Reducing the 1-Click Patent Claim

I’ve been giving some thought to patent law since Simon Chester posted “Appeal Granted by Federal Court for Amazon.com 1-Click Patent Application” (Slaw: October 14, 2010). The case is Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011 (CanLII). I had a look at the case, thinking it would be interesting to see how Amazon had done the 1-click thing. I was disappointed. I got the distinct impression that the judge (Michael L. Phelan) knew even less than I do about what programming for the web involves. My brief comment was sort of an invitation to others to agree or disagree, and tell me what I had missed. Maybe there was more on the record than was in the reasons. Given the lack of take-up, maybe I should have just left it alone, but I didn’t. Since the case was bugging me, I thought I’d waste a whole column on it instead.

Readers will quickly understand that I don’t live and breathe patent law. If I embarrass myself writing about it here, I suppose that’s just the price of learning sometimes. Anyway, the bottom line was in paragraph 82 of the case:

THIS COURT ORDERS AND ADJUDGES that the appeal is allowed with respect to the Commissioner’s findings on statutory subject-matter. The Commissioner’s decision is quashed and is to be sent back for expedited re-examination with the direction that the claims constitute patentable subject matter to be assessed consistent with the Reasons for Judgment.

What the judge seems to have meant by this is that that everything that might conceivably be a new and useful art, process, machine, manufacture or composition of matter, etc. is prima facie patentable in Canada. In other words, there is no subject-matter-exclusion-list short-cut that the Commissioner could take instead of going through the assessment process. Assuming for the sake of argument that sending it back to the Commissioner for a fuller assessment was the right thing to do, the judge would have done well to have left it at that. He said as much in paragraph 81:

The misapprehension of the Commissioner and the Examiner as to the patentability of the subject-matter in these claims is a fundamental error of law, one which may have tainted the entire analysis. No evidence was given to this Court as to the validity of the claims in other respects. As such, the Court cannot evaluate them in any regard beyond the issues argued on this appeal and will not grant the Patent as requested by the Appellant.

Instead, the brief “assessment” in paragraphs 72 to 77, if that’s what the judge thought this was, could only lead people (like me) to wonder (again as humbly and respectfully as possible) how much of the subject matter in issue the judge had really understood.

Assuming the record was as incomplete as the judge suggests, the decision to send it back is certainly a defensible one. Key paragraphs are 61 to 63:

[61] There is no basis for the Commissioner’s assumption that there is a “tradition” of excluding business methods from patentability in Canada. …

[62] … [I]t seems that until quite lately the Patent Office’s policy was to grant patents for business methods so long as they were an art within the meaning of section 2 of the Patent Act. …

[63] The Commissioner’s reliance on the UK jurisprudence is misguided for the reasons discussed above. There is not, nor has there ever been, a statutory exclusion for business methods in Canada as there is in the UK.

Section 1(2) of the Patents Act 1977 (c. 37) (statutelaw.gov.uk) declares that “anything which consists of … (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer” is not an “invention”. The U.K. legislation doesn’t use the expression “subject-matter or activities” here, but article 52 (epo.org) of the European Patent Convention does.

Section 2 (justice.gc.ca) of our Patent Act, R.S.C., 1985, c. P-4 says:

“invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter; …

Except for the word “process” (first added in The Patent Act, S.C. 1923, c. 23, s.2 (Hein)), that’s the definition we’ve had here in Upper Canada since 1826: An act to encourage the progress of useful arts within this province, 7 Geo. IV, c. 5 (U.C.) (archive.org). (Note that term, “useful arts”, for later.) In the current Act, the term “subject-matter” is used, but not defined. Section 27(4) (justice.gc.ca) says:

The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.

Section 27(3) (justice.gc.ca) says:

The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

Section 27(8) (justice.gc.ca) says:

No patent shall be granted for any mere scientific principle or abstract theorem.

Finally, s. 28.3 (justice.gc.ca) says:

The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains …

The judge said something very sensible in paragraph 79:

There may be (and the Court is not suggesting that there are) other reasons why the Commissioner might have rejected this patent. One might question the sufficiency of disclosure in the system claims but no one has claimed that it was insufficient. That matter was not considered by the Commissioner. The Examiner’s principal finding was in relation to obviousness. In both the United States and Europe there have also been concerns as to whether the claimed invention was obvious. The obviousness analysis, however, should not occur at the “patentable subject matter” stage of the analysis. A finding that there has been new learning or knowledge which has contributed to the state of the art does not entail, nor should it pre-empt, an obviousness analysis. It is a separate test which asks whether one would be led to the “new knowledge” easily and without difficulty, not whether it adds to the state of the art.

I’d like to think there is more documentation on file than I can conveniently access. If not, then the sufficiency of the disclosure is more than just a little bit questionable. Simon Chester, in his original post, gave us a link to the application: brevets-patents.ic.gc.ca. If there is nothing more to the claim than the 27 pages of “description” and the 23 pages of “drawings” that you can download, then I don’t see how the “disclosure” could be considered sufficient. Christopher Heer, in “Follow the Leader: Software Patents with Inadequate Disclosure at the Canadian Patent Office” (2004) 62 U.T. Fac. L. Rev. 85 (Hein), at 89, has written:

Since prior art is scarce, many attacks on validity of software patents must rely on the common general knowledge in the art. But such limited disclosure in software patents makes understanding exactly what the invention is quite difficult in some cases. It is simply unrealistic to assume that the ordinary computer programmer can reconstruct a program given only the purpose it is to perform.

There’s nothing in the 27 pages about the hardware that Amazon used, the operating system, or the general configuration of software they were running. We don’t know if Amazon was serving pages up with Apache or something else, or whether they were programming with Perl (as many did in those days) or with something else. They haven’t disclosed a line of source code, despite s. 27(3) (justice.gc.ca):

The specification of an invention must …
(b) set out clearly the various steps in a process … in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to … use it; …
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

They haven’t acknowledged any of the prior art that they were using in their set-up. In those 27 pages, Amazon hasn’t even begun to describe what they did that was new in the context of what they also used that was old. It seems to me to be far too abstract a description. It’s like a minimally sketched out “vision” of what a manager might have asked a team of programmers to produce, not the description of a finished product. The paradoxical thing is that a lot of programmers probably would have thought it was obvious how to produce something with the same functionality as 1-click at the time, given the task, even without any disclosure at all from Amazon. It would have involved a considerable amount of skilled labour, no doubt. A different group of programmers would have done it a little or even a lot differently. Therefore, we can’t assess whether Amazon’s programmers produced any “new and useful art” without having a look at the relevant source code. We can imagine Dilbert’s pointy-haired boss saying: “You’ve seen a food replicator on Star Trek, haven’t you? I’d like you to make one for me.” Dilbert’s boss wouldn’t appreciate, but we should, that, as necessary as the vision may be, it isn’t enough. A moment of invention for the food replicator, if there’s going to be one, won’t arrive without new know-how and a useful, fully described, realization of that vision.

