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, PATENT AND TRADEMARK OFFICE,
Respondent.
On Writ Of Certiorari to the
United States Court of Appeals
for the Federal Circuit
BRIEF OF FÉDÉRATION INTERNATIONALE
DES CONSEILS EN PROPRIÉTÉ
INDUSTRIELLE AS AMICUS CURIAE IN
SUPPORT OF NEITHER PARTY
MAXIM H. WALDBAUM
Counsel of Record
HENRY L. MANN
SCHIFF HARDIN LLP
900 THIRD AVENUE
NEW YORK, NY 10022
(212) 753-5000
LEGAL PRINTERS LLC, Washington DC ! 202-747-2400 ! legalprinters.com
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ............................ iii
INTEREST OF AMICUS CURIAE ................... 1
INTRODUCTION AND SUMMARY OF
ARGUMENT ........................................... 3
ARGUMENT ...................................................... 4
I. PATENTABLE SUBJECT
MATTER UNDER § 101
SHOULD BE CONSTRUED AS
BROADLY AS POSSIBLE, IN
KEEPING WITH THE
SECTION’S STATUTORY
LANGUAGE, IN ORDER TO
ACCOUNT FOR THE
UNPREDICTABLE NATURE OF
INNOVATION IN
TECHNOLOGY AND SCIENCE. ............4
II. THE MACHINE-OR-
TRANSFORMATION TEST FOR
PROCESS CLAIMS
UNNECESSARILY RESTRICTS
THE SCOPE OF PATENTABLE
SUBJECT MATTER BECAUSE
THE PATENT ACT’S
REQUIREMENTS UNDER
§§ 102, 103, AND 112 ALREADY
SERVE AS SUFFICIENT
FILTERS FOR CLAIMS THAT
ARE TRULY BEYOND THE
SCOPE OF PATENTABILITY. ................7
-i-
TABLE OF CONTENTS
(continued)
Page
III. AS TECHNOLOGY AND
SCIENCE EVOLVE, RIGID
SUBJECT MATTER
REQUIREMENTS SUCH AS
THE BILSKI MACHINE-OR-
TRANSFORMATION TEST
WILL RAISE MORE
QUESTIONS REGARDING
SUBJECT MATTER
ELIGIBILITY THAN THEY
ANSWER. ......................................................9
A. The PTO’s Application of the
State Street “Useful, Concrete
and Tangible Result” Test
Highlights the Futility of
Rigid Tests for § 101. ....................... 9
B. The
Machine-or-
Transformation Test
Similarly Fails to Provide
Adequate Guidance, while
Threatening the Viability of
Many Innovations. ......................... 11
CONCLUSION ................................................ 14
-ii-
TABLE OF AUTHORITIES
Page(s)
CASES
Diamond v. Chakrabarty, 44 U.S. 303
(1980) .................................................... 3, 4, 6
In re Comiskey, 554 F.3d 967 (Fed. Cir.
2009) ............................................................. 7
Ex parte Cornea-Hasegan, 2009 WL 86725
(B.P.A.I. Jan. 13, 2009) .............................. 12
Diamond v. Diehr, 450 U.S. 175 (1981) .......... 5
In re Ferguson, 558 F.3d 1359 (Fed. Cir.
2009) ..................................................... 7, 8, 9
Gottschalk v. Benson, 409 U.S. 63 (1972) ....... 5
Ex parte Harris, 2009 WL 86719, (B.P.A.I.
Jan. 13, 2009) ............................................. 13
Ex parte Koo, 2008 WL 5054161 (B.P.A.I.
