Another Day Without Bilski Decision, What Does it Mean?

By Gene Quinn
May 17, 2010

Today the United States Supreme Court issued four decisions, and none of them were Bilski v. Kappos.  The four decisions issued by the Court were:

  1. Sullivan v. Florida
  2. United States v. Comstock
  3. Graham v. Florida
  4. Abbott v. Abbott

Many had been pointing to May 17, 2010, as a likely day the Supreme Court would issue a decision, which was just speculation at best.  Regardless, it is now about 11:10 am, so it is fair to say that we are not going to get a decision today from the Supreme Court in Bilski v. Kappos. I have been monitoring the Supreme Court website this morning and another case has not been added to the slip opinions list since about 10:20 am, and at that time the decision numbers were filled in, showing that the last of the opinions for the day brings the total to 51 cases decided so far this term.

The Supreme Court held oral arguments in the Bilski case on November 9, 2009 (See Bilski Arguments Complete at the US Supreme Court and A Birds Eye View of the Bilski Oral Argument) and that means we have now been waiting 6 months and 8 days for a decision, and the wait continues.

If you look back at the lag time between oral argument and decision over the last 17 Supreme Court patent decisions the average is 2.82 months (see list below). I selected the last 17 to look at given that the 17th is Markman, which seemed important enough to require consideration if we are going to try and discern any clues.  The longest lag between argument and decision in the list below was for KSR v. Teleflex, which was easily the most fundamentally important patent decision issued by the Supreme Court over at least the last generation.  The lag from argument to decision for KSR was 5.07 months, and we are already at 6.29 months lag for Bilski.  This suggests to me that whatever the decision in Bilski will ultimately be it will be transformative.  I just hope not “transformative” in the same way as the Federal Circuit Bilski decision.

In any event, here is the list of recent Supreme Court opinions in patent cases:

Argued Decided Lag (mos)
Quanta Computer v. LG Electronics 1/16/2008 6/9/2008 4.8
KSR v. Teleflex 11/28/2006 4/30/2007 5.07
Microsoft v. AT&T 2/21/2007 4/30/2007 2.25
Medimmune v. Genentech 10/4/2006 1/9/2007 3.17
Lab Corp. v. Metabolite 3/21/2006 6/22/2006 3.03
eBay v. Merchexchange 3/29/2006 5/15/2006 2.53
Illinois Tool Works v. Independent Ink 11/29/2005 3/1/2006 2.07
Unitherm v. Swift-Eckrich 11/2/2005 1/23/2006 2.68
Merck v. Integra Lifesciences 4/20/2005 6/13/2005 1.80
Holmes Group v. Vornado Air Circulation 3/19/2002 6/2/2002 2.43
Festo v. Shoketsu Kinzoku Kogyo 1/8/2002 5/28/2002 4.67
JEM AG Supply v. Pioneer Hi-Bread 10/3/2001 12/10/2001 2.33
Florida Prepaid v. College Savings Bank 4/20/1999 6/23/1999 2.10
Dickinson v. Zurko 3/24/1999 6/10/1999 2.57
Pfaff v. Wells Electronics 10/6/1998 11/10/1998 1.13
Warner Jenkinson v. Hilton Davis 10/15/1996 3/3/1997 4.63
Markman v. Westview Instruments 1/8/1996 4/23/1996 3.50

In looking at the Supreme Court Calendar on the Court’s Homepage, it would seem that the next day that we might get a Bilski decision would be later this week on May 20, 2010, which is listed as a Conference Day.  The Supreme Court does not generally issue decisions on Conference Days, having only done so a couple times this term, so that would seem not the most likely candidate for a Bilski decision date.  The Supreme Court typically issues decisions early in the term on Argument Days, but there are no more Argument Days for the rest of the term.  What seems most likely is that the Bilski decision will issue on a Non-Argument Day, which is listed as such on the Court Calendar.  Non-Argument Days are days that at least some of the Justices have public duties, such as swearing in attorneys as members of the Supreme Court Bar.  The next such Non-Argument Day will be Monday, May 24, 2010, and that is most likely the day on which all attention will be focused on First Street, NE, on the block between Maryland Ave. and East Capitol Street.  Of course, the Supreme Court has been known to issue decisions from time to time on days when the calendar is open, but I am not expecting that as we move forward toward the end of the term.

So what exactly does this mean?  I suspect that whatever the Bilski decision is it will be quite a change from the Federal Circuit decision, which is what is keeping the Supreme Court occupied and from having reached a final decision.  I also suspect the Bilski decision will have at least one dissent and perhaps one or more concurring opinions.  That could explain why the lag between oral argument and decision is so long, opinions being drafted, circulated, redrafted and re-circulated in light of what the other Justices are writing.

