11 Mar 2009

Bilski - not fatal to the Microsoft suit against TomTom

Submitted by Troy Rollo

A number of commentators have suggested that In Re Bilski is fatal to the Microsoft suit against TomTom. Each of the three patents applying to Linux is drafted so as to tie them to use in a computer. On page 24 of the lead judgement from In Re Bilski is the following passage:

... issues specific to the machine implementation part of the test are not before us today. We leave to future cases the elaboration of the precise contours of machine implementation, as well as answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.

It is difficult to see how the court could have been clearer on this point. While In Re Bilski disowned a number of tests for patentability that it had become fashionable to use as a substitute for the Supreme Court test for process patentability, they were not prepared to decide anything on software patents in this case.

In Re Bilski involved a pure business method patent without being tied to any machine. It also did not involve the physical transformation of anything. The applicant sought to argue that the transformation of "information" was a physical transformation, but this was referring to "information" as an abstract concept, not to bits in a computer. Even on a favourable reading of the disowned tests, the Bilski patent would not have met the requirements. The court's concern was to clarify, setting aside some substitute formulations that had tended to cloud the real question. As such the decision is not the great watershed it is often made out to be.

The only comment that might be helpful in the decision is that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility". What is required for the limits to be "meaningful" is part of the question the court left for another day, and it is worth repeating the court's position on this point:

We leave to future cases... whether or when recitation of a computer suffices to tie a process claim to a particular machine.

To this I would add that the anti-Linux patents in Microsoft's suit against TomTom might be capable satisfying both limbs of the machine or transformation test set out in the Bilski decision. They are tied to a particular machine, and they transform the physical media - the Flash memory or the hard drive).