Bilski v. Kappos

http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

by tshtf • 16 years ago

39 6 16 years ago

kgrin• 16 years ago

Summary: the court ruled narrowly on the patent in question (over-broad), while punting on the actual issue of "business methods" patents. Result (for everyone but the actual litigants in this case): no change from the status quo.

tc• 16 years ago

Key quote from the majority opinion:

"With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck."

The entire court held that the patent application in question should be denied as it represented only an abstract idea. The majority opinion declined to give much further guidance other than to emphasize that 1) the law should be interpreted using the plain meaning of words in the statute, and that 2) the machine or transformation test is not an exclusive test of whether a claim is patent-worthy.

Stevens, Ginsberg, Breyer, and Sotomayer concurred with the decision, but would have denied the application based on a more strictly defined interpretation of the word "process," noting that the majority's acceptance of a looser interpretation "can only cause mischief. The wiser course would have been to hold that petitioners' method is not a 'process' because it describes only a general method of engaging in business transactions—and business methods are not patentable."

Breyer and Scalia separately emphasized that the machine or transformation test is still useful, though not exclusive, and that there is much agreement between the majority opinion and the concurring one.

At the end of the day, it appears that this decision will lead lower courts to continue ruling, with new reassurance, that patents on software and business methods are valid as long as the patent claims meet the statutory criteria of being novel, useful, and non-obvious. Patent applicants simply need to be more careful than Bilski in ensuring that their claims don't on their face seem like common abstract ideas.

Given the language of the statute, the history of prior rulings, and the broad Constitutional authorization given to Congress to grant patent monopolies, it's difficult to take issue with their narrow ruling. The real problem we face is one of modern information theory colliding with an 18th century experiment in government-granted monopolies.

This is the end of the road (in the US) for challenging these types of patents en masse via the courts in our lifetime. The fight, if it is to continue, will now shift to influencing Congress to make changes.

muerdeme• 16 years ago

Majority(5): Business methods are not categorically barred, but this particular patent is not eligible subject matter under 101 because it encompasses an "abstract idea." Machine-or-transformation test is NOT the exclusive test, but no further direction is given in terms of a standard.

Concurrence(4): J. Stevens writes for the four typically liberal judges, who are in favor of categorically barring business methods.

Overall, the judgment is 9-0 to strike down the patent. Software patents are not directly addressed, but the initial impression is that the opinion will likely make it easier to obtain "pure" software method patents because the machine-or-transformation test is insufficient to reject a a claim under 101.

_delirium• 16 years ago

The majority really only had 4 strong votes on that point: Scalia also signed onto the separate Breyer opinion which held that, while the machine-or-transformation test isn't the sole test, it's still the main useful one.

mindcrime• 16 years ago

Bummer. They managed to uphold Bilski without actually accomplishing anything. Well... without accomplishing much anyway. Maybe this decision will help every so slightly in terms of establishing more firmly that an "abstract idea" can't be patented, but I why wouldn't they have taken a firmer stand... especially one that would have effectively eliminated software and business method patents? <sigh />

fizx• 16 years ago

Thought experiment: If software patents were to have become invalid, and someone has a patented widget, could I legally recreate it in Second Life?

Bilski v. Kappos

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