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Business Methods Patents
Trends
Timothy Hadlock Chevron Corporation
Presented at IP Law Summit
Las Vegas, NV
June 3, 2008
© 2008 Timothy J. Hadlock
2
Outline
How We Got Here
Recent Developments Indirectly
Related to Business Method
Patents
What Does the Future Hold:
In re Bilski
3
Outline: How We Got Here (Part 1)
The Birth: (State Street, AT&T)
The Boom: Dot-Com Bubble
The Backlash: (e.g., One Click Patent
Case)
The PTO’s Response (double reviews)
4
Business Methods Patents
Timeline
Apr. 1999
1998 2005 Dec. 1999
~May 2000
5
e-Patents – Class 705 Statistics
0
1000
2000
3000
4000
5000
6000
7000
8000
9000
10000
Applications Filed Issued 1 Year Total Issued
Applications Filed 330 584 927 1340 2821 7800 8700 6782 6593 6200
Issued 1 Year 126 144 206 420 585 899 433 493 495 282
Total Issued 126 270 476 896 1481 2380 2813 3306 3801 4083
1995 1996 1997 1998 1999 2000 2001 2002 2003 2004
6
e-Patents – Class 705 Statistics (cont.)
0
20
40
60
80
100
120
140
1999 2000 2001 2002 2003 2004
#Examiners
7
What are Business Method
Patents
8
What Distinguishes a “Business
Method” Patent
Utility
Apparatus, Machine, System
Composition Method, Process
Article of Mfg.
CD-ROM Bus. Method,
IT Process System Enabling
Bus. Method,
IT Process
9
What Distinguishes a “Business Method” Patent
(cont.)
Method
Manufacture
Composition
Machine
Software (method/process) State Street –
1. A data processing
system for managing a
financial services . . .
comprising:
(a) computer processor
means for processing
data;
Business Method
10
Sample Areas for Business Method
Patents
Customer Relationship
Management
Transaction Processing
Financial Management
Product Distribution
Supply Chain Management
Inventory Management
11
Public/Industry Complaints
Aggressive Patent Litigants Pose Growing Threat to Big Business, Wall Street Journal, 2005.
Patently Obvious: The Internet has Fueled an Unhealthy Demand for Dubious Patents Covering Common Business Practices, L.A. Times, 2006.
Patents Out of Control, USA Today, 2004.
IBM Establishes Worldwide Patent Policy to Promote Innovation (2006).
BountyQuest.com
12
§ 273. Defense to infringement based on earlier
inventor (Nov. 29, 1999)(American Inventors
Protection Act/First Inventor Defense Act)
35 U.S.C. 273(a)(3) the term "method" means a method of doing or conducting business; and
35 U.S.C. 273(b) Defense to infringement. (1) In general. It shall be a defense to an action for infringement under section 271 . . . with respect to any subject matter that would otherwise infringe one or more claims for a method if such person had, . . . actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter . . . .
13
PTO’S Response: USPTO - BUSINESS METHODS PATENT
INITIATIVE: AN ACTION PLAN (March 2000)
INDUSTRY OUTREACH
Customer Partnership
Roundtable Forum
Industry Feedback
QUALITY
Enhance Technical Training
Revise Examination Guidelines
Expand Current Search Activities
Mandatory Search
Second Review
Expand Sampling Size
14
One Proposed Definition: HR 5364, the Business
Method Patent Improvement Act of 2000 The term business method means:
(1) A method of:
(A) administering, managing, or otherwise
operating an enterprise or organization,
including a technique used in doing or
conducting business; or
(B) processing financial data;
(2) any technique used in athletics, instruction,
or personal skills; and
(3) any computer-assisted implementation of a
method described in paragraph (1) or a
technique described in paragraph (2).
15
How We Got Here (Part 2)
PTO Rejects Applications for Lack of Technical
Arts.
BPAI Rejects the Technical Arts Requirement.
(Ex Parte Lundgren).
Rise of NPE (Non-Practicing Entities), NPE Patent
Litigation, Contingency Fees, and the Eastern
District of Texas.
A Perfect Storm of the 3 Branches of Government
16
Recent Developments Indirectly Related
to Business Method Patents
17
Signal Claims: In re Neujten
Methods of Diagnosis of Diseases: Lab.
