Thanks for replying; you have no obligation to keep up with HN or respond quickly.
Overrule may be the wrong word for what the Fed Circuit did, but in Alappat they said that a program changes a general-purpose computer into a special-purpose machine. Apply that legal principle to the facts in Benson and you get the opposite result from what the Supreme Court said. Like the dissent in Alappat said, it was inconsistent with precedent. The special-purpose machine idea was so far out there that I don't think anybody believed they really meant it until they reiterated it in State Street.
Abbreviated quote: The en banc court rejected its prior test...see, e.g., State Street...holding instead that this “machine-or-transformation test” is the sole test for determining patent eligibility of a “process” under
§101, the court applied the test and held that the pplication was not patent eligible.
Held: The judgment is affirmed. [end abbreviated quote]
The Syllabus makes it sound like they're actually positive on this test, at least for processes, and that the lower court made the right decision to use it as the sole test and ignore, e.g. State Street. (The Fed Circuit also mentioned Alappat specifically.)
It does get more confusing once you get past page 1, and I see where Kennedy says what you say about the non-exclusivity of the machine or transformation test.
However, I do see a lot of endorsement of paying attention to Benson, Flook, and Diehr. Combine that with the explicit non-endorsement of State Street and I think it's clear what the Patent Office should pay attention to. Software patents today if evaluated according to the precedent in Flook would generally be rejected.
Overrule may be the wrong word for what the Fed Circuit did, but in Alappat they said that a program changes a general-purpose computer into a special-purpose machine. Apply that legal principle to the facts in Benson and you get the opposite result from what the Supreme Court said. Like the dissent in Alappat said, it was inconsistent with precedent. The special-purpose machine idea was so far out there that I don't think anybody believed they really meant it until they reiterated it in State Street.
As for rejecting State Street, I'm just looking at the Syllabus on the first page of http://www.supremecourt.gov/opinions/09pdf/08-964.pdf
Abbreviated quote: The en banc court rejected its prior test...see, e.g., State Street...holding instead that this “machine-or-transformation test” is the sole test for determining patent eligibility of a “process” under §101, the court applied the test and held that the pplication was not patent eligible.
Held: The judgment is affirmed. [end abbreviated quote]
The Syllabus makes it sound like they're actually positive on this test, at least for processes, and that the lower court made the right decision to use it as the sole test and ignore, e.g. State Street. (The Fed Circuit also mentioned Alappat specifically.)
It does get more confusing once you get past page 1, and I see where Kennedy says what you say about the non-exclusivity of the machine or transformation test.
However, I do see a lot of endorsement of paying attention to Benson, Flook, and Diehr. Combine that with the explicit non-endorsement of State Street and I think it's clear what the Patent Office should pay attention to. Software patents today if evaluated according to the precedent in Flook would generally be rejected.