Last week, the Federal Circuit decided In re Ferguson. The application at issue included both method claims and “paradigm” claims.
Claim 1, a representative method claim, states:
A method of marketing a product, comprising:
developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;
using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company, so that different autonomous companies, having different ownerships, respectively produce said related products;
obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; and
obtaining an exclusive right to market each of said plurality of products in return for said using.
Claim 24, a representative “paradigm” claim, states:
A paradigm for marketing software, comprising:
a marketing company that markets software from a plurality of different independent and autonomous software companies, and carries out and pays for operations associated with marketing of software for all of said different independent and autonomous software companies, in return for a contingent share of a total income stream from marketing of the software from all of said software companies, while allowing all of said software companies to retain their autonomy.
After Bilski, this would seem to be an easy case. The method claims are clearly not tied to a machine, nor do they transform matter from one state to another.
The court had no more difficulty with the paradigm claims. The applicant argued that the company is a physical thing, analogous to a machine. The court used a “touching” test to determine that, since the company could not be touched, it was not a machine. Therefore, the paradigm claims are merely directed to an abstract idea and are also not patentable.
Concurrence
What makes this case somewhat interesting is Judge Newman’s concurrence. She argues that the court gave an extremely expansive reading of Bilski by essentially holding that anything that does not meet Bilski‘s machine-or-transformation test is an abstract idea. She argues that Ferguson’s methods are instead “definite and concrete and limited, and not at all abstract.”
Perhaps more interesting, Judge Newman’s opinion is a concurrence and not a dissent. She would sustain the examiner’s rejection of the claims as being obvious under § 103 and therefore still not patentable.
This sounds a lot like AIPLA’s amicus brief to the Supreme Court in Bilski, and what others have been saying even earlier. In particular, many of the problems with these types of problems can be handled under the other requirements for patentability and do not invoke statutory subject matter questions. See, e.g., Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZONA STATE LAW JOURNAL 1087 (Winter 2007). Full disclosure: Prof. Osenga is my wife.
