Talk:In re Bilski

Trim reasoning section

It seems to me that the reasoning section could stand a bit of a haircut. Here is a proposed shorter version. I recommend we reach consensus here before moving it to the article. I also recommend that we keep the word count below 300.

==Reasoning==

The en banc Federal Circuit upheld the rejection, 9-3. The majority opinion (written by Chief Judge Paul Redmond Michel) characterized the issue as whether the claimed method is a patent-eligible “process,” as the patent statute (35 U.S.C. § 101) uses that term.

The court concluded that a legal test could be distilled from a prior trilogy of Supreme Court decisions, Gottschalk v. Benson, Parker v. Flook and Diamond v. Diehr. It called the legal test the “machine or transformation test”. “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Not only did the patent-eligibility trilogy support this test, the court explained, but so too did earlier Supreme Court precedents dating back well into the Nineteenth Century.

The court did not rule on what a “particular machine or apparatus was” since that was not the issue in this case. Instead, it turned its attention to what a “transformation” was. It concluded that “transformation” included not only the transformation of a particular article, but transformation of data representing a particular article as well. Since Bilski’s method did neither of these, it was ruled ineligible for patent protection.

The court then overruled earlier patent-eligibility tests that it had been articulated in some of its earlier opinions. In particular, it stated that the “a useful, concrete, and tangible result” test from its 1998 State Street decision was no longer to be relied upon.

I also thought that a section on impact would be worthwhile. Feel free to expand. --Nowa (talk) 02:43, 15 November 2008 (UTC)

I think the length should stand. The opinion is extremely verbose, and I don't think a summary could be whittled down any further without leaving out important pieces. 170.140.153.103 (talk) 23:08, 19 November 2008 (UTC)

I agree with Nowa that an impact section is a good idea. I also agree with 170.140.153.103|170.140.153.103. As it is some things are left out because of the extreme verbosity of the opinion. Also, the dissents and concurrences, which reflect important counter-currents in the court, get fairly short shrift. ---- PraeceptorIP (talk) 22:10, 22 December 2008 (UTC)

Importance

I've rated the article as medium importance given the wide international reporting of it.--Nowa (talk) 02:50, 15 November 2008 (UTC)

Needs Simplification

A few topics that could make this article better. Who is Bilski? What did he/she/they patent? How did the patent issue get to this point in order for the effects widely discussed in this article to happen? The article could be improved by additional phrasing that helps to put the decision into plain text for the non-legal readers of Wikipedia. Rurik (talk) 20:38, 24 November 2008 (UTC)

I agree. --Nowa (talk) 03:43, 25 November 2008 (UTC)

I think that Rurik and sidekick Nowa are quite ill advised in their proposed approach.
"Who is Bilski?" What difference does it make who Bilski is? That is not why the case is of any importance to anyone. What is important is how the case fits into the development of the law governing when abstractions and computer-related advances are eligible for patent protection. Who Bilski is, is immaterial. That's like asking who was taking tickets at the Ford the night Booth shot Lincoln.
"How did the patent issue get to this point in order for the effects widely discussed in this article to happen?" The patent issue got to the Fed. Cir. the way any other one does--the PTO rejected the claims and the owner of the application appealed. That is of no particular significance to a discussion of the case.
Asking for a clearer explanation is reasonable, but specifically what is hard to understand? A checklist of exactly what to clarify is needed, not just a generalized grumble.
PraeceptorIP (talk) 20:25, 13 February 2009 (UTC)

Thank you for your response, but the issues have already been addressed and resolved after the posting of the tags three months ago. The articles on Wikipedia should be available for a wide range of audiences, not just those in the legal field. Having the "backstory" helps the regular viewer understand the case in its entirety, instead of just the verdict. I believe you may be reading into those questions wrongly. "How did it get to this point" is in regards to: why did this, out of all other similar patent cases, end up getting this ruling where others hadn't? Surely there's been many appeals made in prior cases, but what was so unique about the circumstances behind this story to make it notable and far-reaching, and what can the regular viewer take home from the text. Also, please be mindful of the WP:CIVILITY guidelines when making discussion posts. Thank you, Rurik (talk) 04:01, 14 February 2009 (UTC)