Nov. 26, 2008) ............................................ 13
Ex parte Langemyr, 2008 WL 5206740
(B.P.A.I. May 28, 2008) .............................. 12
Ex parte Nawathe et al., 2009 WL 327520
(B.P.A.I. Feb. 9, 2009) ................................ 12
O’Reilly v. Morse, 15. How. (56 U.S.) 62
(1853) ............................................................ 5
Parker v. Flook, 437 U.S. 584 (1978) .............. 5
State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368
(Fed. Cir. 1998) ............................................ 6
-iii-
TABLE OF AUTHORITIES
Page(s)
Ex parte Uceda-Sosa, 2008 WL 4950944,
(B.P.A.I. Nov. 18, 2008) ............................. 13
Ex parte Wasynczuk, 2008 WL 2262377
(B.P.A.I. June 2, 2008) ............................... 13
STATUTES
35 U.S.C. § 101 ...................................... passim
OTHER AUTHORITIES
Memorandum to the United States Patent
and Trademark Office from Brian
Hickman, Comments on Interim
Guidelines (May 19, 2006) ............... 9, 10, 11
CONSTITUTIONAL PROVISIONS
U.S. CONST., art. I § 8 ...................................... 8
-iv-
INTEREST OF AMICUS CURIAE
Pursuant to Supreme Court Rule 37, Fédération
Internationale Des Conseils En Propriété
Industrielle (“FICPI”) submits this brief as amicus
curiae in support of neither party.1 All parties were
notified of FICPI’s intent to file this brief and their
consents to this filing have been filed with this
Court.
Established in 1906, FICPI is a Switzerland-
based international and non-political association of
approximately 4,800 intellectual property attorneys
from over eighty countries, including the United
States. FICPI’s members represent individual
inventors as well as large, medium and small
companies. One of the members’ major roles is to
advise inventors in intellectual property matters and
secure protection for industrial innovation. FICPI
supports predictable, balanced global protection of
patents, the global harmonization of substantive
patent law, and the interests of inventors and the
U.S. Patent and Trademark Office (“the PTO”) for
recognizing a fair scope of patent protection
consistent with the goals of the patent system and
the expectations of the inventing public.
FICPI is concerned that the Federal Circuit has
disregarded Congress’s intent of allowing for a broad
scope of patentable subject matter in crafting an
1 Pursuant to Supreme Court Rule 37.6, counsel for Amicus
Curiae certifies that this brief was not written in whole or in
part by counsel for any party, and that no person or entity other
than Amicus Curiae or its counsel has made a monetary
contribution to the preparation or submission of this brief.
1
arbitrary and artificial test that fails to anticipate
future technology while usurping the roles of novelty,
nonobviousness, and other Patent Law requirements
as proper arbiters of patentability.
FICPI’s members serve the world’s community of
inventors in seeking protection for their inventions.
Because many of its members are foreign
practitioners, FICPI has a unique perspective on the
global impact of the diminishing viability of certain
categories of process claims in the United States. In
this vein, FICPI desires to ensure that its members’
clients are afforded fair protection for their
inventions, and therefore respectfully submits this
brief in support of neither party.
2
INTRODUCTION AND SUMMARY OF
ARGUMENT
The Federal Circuit’s en banc holding in In re
Bilski, imposing a threshold requirement that a
process claim must be tied to a particular machine or
apparatus or transform a particular article into a
different state or thing in order to qualify as eligible
subject matter under 35 U.S.C § 101, should be
reversed because it arbitrarily and unnecessarily
constricts the scope of patentable subject matter. The
scope of patentable subject matter was appropriately
defined by the Supreme Court in Diamond v.
Chakrabarty as “anything under the sun that is
made by man.” Diamond v. Chakrabarty, 44 U.S.
303, 309 (1980). The § 101 analysis should focus on
the section’s substantive utilitarian requirement,
rather than retrospectively attempting to rigidly
define the categories of patentable subject matter
without the foresight of the particular form
technological innovations may take in the future.
