Eric E. Bensen
384 Euston Road South
Garden City, New York
(516) 486-2250
ericbensen@gmail.com
December 3, 2009
Suffolk County Bar Association
Intellectual Property Law Committee
In re Bilski in the Supreme Court
With its grant of certiorari in the In re Bilski matter, the Supreme Court has again
decided to take up a fundamental issue of patent law, this time, the question of what
constitutes a patent eligible “process” under 35 U.S.C. § 101.
I. Pertinent Statute
A. 35 U.S.C. § 101: “Inventions patentable. Whoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” (Emphasis added.)
B. In re Bilski addresses only the meaning of “process.”
II. Background
A. Scope of § 101.
1. The statutory definition of patentable subject matter under § 101 is
unquestionably broad, see, e.g., Diamond v. Chakrabarty, 447 U.S. 303, 309
(1980) (“The Committee Reports accompanying the 1952 Act inform us that
Congress intended statutory subject matter to ‘include anything under the sun
that is made by man.’”).
2. However, the Supreme Court has placed limits on that scope holding that
abstract ideas, laws of nature, and natural phenomena, even if limited to a
specific field of use or inclusive of physical data gathering steps or post
solution applications, are not patent eligible. Parker v. Flook, 437 U.S. 584,
590 (1978) (“The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle into
a patentable process exalts form over substance.”); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are the
basic tools of scientific and technological work.”); see also Le Roy v. Tatham,
14 How. 156, 175 (1853) (“It is admitted, that a principle is not patentable. A
principle, in the abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an exclusive
right.”).
3. Distinguishing between patent eligible processes and unpatentable abstract
ideas or laws of nature has always presented the courts with difficult issues.
See, e.g., Parker v. Flook, 437 U.S. 584, 589 (1978) (“The line between a
patentable ‘process’ and an unpatentable ‘principle’ is not always clear.”);
Risdon Iron & Locomotive Works, 158 U.S. 68, 71 (1895) (“That certain
processes of manufacture are patentable is as clear as that certain others are
not, but nowhere is the distinction between them accurately defined.”).
4. The tension between the broad language of section 101 and the Court’s
limitations of its scope is most frequently highlighted in cases involving the
patent eligibility of a process where the process is arguably nothing more than
a mathematical algorithm. See, e.g., Benson, 409 U.S. at 67 (process for
converting binary-coded decimal numerals into pure binary numbers not
patent eligible).
B. Contemporary Supreme Court Decisions Addressing Patent Eligibility
1. Gottschalk v. Benson, 409 U.S. 63 (1972) (“Benson”). The Court addressed
the patent eligibility of a process for converting binary-coded decimal
numerals into pure binary numbers, which related to a general use computer,
but could be performed mentally using a mathematical table, and held that it
was not patent eligible because it was merely an abstract idea. Id. at 64, 67,
71-72. Underlying the Court’s decision was the fact that the claim would
have preempted all uses of the algorithm and, thus, was drawn to the
algorithm itself. Id. 71-72.
2. Parker v. Flook, 437 U.S. 584 (1978) (“Flook”). The Court addressed the
patent eligibility of a mathematical algorithm to update “alarm limits” used in
a catalytic conversion process, which, although primarily useful for
computerized calculations, did not claim the use of a machine, and held it was
not patent eligible. Id. at 585, 590, 594.
3. Diamond v. Diehr, 450 U.S. 175 (1981) (“Diehr”). The Court addressed the
patent eligibility of a process for curing synthetic rubber products that
involved taking temperature readings during the process and using
mathematical algorithm to calculate the time at which the rubber would be
properly cured. Id. 177-179. The Court held that although several steps in
the claimed process were mathematical algorithms concerning the
recalculation of cure times, the process as a whole was patent eligible because
it involved the transformation of an article. Id. at 184-85.
4. Machine-or-Transformation Test. The Benson, Flook and Diehr decisions
support the conclusion that a claimed process is patent eligible if it is tied to a
particular machine or transforms a particular article into a different state or
thing. However, Benson and Diehr arguably differ as to whether that is the
only standard for patent eligibility of a process.
