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Title: Kristen Jakobsen Osenga


1
Bilski and BeyondChanging IP for the
Information Age
  • Kristen Jakobsen Osenga
  • University of Richmond School of Law

2
(No Transcript)
3
Overview
  • Other Notable Subject Matter Cases
  • Implications for Business Methods, Software Tax
    Inventions

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4
Other Notable 101 Cases
  • In re Nuijten (CAFC)
  • In re Ferguson (CAFC, SCT)

5
In re Nuijten
  • 500 F.3d 1346 (CAFC 2007, cert denied 2008)
  • Method for introducing watermark into signals
    with reduced distortion allowed
  • Storage medium with method allowed
  • Signal encoded via claimed method - rejected

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6
In re Nuijten
  • Examiner, BPAI reject signal claim
  • CAFC (JJ. Gajarsa, Linn, Moore)
  • Majority
  • A transitory, propagating signal . . . is not a
    process, machine, manufacture, or composition of
    matter.
  • Process steps, machine made of parts,
    manufacture must be tangible
  • Dissent (J. Linn)
  • Article of manufacture (made by man)

7
In re Ferguson
  • 558 F.3d 1359 (CAFC 2009)
  • Method of marketing a product, comprising
  • Developing a shared marketing force
  • Using shared marketing force to market plurality
    of products from plurality of companies
  • Obtaining share of total profits from each of
    plurality of companies and
  • Obtaining an exclusive right to market each of
    plurality of products.

8
In re Ferguson
  • A paradigm for marketing software, comprising
  • A marketing company that markets software from a
    plurality of different . . . software companies,
    and carries out and pays for operations
    associated with marketing of software for all of
    said different . . . software companies

9
In re Ferguson
  • Examiner rejected under other patentability
    requirements, BPAI raised 101
  • CAFC (JJ. Newman, Mayer, Gajarsa)
  • Method claims fail Bilskis machine-or-transformat
    ion test
  • Paradigm claims are not drawn to any of the four
    statutory categories, but rather abstract idea
  • J. Newman concurs in result, but for 103
    reasons, not subject matter eligibility

10
In re Ferguson
  • Petition for writ of certiorari filed June 2,
    2009
  • Are claims that recite business methods
    unpatentable per se when they are not tied to a
    machine and do not preempt any mathematical
    algorithm?
  • Is a claim unpatentable under 101 as being an
    abstract idea because it does not come within the
    machine-or-transformation test?

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11
Implications for business methods, software, tax
  • What do we do now???

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12
What are the courts making of this?
  • Some district court cases, many BPAI cases
  • Compilation of post-Bilski and other subject
    matter-based opinions available at
  • www.aipla.org/MS/ElectronicandComputerLaw
  • Take-away lessons?

13
Fort Properties Inc. v. American Master Lease
(C.D. Cal. 1/22/09)
  • Method for creating real estate investment
    instrument
  • Aggregating real property, encumbering property,
    creating plurality of deedshares by dividing
    title
  • PTO oks under State Street (useful, concrete,
    tangible), ct kills under Bilski
    (machine-or-transformation)
  • Need not be performed by machine
  • Manipulates only legal ownerships (not physical)

14
Cybersource Corp. v. Retail Decisions (N.D. Cal.
3/27/09)
  • Method Beauregard claims
  • A method for verifying creditcard transaction
    over the Internet
  • Obtaining information about other transactions
  • Constructing a map of credit card numbers based
    on other transactions and
  • Utilizing map to determine if transaction is
    valid.

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15
Cybersource Corp. v. Retail Decisions (N.D. Cal.
3/27/09)
  • No transformation
  • Credit card numbers are notphysical or
    representations
  • Abstraction only relationship between card
    holder and card issuer
  • No machine
  • Over the internet does not tie to a particular
    machine
  • Internet abstraction, no meaningful limit

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16
Cybersource Corp. v. Retail Decisions (N.D. Cal.
3/27/09)
  • Computer readable medium containing program
    instructions for detecting fraud in a transaction
    . . . over the internet, wherein execution of the
    program instructions by one or more processors
    causes one or more processors to carry out the
    steps of
  • Obtaining credit card information
  • Verifying based on plurality of parameters

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17
Cybersource Corp. v. Retail Decisions (N.D. Cal.
3/27/09)
  • No exemption from Bilski test for Beauregard-type
    claims
  • Programmed computer (generality) not machine
  • Process steps not transformation

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18
Every Penny Counts Inc. v. Bank of America Corp.
(M.D. Fla. 5/27/09)
  • System (for payors to donate) comprising
  • A network
  • Entry means coupled to network
  • Identification entering means in entry means
    coupled to network
  • Said network having computing means
  • Having data concerning payor
  • Being responsive to data about payment
  • Apportioning excess payment

19
Every Penny Counts Inc. v. Bank of America Corp.
(M.D. Fla. 5/27/09)
  • System process for 101 purposes (???)
  • Simply because the process at issue requires
    machine or computers to work, however, does not
    mean that the process or system is a machine.
  • No transformation, no machine not eligible for
    patenting

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20
A Sampling of Cases from the Board
21
BPAI Case Sampler Algorithms
  • Ex parte Cornea-Hasegan (2008-4742, 1/13/09)
  • Method for predicting result of floating point
    mathematical operations calculating results
  • No machine (general processor, unspecified
    programming)
  • No transformation (just numbers)
  • A computer readable media including program for
    predicting result article of manufacture, but
    fails under Bilski