I haven’t even thought of reviewing all the literature on 1-click for this little posting, but Tim O’Reilly (of O’Reilly Media) posted a couple of things a little over 10 years ago that are worth reading:

• “Open Source, Patents and O’Reilly” (February 28, 2000)
• “My Conversation with Jeff Bezos” (March 2, 2000)

(Jeff Bezos is the founder and CEO of Amazon.) Here is O’Reilly’s take:

In the first place, this patent should have never been allowed. It’s a completely trivial application of cookies, a technology that was introduced several years before Amazon filed for their patent. To characterize “1-Click” as an “invention” is a parody. Like so many software patents, it is a land grab, an attempt to hoodwink a patent system that has not gotten up to speed on the state of the art in computer science. I’m not completely opposed to software patents, since there are some things that do in fact qualify as legitimate “inventions”, but when I see people patenting obvious ideas, ideas that are already in wide use, it makes my blood boil.

The dispute between Amazon and Barnes&Noble went as far as the U.S. Court of Appeals, Federal Circuit without telling us much about how the system actually worked: Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343 (2001)(georgetown.edu). The disposition was as follows:

While it appears on the record before us that Amazon has carried its burden with respect to demonstrating the likelihood of success on infringement, it is also true that BN has raised substantial questions as to the validity of the ‘411 patent. For that reason, we must conclude that the necessary prerequisites for entry of a preliminary injunction are presently lacking. We therefore vacate the preliminary injunction and remand the case for further proceedings.

The case was settled several months later: Troy Wolverton, “Amazon, Barnes&Noble settle patent suit” (cnet.com) (March 6, 2002). If this igdmlgd blog is any indication, some people are still poking sticks at the U.S. patent, with mixed success. If anyone wants to spend a bit of money (I don’t), these things can be tracked on PAIR, searching patent no. 5,960,411 or application no. 08/928,951.

According to paragraph 9 of our Federal Court decision, the Commissioner (adopting the reasons of the Patent Appeal Board) decided that 1-click was not obvious, overruling the Examiner. The Commissioner’s decision goes by the name Amazon.com Inc., Re or Kaphan Patent Application No. 2,246,933, 75 C.P.R. (4th) 85, 2009 CarswellNat 982, 2009 LNCPAT 2 (QL). As noted above, I’m not sure why the Board/Commissioner would have thought they could come to any conclusion at all on the basis of the 27 pages on the ic.gc.ca, but there was no discussion of any disclosure of source code that I have been able to find. What I see instead are things like paragraph 50:

Neither the Applicant nor the Examiner made submissions with respect to identifying the notional skilled technician. Based on the disclosed invention, the Board considers that the skilled technician would be knowledgeable in any subject matter to which the claims are directed, such as the fields of online retailing models or techniques, e-commerce, Web development, marketing, and consumer psychology.

This, to me, is a surprisingly unfocused statement. Maybe I’m wrong to think that the core subject matter under review should have been a set of computer programs running on a web server, but it seems like a reasonable assumption to make. If the Board/Commissioner thought otherwise, shouldn’t they have told us how they thought 1-click really worked? Similarly, in reviewing the prior art, the Board cited [para. 27] M. Yesil, Creating the Virtual Store (John Wiley and Sons, 1997), but made no mention of RFC 2109: HTTP State Management Mechanism (February 1997) or any of the literature on Apache, Perl or CGI. I just did a search for “cookies cgi” on groups.google.com and found 1,660 hits prior to January 1, 1997.

Phelan J., in paragraph 80, said:

Although clearly not determinative of this decision, the Court notes that this invention has been found to be patentable subject matter in several other jurisdictions, including in the United States and in Europe. In the latter, despite an explicit exclusion for “business methods”, the claims were not found to be such.

As noted above, we have no express subject-matter exclusions in our statute, for “business methods” or otherwise. There’s no express inclusion of “business methods” either. Our statute just doesn’t use the expression “business method”, whatever it might mean. The Europeans seem to find the expression “method … of doing business” a difficult one to interpret, and I’m not surprised. The word “business” occurs in sections 15, 29, 54, and 78 of our Act, but in nothing like this context. The word “method” appears just twice. Its appearance in s. 70 (justice.gc.ca) is irrelevant, and its appearance in s. 27(3)(b) (justice.gc.ca) has already been noted: An applicant for a patent is required “to set out clearly … the method of constructing, making, compounding or using a machine, manufacture or composition of matter….” Paragraph (a) calls, more generally, for a description of the “operation or use” of the invention, “as contemplated by the inventor.” Paragraph (c) calls for an applicant to “explain … the best mode in which the inventor has contemplated the application” of the “principle” of “a machine”. All this talk of operation, use, mode of application and method of using, is needed because s. 42 (justice.gc.ca) gives a patentee “the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used….” Note especially that nothing in this section limits or qualifies the uses that it gives to the patentee.

In light of all this, the idea that we should try to turn “business method” into a term of art seems silly to me. I think we can safely assume that it’s the method of business of those who acquire a valuable patent to profit from the invention, or not, as they see fit, making it, constructing it, using it, and selling it to others to be used. Suppose someone invents widget99999 and gets a patent for it. Then suppose someone else lawfully becomes the first lawyer to use widget9999 in a law practice, and applies for a patent on the “invention” of “a method of using widget9999 in a law practice”. In the general case, we just have to say no, don’t we? It’s not a matter of excluding “business methods” as subject-matter. It’s just a matter of not re-granting to a second patentee rights which have already been granted to the first.

The exceptions to this general rule are explicit and illustrative. Consider s. 32: “Any person who has invented any improvement on any patented invention may obtain a patent for the improvement, but he does not thereby obtain the right of making, vending or using the original invention, nor does the patent for the original invention confer the right of making, vending or using the patented improvement.” The new patent is for an improvement, not for a new method of using the original invention. Again, consider s. 2: “‘invention’ means any new and useful … composition of matter ….” The new patent is for a composition, not for a new method of using the ingredient. (“Ingredients” is used in s. 38. “Component” doesn’t occur.) Thus, in Shell Oil Co. v. Canada (Commissioner of Patents), [1982] 2 S.C.R. 536, 1982 CanLII 207 (S.C.C.), Wilson J. (Ritchie, Dickson, Beetz, and McIntyre JJ. concurring) wrote:

[30] … It is not the process of mixing the old compounds with the known adjuvants which is put forward as novel. It is the idea of applying the old compounds to the new use as plant growth regulators; the character of the adjuvants follows inevitably once their usefulness for that purpose has been discovered. What then is the “invention” under s. 2? I believe it is the application of this new knowledge to effect a desired result which has an undisputed commercial value and that it falls within the words “any new and useful art”. I think the word “art” in the context of the definition must be given its general connotation of “learning” or “knowledge” as commonly used in expressions such as “the state of the art” or “the prior art”. The appellant’s discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a “new and useful art” and the compositions are the practical embodiment of the new knowledge.