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a. Benson (1972): “Transformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does
not include particular machines. … We do not hold that no process patent
could ever qualify if it did not meet the requirements of our prior
precedents.” 409 U.S. 63, 70-71 (emphasis added)
b. Diehr (1981): “Transformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does
not include particular machines.” 450 U.S. 175, 184 (quoting Benson, but
omitting the additional language highlighted above).
C. The Federal Circuit’s Decisions in State Street Bank and AT&T
1. The State Street Bank & Trust Co. v. Signature Fin. Group Inc., 149 F.3d
1368 (Fed. Cir. 1998) (“State Street”), and AT&T Corp. v. Excel Comms. Inc.,
172 F.3d 1352, (Fed. Cir. 1999) (“AT&T”) decisions involved, respectively, a
claim drawn to the implementation of an investment structure, called “HUB
and Spoke®,” whereby mutual funds could pool their assets in an investment
portfolio, and a method for routing long distance telephone calls involving the
generation of a primary interexchange carrier indicator to be added to the
message records. 149 F.3d at 1370; 172 F.3d at 1353-54. The Federal Circuit
held both claims to be patent eligible.
2. However, language in each case suggested that in finding patent eligibility,
the Federal Circuit focused solely on whether the claimed method produced
some practical application rending it “useful,” State Street, 149 F.3d at 1375
(analysis should focus on “practical utility”); AT&T Corp., 172 F.3d at 1357
(analysis should focus on whether “the mathematical concept has been
reduced to some practical application rendering it useful”), arguably, a lower
threshold for patent eligibility than that laid out in Benson, Flook and Diehr.
D. Claim at Issue in In re Bilski
1. Bilski’s Claim: “A method for managing the consumption risk costs of a
commodity sold by a commodity provider at a fixed price comprising the
steps of:
a. initiating a series of transactions between said commodity provider and
consumers of said commodity wherein said consumers purchase said
commodity at a fixed rate based upon historical averages, said fixed rate
corresponding to a risk position of said consumer;
b. identifying market participants for said commodity having a counter-risk
position to said
c. initiating a series of transactions between said commodity provider and
said market participants at a second fixed rate such that said series of
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market participant transactions balances the risk position of said series of
consumer transactions.
2. Summary Description: The claimed method is for hedging risk in the field
of commodities trading. Under it, a provider of a commodity, such as coal,
would initiate a series of transactions with consumers at a fixed rate to
insulate them from higher rates that would result from a spike in demand due
to unusually cold weather. The provider would then initiate transactions with
coal suppliers at a second fixed rate that would insulate them from lower
prices for coal that would result from a drop in demand due to unusually warm
weather. The offsetting positions would then operate as a hedge for the
provider against unusual demand for coal.
E. The PTO’s Decision. The PTO rejected the claim on the grounds that (i) it was
not patentable as a “process” because it was neither tied to a machine nor
transformed physical subject matter into a different state or thing, (ii) it was
directed to an “abstract idea,” specifically, a mathematical algorithm, in the sense
that it preempted every possible way of performing the claimed steps, whether by
human, by machine or by any combination thereof, and (iii) it neither recited a
“practical application” nor produced a “concrete and tangible result.”
III. The Federal Circuit’s Decision
A. En Banc Questions. The original Federal Circuit panel heard oral argument, but
did not issue a decision. Rather, the court decided sua sponte to hear the matter
en banc. In doing so, it asked the parties to file supplemental briefs addressing
five questions:
1. Whether claim 1 [of Bilski’s] application claims patent-eligible subject matter
under 35 U.S.C. §101.
2. What standard should govern in determining whether a process is patenteligible subject matter under Section 101?
3. Whether the claimed subject matter is not patent eligible because it constitutes
an abstract idea or mental process; when does a claim that contains both
mental and physical steps create patent-eligible subject matter?
4. Whether a method or process must result in a physical transformation of an
article or be tied to a machine to be patent-eligible subject matter under
Section 101.
5. Whether it is appropriate to reconsider State Street Bank … and AT&T … in
this case, and, if so, whether those cases should be overruled in any respect.
