Posted on August 17, 2010 in university of Washington by Brian RoweComments Off

I would like to thank Bill Hinsee for all his great legal work this summer at FFIP.  He worked on projects including: Bilski – patent reform, Fair Use & Bad Faithprivacy labels, privacy case law research, Viacom v. Youtube research, and file sharing case law research. Bill was a great help this summer and will be a strong addition to the IP legal community and the free culture community.

Bill is a rising 2L at Boston Univeristy Law and a graduate of the Masters of Science in Information Management program at the University of Washington’s Ischool.  He is also a photographer with a photo blog that uses creative commons licenses.

Photo: Bill Hinsee under CC Attribution Noncommercial No Derivative

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.

Posted on June 28, 2010 in IP by Comments Off

Bernard Bilski developed a method for managing risk in the commodity market, like the energy market where prices may skyrocket during a severe winter. Bilski’s idea was to introduce a third-party intermediary into the transaction who would purchase the commodity (e.g., coal) from the seller (e.g., coal mining company) at some fixed price, based on a historical average, and sell it to the buyer (e.g., power plant) at another fixed price. Since the buyer and seller’s prices are fixed, they are both protected from sudden price fluctuations and are not vulnerable to the risk inherent in the market. Bilski filed an application for a patent for his method, describing it in such vague terms that it could be applied to almost any transaction.

The U.S. Patent and Trademark Office (PTO) denied Bilski’s application because, according to the patent examiner, the method that Bilski developed was “not implemented on a specific apparatus and merely manipulates an abstract idea . . . without any limitation to a practical application” and therefore was not something that could be patented. The PTO’s appeal board and the U.S. Court of Appeals disagreed as to the proper test to determine what was patentable but agreed that Bilski’s method was not something that was eligible to be patented. The case now lies before the U.S. Supreme Court, whose decision may help clarify U.S. patent law and give guidance to the PTO and the lower courts.

The patent law statute allows an inventor an exclusive monopoly right for “any new and useful process, machine, manufacture, or composition of matter” (subject to some additional conditions). Determining what those categories encompass is a matter of interpretation left to the PTO and the courts. A business method, such as Bilski’s, is clearly not a “machine, manufacture, or composition of matter” and so must fall within the meaning of “process” in order to be eligible for a patent.

The U.S. Supreme Court had previously limited the broad meaning of “process” by excluding the laws of nature, natural phenomena, and abstract ideas from patent protection, stating that they are the “basic tools of scientific and technological work” and are “free to all men.” In upholding the decision against Bilski, the U.S. Court of Appeals recognized the meaning of “process” was limited and applied the “machine or transformation” test, used in an earlier U.S. Supreme Court decision, to determine whether a particular process is eligible to be patented. Under the “machine or transformation” test a process must either be tied to a particular machine or must “transform a particular article into a different state or thing.” The U.S. Court of Appeals held that Bilski’s method did not satisfy the first branch of the test because it was not limited to a specific machine (or even a machine at all) and it failed on the second branch of the test because transformations of “public or private legal obligations or relationships, business risks, or other such abstractions . . . are not physical objects or substances, and they are not representative of physical objects or substances.” The U.S. Court of Appeals insisted that processes must have some physical connection in order to be eligible for a patent.

During oral arguments to the U.S. Supreme Court, the Supreme Court Justices were not overly receptive to the idea of patenting intangible business methods either. Chief Justice Roberts compared Bilski’s method of hedging risk with a method for maximizing wealth where one buys low and sells high, and suggested that that would be patentable if Bilski’s method was. Justice Breyer asked whether his method of teaching antitrust law would be patentable, claiming “it kept 80 percent of the students awake” and “they learned things.”

The decision by the U.S. Supreme Court could have far reaching consequences apart from business methods because software also falls within the “process” category and would be subject to the same test.

Consider IBM’s patent on changing the color in an email message based upon the email’s destination and the cultural perspective of that region (U.S. 7,529,804). This patent gives IBM the exclusive right to change lettering appearing red, for instance, in an email originating from the U.S. to a different color when the email is destined to China, because whereas red might signal a warning in the U.S. it is considered good luck in China and might not impart the same level of importance.