I continue to be of the opinion that inventor Bilski is going to wind up having an invention that is not patentable subject matter, but that at least some business methods (perhaps many) will remain patentable, as will software.  I also suspect that the Court is taking particular care to make sure that to the greatest extent possible the decision impacts only this case and those that are quite similar, unlike the Federal Circuit decision, which had far reaching impact, including medical diagnostic inventions, medical device patents and gene patents, to just name a few.  Of course, if the Supreme Court were going to issue an opinion along the lines of Judge Rader’s dissent, it wouldn’t have taken them over 6 months to say the Federal Circuit went too far and the decision could have been, and should have been, 1 paragraph long.

So we continue to play the waiting game.  Eventually it will end, and whatever the ruling is it will be controversial.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 31 Comments comments.

  1. step back May 17, 2010 12:38 pm

    One can easily suspect that this will not be a unanimous decision and that there will be numerous dissenting and concurring positions, probably with each trying to counter the arguments of the other.

    But while we wait, I have devised a patented method for predicting future Supreme Court decisions as follows:

    1. A machine-mediated process that assigns probabilities to Supreme Court outcomes, the method comprising:

    a) subdividing a case outcome into plural outcome pssibilities;
    b) assigning for each judge on the panel a probability of being in one camp or the other based on prior performances and recent bar convention presentations;
    c) cross correalting the results; and
    d) outputting a tangible, useful and concrete report (yes inscribed on two hardened tablets of cement) by use of X-rays passing through bodies of onlookers so as to convey said report information to them that will make useful utility of said machine tied output.

  2. Gene Quinn May 17, 2010 2:13 pm

    Step-

    Allow me to proffer a dependent claim…

    2. The process of claim 1 wherein said X-rays use electromagnetic radiation provided by a bi-digital o-ring configuration whereby the at least one member of the onlooking pubic and at least one citizen journalist create said o-ring using their index finger and thumb, concentrating really hard to cause said electromagnetic radiation to penetrate the bodies of said onlookers.

    Sorry… I couldn’t pass it up. When I saw X-rays I had to make reference to the Homeopathic X-ray patent. See:

    http://www.ipwatchdog.com/2008/10/19/obscure-patent-homeopathic-x-ray/id=223/

    I suppose I could have used the Pest Death Ray radiation configuration as well. See:

    http://www.ipwatchdog.com/2008/02/06/pest-death-ray/id=94/

    Just having some fun on another no-Bilski day.

    -Gene

  3. step back May 17, 2010 2:22 pm

    Gene,

    I was thinking more along the lines of In re Abele.
    But heck, whatever works. It’s all good.
    It’s all part of the time, space and magical thinking continuum. 🙂

  4. Blind Dogma May 17, 2010 2:56 pm

    But while we wait, I have devised a patented method

    In the 6.29 month lag you have not only devised an invention, but have recieved a patent for it? Which art unit is this in?

  5. step back May 17, 2010 3:48 pm

    BD,

    Come on.
    I thought you knew.
    And practiced before the same group.

    But of course it can only be the famous Art unit 11.5.1955: Doc Brown Flux Capacitors, Improvements thereof and assorted other interrupters of the space, time and magical thinking continuum.

    I filed it this morning and received my patent therefor, 5 years ago 😉

  6. Renee C. Quinn May 17, 2010 5:25 pm

    You guys have GOT to be Patent Attorneys! = ) Too Funny!

    -Renee

  7. Steve M May 17, 2010 6:00 pm

    “I filed it this morning and received my patent therefor, 5 years ago ;-)”

    . . . against which Biff will be requesting an interference . . . using the same time machine to file the identical same invention in a provisional . . . exactly 366 days prior.

  8. patent leather May 17, 2010 11:02 pm

    “This suggests to me that whatever the decision in Bilski will ultimately be it will be transformative. I just hope not “transformative” in the same way as the Federal Circuit Bilski decision.” -hahaha

    Whatever the decision is, the writing is on the wall that Bilski won’t get his patent. But of course what is important about this case is the wording of the opinion. One it was written, I bet that some of the concurrers (is that a word?) may have changed sides, which may have left that opinion now in the minority and a brand new opinion had to be written. This may have happened a number of times. This will probably be a close one (5-4).

    If it were a simple affirmation of the Federal Circuit (that the MoT is the ONLY test) then the opinion would probably have come out by now (the four or less dissenters would have had plenty of time to write their dissent). So I am hopeful there is good news coming out from the Supremes soon.

