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< | Note: I have finished up my research and am starting to write my draft, which will be finished and ready for your edits before Thursday, October 27. Any suggestions or insights on what I should focus on or change are welcome. |
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> | Note: I have finished up my research and am starting to write my draft, which will be finished and ready for your edits by Thursday, October 27. Any suggestions or insights on what I should focus on or change are welcome. |
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< | Patentability of Software after Bilski: How the Federal Circuit Will and Should Develop Doctrine to Encourage Free Software |
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> | Patentability of Software after Bilski: How the Federal Circuit Will and Should Define Patentable Subject Matter and Nonobviousness Doctrine to Encourage Free Software |
| | -- By ThomasHou - 19 Oct 2011 |
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< | Section I: Although Bilski represents an opportunity to shape eligible subject matter doctrine, the Federal Circuit will be unlikely to limit it for computer software. |
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> | Section I: Bilski's Minimal Effect on Computer Software as Eligible Subject Matter |
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< | The Supreme Court's decision in Bilski v. Kappos (130 S.Ct. 3218) was anticipated to lay the groundwork for patentable subject matter, including patentability for computer software. However, it did little in changing substantive law and left much of the law to the Federal Circuit (the "FedCir") to develop, subject of course to the Supreme Court's precedent. So, in the field of computer software, where so many people have different views on its patentability, the FedCir? will again be the chief engine to define the scope of its patentability. |
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> | The Supreme Court's decision in _Bilski v. Kappos_ was anticipated to lay the groundwork for patentable subject matter, including patentability of computer software. There, the Court had to decide whether a method of hedging risk in commodities trading constituted a "process" under Section 101 of the Patent Act, which the Federal Circuit (hereinafter the "FedCir") answered no according to its machine-or-transformation test. The Court affirmed but criticized the FedCir? for relying exclusively on the machine-or-transformation test, and also held that business methods were not per se unpatentable. The Court relied on its earlier precedents on process patents to hold that the claimed invention was an unpatentable abstract idea. For computer software though, the Supreme Court declined to "comment[] on the patentability of any particular invention" and left to the FedCir? to develop doctrine on the patentability of process patents. |
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< | Subsection A: It is well-entrenched in Federal Circuit jurisprudence that computer software is eligible subject matter, which Bilski did not disturb. |
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> | The FedCir? has recognized the patentability of computer software ever since its en banc decision in _In Re Alappat_. Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt. In its most recent decision on this matter, _Cybersource Corp. v. Retail Decisions, Inc._, the FedCir? considered the patentability of a method for detecting credit card fraud by utilizing information from Internet addresses and a computer readable medium containing instructions for executing that method. The FedCir? held the method an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the FedCir? emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability. |
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< | Looking at the Federal Circuit's precedent, free software advocates should not be optimistic. Although computer software were hardly patented at all in the 1960s or 1970s, they became gradually well-accepted by the PTO and FedCir? . That trend started after the Supreme Court's decision in Diamond v. Diehr (450 U.S. 175), which impliedly granted the patentability of software. In the 1980s and especially the 1990s, software patent applications skyrocketed and the PTO mostly granted them. In In re Alappat (33 F.3d 1526), the FedCir? sitting en banc held explicitly that computer software were patentable subject matter and mathematical algorithms were not a judicial category of ineligible subject matter (which were limited to laws of nature, physical phenomena, and abstract ideas). The FedCir? 's latest en banc decision in In re Bilski that adopted the machine-or-transformation test summarized the decades-long precedent underlying process patents and did not throw the patentability of software into any doubt. In fact, software arguably could satisfy either prong of the machine or transformation test. |
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> | Going forward, the FedCir? will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the FedCir? will likely be flexible in its approach and look at the software holistically. Most computer software are sufficiently tied to a machine to satisfy the machine-or-transformation test. Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. The PTO has endorsed the general purpose computer option and with few contrary indications from the FedCir? , there seems to be meager argument about the scope of subject matter eligibility of computer software, at least in the courts. |
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< | Subsection B: Bilski offers several guidelines for the Federal Circuit to limit computer software patents. |
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> | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents |
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< | The Supreme Court's decision in Bilski v. Kappos held that the machine or transformation test of the FedCir? was an important clue for patentability of process claims, but not the exclusive test. Furthermore, business methods, which are similar to software, are not per se unpatentable. The Supreme Court remanded for the FedCir? to define the contours of patent law subject to its precedents, specifically its decisions in Gottschalk v. Benson (409 U.S. 63), Parker v. Flook (437 U.S. 584), and Diamond v. Diehr (450 U.S. 175). Those precedents, as well the FedCir? 's most recent decision on patentability of software, serve good clues on its jurisprudence going forward. |
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> | Before computer software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its _Graham v. John Deere Co._ decision. In the early case of _Dann v. Johnston_, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. However, the Court's most recent case on nonobviousness is illustrative and key for testing this requirement against claimed computer software. |
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< | Subsub 1: The Supreme Court's early jurisprudence concerning abstract ideas and mental processes can be used to invalidate many potential computer software patents. |
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> | In _KSR Int'l Co. v. Teleflex Inc._, the Supreme Court |
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< | Subsub 2: The machine-or-transformation test for process patents can be stringently interpreted to require tying the software to a particular type of machine or transformation, rather than to computers in general.
Section II: Bilski does not foreclose the use of other substantive requirements for patentability, which should be raised high for computer software patents.
Subsection A: The nonobviousness requirement should be construed strictly, and include broad consideration of pertinent prior art and secondary factors.
This aspect is not often explored and I might just write on non-obviousness (partly to fit the 1000-word limit). What do you think?
Subsection B: Institutional changes for the Federal Circuit and PTO are necessary for others to challenge the novelty of computer software patents, especially using third-party introduced prior art. |
| | Section III: What Free Software users should consider when confronted with a patent infringement claim |