As far as it getting to this point, it's pretty much just Bilski and company appealing it far enough, which not everyone does. Appeals are long, complicated and expensive so the numbers are just not that high, so it's not unusual that only a few cases reach this point to address a key issue. The standard approach for articles on appellate court decisions has a background/prior history section, but usually doesn't get too much into the factual history because the appellate court is usually addressing a larger issue that the case kind of circumstantially involves. Cquan ^{(after the beep...)} 08:56, 14 February 2009 (UTC)

What is the purpose of this sentence which appears in the first paragraph-

"The majority, however, had high praise for the Federal Circuit opinions, advising that "[s]tudents of patent law would be well advised to study these scholarly opinions."[6]"

It seems to be going to bat for the CAFC, which itself is a point of controversy. This article is not about the legitimacy of the CAFC, nor was the decision about the legitimacy of the CAFC. It's unlikely readers of this article would be aware of the controversy around the CAFC and the above quote would read like a non-sequitor with respect to this article's putative subject matter.

Individual members of SCOTUS are free to comment on anything they see fit, not all of which is required to directly relate to the case at hand. The Court was not assembled to decide the fate of the CAFC and that subject has no bearing on this decision.

I would like to remove this sentence. Please comment if you disagree. —Preceding unsigned comment added by 71.194.199.148 (talk) 14:18, 3 December 2010 (UTC)

The sentence is simply meant to emphasize the importance of these opinions as an important analysis of patent law. I don't think that this is a comment on the legitimacy of the Federal Circuit. Kennedy is simply saying that the analysis of the Federal Circuit judges is something worth reading. It's not "going to bat" for the Federal Circuit. I think this sentence is great illustration of the importance of the Federal Circuit opinions, and why this is a stand alone article. Verkhovensky (talk) 17:26, 3 December 2010 (UTC)

That sentence goes to the content and quality of the opinions and analysis, not their source. Kennedy did not say, "Thank goodness we have a Federal Circuit court" or something to that effect, which would be more relevant to the noted controversy. The sentence explains the importance of the opinion and should stay. KnivesDon'tHaveMyBack (talk) 17:57, 3 December 2010 (UTC)

Attempt at simplification

I have moved most of the opening to the first part 'below the fold' (after the table of contents) into a longer explanation of the background, and given what I think is a fairly clean explanation of what the case was about in the much shortened and (I think) improved 'above the fold' summary. ('Above the fold' and 'below the fold' are terms from newspapers, referring to the parts of the front page in a standard broadsheet newspaper.) I think the changes I have made have fixed, or at least partially fixed, the clarity issue of the summary. Paul Robinson (Rfc1394) (talk) 22:19, 20 December 2008 (UTC)

• I think this edit is well intended, but putting all of that factual material above the fold impairs the overall presentation. It doesn't really matter what the examiner and Board thought. What matters is what the CAFC said, and if the case goes to the Supreme Court what the Supremes say. To the extent that it is necessary to say anything at all about what the examiner and Board had to say, it would fit better in the Background where one can skip over it if not interested. Putting it at the top makes it harder to ignore and uses up attention span.
      In addition, there are some minor errors in describing what the machine-or-transformation test is about (omits change of state, for example), that somebody should clean up.
  PraeceptorIP (talk) 22:04, 22 December 2008 (UTC)
  • I have tagged the article for cleanup for now. --Edcolins (talk) 08:32, 23 December 2008 (UTC)

Second paragraph ambiguous - changed

The first sentence of the second paragraph referred to "the court". It was apparently written before some text about the certiorari by the Supreme Court was added at the end of the previous paragraph. Rbakels (talk) 23:16, 24 July 2009 (UTC)

Just a suggestion to the experts: In the para 'Background and prior history,' a section in the line "Such patent claims are often termed business method claims" is linked to the resource page on 'Business Processes/Methods.' Would it not be more apt to link it to a resource page on "Business Method Claims" where in this can be discussed in detail and the global view on patenting business processes, also examined? (Prmsm (talk) 10:58, 23 December 2009 (UTC))

Current event?

