the patentability
of software-related
inventions has been
hotly debated since
the mid-1960s.

become patentable just because the claim mentions the use of a calculator in carrying out the method.

Justice Roberts stated his view that “tangential and insignificant” uses of machines in a claimed process should not render the process patentable. Stewart agreed that the use of a conventional piece of technology for its conventional functionality should not change the patent calculus for claims mentioning them.

A much more difficult set of questions arises, however, with respect to computers. Arguing for the PTO, Stewart asserted that a programmed computer to carry out a claimed method would satisfy the machine-or-transformation test. Several Justices did not find this argument persuasive.

Justice Breyer, for instance, expressed concern that if the Court accepted this view, then business methods such as Bilski’s could be easily become patentable by mentioning use of computers to carry out the methods. This would undermine the Court’s clear intention that such methods not be patentable.

Justice Stevens contested the view that a programmed computer was a new machine, given that the only new thing about the computer was a software process being run on it.

Also unclear is what kinds of trans-
formations will satisfy the test. Back
in 1972, the Court called into ques-
tion the patentability of processes that
transform data in Gottschalk v. Benson.
That case upheld the PTO’s denial of a
patent for an algorithm for converting
binary coded decimals into pure binary
form. The only software-related process
that the Court has ever deemed patent-
able—and that only by a 5-4 decision—
was Diamond v. Diehr in 1981. Diehr
involved a rubber-curing process that
transformed matter from one physical
state to another, which utilized a com-
puter program in conjunction with it.

Conclusion

Normally I would wait until the Court published its decision before writing a “Legally Speaking” column about it and its implications for computing professionals. Bilski was a rare instance in which the oral argument illuminated the Court’s views on the merits and clearly signaled the direction of the Court’s thinking about the reasoning it would use to justify its ruling.

(I should confess, however, that one reason I decided to write about Bilski now is because it was a case in which I submitted an amicus brief in support of the PTO, and it was the first oral argument before the U.S. Supreme Court I ever attended. It was such a thrill.)

The Bilski ruling will likely be unanimous. The only question is whether there will be one opinion or two or three. In some recent intellectual property cases, the unanimous opinion for the Court has been fairly short and straightforward, supplemented by concurring opinions that express some Justices’ views about issues not addressed in the main opinion for the Court.

It would not surprise me if the Justices did a little (unpatentable) horse trading in their post-argument conference on Bilski under which they agreed to issue only one opinion in this case and to take a software-related patent subject matter case when the opportunity arose, as it almost certainly will very soon.

The patentability of software-related inventions has been hotly debated since the mid-1960s. There is still no resolution in sight. But the Court is focused on software-related patent issues again. So we can expect some significant developments in the next two or three years.

 

Pamela Samuelson ( [e-mail]) is the richard M. sherman Distinguished Professor of Law and Information at the university of California, berkeley Copyright held by author.

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