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B. En Banc Decision, 545 F.3d 943
1. Main Holdings
a. The Machine-or-Transformation Test is the “Definitive” Test for
Determining the Patent Eligibility of a Process.
i. The “definitive” test to determine whether a process claim is tailored
narrowly enough to encompass only a particular application of a
fundamental principle rather than the principle itself is to ask whether
(1) it is tied to a particular machine or apparatus (“Machine Prong”)
or (2) it transforms a particular article into a different state or thing
(“Transformation Prong”). 545 F.3d at 954.
ii. The machine or the transformation, assuming it provides meaningful
limits on the claim’s scope, provides the specific application of the
fundamental principle that distinguish the claim from a claim drawn to
the principle itself. 545 F.3d at 954.
b. Bilski’s Claim Not Patent Eligible:
i. Machine Prong: The claimed process was not tied to a machine. 545
F.3d at 962.
ii. Transformation Prong: The matters transformed by the process were
merely “public and private legal obligations or relationships, business
risks, or other such abstractions,” which could not meet the
transformation part of the test because they were not physical objects
or electronic signals representative of physical objects. 545 F.3d at
963.
2. Other Holdings
a. Apparent Conflict between Benson & Diehr. The Federal Circuit noted
the apparent conflict between Benson, which appeared to treat the
Machine-or-Transformation Test as one way to establish eligibility, and
Diehr, which appeared to treat the Machine-or-Transformation Test as the
test for eligibility. It followed Diehr holding that the “governing test” for
patent eligibility where the claimed invention is a process is the Machineor-Transformation Test. It noted however, that it or the Supreme Court
may at some point modify or set aside the Machine-or-Transformation
Test to accommodate emerging technologies. 945 F.3d at 955-56.
b. Field of Use Limitations. The Federal Circuit noted that some may see a
tension between Benson’s apparent prohibition on wholesale preemption
of fundamental principles and the holding in Diehr that a mere field of use
limitation is not sufficient to establish eligibility inasmuch a field of use
limitation would appear to prevent wholesale preemption of a fundamental
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principle. Resolving that tension, the Federal Circuit observed that
wholesale preemption of a fundamental principle is merely an indication
of patent ineligibility and that such preemption within a field of use may
equally indicate that the claim is not limited to a particular application of a
principle. In contrast, a claim satisfying the Machine-or-Transformation
Test does not preempt all uses of a fundamental principle in any field,
much less entirely. 945 F.3d at 957.
c. Post Solution Activity. Diehr also held that “insignificant postsolution
activity” will not render unpatentable subject matter patent eligible. The
Federal Circuit viewed that rule as equally applicable to the Machine-orTransformation Test in that the claimed transformation or machine must
constitute more than a mere insignificant postsolution activity to save a
claim from patent ineligibility. 945 F.3d at 957.
d. State Street & AT&T. The Federal Circuit clarified that while a “useful,
concrete and tangible result” may indicate whether the claim is drawn to
patent eligible subject matter, that inquiry by itself is insufficient to
resolve the question of eligibility and to the extent the pertinent portions of
State Street and AT&T suggested otherwise, they should not be relied on.
945 F.3d at 959, 959 n.19.
e. Business Method & Software Patents. Consistent with its holding in
State Street, where it rejected the notion that a claimed invention
otherwise meeting the requirements of § 101 was nonetheless unpatentable
subject matter if it was properly characterized as a “business method,” the
Federal Circuit refused adopt a categorical exclusion, such as for business
method or software patents, beyond those already adopted by the Court.
945 F.3d at 960, 960 n.23.
f. Transformation Prong – Electronic Signals. The court noted that “[t]he
raw materials of many information-age processes, however, are electronic
signals and electronically-manipulated data.” Rather than go so far as to
hold that the transformation of electronic signals or data by itself would
satisfy the transformation test, however, the court decided to adhere to the
“measured approach” taken in existing case law under which a claim
drawn to the transformation of electronic signals that was, e.g., limited to
“a visual depiction that represents specific physical objects or substance”
would be patent eligible. In doing so, however, the court made it clear
that the transformation of a physical object itself was not a requirement of
the transformation test. 945 F.3d at 962.
g. Machine Prong – Tying to a General Purpose Computer. Because the
Bilski claim did not limit the claimed process to any specific machine, the
Federal Circuit declined to explore the contours of the machine prong of
the Machine-or-Transformation Test and, specifically, declined to address
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the question of “whether or when recitation of a computer suffices to tie a
process claim to a particular machine.” 545 F.3d at 962.