[31] If I am right that the discovery of a new use for these compounds which is capable of practical application is an “invention” within the meaning of the definition, I can find nothing in the statute which would preclude a claim for these compositions. Section 36 does not seem to present a barrier because the inventive ingenuity here lies in the new use for the old compounds and not in the compounds themselves. Having discovered the use, the appellant has then combined the compounds with the appropriate carriers for their application to plants. It is not, in my view, necessary in the case of the discovery of a new use for an old compound that the combination of the compound with the adjuvant be itself novel in any sense other than that it is required in order to give effect to this particular use of the compound. This is not a case where the inventive ingenuity is alleged to lie in the combination; the combination is simply the means of realizing on the newly discovered potential of the compounds. This is a case where the inventive ingenuity is in the discovery of the new use and no further inventive step is required in the application of the compounds to that use, i.e. in the preparation of the appropriate compositions.

There’s no suggestion here that, by obtaining a patent for the composition, the patentee of the composition would acquire any right to use the old ingredient which it hadn’t otherwise acquired in the ordinary way from the patentee of the ingredient. The patentee of a “machine” or “manufacture” doesn’t necessarily have the right to use any of its individual parts or components. The patentee of an “art” or “process” doesn’t necessarily have the right to use the subject-matter that is processed, or upon which the art is practised. In our Canadian legislation, the distinction between the subject-matter of a patent and the use of that subject-matter is always maintained.

Speaking of uses, Sir Frederick Pollock, in “The history of the English land laws” (1882) Macmillan’s Magazine 46:356-368, wrote, at 365-6 (archive.org):

Not only was a coach and four driven through the Statute of Uses within a short time by means of a wonderfully forced and subtle judicial construction, but it was made an engine for effecting the very opposite ends to those which were sought by its framers.

Fortunately, the Canadian Patent Act can still be saved. It might be argued that Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77 (CanLII), [2002] 4 S.C.R. 153 supports the idea of a new patent for every new use of a subject-matter. It doesn’t. The compound AZT had been described by Horwitz in 1964. Glaxo/Wellcome discovered in 1985 that AZT could be used against HIV in humans, and obtained a patent, which Apotex challenged. Wetston J., at 79 C.P.R. (3d) 193, 1998 CarswellNat 458, [1998] F.C.J. No. 382, 1998 CanLII 7610 (F.C.), described the various claims as follows:

[44 WL, QL] Claim 1 refers to a pharmaceutical formulation containing the active ingredient 3′-azido-3′-deoxythymidine combined with a pharmaceutical carrier and does not specifically state the use to be made of the formulation. The following 19 claims are dependent upon that claim and likewise are not limited as to the use to be made of the formulation and vary as to the formulation of the product. Claim 21 is a similar formulation claim but is limited to the use of the formulation for the treatment or prophylaxis of human retrovirus infections. Claim 22 is likewise limited to the use of the formulation for the treatment or prophylaxis of AIDS. Claim 23 is limited to the treatment or prophylaxis of an AIDS infection. Claims 26 to 31, 34, 45, 49-73 and 74-78 are dependent on 21, 22, 23, and vary mainly in the method of formulation being either capsule, tablet, injectable solution, intravenous solution or a sustained release capsule. Claims 24, 25, 32, and 33 are container claims and refer to “a containerized pharmaceutical product”. …

[46 WL, QL] Claim 22 refers to treatment or prophylaxis of AIDS. By treatment, I conclude that the patent teaches that the compound will be useful in the treatment of this human disease. The claim is not for a cure. Moreover, the claim is not for the compound or process of producing the drug, but rather is for the use of the medicine. …

[274 WL, QL] It is stated [by Glaxo] that all of the independent claims and the claims dependent thereon except for claim 36, are composition of matter or product claims. Claim 36 covers a process for the preparation of a formulation according to claim 1. …

Wetston J. found the following claims valid: 1, 2, 3, 8, 10, 13, 14, 15, 16, 17, 18, 19, 20, 22, 28, 29, 36, 43, 45, 46, 47, 48, 54, 55, 56, 65, 66, 68; and the following claims invalid: 21, 23, 26, 27, 30, 31, 34, 35, 49, 50, 51, 57, 58, 59, 67, 69. The Court of Appeal, at [2001] 1 F.C. 495, 2000 CanLII 16270 (F.C.A.), said that only claim 22 and those dependent on it (28, 29, 54, 55, 56, 65, 66, 68) were valid. Sexton J.A. (Malone and Rothstein, JJ.A. concurring) said:

[81] When a new compound is invented, the inventor is entitled to a patent over that compound for all uses. However, where the compound is not new, the patent will be limited to the new use invented for the compound. To allow claim 1 and claims dependant upon it to stand would be tantamount to granting Glaxo a patent for a compound that was not new, i.e. not an invention.

[82] Glaxo relies on Shell Oil as authority that a patent may be granted for a compound that is not new even though the use of the compound is not set forth in the claim. However, it is clear from reading the claim at issue in Shell Oil “a plant growth regulant” that it describes a specific use. The use is implicit in the words of the claim. Shell Oil is of no assistance to Glaxo.

[83] However, even if it could be said that the words “pharmaceutical formulation” imply a pharmaceutical use, such undefined and unapplied pharmaceutical “use” has been known since 1964. What is new is the specific use of AZT against HIV. That is what was invented in 1985. It is only that use of the pharmaceutical formulation that is patentable.

Apotex appealed, arguing that the utility of AZT had not been established at the time of the Glaxo/Wellcome application. The Supreme Court dismissed the appeal. Binnie J. (Arbour, Bastarache, Gonthier, Iacobucci, L’Heureux-Dubé, LeBel, Major JJ., and McLachlin C.J.C. concurring) wrote:

[48] There is no serious challenge in this case to subject matter patentability. “[H]itherto unrecognized properties” can constitute a patentable new use for an old substance: Shell Oil, supra, per Wilson J. at p. 549. In that case, it was disclosed in the patent that known chemical compounds revealed a previously unrecognized use as plant growth regulators. …

[52] It is important to reiterate that the only contribution made by Glaxo/Wellcome in the case of AZT was to identify a new use. The compound itself was not novel. Its chemical composition had been described 20 years earlier by Dr. Jerome Horwitz. Glaxo/Wellcome claimed a hitherto unrecognized utility but if it had not established such utility by tests or sound prediction at the time it applied for its patent, then it was offering nothing to the public but wishful thinking in exchange for locking up potentially valuable research turf for (then) 17 years. …

Two points only need to be noted for our purposes: 1. Claim 22 was indeed a composition of matter (formulation) claim, not a simple use claim, just like the one in Shell Oil; and 2. The statement in para. 81 of the Court of Appeal reasons, that the inventor of a compound “is entitled to a patent over that compound for all uses,” was not questioned by the Supreme Court.