The article presents Bilski as a fait accompli. But if it's being appealed to the Supreme Court, doesn't that mean it's uncertain? Should we add {{current}}? Or is the precedent still binding unless and until it gets overturned? Hairy Dude (talk) 21:12, 12 February 2010 (UTC)

It is still binding unless/until overturned, technically speaking; but current litigants and patent applicants, and the PTO are obviously aware of the pending status, and are being a bit cautious about it in the meantime. The article makes clear in the lede that it's under review; but I wouldn't object to making that more clear as appropriate in other spots of the article (or in maybe strengthening the statement in the lede). The {{current}} should not be used. That's an indication that the article is under substantial fairly constant revision. From the template's documentation:

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TJRC (talk) 21:35, 12 February 2010 (UTC)

Supreme Court Case

Please update the first paragraph to indicate focus on the Supreme Court case (and mention the original CAFC case in passing). The decision comes out Monday, so the important work can start now. -128.61.83.190 (talk) 15:06, 25 June 2010 (UTC)

It will probably be out Monday. Roberts has announced that the final opinions of the term will come out Monday, and my bet is that In re Bilski will be one of them. But I've also heard a rumor that it will be held over to next term. Interesting discussion of this here: [1].20:14, 25 June 2010 (UTC)

It is now out. We also need a title change from In re: Bilski to Bilski v. Kappos. 24.46.178.33 (talk) 16:07, 28 June 2010 (UTC)

That article has been started: Bilski v. Kappos. TJRC (talk) 18:40, 28 June 2010 (UTC)

The part, "According to the majority opinion "the machine-or-transformation test would create uncertainty as to the patentability of software..." seems to be in error wrt the opinion.

Only four justices concurred in part II-B-2 and that quote is from that section so it is not a majority. Scalia went with Breyer and Stevens on part II. Pogson (talk) 00:40, 29 June 2010 (UTC)

Merge

The following discussion is closed. Please do not modify it. Subsequent comments should be made in a new section. A summary of the conclusions reached follows.

The consensus was do not merge.

---

I propose that we merge Bilski v. Kappos into In re Bilski. I proposed it that way since the latter is an older article. They are clearly the same case and should have a single article. --NYKevin @848, i.e. 19:21, 28 June 2010 (UTC)

These are not the same opinions. The reasoning by the Supreme Court is markedly different and disavows much of the statutory interpretation of the Federal Circuit in In re Bilski. I don't think momentous lower court opinions are ever merged into the Supreme Court opinion on Wikipedia. Verkhovensky (talk) 20:14, 28 June 2010 (UTC)

Merging the articles makes sense. Do you have any examples where lower court opinions are not merged? Is this similar to how such cases are described in other publications? Ulner (talk) 22:14, 28 June 2010 (UTC)

I'll look for an example of circuit court and SCOTUS opinions with separate articles, but even without a host of examples I think Bilski is a clear case for separate articles. In re Bilski generated a plethora of international scholarship and speculation, and the reasoning of the decision itself is very well covered in this article. The reasoning from Bilski v. Kappos is markedly different than that of the federal circuit, and it is sure to generate its own mountain of commentary. If the articles were merged, unless the wonderful content of the existing article is horrifically culled, then we would have a monster that would inevitably generate cries for splitting up the articles. The Federal Circuit case also nicely details the rationale of the original examiner and the BPAI, both of which were different from each other and the reasoning of the Federal Circuit. Essentially, because of the enormous amount of attention that this case has received and the markedly different approaches of the two Courts, these articles should be maintained separately. Verkhovensky (talk) 22:30, 28 June 2010 (UTC)

Merging only makes sense. The Supremes tossed out the CAFC opinion's holdings, so theirs are the ones that matter. -128.61.83.190 (talk) 07:03, 29 June 2010 (UTC)