The Federal Circuit’s machine-or-transformation
test also unnecessarily narrows the pool of patent-
eligible process technologies, particularly as to
software and information technology, as the
established analyses required under §§ 102, 103, and
112 already provide sufficient filtering of claims that
are truly beyond the scope of protection intended by
the Patent Act. Lastly, due to the rapidly-evolving
nature of advances in science and technology, the
narrow Bilski test, like its predecessors, will prove
more confusing than clarifying as its strict
requirements will become increasingly difficult to
apply to emerging technologies. In fact, post-Bilski
3
decisions at the Board of Patent Appeals and
Interferences show that the PTO is already
struggling to consistently apply § 101 to existing
fields of technology under the new test. As such,
attempts to narrowly and strictly define the
parameters of § 101-eligible subject matter should be
abandoned, and the focus of the PTO and the courts
should return to the Act’s requirements of utility,
novelty, non-obviousness, and enablement.
ARGUMENT
I.
PATENTABLE SUBJECT MATTER
UNDER § 101 SHOULD BE CONSTRUED
AS BROADLY AS POSSIBLE, IN
KEEPING WITH THE SECTION’S
STATUTORY LANGUAGE, IN ORDER TO
ACCOUNT FOR THE UNPREDICTABLE
NATURE OF INNOVATION IN
TECHNOLOGY AND SCIENCE.
Consistent with 35 U.S.C. § 101’s language,
providing that “any new and useful process, machine,
manufacture, or composition of matter, or any new
and useful improvement thereof” may be patented as
long as it meets all other statutory requirements set
forth in the Patent Act, the parameters of patentable
subject matter under § 101 should be broad and
flexible in order to encompass the widest variety of
new and useful inventions. 35 U.S.C. § 101. Diamond
v. Chakrabarty lays out the appropriate test for § 101
eligibility, defining patentable subject matter as
“anything under the sun that is made by man”
provided § 101’s utilitarian requirement is also met.
Chakrabarty, 447 U.S. at 309 (emphasis added).
4
By their nature, innovations in science and
technology often take unpredictable forms. As such,
the drafters of the 1952 Patent Act put limited
restrictions on the ambit of patentable subject matter
under §
101, requiring only that the process,
machine, manufacture, or composition of matter at
issue be “new and useful” to be patent-eligible. 35
U.S.C. § 101. Section 101 implicitly excludes “laws of
nature, natural phenomena, and abstract ideas” from
the realm of patent-eligible subject matter, as
articulated by the Supreme Court. Diamond v. Diehr,
450 U.S. 175, 185 (1981). See also O’Reilly v. Morse,
15 How. (56 U.S.) 62 (1853) (denying a claim for the
use of electromagnetism under § 101 because
electromagnetism is a natural phenomenon);
Gottschalk v. Benson, 409 U.S. 63 (1972) (finding a
claim for an algorithm invalid under § 101 because it
was no more than a representation of a law of
nature); Parker v. Flook, 437 U.S. 584 (1978)
(denying patent protection to a claim for an
algorithm under § 101 because the application
claimed nothing more than a law of nature and
therefore was not new, but noting that “an inventive
application” of such a principle may be patented). As
these cases show, natural phenomena and laws of
nature can never be “new” because they inherently
preexist any human discovery, while abstract ideas
are not “useful” absent any inventive and practical
application. The categorical exclusions of laws of
nature, natural phenomena, and abstract ideas from
the reach of § 101 eligibility are thus directly
warranted by the language of that Act itself.
Aside from these established exceptions, the
parameters of § 101 must be construed broadly in
order to allow for flexibility and adaptation to ever-
5
evolving technological innovations, keeping the doors
of patentability open to new innovations regardless
of whether their form fits within any previously-
known conception of “process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. In State
Street, the Federal Circuit correctly instructed courts
faced with § 101 challenges to focus not on a claim’s
formalistic embodiment, but rather on whether the
claimed invention was in fact useful. State Street
Bank & Trust Co. v. Signature Financial Group, Inc.,
149 F.3d 1368, 1375 (Fed. Cir. 1998) (“The question
of whether a claim encompasses statutory subject
matter should not focus on which of the four
categories of subject matter a claim is directed to . . .
but rather on the essential characteristics of the
subject matter, in particular, its practical utility”).
