Now that the Bilski oral arguments are complete and the case has been submitted to the Court for consideration the guessing game begins. Normally trying to figure out what a court will do is a waste of time, particularly so when that court is the Supreme Court, which is not bound by precedent of any kind given that they are the court of last resort. Having said that, the Bilski Federal Circuit decision is of such importance and inventors and clients cannot simply stand still waiting for a decision, holding themselves up until things become clear. You simply cannot wait to file a patent application in most cases, and there is the distinct possibility that the Supreme Court will not actually answer the questions or answer them in a way that provides clarity moving forward. The Supreme Court has been known to provide some guidance about what is not appropriate to bookend the limits of what is acceptable, then kicking a matter back down for lower courts to address the minutia. That is certainly frustrating, but in keeping with a small “c” conservative judicial approach where nothing more than is absolutely necessary has been said. If only the Federal Circuit had done that we wouldn’t be here. In trying to piece together what might happen I think we should dissect some of the patent writings of the Justices, so without further ado lets begin with Justice John Paul Stevens.
During the oral argument Justice Stevens, who is the longest serving member of the current Supreme Court, had the following exchange with the attorney for Mr. Bilski, Michael Jakes:
JUSTICE STEVENS: May I ask this general question, too? I have always admired Judge Rich, who was very active in drafting the ’52 amendments.
MR. JAKES: Yes.
JUSTICE STEVENS: Has he written anything on this particular issue.
MR. JAKES: He has written a number of things. And I think one of the things that the Solicitor General quotes in their brief is from an article that he wrote.
But he also wrote the Alappat decision and the State Street Bank case as well. And those I think, stand as his views, his latest views on what was patent-eligible subject matter, looking at the State Street Bank case.
While I do not always, or often, agree with Justice Stevens, I do share in his admiration for Judge Rich. But certainly Justice Stevens would have to know that it was Judge Rich who wrote the enormously controversial opinion in State Street Bank v. Signature Financial Group, right? But how does one reconcile Justice Steven’s admiration for Judge Rich, who may well have found Bilski’s “invention” not patentable subject matter but certainly would not have thrown away his own developed “useful, concrete and tangible result” criteria announced in In re Alappat and then extended to apply to business methods in State Street? Justice Stevens was the only member of the current Court to be a member of the Supreme Court for Parker v. Flook, Diamond v. Chakrabarty and Diamond v. Diehr. So lets take a look at his decisions in those cases, as well as Lab Corp. v. Metabolite.
In Parker v. Flook, writing for the majority Justice Stevens wrote:
First, respondent incorrectly assumes that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case. It would make the determination of patentable subject matter depend simply on the draftsman’s art and would ill serve the principles underlying the prohibition against patents for “ideas” or phenomena of nature. The rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect. The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.
Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole. Respondent’s process is unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.
Here it is absolutely clear that respondent’s application contains no claim of patentable invention.
This reasoning, which inappropriately weaves 101 and 102 together, seems keeping in line with Justice Stevens questions of Deputy Solicitor Stewart when he continued to question how one could call an old machine something that is patentable simply because it is running new software. It is also in keeping with his later opinions that also weave together concepts of novelty in search of whether a category of invention should be patentable subject matter. In fact, it seems that Justice Stevens has has difficulty separating novelty from patentable subject matter, wanting to focus the patentable subject matter not on the totality of what is claims, but through a lens that asks what the point of novelty is and whether that point of novelty qualifies as patentable subject matter.
In Diamond v. Diehr, Justice Stevens writing for the dissent explained:
There are three reasons why I cannot accept the Court’s conclusion that Diehr and Lutton claim to have discovered a new method of constantly measuring the temperature inside a mold. First, there is not a word in the patent application that suggests that there is anything unusual about the temperature-reading devices used in this process — or indeed that any particular species of temperature-reading device should be used in it. Second, since devices for constantly measuring actual temperatures — on a back porch, for example — have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered. Finally, the Patent and Trademark Office Board of Appeals expressly found that “the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press.” This finding was not disturbed by the Court of Customs and Patent Appeals and is clearly correct.
