Patent Law

Lever

By Gary Odom and Jordan Kuhn

Bernard Bilski and his buddy got a nebulous notion about risk management. So they hired a run-of-the-mill prosecutor to scratch a sketchy spec and draft some bodaciously crappy claims. The PTO pitched the poop. But then the CAFC fouled the plumbing with precarious precedent, so the Bilski bauble floated to the top, where the Supreme Court has the final flush, but the only needed motion is reiteration.

Amici briefs aplenty. Cogently potent in its brevity and conservatism, one weighs in at a mere 2,381 words.

Summary of Argument

Bilski's claims are not patentable first and foremost because they lack definiteness, and so are not valid under 35 U.S.C. §112 ¶2. Finding this dispositive on narrow grounds, the Court need not reach to the broader issue of §101.
But dicta by the Court on §112 ¶2 and §101 are crucial, because the current guidelines from the Federal Circuit for both §112 ¶2 and §101 stray from statute and well-grounded Supreme Court precedents.

The law broadly affords patentable subject matter under 35 U.S.C. §101: "...any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof..." The Court affirmed this with regard to process patentability in Diamond v. Diehr. The Federal Circuit instead has inflexibly interpreted as mandate what the Court had indicated as but "clues."

The law specifically states that the quid pro quo of a patent grant requires "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The Federal Circuit instead has eviscerated this requirement, finding that a "claim will be found indefinite only if it 'is insolubly ambiguous, and no narrowing construction can properly be adopted....'" ⁴

This brief suggests nothing more than the Court affirm its long-standing precedents on §112 ¶2 and §101, and so put the patent grant back on the firm ground of requiring clarity while promoting "the progress of Science and useful Arts." ⁵

⁴ Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
⁵ U.S. Constitution, Article 1, § 8.

1. Applying Statute In Construing Claims & Their Validity

There is a logical sequence for construction of claims. The first step is understanding what a claim means. This is essential to establishing the boundaries of the claim. As such, the first hurdle in claim construction is §112 ¶2, determining the clarity of the claimed boundaries.

Upon passing that first test, the second hurdle is whether a claim is supported by its attendant specification, under §112 ¶1. So, §112 serves as the first gatekeeper, that claims are clear and enabled.

The hurdle then becomes whether the claim is patentable subject matter under §101. While §112, the first gatekeeper, is stern, §101 is an obliging gatekeeper, proscribing only "laws of nature, natural phenomena, and abstract ideas." ⁶

Finally, the worthiness of a claim is tested for its novelty in light of §102 and §103. This third gatekeeper requires "more than the predictable use of prior art elements according to their established functions." ⁷

As such, the sequence of claim analysis arcs from matters of law to a matter of fact, all from the perspective of "any person skilled in the art to which it pertains."

⁶ Diamond v. Diehr, 450 U.S. 175, 185 (1981).
⁷ KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

Read the entire amicus brief.

Full post as published by The Patent Prospector on July 27, 2009 (boomark / email).