It is true that In re Bilski is no longer precedent. But that doesn't mean the article should be merged. I suppose my main point is that In re Bilski has a lot of content that would inevitably be culled and wasted in a merge. There is plenty of content for two articles, and forcing a merge seems artificial. Wikipedia still has numerous articles on overturned precedents. Plessy v. Ferguson wasn't merged into Brown v. Board of Education. An extreme example, I know, but still illustrative. The very point of Wikiproject Law is to create the most comprehensive free resource of legal information. Indiscriminately merging lower court decisions into the Supreme Court case article seems absurdly contrary to that goal. Verkhovensky (talk) 07:15, 29 June 2010 (UTC)

Oppose merging. What we need are more articles on important Circuit decisions broken out from their Supreme Court resolutions. bd2412 T 13:15, 29 June 2010 (UTC)

Strongly Oppose merging, in case my earlier posts have made me unclear. I completely agree with BD2412. The In re Bilski article is a fantastic article. There is no point to sacrifice its quality with a merge to Bilski v. Kappos, which I am quite sure will become a great article in its own right. Verkhovensky (talk) 15:07, 29 June 2010 (UTC)

• Oppose Merge. This article is on the FedCir case, not the SCOTUS case. The FedCir case was notable when it was decided, and it remains notable (see WP:NTEMP). It generated scads of published scholarship. "Merging" the SCOTUS case here would effectively gut the article on this notable decision. TJRC (talk) 23:22, 29 June 2010 (UTC)

Oppose merging. In re Bilski is a stellar standalone article and, more importantly, a case that features different reasoning than Bilski v. Kappos. I expect Bilski v. Kappos to generate its own impressive body of scholarship and the myopic merging of these articles is at the least premature. KnivesDon'tHaveMyBack (talk) 04:55, 30 June 2010 (UTC)

• Compromise (to avoid merge)?. In re Bilski contains a good explication of the FedCir case as it occurred. That should remain available. The Supreme Court decision has changed the import of the FedCir opinion significantly. The page as it stands is obsolete. It could even be misleading to someone (from Mars) not aware of the Supreme Court decision. The effect of the Supreme Court decision on the FedCir reasoning could be added here. The article would then be valuable again. 12.72.2.121 (talk) 23:24, 30 June 2010 (UTC) (The previous comment is mine. I apologize for not signing on first. Hstimson (talk) 23:31, 30 June 2010 (UTC))
  • Absolutely. There should be a two- or three-sentence section (say Subsequent history), relating that the case was taken up by the Supreme Court, and a brief description of the holding. One sentence ("the judgment was subsequently affirmed by the United State Supreme Court in Bilski v. Kappos") should be in the lede. TJRC (talk) 23:34, 30 June 2010 (UTC)

It seems very clear to me that the result of this discussion is general opposition to a merge. Since the discussion seems to have stopped, I'm calling this a 'no' and removing the tag. Cheers! bd2412 T 18:42, 6 July 2010 (UTC)

The discussion above is closed. Please do not modify it. Subsequent comments should be made on the appropriate discussion page. No further edits should be made to this discussion.

Needs edits to Impact, first sentences, etc to reflect changes due to SCOTUS

Oh man this is so out of date! As of now, not only do we have the S.C. ruling (and dissenting opinions) but there have been two subsequent court rulings on software patents that referenced S.C. on Bilski and four USPTO actions on software patents that referenced it. How on earth do you propose to keep this section updated? In fact...isn't this inherently topical and in that sense perhaps not appropriate for Wikipedia? The information I found (while researching for a PPA) comes from here http://www.awakenip.com/?page_id=279. I wonder if it makes more sense to link to some site or sites (this one and/or others) that are maintaining current information? What do folks think about doing that instead of maintaining an Impacts section? 99.30.180.134 (talk) 19:49, 12 December 2010 (UTC)

Every court case article should have an impact section. Just because a court case can be cited by subsequent opinions does not mean maintaining an impact section is hopeless. Also, there is an article on Bilski v. Kappos, so any subsequent citations of Bilski v. Kappos should go in the Bilski v. Kappos article. This article is maintained because, when it was decided, In re Bilski was a very important opinion. There is a very detailed discussion just above this section about why the In re Bilski article is maintained separately from Bilski v. Kappos. I appreciate your concern about keeping the Impact section updated, and we should strive to do so. But no court case article on Wikipedia exhaustively lists every single court case that has cited the subject of the article. The impact section should be reserved for major, notable developments. Verkhovensky (talk) 20:01, 12 December 2010 (UTC)