C. Subsequent Federal Circuit Decisions
1. In re Ferguson, 558 F.3d 1359, 1364-65 (Fed. Cir. 2009) (claim for method of
marketing a product, although nominally a “process,” not patent eligible
because it was not tied to a machine and did not transform a particular article
into a different state or thing).
2. Prometheus Labs., Inc. v. Mayo Collaborative Servs., 2009 U.S. App. LEXIS
20623, *22 (Fed. Cir. Sep. 16, 2009) (claim for method calibrating the proper
dosage of a particular drug, which method involved administering a drug to a
patient and then determining the level of the drug’s metabolites in the patient,
satisfied transformation prong because of the transformative effect the
administration of the drug had on the patient’s body).
IV. In re Bilski at the Supreme Court
A. Issue # 1: Is the Machine-or-Transformation Test the “determinative” test for
eligibility?
1. Background
a. The proposition that an invention is patent eligible if it is tied to a
particular machine or transforms particular article is well grounded.
i. Origin of Machine Prong. The “machine” aspect of the particular test
traces its origin at least to the Court’s decision in O’Reilly v. Morse, 56
U.S. 62 (1854). See Tilghman v. Proctor, 102 U.S. 707, 726-727
(1881) (“The eighth claim of Morse’s patent was held to be invalid,
because it was . . . not for a process, but for a mere principle. It
amounted to . . . a claim of the exclusive right to the use of electromagnetism as a motive power for making intelligible marks at a
distance; that is, a claim to the exclusive use of one of the powers of
nature for a particular purpose. It was not a claim of any particular
machinery, nor a claim of any particular process for utilizing the
power; but a claim of the power itself . . . .”) (emphasis added).
ii. Origin of Transformation Prong. The “transformation” aspect was
initially expressed in Cochrane v. Deener, 94 U.S. 780 (1877), in
which the Court, after noting that the claims in issue did not require
any particular configuration of machinery, nevertheless held that a
patentable “process” would include: “[A] mode of treatment of certain
materials to produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a
different state or thing.”
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b. Similarly, the proposition that abstract ideas, laws or nature and natural
phenomena are not patent eligible is well grounded. Gottschalk v. Benson,
409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.”); Le Roy v.
Tatham, 14 How. 156, 175 (1853) (“It is admitted, that a principle is not
patentable. A principle, in the abstract, is a fundamental truth; an original
cause; a motive; these cannot be patented, as no one can claim in either of
them an exclusive right.”).
c. Thus, the Court is unlikely to hold either that a process that meets the
Machine-or-Transform Test is not patent eligible or that abstract ideas, etc.
are. The Court’s focus is likely to be on the question of whether the
Machine-or-Transformation Test the only test for eligibility, as the Federal
Circuit held, or, whether a claimed invention that does not meet that test,
but is not an abstract idea, law of nature or natural phenomena, can be
eligible and, if so, what the appropriate test would be.
i. As noted earlier, Benson and Diehr arguably conflict on this issue.
ii. The problem for the Court is that the Bilski claim does not provide a
good example of a claimed invention that does not meet the Machineor-Transformation Test, but arguably should be patent eligible. (Few
practioners appear to believe that it is more than an abstract idea.)
Thus, Bilski may prove to be a poor case for the Supreme Court to
further develop the test for eligibility.
2. Arguments by the Parties
a. Bilski
i. The Machine-or-Transformation Test has no basis in § 101, which is to
be construed broadly.
ii. Machine-or-Transformation Test conflicts with the Court’s precedent,
specifically, Benson and Flook, which both stated that a process may
be eligible if it does not meet the Machine-or-Transformation Test.
iii. There is no separate test for eligibility of processes (i.e., processes,
machines, compositions and manufacturers are to all be evaluated
under the same standard).
iv. There is no basis for the Machine Prong.
v. Requiring under the Transformation Prong that a physical article or
chemical be transformed make the prong unsuitable for modern
industry (cites to the Dolbear v. American Bell Tel. Co., 126 U.S. 1,
534 (1888) (the “Telephone Cases”)).