Corp. of America Holdings v. Metabolite
Labs.
Distributed Infringement: NTP v.
Research In Motion
Organized Efforts for Patent Reform
18
What Does the Future Hold:
In re Bilski
19
Return of the Subject Matter Rejection
In re Comiskey, 499 F.3d 1365 (Fed.
Cir. 2007)
In re Bilski, en banc, Fed. Cir., No.
2007-1130, Oral Argument held May 8,
2008.
20
The Issue
Software (method/process)
Business
Methods
Machine
Software (method/process)
Business
Methods
Machine
Composition
Article of Manufacture
Composition
Article of Manufacture
21
In re Bilski – Claim 1 A method for managing the consumption risk costs of a
commodity . . . comprising . . .:
(a) initiating a series of transactions between said commodity provider and consumers of said commodity . . .
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.
22
In re Bilski (en banc) - Questions Presented 2. What standard should govern in determining whether a
process is patent-eligible 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 & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?
23
§ 101 is the Gateway*
§ 112
§ 102
§ 103
§ 101
*Dier, 450 U.S. at 188; Flook, 437 U.S. at 593; State Street, 149 F.3d at 1372, n.2.
Patent
Application
24
35 U.S.C. §101
“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
therefore, subject to the conditions and
requirements of this title.”
§ 102, § 103, § 112
One may obtain a patent for his/her inventions
that meet the requirements of this title:
§101, § 102, § 103, § 112
25
“Pure” Business Method Patent Have
Issued
Methods and investment instruments for
performing tax-deferred real estate
exchanges. 6,292,788 (2001).
Systems and methods for making jury
selection determinations. 6,607,389
(2003).
26
Is the Future of Business Method Patents
Riding on the In re Bilski Case?
If Affirmed:
Business
Method
Patents
Barred
If Reversed:
Business
Method Patents
Continue
Stronger and
Broader than
Before
27
The Development of the Law on “Process”
U.S. CONSTITUTION: “Useful Arts”
35 U.S.C. 101 (1952 Patent Act): Process, Machine, Manufacture,
Composition.
35 U.S.C. 101(b): “The term "process" means process, art, or method, and
includes a new use of a known process, machine, manufacture, composition of
matter, or material.”
SUPREME COURT CASES:
Dier, 450 U.S. 175, (§101 did not change meaning of process)
Flook, 437 U.S. 584, Benson, 409 U.S. 63 (“Process” not literal)
(1) Excluding Laws of Nature, Physical Phenomena, Abstract Ideas
(2) Limiting Mental Processes to those Tied to 1 of the other 3 Subject Matters?
(3) Tying Not merely Post-Solution Activity
1793 Patent Act: Useful Art, Machine, Manufacture, Composition
28
The Development of the Law on “Process”
FED. CIR. CASES:
(1) Freeman-Walter-Abele Test (1978-1982)(applying Benson and Flook).
(2) In re Alappat, 33 F.3d 1526 (1994)(applying Diehr to replace FWA test)(a
“useful, concrete and tangible result” test).
(3) State Street Bank, 149 F.3d 1368, AT&T, 172 F.3d 1352: (Eliminating
Business Method Exception?)
(4) In re Comiskey, 499 F. 3d 1365 (2007): Mental Processes must be tied to
other statutory category?
(5) In re Bilski: ___________TBD_____________________?
29
Many, Many Issues Up in the Air
What does
“Concrete” Mean?
What does
“Tangible” Mean?
A Test or
a Standard?
What does
“Process” Mean?
What does
“Abstract Idea” Mean?
What does
“Mental Process” Mean?
Is the
Supreme Court’s
“Transformation”
“test” inclusive or
exclusive ?
Is this a
Legislative Issue?
What did State Street
and AT&T hold?
What did the Supreme Court Hold
in Benson, Flook, and Diehr?
Should there be a
“Technological Arts” Test?
Are any Limitation on
“Process”
Constitutionally or
Legislatively Based?
Does CAFC
have Authority to Add
a 4th Exemption? Is No Test
Judicially Efficient?
Overlap
of 101
and 112?
What does
“Transform” Mean?
30
Proffered Tests
“All sorts of Real World Activity”. (Bilski).
Useful, Tangible, and Concrete Result. (State Street).