The subtleties of the decisions in Shell and Apotex are easily overlooked. For example, in Calgon Carbon Corporation v. North Bay (City), 2005 FCA 410 (CanLII), 45 C.P.R. (4th) 241; leave to appeal refused, 2006 CanLII 10093 (S.C.C.); Calgon claimed that North Bay had infringed its patent no. 2331525. Claim 1 was for “A method for the prevention of cryptosporidium oocysts comprising irradiating water with a continuous broadband of ultra violet light in doses of from about 10 mJ/cm² to about 175 mJ/cm².” Hugessen J. found this was only a discovery, not an invention, and granted summary judgment to North Bay. The Court of Appeal set this aside, acknowledging that there were other issues to be decided before the validity of the patent could be determined. Rothstein J.A. (Linden and Pelletier, JJ.A. concurring) said:

[18] To paraphrase the words of Wilson J. in Shell, it is the application of the new knowledge that irradiating water with low doses of UV light prevents crypto oocyst replication that has commercial value. This new application of an existing process therefore falls within the words “new and useful art” in the definition of “invention” in section 2 of the Act. Calgon’s discovery has added to the cumulative wisdom in the use of low doses of UV light in the water treatment process.

[19] There may be cases in which the use of high doses of UV light, with their added energy costs, may be avoided or cases in which other methods of treating water for crypto may be abandoned altogether. As such, irradiating water for crypto using low doses of UV light, while not a new method itself, constitutes a newly discovered use for that method and therefore is a new and useful art.

If this was “not a new method itself”, one wonders what the result would have been if someone else had already held a patent on the general process of irradiating water, or on the particular irradiating equipment which had been purchased for use by North Bay. If so, what then? An interesting aspect of the case is that North Bay had acquired its treatment system, and an indemnification agreement, from Trojan Technologies Inc. The contest was thus a continuation, in Canada, of disputes among U.S. companies over the original U.S. patent 6,129,893: Wedeco UV Techs., Inc. v. Calgon Carbon Corp., 2006 U.S. Dist. LEXIS 48657, 2006 WL 1867201 (D.N.J. Jun 30, 2006); affirmed, without reasons, 223 Fed.Appx. 982, 2007 U.S. App. LEXIS 11534, 2007 WL 1294995 (C.A.Fed. (N.J.)). The U.S. courts decided (*41 LEXIS, *14 WL) that “the inactivation of Crypto [was] not a patentably new use, but a newly discovered result of an old process.” Note the phrase “patentably new use”. As we’ll see below, that’s the language of the American statute.

When the Canadian case proceeded to trial, the Court decided against the patent on the basis of anticipation: 2006 FC 1373 (CanLII); affirmed 2008 FCA 81 (CanLII) Mosley J., noting what Rothstein J.A. had written, supra, said:

[136] On the evidence heard at trial, I am unable to reach the same finding. In my view, the defendants have established on a balance of probabilities that there were enabling disclosures of the invention by use and by publication prior to the claim date and that the use, therefore, was not new.

Ryer J.A. (Linden and Sexton, JJ.A. concurring) said:

[9] … According to the appellant, the Federal Court should have reformulated the test in Baker Petrolite [2002 FCA 158 (CanLII)] on a basis consistent with an obiter dictum of Lord Hoffman in Merrell Dow Pharmaceuticals v. H.N. Norton & Co., [1996 ] R.P.C. 76 (H.L.) which reads as follows:

Whether or not a person is working a product invention is an objective fact independent of what he knows or thinks about what he is doing. (The position may be different when the invention is a use for a product; in such a case, a person may only be working the invention when he is using it for the patented purpose…) [Emphasis added.]

[10] The appellant’s argument is that the Federal Court should have adopted the portion of this quote that is in parentheses as the test for anticipation where the subject matter is a method or use claim. Thus, the appellant urges that anticipation by prior use of a method or use claim requires that the person who is using the method must be aware that such method is being used for the patented purpose.

[11] The Federal Court applied an interpretation of enabling disclosure that is consistent with the appellant’s view of the appropriate test. … The Federal Court found that the facility in question knowingly used low dosage UV light for the purpose of preventing Crypto infection.

[12] These examples establish that the Federal Court interpreted the test of enabling disclosure from Baker Petrolite in a manner that was consistent with the test that the appellant advocates. Accordingly, the contention of the appellant that the Federal Court formulated the wrong test for enabling disclosure must be rejected.

Note the phrase “method or use claim”. That’s not the language of our Canadian statute.

It’s time to consider Bilski v. Kappos, 130 S. Ct. 3218, 177 L. Ed. 2d 792, No. 08-964 (2010)(LII), in which all nine judges agreed that there should be no patent for a method by which commodities traders in the energy market could hedge against the risk of price changes. The first thing to note is the relevant legislation. The first U.S. legislation, in 1790, was An Act to promote the progress of useful Arts, 1 Stat. 109 (Hein). The current language of two key sections dates to the Patent Act of 1952, 66 Stat. 792 (Hein). 35 U. S. C. §101 (LII)) provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

This is similar to the Canadian provision. Very different, however, is 35 U. S. C. §100(b) (LII)

The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

This muddles together subject-matter and use in a way that the Canadian statute does not. The difference that results from this muddling is further illustrated by 35 U. S. C. §154(a)(1) (LII)

Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.

Another provision to which we have no counterpart was introduced by the First Inventors Defense Act of 1999, 113 Stat. 1501A–555 (Hein). 35 U. S. C. §273(a)(3) (LII) provides:

For purposes of this section … the term “method” means a method of doing or conducting business; …

35 U. S. C. §273(b)(1) (LII) provides:

It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims for a method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.

Kennedy J. (Roberts C.J., Thomas, Alito, and Scalia JJ. concurring) wrote, in Part III, “[A]ll members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea.” In Part II-C-I, he added:

Under 35 U. S. C. §273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use. For purposes of this defense alone, “method” is defined as “a method of doing or conducting business.” §273(a)(3). In other words, by allowing this defense the statute itself acknowledges that there may be business method patents. … A conclusion that business methods are not patentable in any circumstances would render §273 meaningless. … Finally, while §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

Stevens J. (Ginsburg, Breyer and Sotomayor JJ. concurring) wrote, in Part V:

In light of its history and purpose, I think it obvious that the 1999 Congress would never have enacted §273 if it had foreseen that this Court would rely on the provision as a basis for concluding that business methods are patentable. Section 273 is a red herring; we should be focusing our attention on §101 itself.