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vi. Treating the Machine-or-Transformation Test as the “definitive” test is
contrary to the Court’s disinclination to adopt rigid rules in the patent
area (cites Festo, eBay, KSR).
vii. The appropriate standard is that a practical application of an abstract
idea, law of nature or natural phenomena is patent eligible.
b. Government
i. Section 101 protects industrial and technological processes and
excludes methods directed at organizing human activity.
ii. Each of the four statutory categories has been given “concrete”
definitions by the Court.
iii. Diehr summed up long line of cases construing “process” as used in
§ 101.
iv. The terms “process” and “art” have historically been understood to be
limited to industrial and technological methods and to not include
fields of purely human activity. (“Science”, as used in Art. I, § 8,
referred to the field of general knowledge and learning, which
included finance and business, while the “useful Arts” referred to
technology and industry).
v. The other statutory categories – manufacture, machine, and
composition of matter – involve technology and industry, which
supports the conclusion that “process” refers to technological and
industrial processes.
vi. The Machine-or-Transformation Test provides an effective means to
distinguish between industrial and technological process from other
processes.
vii. The Machine-or-Transformation Test accommodates evolving
technology.
(a) Software
(1). The Machine-or-Transformation Test contemplates that many
forms of software inventions are patent eligible, either as
concerning a machine (i.e., a general purpose computer, which
becomes a “particular” machine when programmed to perform
the process steps) or transforming matter (the writing and
rewriting of electronic data represented by magnetic changes in
the substrate of a hard disk or the altered state of transistors in
a memory chip).
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(2). (Software code by itself, uncouple from any storage medium or
computer, however, may be nothing more than an idea without
a physical embodiment.)
(b) Medical Diagnostic Techniques
(1). E.g., transformation of blood occurring in assay step may
constitute a sufficient transformation.
viii. With respect to “rigid” rules, the question of eligibility, which has
always been subject to concrete rule, is unlike the issues addressed in
Festo, eBay and KSR; in any event, in each of those cases, the Court
merely applied its own precedent.
ix. The practical application test does not sufficiently limit eligibility.
B. Issue # 2: Does the Federal Circuit’s holding contradict 35 U.S.C. § 273 by
barring, as a practical matter, patent protection for business methods?
a. 35 U.S.C. § 273, in essence, provides for a prior use defense to claims of
infringement of a business method patent.
b. Bilski argues that the Federal Circuit decision, by effectively barring
business method patents as a practical matter, conflict with § 273, which
implicitly recognizes that business method patents are patent eligible.
c. The Government notes that Federal Circuit was careful not to create
categorical exclusion for business method patents and argues that while
the Federal Circuit’s ruling may make it difficult to get business method
patents as practical matter, as a legal matter, they are not barred and thus,
there is no inherent conflict between the Machine-or-Transformation Test
and statute.
C. What will the Court decide? The range of possibilities may be characterized as
follows.
1. Affirm decision in its entirety.
2. Affirm decision while clarifying that the Machine-or-Transformation Test is
not the only test, but leaving it to lower courts to develop other tests if needed.
3. Affirm decision while clarifying that the Machine-or-Transformation Test is
not the only test and holding that where patentee cannot meet Machine-orTransformation Test, it may nonetheless establish eligibility by establishing
that the claimed process is more than abstract idea, etc.
4. Affirm decision, but hold that a patentee/patent applicant need only show that
the claimed process is more than an abstract idea, etc. to establish eligibility.
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5. Overturn the decision (i.e., hold that Bilski claim is eligible as, e.g., a
transformation of legal obligations).
D. Other Issues to Look for:
1. Transformation Prong: Is the transformation of electronic signals and the
like a transformation of matter for the purposes of determining eligibility?
a. In the Telephone Cases, the Court has recognized the patentability of
processes involving generation and modification of electrical and other
forms of signals.
i. One of Alexander Graham Bell’s claims involved in those cases was
for a “method of and apparatus for transmitting vocal or other sounds
telegraphically . . . by causing electrical undulations, similar in form to
the vibrations of the air accompanying the said vocal or other sounds .
. . .” 126 U.S. at 531. As described in the specification, the invention
consisted “in the employment of a vibratory or undulatory current of
electricity, in contradistinction to a merely intermittent or pulsatory
current, and of a method of, and apparatus for, producing electrical
undulations upon the line wire.” Id.
ii. In sustaining the patentability of the claimed method portion of the
claim as an “art” or “process” (the two words have historically been
used interchangeably in patent law), independent of the particular
means or device for creating them, the Court pointed out that the
generation of the electrical signals inherently required a transformation
from that which existed in nature: “In this art — or, what is the same
thing under the patent law, this process, this way of transmitting
speech — electricity, one of the forces of nature, is employed; but
electricity, left to itself, will not do what is wanted. The art consists in
so controlling the force as to make it accomplish the purpose.” 126
U.S. at 532.
b. The Court’s holding that the Bell claim met the statutory definition of a
patentable “useful art,” has been repeatedly cited with approval. See, e.g.,
Benson, 409 U.S. at 68-69; Expanded Metal Co. v. Bradford, 214 U.S.