The simplicity and clarity of Chakrabarty’s “anything
under the sun” standard will allow PTO examiners to
focus their energy on §
101’s straightforward
utilitarian requirement, rather than struggling to
retrospectively define the parameters of the four
categories of patentable subject matter in the face of
evolving technological formats. Chakrabarty, 44 U.S.
at 309.
6
II.
THE MACHINE-OR-TRANSFORMATION
TEST FOR PROCESS CLAIMS
UNNECESSARILY RESTRICTS THE
SCOPE OF PATENTABLE SUBJECT
MATTER BECAUSE THE PATENT ACT’S
REQUIREMENTS UNDER §§
102, 103,
AND 112 ALREADY SERVE AS
SUFFICIENT FILTERS FOR CLAIMS
THAT ARE TRULY BEYOND THE SCOPE
OF PATENTABILITY.
Setting rigid, formalistic requirements for the
form of patentable processes risks foreclosing the
possibility of patent protection for many new and
useful processes without need, as the case-specific
analyses prescribed under §§ 102, 103, and 112
already provide sufficient filtering of claims that do
not warrant patent protection. Two Federal Circuit
decisions post-Bilski are illustrative. See In re
Comiskey, 554 F.3d 967 (Fed. Cir. 2009) (finding
petitioner’s claims for a method and system for
mandatory arbitration which did not require the use
of any mechanical device invalid under § 101 because
it failed the Bilski test, even though the Board of
Patent Appeals and Interferences had previously
found the claims invalid under §
103); In re
Ferguson, 558 F.3d 1359 (Fed. Cir. 2009)
(invalidating claims for methods and paradigms for
marketing products under Biski’s § 101 test even
though the PTO examiner had previously found the
claims invalid under §§ 102, 103 and 112). In both
cases, the Federal Circuit’s application of Bilski was
superfluous, as the claims at issue had already been
found invalid on their merits as anticipated, obvious,
or inadequately disclosed. Id.
7
Further, the reanalysis of the Comiskey and
Ferguson claims under Bilski did not add any
practical value to the broader issue at hand, i.e., how
to approach and evaluate unprecedented innovation
while remaining true to the Patent Act’s purpose of
promoting “the progress of . . . useful arts.” U.S.
CONST., art. I §
8 (emphasis added). Simply
dismissing potentially innovative and useful
processes at the threshold, because they are not tied
to a particular machine or do not transform one
article into another state or thing, without reaching
the heart of the patent analysis under §§ 102, 103
and 112 provides little practical guidance for
inventors working in unprecedented fields of
technology. Rather, the Bilski test arbitrarily cuts off
the prospect of patentability to many emerging
technological fields simply because they do not fit
within the familiar format of inventions past.
In her concurrence in In re Ferguson, Judge
Newman expressed her discontent with the
majority’s narrow interpretation of § 101 under
Bilski, finding it incompatible with the changing
nature of advances in technology. In re Ferguson, 558
F.3d at 1040-41 (Fed. Cir. 2009) (Newman, J.,
concurring) (concurring in the judgment based on the
PTO’s conclusion that the claims at issue were
obvious and therefore failed under § 103). Judge
Newman warned that the court’s application of
Bilski’s machine-or-transformation test could create
an artificial barrier to patentability for many new
information technologies. Id. at 1041. While many of
these methods and processes do not take the familiar
physical form of past inventions, “blurring the
traditional line between machine and human,” many
nonetheless enhance human capabilities and
8
therefore warrant at least a fair consideration under
the Patent Act’s substantive criteria set forth in
§§
102, 103 and 112. Id. at 1041. Foreclosing
patentability to these new technologies at the § 101
threshold is “unworthy of [the court’s] responsibility
to support innovation in the future.” Id. at 1041. The
more targeted statutory requirements of novelty,
non-obviousness, and enablement serve as sufficient
gatekeepers for the patent system, allowing for a
flexible, case-by-case analysis of unprecedented
subject matter.