In Part VII, he added:

[P]etitioners’ claim is not a “process” within the meaning of §101 because methods of doing business are not, in themselves, covered by the statute. In my view, acknowledging as much would be a far more sensible and restrained way to resolve this case.

“Business method” is a messy term, anything but a term of art even in the business community, and doesn’t occur in our statute. Its principal use appears to be in Jedi mind tricks, for working upon the susceptibilities of others. [“These aren’t the droids you’re looking for.”] In a similar vein, Julie E. Cohen and Mark A. Lemley have written, in “Patent Scope and Innovation in the Software Industry” (2001) 89 Cal. L. Rev. 1 (Hein), at 9:

The Diehr decision [Diamond v. Diehr, 450 U.S. 175 (1981)(FindLaw)] and its appellate progeny created what might be termed “the doctrine of the magic words.” Under this approach, software was patentable subject matter, but only if the applicant recited the magic words and pretended that she was patenting something else entirely.

In Canada, we don’t need the term “business method”, and we shouldn’t be satisfied with any description of subject-matter that uses it until someone can give it a nice tidy definition using terms that appear in the Act.

If anyone wants to accuse me of taking a “reductionist” approach to the term “business method”, I’ll plead guilty. I shave with Ockham’s razor too. The kind of reductionism I would espouse, however, shouldn’t be confused with simple materialism. Nothing, for example, could be more abstract than geometry. Euclid never got a patent for axiomatizing geometry, but what a wonderful thing it was that he did. Not as many people know that David Hilbert improved upon Euclid’s axiomatization a little more than 100 years ago. Other reductionist heroes are Giuseppe Peano (who axiomatized the natural numbers), Ernst Zermelo (known for his axiomatization of set theory), Dmitri_Mendeleev (who gave us the periodic table of elements), and Carolus Linnaeus (justly renowned for his taxonomy). The kind of reductionism I would espouse is a method (unpatented) of achieving clarity and economy of thought. The goal is for everything to be said using just the elementary terms and relations, and properly defined terms and relations. The only properly defined terms and relations use just the elementary terms and relations, and other properly defined terms and relations. Of the elementary terms and relations, there should be no more than are absolutely necessary.

Inspired, perhaps, by Linnaeus, the World Intellectual Property Organisation has developed an International Patent Classification. G is “Physics”. G06 is “Computing, calculating, counting”. G06F is “Electric digital data processing. G06F 13 is “Interconnection of, or transfer of information or other signals between, memories, input/output devices or central processing units”. Within this broader context, the 1-click patent has been classified as follows:

• G06F 13/14 (2006.01): Handling requests for interconnection or transfer

G06F 17 is “Digital computing or data processing equipment or methods, specially adapted for specific functions”. Within that context, we have:

• G06F 17/60 (1995.01): Administrative, commercial, managerial, supervisory or forecasting purposes. [This classification was later removed to G06Q.]

G06Q is “Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forcasting purposes”. Within that context, we have:

• G06Q 10/00 (2006.01): Administration, e.g. office automation or reservations; Management, e.g. resource or project management
• G06Q 20/00 (2006.01): Payment schemes, architectures or protocols
• G06Q 30/00 (2006.01): Commerce, e.g. marketing, shopping, billing, auctions or e-commerce

I’m not sure whether Amazon or the Patent Office assigned the numbers, but somebody seems to have thought computers were involved.

Until I see something more than the 27 page vision statement, I’m going to assume, as noted, that what Amazon did was to buy computers, connect them to the internet, install some software, run it, write some more software, and then run that. Speaking as a reductionist, I’m going to assume that the so-called 1-click method is an epiphenomenon. In other words, to understand what it is, and how it works, we really need to be talking about whatever original programs were written by the people working for Amazon for the hardware, operating system, compilers, interpreters, etc., that they eventually ran it on. There’s a serious philosophical debate about whether “the mind” is an epiphenomenon. (See the discussion of murine metaphysics, infra.) I doubt there will turn out to be a similar debate about 1-click.

My starting assumption would be that Amazon’s method of using that internet-connected computer was exactly what everybody in possession of the very most basic knowledge of such matters always thought it would be: they programmed it. It’s the special beauty of computers that they are programmable. Most of them now are stored-program computers, meaning that the programs themselves are digitally-encoded information, just like the data they operate upon. Most of the computers we use have a Von Neumann architecture, named for John Von Neumann (1903-1957), and implement what is known, after Alan Turing (1912-1954), as a universal Turing machine. Wikipedia provides a convenient informal description of the basic Turing machine:

The Turing machine mathematically models a machine that mechanically operates on a tape on which symbols are written which it can read and write one at a time using a tape head. Operation is fully determined by a finite set of elementary instructions such as “in state 42, if the symbol seen is 0, write a 1; if the symbol seen is 1, shift to the right, and change into state 17; in state 17, if the symbol seen is 0, write a 1 and change to state 6;” etc. In the original article …, Turing imagines not a mechanism, but a person whom he calls the “computer”, who executes these deterministic mechanical rules slavishly (or as Turing puts it, “in a desultory manner”).

The universal Turing machine, again according to Wikipedia,

is a Turing machine that can simulate an arbitrary Turing machine on arbitrary input. The universal machine essentially achieves this by reading both the description of machine to be simulated as well as the input thereof from its own tape.

Another of the great names in the history of computing is that of Alonzo Church (1903-1995). The Church-Turing thesis is that everything computable is computable by a Turing machine. It’s not a proven thesis, but hardly anybody expects it ever to be disproven. The Turing machine is an abstract machine, not a particular one. One of the goals of the people who study these abstract machines is to define what it means for a process, calculation or computation to be a mechanical one. These people like to demonstrate the equivalence of various abstract machines. Yes, it’s another reductionist project. I suspect it wouldn’t be easy to convince these folks that the people who wrote the 1-click software had invented a new machine.

Writing software is like shuffling a deck of cards. Shuffle it however you will, it’s still a deck of cards. A display screen is still a display screen, no matter what words or images it displays. A DVD is still a DVD, no matter what music or motion picture is stored on it. A computer is still a computer, no matter what software it happens to be running. Nowadays, we digitally encode all kinds of things. Lo and behold, we discover that we can map practically any of our original works into one of the simplest sets of numbers, the natural ones, all of which, despite their infinite cardinality, are accounted for. (See “Continuum Hypothesis” on Wikipedia.) Nobody’s going to invent or create any new natural numbers. Of course, the way we humans currently write software, literature and music is unlike shuffling a deck of cards to the extent that it is artful. That will make a difference at least until our computers have the horsepower to turn, by brute force enumeration, those famously random Shakespearean monkeys into Luddites. At some point, though, we’re probably going to have to confront the shakiness of the foundations of our intellectual property laws.