366, 384, 385 (1909) (citing the Telephone Cases, among others, to
illustrate the breadth of processes that can be properly claimed by a
patent); Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68, 76-77
(1895) (referring to the Telephone Cases as “the most important case in
which a patent for a process was considered”).
c. Notably, however, Bell’s claim would not have survived the
“transformation” test as construed the Federal Circuit since the claim “did
not specify any particular type of data; nor … specify how or from where
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the data was obtained or what the data represented;” nor provide that the
signal being generated convey an image of a physical object.
i. Examples of other patents that would not satisfy the Federal Circuit’s
standard for processes:
(a) U.S. Patent No. 1,342,885 (Armstrong), which disclosed the
process for converting radio signals that made FM transmissions
feasible.
(b) U.S. Patent No. 4,901,307 (Gilhousen), which, in claim 33,
claimed a fundamental process for cell phone communication
comprised of various steps for providing, converting and
transmitting communication signals.
d. There is no transformation of electric current or the like in the Bilski
claim, and therefore, In re Bilski does not necessarily give the Court a
basis to address the issue. However, were it to clarify that transformation
of electronic signals and the like is an eligible transformation, the
Machine-or-Transformation Test would be very broad, so much so that
even if it is not sole test, it may as a practical matter be the only test that
parties rely on in the foreseeable future.
2. Machine Prong: Is a general purpose computer a “particular machine”?
a. The Federal Circuit’s View
i. As noted above the Federal Circuit highlighted the issue in In re Bilski,
but declined to resolve it because the Bilski claim did not recite the use
of a computer.
ii. The Federal Circuit may have tipped its hand on the issue in its In re
Comiskey decision, 499 F.3d 1365 (Fed. Cir. 2007), and revised
decision, 545 F.3d 967 (Fed. Cir. 2009).
(a) In the original decision, the Federal Circuit remanded to the PTO
the question of “whether the addition of general purpose computers
or modern communication devices to Comiskey's otherwise
unpatentable mental process would have been non-obvious to a
person of ordinary skill in the art.” 499 F.3d at 1380-81.
(b) After In re Bilski, the Federal Circuit ordered en banc that the
opinion be revised, 89 U.S.P.Q.2D (BNA) 1641. In the revised
opinion, the discussion of whether the claimed tied to a computer
was obviousness was deleted and replaced with: “As to all of these
claims, which under the broadest reasonable interpretation recite
the use of a machine, we think that the § 101 question should be
addressed in the first instance by the PTO. We therefore remand to
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the PTO to consider whether independent claims 17 and 46 (with
dependent claims 18-29, 31, 47-57, and 59) and dependent claims
15, 30, 44, and 58 recite patentable subject matter under § 101.”
545 F.3d at 980.
(c) If the Federal Circuit were of that view that tying a process to a
general purpose computer was sufficient to satisfy eligibility, it is
unlikely that it would have remanded on the question because once
the PTO’s decision was again appealed, remand would again be
required to address the original question of obviousness.
b. Additional Information about Machine Prong
i. The “particular machine” aspect of the Machine-or-Transformation
Test was developed more than 150 years ago as a way to satisfy the
Court’s concern that a patent not be used to give the patentee exclusive
rights in a fundamental principle (i.e., a law of nature, abstract idea or
natural phenomena): where a process is tied to a “particular” machine,
all other means of executing the process remain open to the public
such that there is no danger of giving one patentee exclusive rights in
natural principle or a means of usefully employing such principles that
he or she did not invent.
ii. This concern was initially articulated by the Court’s holding in
O’Reilly v. Morse, 56 U.S. 62 (1854), where the Court rejected a claim
directed at the use of electro-magnetism, however created, for
imprinting intelligible characters as not patent eligible. Id. at 120. The
rationale for this result, as expressed by the court, was the need to
assure that the inventor’s patent was limited to the process that he
invented and would not foreclose others from inventing different, and
potentially superior methods of accomplishing similar results. Id. at
113.
iii. Notably, there is no requirement that the “particular machine” be novel
or specifically designed for use in the claimed process. Cf. Cochrane v.
