Posted on June 28, 2010 in IP by Brian RoweView Comments

Bilski v. Kappos – SCOTUS Opinion

Bilski was just decided by the Supreme Court.  The opinion will take a while to digest.  I was honestly hoping that this case would kill software patents, but for now the opposite appears to be true software will continue to suffer under patents and  State Street could now stand for patentablity of software, here are some of the quotes from the court:

Software survives for now:

As numerous amicus briefs argue, the ma- chine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medi- cine techniques, and inventions based on linear program- ming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24– 25; Brief for Biotechnology Industry Organization et al. 14–27; Brief for Boston Patent Law Association 8–15; Brief for Houston Intellectual Property Law Association 17–22; Brief for Dolby Labs., Inc., et al. 9–10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F. 3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine- or-transformation test. Section 101″s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

But the Information Age my need to change that:

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 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.

Quick Comment: this paragraph is a mixed bag the language over “not granting monopolies over procedures that others would discover by independent, creative application of general principles” could be the key to throwing out a lot of bad software patents.

State Street Survives for now & stands for Software Patents, Footnote 40 – Concurrence by Stevens:

Forty years later, Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today. See State Street, 149 F. 3d, at 1375

There will be much more to come on this later. For a review of the Bilski case generally check out Bill Hiness post: Bilski v. Kappos: Background & Commentary.

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