III. AS TECHNOLOGY AND SCIENCE
EVOLVE, RIGID SUBJECT MATTER
REQUIREMENTS SUCH AS THE BILSKI
MACHINE-OR-TRANSFORMATION TEST
WILL RAISE MORE QUESTIONS
REGARDING SUBJECT MATTER
ELIGIBILITY THAN THEY ANSWER.
Setting retrospective, rigid parameters for the
categories of patentable subject matter will confuse,
rather than clarify, the § 101 analysis, and take the
focus away from more instructive and informative
inquiries into utility, novelty, non-obviousness, and
enablement.
A.
The PTO’s Application of the State
Street “Useful, Concrete and Tangible
Result” Test Highlights the Futility of
Rigid Tests for § 101.
In November 2005, many years after the decision
in State Street, the PTO promulgated the Interim
Guidelines for Examination of Patent Applications for
Subject Matter Eligibility (Nov. 22, 2005)
9
(“Guidelines”) to clarify and streamline the § 101
analysis under State Street, which was apparently
causing confusion among examiners. However, the
Guidelines featured eight distinct ancillary tests and
additional subtests for determining whether a claim
constituted statutory subject matter. Guidelines at
14-23. State Street’s useful, tangible, and concrete
result test alone required four distinct sub-tests to
clarify, albeit unsuccessfully, what exactly useful,
tangible, and concrete results are. Id. at 20-22. Thus,
the Guidelines produced even more inconsistent and
conflicting results.
Many of the ancillary tests adopted in the
Guidelines originated as attempts to clarify the
meaning of previous requirements. See Memorandum
to the United States Patent and Trademark Office
from Brian Hickman, Comments on Interim
Guidelines, 4 (May 19, 2006) (“Hickman”) (criticizing
the PTO’s interpretation of certain § 101 case law,
which resulted in further confusion).2 This hopeless
2 In a commentary expressing his consternation with the
Guidelines, Hickman clarified that many of the distinct
ancillary requirements adopted by the PTO “were originally
nothing more than attempts to clarify the meaning of other
requirements.” Hickman at 4. Using the State Street test to
illuminate this point, he noted that “the ‘substantially
repeatable result’ requirement stems from a USPTO attempt to
clarify of the ‘concrete result’ requirement. Id. The ‘concrete
result’ requirement stems from a judicial pronouncement of a
‘useful, tangible and concrete result’ consideration. The ‘useful,
tangible and concrete result’ consideration was originally given
as an example of how a claim could be shown to satisfy the
‘practical application’ requirement. The ‘practical application’
requirement was initially intended to help distinguish
patentable eligible subject matter from ‘abstract ideas, laws of
nature and natural phenomenon.’ Finally, the ‘abstract ideas,
laws of nature and natural phenomenon’ categories were
10
array of overlapping tests resulted in disparate and
conflicting interpretations by examiners. Id. at 1-2
(listing several examples of conflicting PTO
rejections, including (1) a rejection that erroneously
suggested that if the applicant had simply stated
that the claimed method was performed on a
computer, it would be saved from the abstract idea
exception because the addition of a computer,
without more, would assure that the claim produced
a concrete, useful, tangible result and therefore had
practical utility, and (2) a rejection for improper
subject matter because the claims were not directed
at a “final result that is useful, tangible, and
concrete,” convoluting the State Street test).
B.
The Machine-or-Transformation Test
Similarly Fails to Provide Adequate
Guidance while Threatening the
Viability of Many Innovations.
In establishing the new machine-or-
transformation test, which was designed to cut
through some of the confusion surrounding the
useful, tangible, and concrete test, the Bilski
majority reaffirmed the concept that process claims
(including software and business methods) are
“‘subject to the same legal requirements for
patentability as applied to any other process or
method.’” Bilski, 545 F.3d at 960 (quoting State
Street, 149 F.3d at 1375-76). Although the majority
acknowledged that “future developments in
technology and the sciences may present difficult
challenges to the machine-or-transformation test”
created to explain what types of things do not fall into any of
the four statutory categories of section 101.” Hickman at 4.