  9. step back May 18, 2010 7:11 am

    “I am hopeful there is good news coming out from the Supremes soon.”

    Even the USPTO can’t get its story straight on 101.
    And patentable subject matter is its speciality.

    So how can we hope that the science clueless Supremes will get anything right?

    My suspicion is that the the Bilski majority will rule that the claim must directly recite in its body a transformation from one to the other of the fundamental particles: earth, fire, water and sky. Otherwise it is not 101 eligible sorcery.

  10. Just visiting May 18, 2010 8:29 am

    Me, I’ll be going through that opinion with a fine tooth comb. IMHO, the Supreme Court wrote a very sloppy opinion with KSR — too much gobelygook. (i.e., dicta) that has been over-relied upon ever since. I cannot imagine what flowery phrase some law clerk inserted into the opinion will be the basis for 101 rejections for decades to come.

    The amount of time that this decision has been outstanding seems to portend dissenting opinions — however, what would be the dissent? Some say Bilski has patentable subject matter, others don’t? Some say MoT is the correct test, other’s don’t? Some say software is patentable, others don’t?

    I think everybody thinks that the FC will be affirmed but on different grounds (or at least remanded to consider a different test). If there are dissents, it means that someone thinks that the FC should be reversed altogher. The more likely scenario is that everybody thinks that the FC should be overturned based upon a new test, but there is little agreement on the new test. In this instance, what happens if we get 2, 3, 4, 5 concurrences??

    This could be ugly from an analysis sense.

  11. EG May 18, 2010 10:33 am

    Gene,

    This reminds me of the “padding” at the end of the message Nimitz sent Halsey about where his 3rd Fleet was in the Battle of Leyet Gulf while Kinkaid and Taffy 3 of the 7th Fleet tried to stave off Kurita’s battleships in the Center Force: “THE [PATENT] WORLD WONDERS.”

  12. Blind Dogma May 18, 2010 1:18 pm

    This could be ugly from an analysis sense.

    Lawyers love the ugly. The more convoluted, the bigger the playing field. Nothing would sell more Kool Aid than a 2, 3, 4, 5 concurrence opinion.

  13. NewHere May 20, 2010 10:02 am

    I am not in Law:

    No more “test” can be made for such or any patents, when it is “test”, that have failed in this case already. “Test” as we’ve already seen have developed work-around(s) to the point that this case, is back before the SCOTUS with the question this time, of what is patentable.

    The impact in this ruling must be great on all software patents and not just this case, if the SCOTUS rules not patentable. Because, if a door is left open in software patents as a whole, the same patent problem could develop later on in another form.

    I see it this way; the Law says you can’t sell on that spot, on the sidewalk. And later on, the sales continue just a few feet over. The SCOTUS must not only avoid the re-crop-up in this case, but of software patents as a whole or otherwise risk future cases that will be nothing more then a joke.

    Test(ing) is over, this ruling must set software’s place in the Law final, where tools as software, are not just the tools of those that win the race to the USPTO.

  14. Just visiting May 20, 2010 9:02 pm

    “Lawyers love the ugly.”

    …. maybe those lawyers that like to get paid to talk more than get paid to “do” ….

    Personally, I’m a “doer” and I don’t need gobblygook out of SCOTUS that confuses the USPTO anymore than it is already confused.

    The question I would like to ask many examiners (and the Federal Circuit) is that — based upon some minor amendment, I can overcome almost any 101 rejection without substantially changing the scope of the invention. If I can do that, why are we jumping through so many (and everchanging) hoops? Even if SCOTUS affirms Bilski, it isn’t going to reduce the number of software patents getting issued. Even most “business methods” can easily get around Bilski.

    A big f’ing waste of time ….

  15. Just visiting May 20, 2010 9:06 pm

    NewHere … not to be rude, but do you have a point?

    You appear not to like software patents … however, that is about all I can divine from your disjointed writings.

    One think I keep forgetting about this decision is how will SCOTUS deal with 35 USC 273? Depending upon how much statutory construction SCOTUS wants to apply, there is still a chance that Bilski gets overturned, and SCOTUS provides for a very expansive test.

  16. NewHere May 20, 2010 10:33 pm

    @Just visiting

    I made a typo, at ” “Test” as we’ve already seen have developed work-around(s) to the point that this case, is back before the SCOTUS with the question this time, of what is patentable.”

    It was to read *is now before the SCOTUS*. Sorry.

    You’re right, I don’t like software patents as they are granted today. My liking patents or not has nothing to do with it, as I believe I have it right, the SCOTUS has a question before it: A question that can’t have an answer to it on one hand, and on the other hand allow the problem(s) to continue.

