

Groklaw on the Bilksi decision - michael_dorfman
http://www.groklaw.net/article.php?story=20100628100422167

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grellas
When we stand back and assess what happened here, a few things become evident:

1\. The Court did not have to hear this appeal. It did so under a
discretionary grant of certiorari. So the question is, what did it intend to
accomplish? Well, since it did not arrive at any new test for assessing
whether business methods are patentable, and since it simply affirmed the
decision of the Federal Circuit on the merits of Bilski's particular claim,
the logical answer is that the Court was very uncomfortable with the Federal
Circuit's adoption of the so-called machine-or-transformation test as sole
test for whether processes are patentable and it ruled in a way to make it
clear that this is not to be an exclusive test.

2\. Thus, in spite of the hopes of many that the Court was using this as an
opportunity to rein in a wildly out-of-control system of business-method and
software patents, the Court was in fact aiming to prevent any form of
_categorical limitation_ from being put on what or what does constitute
patentable subject matter when it comes to processes. In this sense, the
Court's ruling was definitive in rejecting any categorical attempt to limit
the scope of such patentable subject matter ("Congress plainly contemplated
that the patent laws would be given wide scope").

3\. What this means, for good or for bad, is that the Court is _not_ about to
hold any form of broad category (e.g., software patents) as being inherently
unpatentable.

4\. Ergo, there is no radical answer here for those who hoped the Court would
strike down software patents. As noted in this piece, however, the Court
definitely rejected the other extreme as well by saying that it was _not_
endorsing the Federal Circuit's 1998 _State Street_ decision that had served
to open the floodgates to software patents (by ruling that any process can be
patented as long as it leads to a "useful, concrete and tangible result").

5\. The Court also explicitly acknowledged the issues that are troubling so
many: "It is important to emphasize that the Court today is not commenting on
the patentability of any particular invention, let alone holding that any of
the above-mentioned technologies from the Information Age should or should not
receive patent protection. This Age puts the possibility of innovation in the
hands of more people and raises new difficulties for the patent law. With ever
more people trying to innovate and thus seeking patent protections for their
inventions, the patent law faces a great challenge in striking a balance
between protecting invention 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."

6\. I read all this as the Court's way of saying, in effect, "we are not about
to wade into this mess and solve a problem that fundamentally belongs to
Congress and, thus, under the current statutory scheme, we will guide the
lower courts only to the extent of telling them to approach the issues case-
by-case while not going to the extreme of trying to limit patentable processes
through arbitrary tests that Congress did not authorize and while being
sensitive that their rulings in the information age might have the unintended
consequence of stifling innovation through the grant of improper monopolies -
thus, to be vigilant to use all the tools available under the statutory scheme
(e.g., other requirements that patents be novel, nonobvious, and fully and
particularly described; that they not constitute abstract ideas, etc.) to
prevent the system from getting wildly out of control."

7\. Thus, one can say that the Court basically upheld the status quo but with
a few twists. I know this is profoundly anticlimactic and disappointing for
those who were looking for a comprehensive answer to the problems raised by
process patents, but I personally don't think the Court had a lot of choice in
being bound ultimately to rule on what Congress meant when it enacted a
broadly-worded statute (for a technical analysis of the statute, see my prior
comment: <http://news.ycombinator.com/item?id=1350273>).

8\. Any more fundamental answer will lie with Congress. In that forum, the
practical impediments will be large and that is perhaps why so many had hoped
the Court could cut through all these without needing to deal with the vested
interests who will seek to block reform at every turn.

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10ren
I've been working on product development and "customer development" recently,
and this has emphasized for me the differences they have in perspective. The
first (engineering) is about _features_ : how to implement something, what it
needs, what would be the cleanest conceptual approach; the second (marketing)
is about _benefits_ : what those features mean to someone, is it useful, what
can it do, what extra features are needed just to make it work (eg. an editor
isn't just about editing: you also need to be able to save your work, even
though saving isn't editing).

There's a distinction in this case that strikes me as similar: software for
its own sake is _abstract_ ; software that has a useful _application_ is not
abstract. The question then becomes whether the patent as a whole is new and
inventive. Just applying an abstract idea to a concrete problem isn't enough;
the way it is applied has to be inventive.

In legal terms, I think this throws the burden of _patentability_ from
"subject matter" to "novel and nonobvious" (Bilsky majority on Flook, emphasis
added):

> unpatentable under §101, not because it contain[ed] a mathematical algorithm
> as one component, but because once that algorithm [wa]s _assumed to be
> within the prior art_ , the application, considered as a whole, contain[ed]
> no patentable invention.

tl;dr _you can't patent software, only its doing of something useful_

 _EDIT_ btw, typo in title: s/Bilksi/Bilski/

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ovi256
I'm now waiting for the HN grok of the Groklaw discussion of the Supreme Court
opinion :P /me goes back to reading.

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joe_the_user
Well I am disappointed but not surprised that SCOTUS didn't throw out software
patents.

The patent system has been the foundation of the business processes in many
industries. It's natural that a lot of powerful stakeholders expect this to
continue into the information age. Despite this, when production in general is
going towards information, patents are doomed to become more pathological and
more a rent-seeking activity as information processing expands.

There is simply no _even slightly_ objective measure for determining whether X
algorithm and Y distinct algorithm are "the same". The existence of such a
measure is essentially a mathematical impossibility. _Among other challenge_ ,
a sameness measure would probably have to solve the halting problem (otherwise
you substitute an algorithm with the same results for any given patented
algorithm). More generally, any "sameness" criteria must really be based on a
"close enough" measure and _closeness itself_ is a characteristic of the three
dimensional metric space we humans live in. Closeness doesn't exist and can't
meaningfully exist in an infinite dimensional space of abstract algorithms.

So "sameness" is going based entirely on subjective and arbitrary judgments of
juries and judges, who naturally know little of the situation (indeed,
ignorance is something of a necessary condition for having an honest opinion
on the similarity of algorithms). Thus, software patents give any given patent
holder of any algorithm an unlimited terrain to sue people on.

