
of
Record
THE THORNTON FIRM
P.O. Box 129
Rome, GA 30162
706-266-6836
JEFFREY R. KUESTER
THOMAS, KAYDEN,
HORSTEMEYER & RISLEY,
L.L.P.
600 Galleria Parkway SE
Suite 1500
Atlanta, GA 30339
(770) 933-9500
Document Outline
- 90803 Cover to print.pdf
- 90803 Text to print.pdf