clasttt, mu - thoughts on bilski arguments today?
One thought arose from the summary of oral argument Crouch posted yesterday:
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The State Street case was discussed and Justices Stevens, Scalia and Breyer wanted to know whether this case would come out the same way if the Federal Circuit's test were utilized. The Justices appeared to expect a "no" answer, but Respondent indicated that State Street would have ended with the same result because the claims were directed to a machine (a computer).
This led to a discussion regarding the Respondent's apparent position, set forth in its last footnote on its brief, which Chief Justice Roberts was troubled about,
that if the method is simply tied to a calculator or a computer, then it would be patentable, and this seemed to place form over substance. Both Justices Kennedy and Stevens were curious with respect to what was "transformed" by the State Street computer program, indicating that it appeared to be merely a new process on an old machine. The Respondent did not have a ready answer, deflecting the question by indicating that hardware could be present which would transform the machine.
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This perfectly demonstrates to me how SCOTUS, along with many others, simply fails to grasp that the Patent Act is an interrelated system of provisions that serve different purposes. Like the Chief Justice, numerous commentators have remarked that "simply tying a method to a computer shouldn't make it patentable." But this overlooks the distinctions between subject matter concerns and prior art concerns. The purpose of 101 is (arguably) to define
what sort of subject matter is patentable,
not to set a threshold of
inventiveness for that subject matter--this is the role of 102 and 103.
By limiting a method to performance by a computer, one clearly prevents the claim from reading on, e.g., mental processes. From the standpoint of a potential infringer, this is hardly a matter of "form over substance," because the limitation positively states a requirement of infringement. IT MAY WELL BE that this limitation ALONE is not sufficient to render the method patentable, because the method might have been well known, and one of ordinary skill might have found it obvious to implement the method in a computer. But this is an OBVIOUSNESS inquiry subject to 103 jurisprudence, not a SUBJECT MATTER inquiry.
Seems to me that Roberts and others continually mistake necessary conditions for sufficient ones. Qualifying subject matter is necessary, but not sufficient for patentability. 101 serves a different function from 102/103.
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