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Graham v. John Deere was decided in 1966 and for the first time since the passage of the 1952 Patent Act addressed the issue of obviousness under 35 U.S.C. § 103.   As noted in the previous post, the Court also heard oral argument for two companion cases, Calmar v. Cook Chemical and Colgate-Palmolive v. Cook Chemical, on the same day that it heard oral argument for Graham v. John Deere.  Those cases also concerned the standard of obviousness.

The counsel for the patentee spent a good deal of his allotted oral argument time describing the invention as follows: [Listen].

The counsel for John Deere described the invention as follows: [Listen].

Counsel for John Deere addressed the obviousness factors here: [Listen].

I find the oral arguments of patent cases from the Supreme Court  during the 1960’s particularly interesting in that some of the justices are very candid about not being able to understand patent claims.  For example, Justice Black made these remarks: [Listen] and [Listen]. 

 You can listen to the entire oral argument from Graham v. John Deere here: [Listen].   I believe this is currently the only place on the internet where one can listen to this oral argument.

You can read the opinion from Graham v. John Deere here: [Read].

Since the Supreme Court has apparently decided not to release the recording of the oral argument of Bilski v. Kappos until the end of the term, I thought it might be of interest to revisit another important case from the Supreme Court’s history.  In Graham v. John Deere, the Supreme Court addressed the issue of non-obviousness under 35 U.S.C. section 103.  On the same day that the Supreme Court heard oral argument in Graham v. John Deere, it also heard the oral argument for two companion cases, Calmar v. Cook and Colgate-Palmolive v. Cook.

The Calmar v. Cook and Colgate-Palmolive v. Cook cases concerned a patent on a cap for a chemical sprayer that prevented leakage of chemicals from the container during shipment.  The attorney for the patentee argued that the patent was non-obvious and asserted 18 guideposts to help determine whether an invention was obvious:

 1) A long-felt need for the invention;

2)  An identified baffling problem;

3)  Skilled and experienced competitors trying to solve the problem, rather than nobody trying to solve the problem;

4)  Begging for an answer — pleas by customers to inventive company to solve the problem;

5)  Struggles that the parties had in attempting to come up with an answer;

6)  Failures of others in trying to solve the problem;

7) Was the problem truly solved by the inventor of the patent;

8 ) Consider the results of the solution (old result vs. new result) (application to new products)

9) Manner of arriving at the solution;

10)  The Patent Office did issue a patent;

11) A new combination of old elements;

12)  All the pertinent art was considered;

13) Utility of the invention — simple solution;

14)  Acceptance of the invention by competitors and the public;

15)  Recognition;

16)  Copying by others;

17) Competitor sought the same protection at the Patent Office;

18) Successes by patentee and infringer with the invention.

The following exchange between counsel for the patentee and Justice Black is one of the more interesting discussions from the oral argument where both parties agree that obviousness is a standard that escapes definition: [Listen].

You can listen to the entire oral argument here: [Listen].

The oral argument in Bilski v. Kappos took place yesterday at the U.S. Supreme Court.  The Court has released the transcript of the oral argument but has not released the audio recording of the argument.  You can read the transcript here [Read]. 

According to the Court’s policy explained on its web site, the audio of the oral argument will not be available until after the end of the present Supreme Court term.

The Court also makes its own set of oral argument recordings. This set of recordings is kept in the Marshal’s Office for the remainder of the Term, during which time it is not available to the general public. At the beginning of the next Term, the recordings are transmitted from the Marshal to the Motion Picture, Sound, and Video Branch of the National Archives. The Archives’ collection contains audio recordings of Supreme Court oral arguments from 1955 through the immediately preceding October Term. Members of the public can listen to or make their own copies of oral argument recordings using their own tape recorders, blank tapes, and patch cords at the Motion Picture, Sound, and Video Branch. Copies of recordings can also be purchased from the Archives.

The reply brief in Bilski v. Kappos has now been filed.  You can read it [Here].

Updated with Petitioners’ Brief and Respondent’s Brief:

[Brief for Petitioners Bernard L. Bilski and Rand A. Warsaw ]

[Brief for Respondent David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Trademark Office]

Most people reading this will probably recall that Diamond v. Diehr was the last time that the United States Supreme Court issued a substantive opinion on 35 USC section 101.  The case involved method claims and the use of a computer to control a rubber curing process. 

I had always assumed that the counsel for the inventor in Diamond v. Diehr was a champion of broad subject matter protection and had argued valiantly for a broad scope of protectable subject matter under section 101, including protection for computer software. Therefore, I was surprised when I listened to the oral argument in Diamond v. Diehr that such was not the case:  [Listen] and [Listen].

It’s no surprise that the Solicitor General also argued against the patentability of software during the oral argument.  Previously, the government had argued for a narrow scope of protection under section 101 in Diamond v. Chakrabarty, Parker v. Flook, and Gottschalk v. Benson.  The Solicitor General’s argument in Diamond v. Diehr was no different — although it took some prodding from Justice White for him to address the issue directly: [Listen].

While the Solicitor General in Diamond v. Diehr admitted that computer programs could be novel and non-obvious, the Solicitor General quoted the President’s Commission on the Patent System from the 1970’s in arguing that computer programs should not be patentable — whether claimed purely as a software program or as a process or as a  programmed machine — because searching would be too difficult due to the sheer volume of prior art.    [Listen]

It is interesting to note the position of the Solicitor General’s office now in Bilski v. Kappos.  In the goverment’s brief, the Solicitor General’s office now states:

 This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term “process” in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology—including claims concerning software and other modern technologies—from those that do not. 

See page 9 of Respondent’s Brief in Bilski v. Kappos.

 

In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. As with many types of technology, the patent-eligibility of software cannot be resolved as a categorical matter. Rather, the eligibility of a claimed software invention depends on the content of that  invention and the form in which it is sought to be patented. 

As the Board noted below, the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine ( i.e. , the computer itself ) or involve a transformation of matter ( i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip). Pet. App. 177a-178a. This conception of the machine-or-transformation test is reflected in non-binding interim examination instructions issued by the PTO in August 2009. See United States PTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101  (Aug. 24, 2009) ( Interim Instructions).17  The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Id. at 6. Such a computer, “when programmed to perform the process steps” so that it performs the specific function  contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. Ibid.; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)(“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”). In addition, “transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.”

 

 See Respondent’s Brief at pages 38-39 in Bilski v. Kappos.