Meanwhile, we can discuss the art of computer programming. The classic set of books which bears that title is by Donald Knuth: Library of Congress No. 67026020 . This monograph is so justly famous that it even has a Wikipedia page setting out critical responses and chapter outlines. The Wikipedia article comments:

All examples in the books use a language called “MIX assembly language”, which runs on the hypothetical MIX computer. (Currently, the MIX computer is being replaced by the MMIX computer, which is a RISC version.) Software such as GNU MDK exists to provide emulation of the MIX architecture.

Some readers are put off by the use of assembly language, but Knuth considers this necessary because algorithms need to be in context in order for their speed and memory usage to be judged. This does, however, limit the accessibility of the book for many readers, and limits its usefulness as a “cookbook” for practicing programmers, who may not be familiar with assembly, or who may have no particular desire to translate assembly language code into a high-level language. A number of more accessible algorithms textbooks using high-level language examples exist and are popular for precisely these reasons.

An assembly language is a low-level programming language (Wikipedia):

In computer science, a low-level programming language is a programming language that provides little or no abstraction from a computer’s instruction set architecture. The word “low” refers to the small or nonexistent amount of abstraction between the language and machine language; because of this, low-level languages are sometimes described as being “close to the hardware.”

Low-level languages can be converted to machine code without using a compiler or interpreter, and the resulting code runs directly on the processor.

We reductionists like to go low. (This is just for the sake of understanding, of course. I can still remember from my early university days how unbearably tedious and unforgiving assembly language programming is in practice.) The machine code is as low as it gets. This is the level where we find the irreducible operations of a central processing unit. Our computers do amazing things because millions of these little operations are artfully programmed in sequence. Considered individually, these operations don’t seem like much. That’s because they aren’t much. The critical point is that literally nothing else is going on in the CPU except these elementary operations, no matter what epiphenomenal marvels appear. A human being with a pencil, eraser, and Turing’s paper tape can easily perform any one of the elementary operations performed by the CPU. In fact, the folks in hell probably pass the time running actual programs this way. Anyone who wants more information can read the following Wikipedia articles: “Instruction set”, “Opcode”, “Operand”, “Categories of registers”, “Instruction register”, “Control flow”, “Memory address”, “Memory address register”, “Memory data register”, “Arithmetic logic unit” and “Bitwise operation”.

As far as I know, the first serious discussion of murine metaphysics, supra, was in paragraphs 48 (dissent) and 163 (majority) of Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76 (CanLII), [2002] 4 S.C.R. 45. In that case, the Court denied Harvard a patent for the oncomouse. Writing more generally, Bastarache J. (L’Heureux-Dubé, Gonthier, Iacobucci and LeBel JJ. concurring) said:

120 … In my opinion, Parliament did not intend higher life forms to be patentable. Had Parliament intended every conceivable subject matter to be patentable, it would not have chosen to adopt an exhaustive definition that limits invention to any “art, process, machine, manufacture or composition of matter”. …

[158] I agree that the definition of invention in the Patent Act is broad. Because the Act was designed in part to promote innovation, it is only reasonable to expect the definition of invention to be broad enough to encompass unforeseen and unanticipated technology. I cannot however agree with the suggestion that the definition is unlimited in the sense that it includes “anything under the sun that is made by man”. In drafting the Patent Act, Parliament chose to adopt an exhaustive definition that limits invention to any “art, process, machine, manufacture or composition of matter”. Parliament did not define “invention” as “anything new and useful made by man”. By choosing to define invention in this way, Parliament signalled a clear intention to include certain subject matter as patentable and to exclude other subject matter as being outside the confines of the Act.

Binnie J. (McLachlin C.J.C., Major and Arbour JJ. concurring) disagreed:

[59] … We should not encourage the Commissioner to try to circle each of the five definitional words with tight language that creates arbitrary gaps between, for example, “manufacture” and “composition of matter” through which useful inventions can fall out of the realm of patentability.

History, I would submit, is with the majority. Parliament did draw some lines. With respect to the arts, the line was not between the useless arts and the other ones, but between the useful arts and the other ones. (Note again the title of our 1826 act, supra.) In Bilski v. Kappos, 130 S. Ct. 3218, 177 L. Ed. 2d 792, No. 08-964 (LII), supra, Stevens J. (dissenting)(Ginsburg, Breyer and Sotomayor JJ. concurring) referred, in Part IV of his reasons, to the definition of “art” given by Noah Webster in An American dictionary of the English language (New York: S. Converse, 1828)(archive.org)

Arts are divided into the useful or mechanic, and liberal or polite. The mechanic arts are those in which the hands and body are more concerned than the mind; as in making clothes and utensils. These arts are called trades. The liberal or polite arts are those in which the mind or imagination is chiefly concerned; as poetry, music and painting.

Stevens J. also cited Robert I. Coulter, “The Field of the Statutory Useful Arts” (1952) 34 J. Pat. Off. Soc’y 417-435, 487-507 and 718-738 (Hein); and John R. Thomas, “The Patenting of the Liberal Professions” (1999) 40 B.C. L. Rev. 1139 (Hein). The ever-helpful Wikipedia also has articles on the Liberal arts and the Artes Mechanicae.

If we are concerned, in this digital age, to have a complementary relationship between our patent laws and our copyright laws, this distinction between the useful arts and the liberal arts is an important one to keep in mind. Phelan J. in paragraph 73 of Amazon, supra, wrote:

The Court finds that a purposive construction of the “system claims” (e.g. claim 44 and its associated dependant claims) clearly discloses a machine which is used to implement Amazon.com’s one-click ordering system. The described components (e.g. a computer) are essential elements in implementing an online ordering process. This is not merely “a mathematical formula” which could be carried on without a machine or simply a computer program. A machine is patentable under s. 2 of the Patent Act. The Commissioner herself found that “in form” the claims disclosed such an invention; it was only when she took a second step to subjectively consider the “substance” that she found otherwise. As discussed, this is unsupported in law. The Court therefore finds the machine claims to be patentable subject matter.

