26 February 2010

Facebook granted a dubious patent

what shows up in your newsfeedphoto © 2009 Cambodia4kids.org Beth Kanter | more info (via: Wylio)

The readers of the Reguligence Weblog are familiar with the fact that I am not a supporter of software and business method patents. Moreover, I am rather a doubter as to those patents’ furtherance to the Information Technology at all. Nevertheless, I should be grateful to Facebook for giving me an occasion to have another post on this issue.

As you might have already perceived, Facebook has been granted the patent #7669123 for “dynamically providing a newsfeed about a user of a social network”. Basically, Facebook has patented the news feed that provides a user of their social network with the information about what other users are currently doing or at best have done on that network.

To me this is a trivial patent par excellence. While the patent eligibility could be easily satisfied under the Federal Circuit’s holding in Bilski, in pursuance to which “a method claim is surely patentable subject matter if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. ” and a social network could (arguably) serve as an “apparatus”, there are some doubts with respect to that patent’s novelty and non-obviousness. According to GIGAOM, the social network Multiply.com had a similar interface for keeping track of friends’ actions before Facebook launched its own. As regards the inventive step applied, I believe that aforementioned “invention” would be laughably obvious even to a person having just basic knowledge in social networks, not to mention a “person skilled in the art”.

Notwithstanding, the patent, albeit a “weak” one, has been granted and – unless successfully challenged and invalidated- will be valid for the next 17-18 years. I am personally curious whether Facebook will at some time take the risk and attempt enforcement, and hence share the destiny of Amazon and their one-click-patent.


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13 December 2009

The Federal Circuit invalidates business method patent on obviousness

In a recent patent infringement case, the US Court of Appeal for the Federal Circuit decided that claimant’s patent claims were infringed, but invalid as the Court held them obvious and thus non-inventive.

Claimant’s alleged invention claimed a “method of purchasing goods or services over a data network”. In fact the claimed invention offered an e-commerce platform to both purchasers and vendors and filtered their requirements in order to achieve a match between their demands. Could that be inventive nowadays? Upon outlining the existing prior art, the Federal Circuit said “No”.

Nothing unusual, at least from a european perspective.

2 December 2009

In Re Bilski: a setback for business method and software patents?

The PTO addresses Bilski and software patentsphoto © 2010 opensource.com | more info (via: Wylio)


In October 2008, the US Court of Appeals for the Federal Circuit (CAFC) issued its decision in re Bilski en banc, describing it as “an historic opportunity to fix the US patent system, as the Bilski rehearing will directly address the boundaries of the subject matter of patents.”

The re Bilski appeal arose from the rejection by the USPTO of all claims because they failed to limit the method’s performance to a specific machine or apparatus, and the method did not involve a transformation of one thing into something different from the original, with the machine-transformation test having been previously articulated in the decisions of the US Supreme Court in Gottschalk v Benson, Parker v Flook and Diamond v Diehr. The Federal Circuit’s decision is thought to have turned the tide for business method patents in the United States.

While Affirming That Business Methods Are Still Patentable

the Court has rejected State Street Bank’s “useful, concrete, and tangible result” test, which many believed had cleared the way for improper patents on fundamental principles and everyday activities that had no connection to technological innovation.

In January 2009, Bilski petitioned the US Supreme Court for a writ of certiorari, seeking to overturn the Federal Circuit decision.

In the meantime the Court

Granted Certiorari

and heard oral arguments on 9 November 2009.

Reading that transcript is a quite funny thing. The Justices seem to openly show their reluctance and, even malice, against petitioners’ alleged invention. Mr Jakes, counsel for the petitioners, had to stand for questions like the one of Justice Breyer “You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. They learned things — (Laughter.) — it was fabulous. And I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?”

Chief Justice Roberts went even further asking “I’m looking at your Claim 1, in Joint Appendix page 19 to 20. How is that not an abstract idea? You initiate a series of transactions between commodity providers and commodity consumers. You set a fixed price at the consumer end, you set a fixed price at the other end, and that’s it. I mean, I could patent a process where I do the same thing. I initiate a series of transactions with sellers. I initiate a series of transactions with buyers. I buy low and sell high. That’s my patent for maximizing wealth. I don’t see how that’s different than your claim number 1.”

I would not be surprised if the Supreme Court affirmed the Federal Circuit. In such an event, the Justices should take their awaited decision to, hopefully, provide for a long-expected clarity on the patentability of business methods and software implemented inventions.