Note that the issue is not with someone copying IBM’s source code and using it (that would be protected under copyright law). The issue is with preventing others from using the same idea that they might have developed on their own. This is because patent law allows the patent holder to prevent others from making, selling, using, or importing the patented invention even if the other person independently came up with the invention. This is especially relevant in the realm of software development where a multitude of simple processes have been patented. Any software developer could invest considerable amounts of time and money on a project only to inadvertently infringe upon one of the 200,000 software patents and have the project grind to a halt.

Even with a clearer test for patent eligibility the issue of software patents may not be resolved. A glimpse of what is yet to come may be found in the Amicus Briefs filed by Microsoft and Redhat. While both companies argue for a test where patents are tied to something physical, Redhat argues that such a test would exclude software whereas Microsoft argues that loading software on a computer changes the physical structure of the hard drive and would be sufficient to meet the requirements of the test.

Stay tuned.

Posted on April 16, 2010 in IP by Brian RoweComments Off

Patent Absurdity explores the case of software patents and the history of judicial activism that led to their rise, and the harm being done to software developers and the wider economy. The film is based on a series of interviews conducted during the Supreme Court’s review of in re Bilski — a case that could have profound implications for the patenting of software. The Court’s decision is due soon…

With interviews from Eben Moglen, Dan Bricklin, Karen Sandler, Richard Stallman and others!

Watch the video

Creative Commons License

This work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.

Great Video! My only negative comment is the ND license! This needs to be remixed for other purposes, guess I will have to use fair use.

Posted on January 27, 2009 in Patent by Brian RoweComments Off

I was poking around the Stanford Center for Internet and Society and came across a blog post talking about two Jonathan Zittrain Patents and some very weak Social Networking patents posted by Stuart Soffer:

It is with anticipation that I receive the Ocean Tomo auction catalogs, looking for surprises. There are three lots of patents directed towards Social Networking. CIS speaker and Harvard law prof Jonathan Zittrain ( a great speaker) is the first named inventor of two patents (6,998,984 and 7,324,000) at the March auction. The patents are entitled, “State adaptation devices and methods for wireless communications”, but the catalog summarizes them as a “Non-verbal Wireless Communication System.” One of the claims of the ‘000 patent provides for

“A communications system comprising: a first bracelet for a user to wear that can sense a contraction when squeezed around the user, and including a transmitter for wirelessly transmitting a signal indicating that the bracelet has been squeezed; the first bracelet further including a receiver for receiving a signal and for contracting around the user in response to the received signal.”

Lot 41 (US 7,483,946 and 6,963,900) should interest LinkedIn, FaceBook, MySpace and similar social networking sites for patents covering facilitating meetings or events between two or more people. There are recent nascent efforts of potential licensing targets banding together to acquire select patents, thereby inoculating themselves from potential litigation. This would be an opportunity for LinkedIn et al. to acquire the patents and form a pool.

License Note: Work quoted from the Stanford Center for Fair Use is under a Creative Commmons BY License

Of these patents the social networking ones are insane here is 6,963,900

Methods and systems for assisting individuals (101) arrange meetings such as networking meeting with other individuals (101) at a specified time (or within a specified time range) and/or at a specified place (or within a specified geographic region). More specifically, methods and systems for allowing individuals (110) to post an invitation to for a meeting on an on-line network and for allowing one or more other individuals (101) to accept such invitation.

Is this patent even valid under Bilski? The patent is a process patent that is only loosely connected to any specific technology. Is this patent novel? I can not disagree with Soffer more, social networking sites should not invest in software patents they should fight them.  Even if the patent is valid it is clearly bad for competition and innovation. This patent should be reexamined, stay away!

I am waiting to comment on the JZ patents I need to read them more carefully.

Posted on October 30, 2008 in Bilski, IP, patents by Brian RoweComments Off

A very important case was decided today Bilski.  Read the desision here.