A fair reading of the entire patent application, as well as the specific claims, makes it perfectly clear that what Diehr and Lutton claim to have discovered is a method of using a digital computer to determine the amount of time that a rubber molding press should remain closed during the synthetic rubber-curing process. There is no suggestion that there is anything novel in the instrumentation of the mold, in actuating a timer when the press is closed, or in automatically opening the press when the computed time expires. Nor does the application suggest that Diehr and Lutton have discovered anything about the temperatures in the mold or the amount of curing time that will produce the best cure. What they claim to have discovered, in essence, is a method of updating the original estimated curing time by repetitively recalculating that time pursuant to a well-known mathematical formula in response to variations in temperature within the mold. Their method of updating the curing time calculation is strikingly reminiscent of the method of updating alarm limits that Dale Flook sought to patent.
Once again we see Justice Stevens clouding the patentable subject matter inquiry with discussion of novelty. In essence, Justice Stevens saw no reason to depart from Benson and find any computer related process patentable, particularly one he didn’t believe to be novel.
In his dissent in Diehr Justice Stevens also specifically mentions Judge Rich. Stevens explained that in In re Johnston Judge Rich dissented from the CCPA majority and argued that “to limit Benson only to process claims would make patentability turn upon the form in which a program invention was claimed.” Justice Stevens also explained that in In re Noll Judge Rich joined a dissent that would have found Benson to be “read as a general proscription of the patenting of computer programs regardless of the form of the claims.” Giving at least some insight into why Justice Stevens may admire Judge Rich.
It would seem these writings of Justice Stevens are well in keeping with the Lab Corp. v. Metabolite dissent authored by Justice Breyer and joined by Justice Stevens. In that case, which was at first taken by the Supreme Court and then ultimately rejected as having been inappropriately granted cert., the invention in question was a correlation between homocysteine and vitamin deficiency. The Federal Circuit ruled that the claims in question were patentable and appropriately granted and Justice Breyer believed that it ought not to be patentable because it was merely “an instruction to reas some numbers in light of medical knowledge.” Justice Breyer was concerned about a clever draftsman being able to turn something unpatentable into something patentable, which certainly echoes Justice Stevens concerns in his previous patent writings and his questions during oral argument. Justice Breyer also questioned the extent of the State Street ruling saying that “if taken literally, the statement would cover instances where this Court has held the contrary.”
Weaving Justice Stevens Diehr dissent together with Justice Breyer’s questioning of State Street it starts to suggest that perhaps Justice Steven’s admiration for Judge Rich does not extend to Rich’s later view of computer programs post Diamond v. Diehr as evidenced by his pro-patentability opinions in Alappat and State Street. Justice Steven’s comments at the Bilski oral argument, together with his earlier patent writings also suggest that his views have not changed with respect to patentability of computer software and related inventions, which is truly curious. How anyone could live in the world we live in today and not understand software to be the engine that drives dumb terminals and machines is beyond me.
Curiously, Justice Stevens was in the majority in Diamond v. Chakrabarty, which suggests that he is not an anti-patent zealot. The Chakrabarty ruling held that living matter is patentable subject matter, which is regarded in some corners as being extremely controversial, perhaps even more controversial than the patenting of software. What this suggest is that Justice Stevens simply does not like computer software and mental processes (i.e., diagnostic correlations) being patentable subject matter, which would not bode well for Bilski’s claims.
Time will tell, but when I originally heard Justice Stevens express his admiration for Judge Rich I thought that would translate into a pro-patent view. Now I not only have my doubts but suspect that Justice Stevens will likely be a vote not only against Bilski, but likely a vote in favor of the Federal Circuit Bilski decision. Not to panic for those who are believers in software and business methods being patentable. The way I count the Justices (at least presently) has the Federal Circuit being reversed (why else would the Supremes take the case), but likely will leave Bilski’s claims unpatentable. I could also see a very limited decision in Bilski reversing the Federal Circuit because even Justice Breyer, who seems predisposed to otherwise support limits on the patentability of mental processes and correlations, was “nervous about the Circuit’s decision.”
More to come in the weeks and months to follow as I explore the likely predilections of other Justices and refine my predictions. Stay tuned!