22
BPAI Case Sampler - Machines
  • Ex parte Uceda-Sosa (2008-1632, 11/18/08)
  • Method of representing information
  • Middleware module to represent store
    information
  • A library having a module to generate an
    information container, said module allowing for
    (the claimed method)
  • An apparatus to represent store information
  • A storage unit containing a library having a
    module to generate information container, said
    module allowing for (method)
  • A signal-bearing medium tangibly embodying a
    program of machine readable instructions to
    perform the claimed method

23
BPAI Case Sampler - Machines
  • Method claim fails machine-or-transformation
  • Middleware claim fails because functionally
    descriptive
  • Module is simply a computer software module
    that is used to represent and store information .
    . . However, the claimed software module is not
    tangibly embodied on a computer-readable medium
    and is therefore functional descriptive
    material.
  • Apparatus claim are 101 subject matter
  • Signal claim fails under Nuijten

24
BPAI Case Sampler - Software
  • Ex parte Seshadri (2008-2854, 2/27/09)
  • A computer implemented notification system
    comprising the following computer executable
    components
  • A component executing on a computer
  • A database engine and
  • A notification server
  • Examiner said software per se BPAI says no
  • Claims recite a component executing on a
    computer, not software per se (OK under 101)

25
BPAI Sampler Computer Media
  • Ex parte Bo Li (2008-1213, 11/6/08)
  • Computer usable medium having computer readable
    program embodied thereon
  • BPAI reverses examiners 101 rejection
  • Nuijten does not remove validity of Beauregard
    claims

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26
BPAI Sampler Computer Media
  • Ex parte Kumar (2008-1649, 11/19/08)
  • Tangible computer accessible medium, comprising
    software instructions executable to implement
  • BPAI doesnt act under 101, but cautions that a
    computer readable medium comprising a modulated
    signal may not be statutory subject matter
    post-Nuijten

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27
BPAI Sampler Computer Media
  • Ex parte Brubacher (2008-1508, 1/22/09)
  • Computer-readable medium having
    computer-executable instructions
  • BPAI upholds examiners 101 rejection because
    computer-readable medium having
    computer-executable instructions encompasses
    signals, not subject matter per Nuijten

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28
BPAI Sampler Computer Media
  • Ex parte Salesin (2008-2578, 5/22/09)
  • Computer-readable medium having
    computer-executable instructions
  • BPAI initiates 101 rejection
  • A computer readable medium includes a signal
    embodied in a carrier wave. A signal embodied in
    a carrier wave is not statutory subject matter
    because it does not fall within any of the four
    categories of statutory subject matter. See In
    re Nuijten.

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29
BPAI Sampler Data Structures
  • Ex parte Hoya (2008-0024, 2/26/09)
  • A memory system adapted to model physiological
    functionscomprising
  • A short-term memory neural network unit and
  • A long-term memory neural network unit
  • Not statutory subject matter under Bilski and
    Nuijten because claim can cover embodiment
    lacking tangible structure

30
BPAI Sampler Data Structures
  • Ex parte Klosterman (2008-1649, 4/20/09)
  • A computer program product for use in an
    information handling systemcomprising a
    plurality of instructions
  • BPAI initiates 101 rejection
  • A computer program product does not fall within
    any of the four classes of 101. These claims
    recite a computer program product data
    structureThere is no claim language . . . which
    defines any structural and functional
    interrelationship between the data structure and
    the computer.

31
BPAI Sampler Refining Bilski
  • Ex parte Sesek (2009-0458, 3/25/09)
  • Method of notifying a mail carrier of anticipated
    load by monitoring mail, producing a forecast,
    notifying mail carrier of forecast, and
    notifying of changes
  • Not tied to a machine
  • Not a transformation, does not transform mail or
    any article
  • Transmits a forecast, not physical or
    representation

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32
BPAI Sampler Refining Bilski
  • Ex parte Harris (2007-0325, 1/13/09)
  • Method of conducting an auction over a network
  • Allowing users to submit bids over network
  • Collecting bids on server
  • Defining secret rules for auction
  • Not machine
  • Network, server not specified electronic, could
    be human (and not limited)
  • Not a transformation (data isnt physical)

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33
BPAI Sampler Refining Bilski
  • Is it AND or OR?
  • Ex parte Becker (2008-2064, 1/26/09)
  • To the extent that Appellants claims may
    transform data, we note that transformation of
    data, without a machine, is insufficient to
    establish patent eligibility under 101.

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34
BPAI Sampler None of the Four
  • Ex parte Daughtrey (2008-0202, 4/8/09)
  • A user interfacecomprising a fare evaluation
    result table.
  • User Interface is not one of the four
    categories
  • Ex parte Johnson (2009-0470, 6/10/09)
  • A network collaboration tool . . . comprising web
    browser software, a graphical collaboration tool,
    and a server process
  • Network collaboration tool is not one of the
    four

35
Pointy Headed Thoughts
  • Whats wrong with Bilski
  • Problems with business method patents
  • How they should handle the problems
  • Special issues for tax methods

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36
Take Away Lessons? (from scratch)
  • Add a machine
  • method step by a programmed computer
  • Make sure theres support in the spec for
    exemplary hardware
  • Use non-signal computer readable media
  • storage devices
  • Multi-format claims
  • Machine, process, article of manufacture

37
Take Away Lessons? (pending/issued)
  • Add a machine and/or non-signal computer readable
    mediaif you can
  • Support in spec is great
  • Inherency/PHOSITA argument if not
  • Tougher path but it could work
  • Potential for reissue?
  • New interpretation of 101 can help meet reissue
    standard (invalid because patentee claimed more
    or less than he had a right to do so)
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