AIPLA Reports
A Periodic Notification of AIPLA Activities and
Current Developments in Intellectual Property Law
Copyright © 2008 AIPLA
April 8, 2008
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Patents/Subject Matter/Business Method Patents
AIPLA Bilski Amicus Brief Argues for Broad Patentable Subject Matter
In re Bilski, en banc Fed. Cir., No. 2007-1130, brief filed 4/7/08.
AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101.
According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.
Background
The Bilski patent, rejected by the Patent and Trademark Office and on review before the en banc Federal Circuit, is directed to a method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price. In brief, the steps in the process comprise (1) initiating a series of transactions between a commodity provider and commodity consumers, (2) identifying market participants for the commodity that have a counter-risk position to those consumers, and (3) initiating a series of transactions between the provider and market participants at a fixed rate.
This case was taken for en banc review after a Federal Circuit panel held in In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007), that the method for mandatory arbitration claimed there failed to satisfy the requirements of Section 101. According to that decision, business methods that employ only human intelligence without involving machines, manufactures, or compositions of matter do not qualify as patentable subject matter because they are directed to abstract ideas.
Federal Circuit Questions
Responding to questions posed by the en banc court for briefing, the AIPLA brief states that:
- The Bilski claim recites patent-eligible subject matter because, when considered as a whole, it claims a practical application of the idea of managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price. None of the claimed steps, directed at human conduct, can fairly be said to lack concreteness or to exist only in the mind, either individually or when the claim is considered as a whole.
- The proper standard for applying Section 101 to process claims is provided in the Supreme Court’s decision of Diamond v. Diehr, 450 U.S. 175 (1981): a process claim incorporating an abstract idea is statutory subject matter if, when viewed as a whole, it recites a practical and definite application of the abstract idea with a useful result.
- The subject matter claimed in the Bilski patent is not rendered ineligible for patent protection by including an abstract idea or mental process because it does not wholly preempt all practical applications of any idea or mental process.
- A claimed process need not result in physical transformation of an article or be tied to a machine to be patent eligible under Section 101. The PTO argument to the contrary conflicts with the broad scope of patentable subject matter required under Section 101 and would suppress innovation as well as public disclosure of innovations.
- Federal Circuit law on Section 101 stated in State Street Bank and Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications Inc., 175 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999), are consistent with Diehr and should not be revisited.
To read the AIPLA brief, click here.
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AIPLA Reports-April 8, 2008 (PDF File)
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