The Bilski decision is to patent attorneys what politics is to late night television – an unending source of material.
The reader may remember that the CAFC decided, in Bilski, that a process is patentable only if it is either “tied to a particular machine or apparatus,” or “it transforms a particular article into a different state or thing.” The CAFC went on to require that a court must examine whether “the use of a specific machine … imposes meaningful limits on the claim’s scope” or “is merely … insignificant extra-solution activity.” A subsequent district court decision, applying Bilski, held that “manipulation” of an “electronic signal representative of a physical object or substance” would not satisfy the “transformation” test.
Another district court has now decided that a system claim¹ was unpatentable subject matter in view of Bilski, ruling that “simply because the process at issue requires machines or computers to work … does not mean that the process or system is a machine.” The court went on to hold that the subject claim was “a mathematical algorithm [that] uses machines for data input and data output and to perform the required calculations. Those machines do not, however, impose any limit on the process itself. The involvement of the machine in the process is insignificant extra-solution activity …” (Every Penny Counts Inc. v. Bank of America Corp. et al.)
THE LESSON TO BE LEARNED: Trying to disguise business methods as “systems” apparently will not work. The Supreme Court has agreed to hear an appeal of Bilski. We will keep the reader informed – as we said, an unending source of material.
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¹ A system comprising:
- A network;
- entry means coupled to said network for entering into the network an amount being paid in a transaction by a payor;
- identification entering means in said entry means and coupled to said network for entering an identification of the payor;
- said network including computing means having data concerning the payor including an excess determinant established by the payor for the accounts;
- said computing means in said network being responsive to said data and said identification entering means for determining an excess payment on the basis of the determinant established by the payor, and
- said computing means in said network being responsive to the excess payment for apportioning, at least a part of the excess payment amount said accounts on the basis of the excess determined and established by the payor and on the basis of commands established by the payor and controlled by other than the payee.