Technological Arts (Electronic Frontier Foundation, PTO?).
Abstract Idea “tied to” a machine in an “nonconventional” way. (Various Amici).
Tied to a Machine in Embodies or Transforms subject matter to another State (PTO, Comiskey, Benson?, Flook?, Diehr?).
31
Precedential Language Relied Upon (and to be
Interpreted) “To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”, U.S. Const., Art. 1, §8, cl.8.
“The holding that the discovery of that method could not be patented as a ‘process’ forecloses a purely literal reading of §101.” Flook.
“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.” Benson and quoted in Diehr.
“Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Benson, Flook, Diehr.
“[M]ental processes . . . are not patentable. Benson.
32
Precedential Language Relied Upon (cont.)
“It is argued that a process patent must either be
tied to a particular machine or apparatus or must
operate to change articles or materials to a ‘different
state or thing.’ We do not hold that no process
patent could ever qualify if it did not meet the
requirements of our prior precedents.” Benson.
“ . . .Congress intended statutory subject matter to
‘include anything under the sun that is made by
man.’ ” Diehr, quoting Legislative History to 1952
Patent Act.
33
Precedential Language Relied Upon (cont.)
“Today, we hold that the transformation of data,
representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a
final share price, constitutes a practical application
of a mathematical algorithm, formula, or calculation,
because it produces ‘a useful, concrete and tangible
result’—a final share price momentarily fixed for
recording and reporting purposes and even
accepted and relied upon by regulatory authorities
and in subsequent trades.” State Street Bank.
34
Concerns of the PTO and Fed. Cir.
Fed. Cir.: Certainty, Uniformity, Guidance.
Federal Courts Improvement Act of 1982.
PTO: Burden on Examining Corp
“The Acting Commissioner . . . filed a petition . . . urging that the decision . . . will have a debilitating effect on the rapidly expanding computer "software" industry, and will require him to process thousands of additional patent applications.” Flook.
35
The Space of Uncertainty
Uncertainty
Mere Abstract Ideas
Or
Pure Mental Processes
Concrete,
Tangible Result
Or
Process Tied to
Machine or
Transforms Matter
Within §101 Outside §101
• Non-Computer-Implemented
Business Methods
• Sports Moves
• Computer-Implemented
Methods
• Chiropractic Adjustments
• Other Human Behavior
36
Bilski Raises an Issue of First Impression
Benson: Algorithm to convert BCD to pure binary.
Flook: Algorithm to update alarm limits.
Diehr: Process to Cure Rubber Using a Computer.
State Street: Computer System for Mutual Fund
Pool.
AT&T: Computer-based Process to Aid Telephone
Billing.
37
Law vs. Policy
Is the decision facing the Fed. Cir. a judicial or legislative one?
Should International Patent Harmonization Efforts Be Considered?
New Issues of “Distributed Infringement”?
New Issues of Importing the Product of a Patenting Process - §271(g)?
Can States Create Patent-Like Rights in “pure” Business Methods if the U.S. Does Not - Bonito Boats?
38
Is the Future of Business Method Patents
Riding on the In re Bilski Case?
If Affirmed:
Business
Method
Patents
Barred
If Reversed:
Business
Method Patents
Continue
Stronger and
Broader than
Before
Answer:
•Yes, for Business Methods Not Tied to One of Other
Statutory Categories.
•Possibly, for Computer-Implemented Business
Methods Tending Towards Abstract Ideas with Merely
“Post-Solution” Use of a Computer.
•Probably No, for Computer-Dependent Software-
Implemented Business Methods Such as in State
Street and AT&T.
39
Strategies in View if In re Bilski
Hope For The Best And Prepare For The
Worst
What Result Is Desirable Will Depend On Your Client’s Business And Patent Strategies
Fall Back To Trade Secret Protection Or Pre-emptive Publication
Lobbying for Legislative Override
40
Patents on Methods of Doing Business
Remain Valuable, but Controversial.
The Law is Still Developing (and will continue
for a long time).
Supreme Court or Legislative Limitations
Possible.
A Limiting Decision in In re Bilski Should: . . .
Conclusion
TIMOTHY HADLOCK Senior IP Counsel
Chevron Corporation 6001 Bollinger Canyon Road San Ramon, California 94583
Tel. 925.842.1884 [email protected]