The November 2008 Intellectual Property Colloquium discusses the recent In re Bilski patent decision by the CAFC. In that case, the court abandoned State Street‘s “useful, concrete and tangible result” test for the patentability of methods, and reaffirmed the “machine-or-transformation” test. Under this test, a method or process claim in a patent is patentable subject matter only if (a) it is tied to a particular machine or apparatus, or (b) it transforms a particular article into a different state or thing. (For further details, see Appeals Court Smacks Down Software And Business Method Patents without Apparatus or Transformative Powers, Patent Baristas; In re Bilski: Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article, Patently-O.)
Now this is mostly gobbledygook, of course, as you’d expect when a court attempts to find an objective or just rule when interpreting an unjust, non-objective, legislated scheme (on the problems with use of legislation to “make” law, see my Legislation and the Discovery of Law in a Free Society). A nice illustration of this can be found in the interchange between one of the lawyers and the CAFC judges during oral argument, which is excerpted in the podcast. See, e.g., 2:33 to 6:15 or so.
The attorney argues that “useful, concrete and tangible result” The judge asks the attorney what is the basis for this tripartite test, and what “concrete” and “tangible” mean, exactly. The attorney struggles to define these terms objectively--he says “concrete” means “reduced to a practical,” “useful” “result”; and that “tangible” means “being in the real world, doing something physical, active”. The judge notes that this is redundant with the “useful” part; so you really have “concrete” and “tangible”--he asks the lawyer, “and what does ‘concrete’ add”? “I don’t know,” replies the lawyer, exasperated, to much laughter in the courtroom. “I don’t either!” says the judge (around 6:00-6:15).
So much for objective law. Legislators introduce squishy terms with no objective meaning, no mooring in objective property boundaries and genuine justice, as the result of political compromise. Of course there is no way for courts to eke out just and objective rules that are based on such legal abominations.