If a computer becomes a component of a different machine every time new software is installed, then an iPod becomes a component of a different machine whenever a new tune is downloaded, and an iPad becomes a component of a different machine whenever a new book is downloaded. Is that really how we want to use the word “machine”? No doubt the physical states of these devices change when the information stored on them changes, but the application of ink has always changed the physical state of paper too. Phelan J.’s allusion, of course, is to Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] 1 F.C. 845, 56 C.P.R. (2d) 204, 1981 CarswellNat 138, [1981] F.C.J. No. 176 (C.A.); leave to appeal refused [1981] S.C.C.A. No. 56, 1981 CarswellNat 815. The Court in this case denied a patent for a process whereby measurements obtained in boreholes were transformed by a computer into charts, graphs and tables. Pratte J. (Ryan J. and Kerr D.J. concurring) wrote:

[5 WL, QL] In order to determine whether the application discloses a patentable invention, it is first necessary to determine what, according to the application, has been discovered. Now, it is obvious, I think, that there is nothing new in using computers to make calculations of the kind that are prescribed by the specifications. It is precisely in order to make those kinds of calculations that computers were invented. What is new here is the discovery of the various calculations to be made and of the mathematical formulae to be used in making those calculations. If those calculations were not to be effected by computers but by men, the suject-matter of the application would clearly be mathematical formulae and a series of purely mental operations; as such, in my view, it would not be patentable. A mathematical formula must be assimilated to a “mere scientific principle or abstract theorem” for which subsection 28(3) of the Act prescribes that “no patent shall issue”. As to mental operations and processes, it is clear, in my view, that they are not the kind of processes that are referred to in the definition of invention in section 2. However, in the present case, the specifications prescribe that the calculations be made by computers. As a result, as I understand the appellant’s contention, those calculations are not mental operations but purely mechanical ones that constitute the various steps in the process disclosed by the invention. If the appellant’s contention were correct, it would follow that the mere fact that the use of computers is prescribed to perform the calculations prescribed in the specifications, would have the effect of transforming into patentable subject-matter what would, otherwise, be clearly not patentable. The invention of the computer would then have the unexpected result of giving a new dimension to the Patent Act by rendering patentable what, under the Act as enacted, was clearly not patentable. This, in my view, is unacceptable. I am of opinion that the fact that a computer is or should be used to implement discovery does not change the nature of that discovery. What the appellant claims as an invention here is merely the discovery that by making certain calculations according to certain formulae, useful information could be extracted from certain measurements. This is not, in my view, an invention within the meaning of section 2.

Call it “algorithm”, “formula”, “agenda”, “program”, or whatever, a work of software consists of an ordered sequence of elementary operations, any of which could easily be performed by a human “computer”, as Turing envisioned. The beauty of particular CPUs is in their speed, accuracy and reliability. They are works of art–useful art. But the ordinary use of this kind of hardware–the programming of it–is a literary art, just because all of the Turing machine, the operations, and the program are abstractions. In just the same way, paper-making, printing and binding are useful arts, but the novel–the literary work–is an abstraction. No matter how useful that epiphenomenal wizard, Harry Potter, has been to J.K. Rowling.

In Canada, the useful arts/liberal arts distinction is most often discussed as a trades/professions distinction, or under the heading “Professional skills exception”. In Lawson v. Canada (Commissioner of Patents) (1970), 62 C.P.R. 101, 1970 CarswellNat 361, [1970] Ex. C.J. No. 13, the Court denied a patent for the claimed “art” or “manufacture” of subdividing land into lots in such a way as to make the shape of a champagne glass. Cattanach J. wrote:

[36 WL, 37 QL] It is obvious … that professional skills are not the subject-matter of a patent. If a surgeon were to devise a method of performing a certain type of operation he cannot obtain an exclusive property or privilege therein. Neither can a barrister who has devised a particular method of cross-examination or advocacy obtain a monopoly thereof so as to require imitators or followers of his methods to obtain a licence from him.

[37 WL, 38 QL] It seems to me that a method of describing and laying out parcels of land in a plan of subdivision of a greater tract of land in the skill of a solicitor and conveyancer and that of a planning consultant and surveyor. It is an art which belongs to the professional field and is not a manual art or skill.

[38 WL, 39 QL] I, therefore, conclude that the method devised by the applicant herein for subdividing land is not an art within the meaning of that word in s. 2(d).

[66 WL, 67 QL] Counsel for the appellant conceded that if the subject-matter claimed was a plan, it was not patentable for which reason he was adamant in submitting that the claim was for the application of the principle in subdividing land which resulted in a different article. In view of my conclusions that the subject was not an “art” or a “manufacture” within the meaning of those words in s. 2(d) for the reasons I have outlined, it follows that what is being claimed is more approximate to a plan. While it may be that the appellant could obtain protection under the Copyright Act, R.S.C. 1952, c. 55, or the Industrial Design Act Union Label Act, R.S.C. 1952, c. 150, neither of which matters I am required to decide, he is not entitled to protection under the Patent Act.

In Tennessee Eastman Co. et al. v. Canada (Commissioner of Patents), [1974] S.C.R. 111, 1972 CanLII 167 (S.C.C.), the Court denied a claim for a process patent on a new surgical method of bonding the surfaces of wounds, using old and well-known compounds. Pigeon J. (Martland, Ritchie, Hall and Laskin JJ. concurring) wrote, at p. 117:

Just as in the case of “art”, the scope of the word “process” in s. 2(d) is somewhat circumscribed by the provision of s. 28(3) excluding a “mere scientific principle or abstract theorem”. There is no question here of the alleged invention being such. It is clearly in the field of practical application. In fact, as the record shows, the “invention” essentially consists in the discovery that a known adhesive substance is adaptable to surgical use. In other words, the subject-matter of the claimed invention is the discovery that this particular adhesive is non-toxic and such that it can be used for the surgical bonding of living tissues as well as for a variety of inert materials. In this situation, it is clear that the substance itself cannot be claimed as an invention and the appellants have not done so. Their claims are limited to a method, i.e. process, which in this case is nothing else than a new use for a known substance. The sole question is therefore whether a new use for surgical purposes of a known substance can be claimed as an invention.

At the time, section 41 [since repealed] of the Act put limits on the scope of patents “relating to substances prepared or produced by chemical processes and intended for food or medicine.” Pigeon J. wrote, at p. 119:

… [I]f a method of treatment consisting in the application of a new drug could be claimed as a process apart from the drug itself, then the inventor, by making such a process claim, would have an easy way out of the restriction in s.41(1).

Having come to the conclusion that methods of medical treatment are not contemplated in the definition of “invention” as a kind of “process”, the same must, on the same basis, be true of a method of surgical treatment.