Please edit the Impact section, the introduction, and other sections to reflect (or at least discuss and link to, and speak in the correct tense about) the change in impact of the case due to the SCOTUS decision. -128.61.83.190 (talk) 03:17, 4 July 2010 (UTC)

Details moved to Bilski v. Kappos

Here's some text I cut out because it's out of place here now that there's a page for minor details like dates of earlier stages in the appeal.

The Supreme Court granted certiorari on June 1, 2009 and oral argument on the patent applicants' appeal was heard on November 9, 2009, under the title of Bilski v. Kappos.

-128.61.83.190 (talk) 04:19, 4 July 2010 (UTC)

{{Bluebook}} tag

I restored the {{Bluebook}} tag. The original style used in the article is clearly Bluebook, as any attorney would recognize. It does not violate WP:CITEVAR to label on the talk page what citation style is being used. Please make sure that you understand the reference style used before removing a tag and remember that consensus is required to change the style. GregJackP Boomer! 01:04, 3 July 2015 (UTC)

If you actually look at the current ref style, it is heterogeneous. It is not uniform and not Bluebook. Per WP:CITEVAR "Editors should not attempt to change an article's established citation style merely on the grounds of personal preference, to make it match other articles, or without first seeking consensus for the change." The smallcaps style in Bluebook is actually a pain in the butt. Jytdog (talk) 01:33, 3 July 2015 (UTC)

@Jytdog:, you need to read WP:CITEVAR again, which states that As with spelling differences, it is normal practice to defer to the style used by the first major contributor. Here you have two possibilities as the first major contributor, Edcolins and an IP (66.208.26.115). The fourth edit by Edcolins after he created the article appears to be in the Bluebook style, as do the edit by the IP. This is not rocket science. The fact that later editor used bare URL's does not change the base style. It is Bluebook, and you don't get to change it without consensus. WP:CIR. BTW, Edcolins appears to focus on patent law - do you want to put any money on what his profession is? GregJackP Boomer! 02:12, 3 July 2015 (UTC)

The only contribs in bluebook style are these made by Praeceptor, who also put the tag on the article. There were no smallcaps before those edits. this does violate WP:CITEVAR; it is OK, new editors make these mistakes, but that doesn't mean it should stand. Jytdog (talk) 11:34, 3 July 2015 (UTC)

You do understand that not every Bluebook cite requires smallcaps? The fact that there were not smallcaps before his edits does not mean that it was not Bluebook style before his edits (see here), it only means that there were no books or journals cited prior to his edits. Competence is required - again, if you do not understand Bluebook, ask. Someone will be able to help you. Also, please stop disparaging Praeceptor by calling him a new editor—he started editing here in 2008 and as of December of that year had over 400 edits while you had only a single edit. GregJackP Boomer! 15:43, 3 July 2015 (UTC)

Guys, this is so not worth an argument. Jdog, why are you even objecting to this? It looks like you're following Praeceptor around to harangue him about minutiae. This is a case law article using legal citation style from Bluebook. The first edits were very clearly Bluebook citation style (as linked above in Greg's comment). If some of the subsequent citations were done improperly and don't comport with Bluebook citation (or any particular citation style, for that matter) - then clean up the citations and bring them into conformity with Bluebook, rather than start a fight over the citation style. Minor4th 16:46, 3 July 2015 (UTC)

meh, more irrational WP:GANG. whatever, you all can change this to Bluebook if you like. Jytdog (talk) 17:19, 3 July 2015 (UTC)

Thanks. Minor4th 17:24, 3 July 2015 (UTC)

@Jytdog:, please comment on the content, not the contributor. Thanks, GregJackP Boomer! 17:28, 3 July 2015 (UTC)

@Minor4th:, taking your advice, I cleaned up the references. Let me know if I missed something. GregJackP Boomer! 04:36, 4 July 2015 (UTC)

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