U.S. Supreme Court, March 2008
TODAY’S NEWS is encouraging because there are finally signs of resistance rather than cowardly settlement. The Facebook case that we mentioned the other day is summoning re Bilski [1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33] as precedence to fend off the patent trolls.
Nick O’Neill of AllFacebook thinks Facebook might have to pay up (and he has a copy of the patent up on his site, for the curious). I’m not sure. A top patent court has recently ruled against the validity of patents that don’t involve some sort of “machine or transformation” — I wonder what “machine or transformation” Leader has to offer here? I’m no legal expert, but it’s not clear to me, after reading through the patent. I’m guessing Facebook, if not the rest of the web-based tech industry, won’t be losing too much sleep over it tonight.
Holders of software patents are already warned that their patents might be worthless and that they may require revision.
Clients with issued software patents, medical method patents, and other similar patents may want to run a “Bilski test” on the claims of those patents, particularly if there is a likelihood that the patents will be asserted in the future. If those patents raise any concerns, it may be advisable to correct potential problems or insure against them (e.g., by adding new, more-patentable claims) via reissue proceedings or continuation practice. However, clients should understand that amendments made in a reissue proceeding can provide competitors with additional defenses against a patent. As for patent applications that are still pending, applicants should develop strategies for adding the sorts of elements identified by the Federal Circuit to the claims – in most cases, we expect this can be done without significantly affecting the strength of the claims. For patents currently in litigation, defendants should re-check their defenses, but should be careful not to over-read Bilski, and plaintiffs may really want to look into correcting suspect patents.
As we showed back in May, even the pharmaceuticals are beginning to question the notion of intellectual monopolies as they decide to collaborate instead. Irrespective of this, there’s some fear there of the Bilski ruling.
In re Bilski: Trouble Ahead for Biotech?
While Bilski purports to clarify the test for analyzing the patent-eligibility of processes, many key questions remain unanswered: When is a process sufficiently tied to a particular apparatus or machine? When is the use of a recited machine more than “insignificant extra-solution activity”? When is the claimed transformation “central to the purpose of the claimed process”? When does a claimed invention foreclose substantially all uses of a fundamental principle, such as an algorithm or natural phenomenon? Does Bilski have implications for method of treatment claims? And what about non-process claims, such as claims to a peptide or polynucleotide that was isolated and purified from nature?
Those companies ought to concentrate on bringing drugs to markets in urgent need. Patents encourage overpricing and isolation, i.e. slow progress. They often lead to death and make a morbid society, even literally speaking. So whatever the outcome of re Bilski may be, it’s a clearly step in the right direction, which is rare.
On the downside, IBM and Cisco seem to be playing ball with the patent trolls of Intellectual Ventures, claiming that they do so in order to battle other trolls.
Now, two former executives of Myhrvold’s Bellevue patent licensing firm are striking out on their own with support from IBM and Cisco to serve as a counterweight to patent holding firms like Intellectual Ventures. Today, RPX Corp. is launching what it dubs “defensive patent aggregation” — a membership club of sorts where large and small technology companies pool capital in order to order to protect themselves from patent litigation.