Pigeon J. was saying, in effect, that Parliament had not dealt specifically with medical process patents in section 41 because section 2 already provided, more generally, for an exclusion of professional process patents. At least that’s the interpretation that Wilson J. (Ritchie, Dickson, Beetz, and McIntyre JJ. concurring), discussing Tennessee Eastman, gave at p. 554 of Shell Oil Co. v. Canada (Commissioner of Patents), supra, [1982] 2 S.C.R. 536, 1982 CanLII 207 (S.C.C.):

The Commissioner refused the patent on the basis that … it was not an “art” because it was useful only in the process of surgical or medical treatment and produced no result in relation to trade, commerce or industry. The applicant appealed to the Exchequer Court and the issue there was limited to the question whether this use of the adhesive fell within the meaning of new and useful “art” or “process” within the meaning of the Patent Act. It was held that it did not for the reasons given by the Commissioner. In effect, it was not patentable because it was essentially non-economic and unrelated to trade, industry or commerce. It was related rather to the area of professional skills.

Binnie J. (Arbour, Bastarache, Gonthier, Iacobucci, L’Heureux-Dubé, LeBel, Major JJ., and McLachlin C.J.C. concurring) accepted this interpretation at para. 9 of Apotex Inc. v. Wellcome Foundation Ltd., supra, 2002 SCC 77 (CanLII), [2002] 4 S.C.R. 153; as did Harrington J. at para. 11 of Axcan Pharma Inc. v. Pharmascience Inc., 2006 FC 527 (CanLII), 50 C.P.R. (4th) 321.

Do we still believe there’s a distinction between the liberal arts and the useful arts? If not, then we really do need a major overhaul of our copyright and patent laws.

Just a few more words on that statement in paragraph 73 of Amazon, supra:

The Commissioner herself found that “in form” the claims disclosed such an invention; it was only when she took a second step to subjectively consider the “substance” that she found otherwise. As discussed, this is unsupported in law. The Court therefore finds the machine claims to be patentable subject matter.

The discussion noted is in paragraphs 28 to 47. Phelan J. wrote:

[39] … Although the Commissioner attempts to confine this analysis to patentable subject matter, a return to ‘form and substance’ language, no matter what the context, is confusing and unnecessary. Further, it represents a departure from the clear direction of the Supreme Court to apply purposive construction universally.

Phelan J. cited Whirlpool Corp. v. Camco Inc., 2000 SCC 67 (CanLII), [2000] 2 S.C.R. 1067; and Free World Trust v. Électro Santé Inc., 2000 SCC 66 (CanLII), [2000] 2 S.C.R. 1024. These cases were decided together, and both sets of reasons were delivered by Binnie J. (L’Heureux‑Dubé, Gonthier, McLachlin, Iacobucci, Major and Bastarache JJ. concurring). Whirlpool had three dual-action-agitator, washing-machine patents: 1,045,401 (expired January 1, 1996), 1,049,803 (expired March 5, 1996) and 1,095,734 (expired February 16, 1998). The Court had to decide when the defendants could begin to manufacture double-agitator machines, and with what features. The Court, dismissing the defendants’ appeals, reasoned that all three patents were valid, and had been infringed by GE and Maytag. The second patent covered agitators with rigid vanes only. The third covered agitators with flexible vanes. Binnie J. wrote:

[53] A second difficulty with the appellants’ dictionary approach is that it urges the Court to look at the words through the eyes of a grammarian or etymologist rather than through the eyes and with the common knowledge of a worker of ordinary skill in the field to which the patent relates. An etymologist or grammarian might agree with the appellants that a vane of any type is still a vane. However, the patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention …

Free World Trust held patents for [para. 4] “an apparatus that bombards different parts of the human body with low frequency electro-magnetic waves.” It used [para. 6] “control circuits” to regulate the magnetic field. Électro-Santé’s device [para. 6] “achieved similar therapeutic purposes”, but used a “microcontroller” instead. The Court decided that the patents were valid, but had not been infringed. Binnie J. wrote:

[6] … The present controversy revolves around these differences, and whether they are sufficiently substantial to put the respondents outside the appellant’s monopoly. …

[23] … [T]he evidence is that much of this equipment is commonly used in university science laboratories and in other settings involving the production of magnetic fields using electric currents through coiled wires. They are included in the patent only because of their use in conjunction with “essential” elements of the invention described in claim 1. In the case of some of these specific components, anyone skilled in the art reading the patent at the date of its publication would immediately have appreciated that there existed different commonly known substitutes or mechanical equivalents that would do the job just as well. … These components themselves were not patented on their own–indeed, they could not be patented since they represent equipment commonly known and used by persons skilled in electrical engineering. They came to be included in the claim as an element of an ingenious combination. Substitution of one type of switch for another in this case would not strike at the essentials of the invention.

[27] … The appellant, it must be appreciated, does not claim to have invented electro-magnetotherapy. It obtained a patent for a particular means. Although the various components were earlier known to persons skilled in the art, the inventor brought the elements together to achieve what the Commissioner of Patents considered a new, useful and ingenious result. The claimed invention effected an ingenious combination rather than a mere aggregation of previously known components ….

[32] … [T]he ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.

[50] … I think we should now recognize … that the greater the level of discretion left to courts to peer below the language of the claims in a search for “the spirit of the invention”, the less the claims can perform their public notice function, and the greater the resulting level of unwelcome uncertainty and unpredictability. “Purposive construction” does away with the first step of purely literal interpretation but disciplines the scope of “substantive” claims construction in the interest of fairness to both the patentee and the public.

In context, it should be clear enough that the Supreme Court was not dictating that we simply close our eyes and swallow every dubious claim whole. On the contrary, a straightforward application of these cases to Amazon suggests that the claim description should, using the terms of art of the discipline, have given programmers all the particulars of how 1-click worked. I submit again that there should have been source code, because of s. 27(3) (justice.gc.ca):

The specification of an invention must …
(b) set out clearly the various steps in a process … in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to … use it; …
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

(Careful readers may have noticed that I’ve made much less use of “substance” or “essence” in this column than Binnie J. did in the cases noted. That was intentional. We can only be grateful that Binnie J. didn’t mention “ousia” or “hypostasis“. Concerning “the spirit of the invention”, should we reconsider the double procession as a process claim? Just kidding.)

So where does that leave things? Phelan J. thought the Commissioner erred, and should have another look at Amazon’s claim. I agree with that result. Unlike Phelan J., however, I am inclined to think that the claim, if there is nothing more to it than the 27 pages, is just an abstract vision-statement, drafted by someone with the American rather than the Canadian legislation in mind. I doubt that a disclosure of further particulars of the 1-click (epi)phenomenon will reveal anything more than a perfectly conventional (albeit original for copyright purposes) use of ordinary computers, but that remains to be seen.

I apologize for the length of this. It just kept growing. A notice of appeal was filed in the Amazon case on November 14, 2010. I hope the Court of Appeal will have something useful to say about it. Developments can be monitored on the Federal Court’s Court Index and Docket.