Therefore, we also conclude that the “useful, concrete and
tangible result” inquiry is inadequate and reaffirm that the machine-or-transformation
test outlined by the Supreme Court is the proper test to apply.19

Foot note :
19 As a result, those portions of our opinions in State Street and AT&T
relying solely on a “useful, concrete and tangible result” analysis should no longer be
relied on.

I soo want to skip my afternoon classes and read the 130 pages… hmmm more to come later.

Past articles:

ACLU, Patent Lawyers of Washington and End Software patents on Bilski before the decision.

Posted on May 7, 2008 in EFF, ESP, FSF, IP, patents, Pubpat by Brian RoweComments Off

Here are the top three organizations that are fighting bad patents. Take Action! More on the patents coming tomorrow as we hear oral arguments for in re Bilski.

An EFF Initiative To Protect Innovation and Free Expression

Tired of bogus software patents? So are we! To combat these annoying and often dangerous legal weapons, EFF has launched the Patent Busting Project to take down some of worst offenders.

We need your help! Take a look at the Top Ten Most Wanted culprits on our list, and let us know if you have any leads on technology that predates them (called “prior art”) that we can use to challenge their validity. Visit the patent busting project to take action.

FSF – End Software Patents

Software innovation happens without government intervention. Virtually all of the technologies you use now were developed before software was widely viewed as patentable. The Web, email, your word processor and spreadsheet program, instant messaging, or even more technical features like the psychoacoustic encoding and Huffman compression underlying the MP3 standard—all of it was originally developed by enthusiastic programmers, many of whom have formed successful business around such software, none of whom asked the government for a monopoly. So if software authors have a proven track-record of innovation without patents, why force them to use patents? What is the gain from billions of dollars in patent litigation?

PUBPAT is a not-for-profit legal services organization that represents the public interest against the harms caused by errors in the patent system, particularly the harms caused by undeserved patents and unsound patent policy. PUBPAT provides the general public and specific persons or entities otherwise deprived of access to the system governing patents with representation, advocacy and education. PUBPAT accomplishes its mission through two core activities.

First, PUBPAT protects the public domain from being recaptured in new patents. PUBPAT’s primary tool for protecting the public domain is filing requests for re-examination with the PTO. A request for re-examination is the formal administrative mechanism used to ask the PTO to revoke an issued patent on the grounds that the idea it claims is actually not new, but is instead nothing more than
a reformulation of information that was already in the public domain.

Second, PUBPAT advocates for improvements to the patent system and educates the public about the esoteric issues implicated by patents, specifically how they impact everyday life. PUBPAT advocates on behalf of sound patent policy before the courts, Congress, in the PTO and through participation in relevant conferences, while PUBPAT educates the public though presentations, one-on-one discussions and publications.

Posted on April 23, 2008 in ESP, FSF, in re Bilski, Patent, WSPLA by Brian RoweComments Off

Myriad amicus briefs (read 30 and counting) have now been filed regarding Bilksi. On the two extremes of this debate are patent lawyers and the Free Software Foundation.

Washington State Patent Law Association (WSPLA) filed a brief defending Bilski and asking for the CAFA to reaffirm and rewrite State Street Bank to be consistent with recent SC rulings. This brief is aimed at merely expanding subject matter under Section 101.

A “process” entails an act or a series of acts performed upon a subject matter, or a mode of treatment of certain materials to produce a given result. When considered as a whole, a process must be new and useful in that it must be manmade and not exist in nature, and it must be practically useful. Such a process does not have to result in a physical transformation or be tied to a machine, although such provisions are indicator of patent eligibility. -WSPLA Summary of Argument

This wide reading of patent law ensures that lawyers can patent any “use” process, but does not provide any balance for the public interest. Additionally the WSPLA wants to extend Diamond v. Dieher to provide support for patenting mathematical formulas:

the use of the Arrhenius equation in the claim was not an unapplied mathematical formula; rather, it was part of an application to cure rubber. Second, even though a computer wasn’t needed in the process of curing natural or synthetic rubber, if the use of the computer incorporated in the claimed process significantly lessened the possibility of overcuring or undercuring, the process as a whole did not become unpatentable subject matter. Diehr, 450. WSPLA Brief at 8.

