A Device Is Not a Machine

Submitted by patentadmin on Mon, 08/24/2009 - 14:54

As the reader may (should) remember, patentability of methods or processes now requires that “it is tied to a particular machine or apparatus, or it transforms a particular article into a different state or thing” – the Bilski test. The term “particular machine” has remained largely undefined. Now, a district court in Arizona has sought to help fill this gap. (Research Corporation Technologies, Inc. v. Microsoft Corp.)

One of the patent claims in suit was directed to “an apparatus…comprising a comparator for comparing…a plurality of color planes…against a…mask.” The patent drawings included a figure illustrating the comparator as an electronic device comparing two input signals.

The Court, apparently not deterred by the presence of the word “apparatus,” construed this claim to be a process claim. The Court went on to hold that a comparator is not a machine, but is “a collection of operations that performs an algorithm.” It is “a device that compares numbers…'device' is not synonymous with machine.”

Fortunately, as we previously noted, the Supreme Court has agreed to hear an appeal of the Bilski decision.

THE LESSON TO BE LEARNED: This is another example of the lack of predictability that should induce wise litigants to settle their cases.

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