11
that require altering it or even setting it aside, the
reality is that the test has already proven difficult to
consistently apply, and has had a detrimental impact
on the patentability of many existing technological
innovations.
Despite the Federal Circuit’s assurance that it
was declining to categorically bar certain categories
of claims, the practical result is nonetheless a great
hindrance to the scope of patentability in many
software-related fields. In particular, the Federal
Circuit failed to decide in Bilski whether a claim
limitation of implementation on a “general purpose
computer” (e.g., a personal computer) would tie a
claim to a “particular machine” for purposes of the
machine-or-transformation test. See 545 F.3d at 994
(Newman, J., dissenting). Left with the decision, the
PTO has answered the question in the negative, thus
imperiling the viability of thousands of software and
other computer-implemented claims,
notwithstanding their usefulness, novelty,
nonobviousness, and indeed, their social and
economic value. See, e.g., Ex parte Langemyr, 2008
WL 5206740 (B.P.A.I. May 28, 2008) (rejecting as
non-statutory subject matter a claim for a “method
executed in a computer apparatus” for producing a
model of a physical system using a set of equations
because the transformation only occurs with respect
to abstract equations and not to a physical article);
Ex parte Nawathe et al., 2009 WL 327520 (B.P.A.I.
Feb. 9, 2009) (distinguishing between a
“computerized method” to a general purpose
processor, which is not patentable, and a apparatus
directed to a general purpose computer, which is
patentable); cf. Ex parte Cornea-Hasegan, 2009 WL
86725 (B.P.A.I. Jan. 13, 2009) (holding that a method
12
reciting a “processor” using “floating-point hardware”
was not tied to a particular machine”); Ex parte
Wasynczuk, 2008 WL 2262377 (B.P.A.I. June 2, 2008)
(affirming the § 101 rejection of a claim that recited a
“computer-implemented” process of modeling
physical systems, but finding patentable a dependent
claim that required the two steps of the claimed
process to be performed by a first and second
“physical computing device,” reasoning that an
embodiment featuring two computers operating
together was sufficient to constitute a “particular
machine,” but not the embodiment specifying a single
computer).
Patents in other existing technological fields
have also been imperiled by B.P.A.I. decisions that
purportedly follow Bilski. In the computer
networking field, the B.P.A.I. has determined that
claims reciting “a number of clients,” “a network,”
and “a server” are not tied to a particular machine.
Ex parte Harris, 2009 WL 86719, (B.P.A.I. Jan. 13,
2009); cf. Ex parte Uceda-Sosa, 2008 WL 4950944,
(B.P.A.I. Nov. 18, 2008) (finding as eligible under
§ 101 a claim directed to “a network executing a
method”). With respect to databases, the B.P.A.I. in
Ex parte Koo, 2008 WL 5054161 (B.P.A.I. Nov. 26,
2008), found that a claim reciting “[a] method for
optimizing a query in a relational database
management system” not to be tied to a particular
machine, reasoning that because a relational
database system may be a software system, it is
unpatentable if it fails to recite the system “in terms
of hardware or tangible structural elements.”
As the foregoing illustrates, in addition to
jeopardizing the patentability of otherwise useful
13
and innovative inventions, the Bilski machine-or-
transformation test, like State Street’s useful,
concrete, and tangible result test before it, fails to
provide adequate guidance for practitioners and
examiners, thus leading to diverging interpretations.
This failure is due in significant part to the
limitations of language; it is inevitably challenging to
fashion a easily-applied test that encompasses all of
mankind’s inventive endeavors using words alone.
Rather than create more confusion and
unnecessary debate over the parameters of § 101 by
creating another test, the Court should focus the
patent community’s attention back to the time-tested
evaluations under §§ 102, 103, and 112.
CONCLUSION
For the foregoing reasons, the judgment of the
court of appeals should be reversed.
MAXIM H. WALDBAUM
Counsel of Record
HENRY L. MANN
SCHIFF HARDIN LLP
900 THIRD AVENUE
NEW YORK, NY 10022
(212) 753-5000
14
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