By (author unknown), Groklaw NewsPicks – July 21, 2010 at 01:04PM
(In which Phil Summa uses one of his favorite movies to comment on §101 subject matter)
In attempting to develop a layman’s explanation of Bilski subject matter, it occurred to me that a mental process might be qualified as “something that Raymond Babbitt could do in his head.” I refer; of course, to the 1988 movie “Rain Man” in which Dustin Hoffman won an Academy Award playing Tom Cruise’s brilliant autistic older brother….
In one sense, § 112 obligates the inventor to make sure that the public can determine, “without undue experimentation,” whether or not the public’s activity infringes the inventor’s patent….
As the Rain Man analogy illustrates, even manipulating a physical object (a playing card, a computer, pencil and paper) doesn’t necessarily prove that a particular mental process has been carried out.
The § 112 quid pro quo should certainly apply to a Bilski-type inventor; i.e., if you want patent protection, please define the activities that objectively would infringe your patent. If I can infringe your patent merely by thinking about it, or if the objective steps I carry out could result from infringing or noningfringing activity, then the patent claim fails to provide enough information for me to know whether or not or which of my activities other than thinking would infringe the patent. On that basis, from a public policy standpoint, it would be unfair to the public to allow such a claim to be enforced. If the claim can’t be enforced, it shouldn’t issue in the first place.
– Summa Law