Misreadings of cases including Diamond v. Diehr have expanded the scope of patent law to include mathematical formulas when they are used with computers. If we can not use mathematical formulas with computers, or calculators which is what computers are essentially, then where can we use them? The idea patenting mathematical formulas by simply adding a step that runs the formula on a computer is ridiculous at best.

End Software Patents
On the other side of the patent debate, Free Software Foundation’s End software patents campaign filed a brief arguing that Bilski is the perfect opportunity for the CAFC to examine software patents:

The conclusion of Diamond v. Diehr, 450 U.S. 175 (1981)
directly reiterated the above, while on the other hand
acknowledging that bona fide patent-eligible inventions may
include a software component. It is well worth reprinting the
bulk of the conclusion:
. . . . A mathematical formula as such is not accorded
the protection of our patent laws, Gottschalk v. Benson, 409
U.S. 63 (1972), and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular
technological environment. Parker v. Flook, 437 U.S. 584
(1978). Similarly, insignificant postsolution activity will not
transform an unpatentable principle into a patentable
process. Ibid. To hold otherwise would allow a competent
draftsman to evade the recognized limitations on the type of
subject matter eligible for patent protection. On the other
hand, when a claim containing a mathematical formula
implements or applies that formula in a structure or process
which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e. g.,
transforming or reducing an article to a different state or
thing), then the claim satisfies the requirements of § 101. . .
Id. at 191-92 (notes omitted, emphasis added).
In all cases, the Court expressed disdain for allowing
patents on software loaded onto a standard computer, repeatedly
referring to it as an “insignificant,” “conventional or obvious”
modification of the base formula.
ESP Bried at 6. (emphasis added)

I agree with FSF’s reading of Diamond v. Deihr which severely limits all software patents. Running a mathematical formula on a computer is obvious. Computers do calculations better than people. I hope to see the Supreme Court take up this issue along with the State Street Bank precedence, ruling that if a mathematical formula or process is not patentable without a computer then merely adding a computer to do the same thing more efficiently does not create patentable subject matter or overcome the obviousness requirement.

Related links:

Washington State Patent Law Blog on the Washington Patent Lawyers Brief

Patently-O’s list of 30 In re Bilski briefs

End Software Patents Brief

Washington State Patent Lawyers Association Brief

Posted on April 7, 2008 in ACLU, Patent by Brian RoweComments Off


I am very pleased to see the ACLU has joined the patent fight with a first amendment argument against business methods patents. Patents have grown over the past few years to allow many new forms of questionable inventions. One of the key case that expanded patents is State Street Bank, which allowed business methods to be patented. State Street Bank was granted a patent for basically adding up finical numbers with a spreadsheet, this was not a real invention but merely a way to seek rents off others for doing something obvious. In re Bilski is an opportunity for the federal circuit to reverse this ridiculously anticompetitive practice.

More from the ACLU’s Press Release:

Introducing a rare argument applying the First Amendment to patent law, the American Civil Liberties Union filed a friend of the court brief today urging a federal court to uphold the denial of a patent that would, if awarded, violate freedom of speech. In the brief, the ACLU argues that Bernard L. Bilski is seeking a patent for an abstract idea, and that abstract ideas are not patentable under the First Amendment.

“The court must ensure that any test it uses in determining whether to award a patent is in line with the Constitution,” said Christopher Hansen, senior staff attorney with the ACLU First Amendment Working Group, who filed the brief. “If the government had the authority to grant exclusive rights to an idea, the fundamental purpose of the First Amendment – to protect an individual’s right to thought and expression – would be rendered meaningless.”

I hope this is the beginning of the first amendment being used to protect the public from bad patents. I encourage the ACLU to look into software patents more closely as many of the arguments from the amicus brief could be used to challenge the abstract non-enabled software patents that are strangling innovation and punishing companies that bring new ideas to the market.

Read More:

ACLU Bilski Amicus

ACLU’s official press release

Disclaimer: I am a proud member of the ACLU and my wife works for their Seattle office.