Deener, 94 U.S. 780, 788 (1876) (“The machinery pointed out as
suitable to perform the process may or may not be new or patentable;
whilst the process itself may be altogether new, and produce an
entirely new result.”). Indeed, section 100(b) of the Patent specifically
defines the term “process” as including “a new use of a known
process, machine, manufacture, composition of matter, or material.”
(Emphasis added.) Thus, there can be no requirement that a
“particular” machine be one specially designed to carry out the
claimed process nor that it be novel in itself.
iv. Again, because the Bilski claim does not recite the use of a computer,
the Court does not necessarily have a basis to address the issue.
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However, were it to hold that the recitation of a general purpose
computer were sufficient to satisfy the Machine Prong, that prong
would be very broad.
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Biography
Eric Bensen is a coauthor of Milgrim on Trade Secrets (Matthew Bender) and
Milgrim on Licensing (Matthew Bender), two leading intellectual property treatises, and
Bensen & Myers on Litigation Management (LexisNexis 2009), a groundbreaking new
book that sets forth a sophisticated, but easy to implement methodology for effective and
efficient management of even the most complex litigations. He advises clients on
complex intellectual property and litigation management issues.
Mr. Bensen has taught patent, copyright, and intellectual property licensing
classes as a Visiting Assistant Professor of Law at Hofstra University School of Law.
Earlier in his career, Mr. Bensen was in practice for more than 12 years with Paul,
Hastings, Janofsky & Walker LLP and Dewey Ballantine LLP. During that time, he led
attorney teams in successful litigations of highly complex patent and trade secret cases
before the International Trade Commission and a wide range of intellectual property
cases in federal and state courts throughout the country. He also negotiated sophisticated
copyright, patent and trademark licenses both here and abroad and advised clients on
intellectual property licensing issues arising in large transactional matters. His clients
included technology, pharmaceutical, medical device, agricultural, entertainment and
consumer product companies. He was nominated by corporate counsel as one of the
leading lawyers in the United States in both intellectual property and litigation in
Legal500’s 2007 surveys.
In addition to other writing, Mr. Bensen has authored or co-authored of a number of
scholarly articles on intellectual patent law, including, Eric E. Bensen & Danielle M.
White, Using Apportionment to Rein in the Georgia-Pacific Factors, 9 COLUMBIA SCI. &
TECH. L. REV. 1 (Fall 2007), Eric E. Bensen, Apportionment of Lost Profits in
Contemporary Patent Damages Cases, 10 VA. J.L. & TECH 8 (2005), and other articles
appearing in the Hofstra Law Review, the Federal Circuit Bar Journal and the Los
Angeles Daily Journal. He regularly writes Expert Commentaries for LexisNexis on
significant intellectual property decisions and emerging issues in intellectual property law
such as, “Eric E. Bensen on the Federal Circuit’s Landmark Decision Regarding the
Patent Eligibility of Process Claims Under 35 U.S.C. § 101: In re Bilski, 2007-1130
(Fed. Cir. Oct. 30, 2008).”
Mr. Bensen regularly speaks on intellectual property issues. Among other
engagements, he spoke at the European Patent Lawyers Association’s (“EPLAW”)
Congress in Brussels in 2007 to provide expertise on U.S. patent damages law in
connection with EPLAW’s consideration of Article 13 (Damages) of the Directive
2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the
Enforcement of Intellectual Property Rights. He has also spoken on intellectual property
matters before the New York State Bar Association Intellectual Property Section, the
Patents Committee of the Bar Association of the City of New York and Intellectual
Property Owner’s Association Licensing Committee. In early 2009, he was a featured
speaker for the LexisNexis Webinar, “Software Patents after Bilski.”
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He is admitted to the bar of the State of New York, the United States Supreme
Court, the United States Court of Appeals for Federal Circuit and the District Courts for
the Southern and Eastern Districts of New York. He received his J.D. in 1996 from
Hofstra University School of Law where he was an associate editor of the Hofstra Law
Review.
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