Some Followup Thoughts on Bilski

Some Third-Party Thoughts

A friend summarized Bilski this way: “Shorter #Bilski: Federal Circuit, your rule was too straightforward and didn’t add enough uncertainty to an already volatile field.”

I don’t think that was actually the court’s intent, but certainly that will be the short-term outcome. Long-term the court and the PTO will have to find new rules. Patently-o has some thoughts on how that process might play out, and the PTO has issued the following guidance to patent examiners on the topic. The PTO memo, while preliminary, is a great simple summary of the ruling, and contains the following critical passage:

If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea.

In other words, the PTO has reverted to the pre-business-methods ‘machine-or-transformation’ test as a default, with the burden of proof shifted to the patent filer to show a ‘clear indication’ that their non-machine/non-transformation is not an ‘abstract idea.’ It will be interesting to see in coming months what the PTO accepts as a ‘clear indication’; I would expect that this won’t be a high bar to clear, but it will probably cut out some of the most egregious applications.

For an optimistic take on the whole thing, check out Rob Tiller’s piece at

Comments on the Concurrences

Yesterday’s train ride focused on the majority opinion. However, as I noted then, the voting patterns here are complex; complex enough that there is some important law to be found in the two concurrences. The patently-o post I linked above makes a particularly astute observation in this regard. So today’s train ride I’ll try to read and share some thoughts on the concurrences, particularly the ‘swing’ concurrence from Breyer and Scalia.

The first thing to note is that the Breyer/Scalia concurrence opens with a strong support of Stevens’ opinion that business method patents are not patentable, but that this part is… only signed by Breyer. So it does not tell us much. The rest of it focuses on four (really three) points which Breyer and Scalia feel the entire court agrees on. If you read only one part of the opinion, read this part- it is short, sweet, and to the point, and because at least five (possibly nine) members of the court agree here, it will likely be the jumping off point for the next round of patentability litigation. These points are:

  1. There are many things which are unpatentable. This seems uncontroversial (the court was quite explicit about it in 1989’s Bonito Boats case), but after the Federal Circuit’s expansion of patentability through the 80s and 90s, it was perhaps not as clear as it should have been. This concurrence makes it very clear (once again) that there is a line, even as it simultaneously announces that no one knows where the line is. It could also be interpreted as a subtle hint to the Federal Circuit that they should set to finding that line. (Gottschalk v. Benson, which held that algorithms are unpatentable, is cited approvingly here; as I mentioned yesterday, Gottschalk and Flook may have been given some second wind by Bilski; possibly the best thing that anti-software patent crusaders can salvage from this.)
  2. Transformation of a thing to a different state is a “very good clue” (point two), but not the only clue (point three), as to whether or not non-machine things are patentable. The Federal Circuit’s Bilski ruling had essentially declared this ‘machine or transformation’ test to be the only test, which was what made business methods unpatentable under that ruling. Again, Flook is cited approvingly (when saying that it is a strong test) but unfortunately Gottschalk is cited to show that it is not the only test- which is exactly the loophole that State Street (the case that allowed business methods) drove through.
  3. The ‘useful, concrete, and tangible result’ test that the Federal Circuit put forth in State Street- i.e., the case that allowed business patents- is not a good test, sometimes producing patents that range from ‘the somewhat ridiculous to the truly absurd.’ In other words, something can be ‘useful, concrete, and tangible’ but still not be patentable. This last point was highlighted by Patently-O yesterday as being fairly important.

If you’d told anti-software patent/anti-business-method patent folks on Sunday that the court’s Monday ruling would have five justices (or maybe nine) justices agreeing that the ‘useful, concrete, tangible result’ rule was bogus, they’d have been pleased. Of course, they’d have expected the court to enunciate a new, replacement rule- which has not happened. It is that gap which has caused so much consternation, not just for patent critics but also for patent supporters.

It will be up to the Federal Circuit to try and find a new rule, somewhere between ‘machine or transformation’ and ‘useful, concrete, tangible’- and this almost certainly means that we’ll be back at the Supreme Court arguing similar issues within a few years, asking the court to ratify- or reject- the next Federal Circuit attempt.

In trying to figure out what Scalia actually agreed to, I’ve now read sections II.B.2 and II.C.2 (which Scalia did not sign on to) a couple of times. They are, like much of the decision, a little rambly; long on vague assertions about the current state of things (lots of talk about the ‘Information Age’) and not very strong on details or particular policy conclusions. If I had to guess (and I should stress that this is just a guess) Scalia is really reacting to the mechanisms used to reach these vague conclusions, which tend to be very divorced from the actual statutory text that the main body of the decision relies on. So probably not worth reading much into that.

The Stevens concurrence… that will have to wait for another train ride. Suffice to say for now that it is a thorough researching of a difficult question. It is certainly not perfect, but is the kind of dedicated textual and historical reading that many members of the court pay lip service to but do not consistently practice.

7 thoughts on “Some Followup Thoughts on Bilski”

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