    The question and the answer (ruling), is to end the problem(s). Problems as test, those test as they have been in this case, the SCOTUS I’m sure knows well how those test are now an important part of this question too. So if Bilski’s patents get shot down; then is an answer that will bring many questions about all such software patents. And I don’t see how ‘yet another test’ that could answer them all.

  17. Joe Milstein May 21, 2010 2:21 am

    With any luck, the Supremes will decide that the Bilski Machine or Transformation Test is a safe harbor test, and not a bright line test. The CAFC pointed to footnote 9 of Benson to support their opinion. Read the last sentence of Footnote 9 of Benson, which the CAFC did not bother to quote.

  18. Blind Dogma May 21, 2010 5:11 pm

    Problems as test, those test as they have been in this case, the SCOTUS I’m sure knows well how those test are now an important part of this question too

    Once more in English please. Or can play diagram the sentence to see what this means…

  19. NewHere May 21, 2010 9:17 pm

    @Blind Dogma
    “Or can play diagram the sentence to see what this means…”

    You’re talking to me about English ?

    ” play diagram the sentence to see” ?

    Oh, test for patents, for what is patentable, are the problem. Problem because claim work-arounds have made a joke of such test.
    The SCOTUS I know, knows this, and I know they will not be giving another test for more of the same problem.
    The question I mentioned, “patent test”, are also going to be a part of this ruling to put an end to the joke.

  20. Blind Dogma May 21, 2010 11:07 pm

    play diagram-the-sentence…

    Happy?

    yours is still gobbleygook.

  21. NewHere May 22, 2010 8:45 pm

    @Blind Dogma
    gobbleygook ?

    I agree with you, happy ? I have a bad habit when I write, bad habit because I try to cut down what I wish to say with no regard for English.
    The worse though, I make the assumption that others (readers), are going to understand it, because I do at the time, the way I write it. So, I’m wrong making that assumption.

    I wish to stay on topic, and not spend time on this.
    Hope we can get along anyway ?

  22. Blind Dogma May 23, 2010 9:04 am

    Sure we can get along – I was hoping to actually understand out what you were trying to say, but just cannot figure out your short-hand English.

    Here’s a tip – when you type for others, use the language appropriately. Save the “cutting down” for your notes to yourself.

    Care to try typing out what you want to tell others again?

  23. Daeng Bo May 23, 2010 10:53 am

    Blind Dogma,

    Give him a break. Based on the grammar, it’s obvious that English isn’t his first language.

  24. NewHere May 23, 2010 6:40 pm

    @Daeng Bo
    “Give him a break. Based on the grammar, it’s obvious that English isn’t his first language.”

    Forgive me, I couldn’t pass on this one.

    Thank you, if you are sincere, because it means more to someone that is non-English speaking, not me.

    You make a very good point. I will ask how often is it more important to make the point about English grammar, when face-to-face with an important person (client). That just may be non-English speaking and their English grammar is really bad. Not often I would guess.

    Not too many options open in such a case, that is being with someone important (client), and having a real problem understanding them. The choices only being to ignore them or continue to listen the best you can.

    The importance of grammar should never be a yard-stick, it is ugly, and rude when used dealing with anyone, anywhere because their importance is questioned. I hope you agree.

    I have been sincere and open here, playing no games or wish to make problems. I have opinions about software patents, because it is a very important subject to me. This forum it seems is an open one, I from the start, feeling that I was allowed to post here, and so I did and continue to do so.

  25. Blind Dogma May 24, 2010 10:13 am

    Daeng Bo,

    You are way, way too sensitive to the “English as not a first language” issue. My guess would be that people have complained about your communication skills.

    Not that I am a “You must speak English” freak, but more-so, I am a “you must communicate effectively” freak. When your job (as an examiner) is to communicate clearly to your customer, you cannot hide behind a “but English is not my first language” excuse. Communication is part of the job – if you can’t do the job, find another.

    More to the actual point here and now – I am seeking clarification because I want to understand NewHere’s perspective. When he lapses into a short-hand English that is easy for himself (but no one else), he is showing a lack of a basic writing skill – keeping your audience in mind. If I didn’t care about understanding NewHere, I wouldn’t bother asking him to re-translate his question into understandable English.

  26. Just visiting May 24, 2010 10:24 am

    Bilski is not out … again

    🙁

  27. Just visiting May 24, 2010 11:18 am

    Just a couple quick thoughts about grammar and non-English-as-a-first-language writers.

    As patent attorneys, we are accustomed to having every word and every phrase scrutinized (e.g., in the claims). For example, a misplaced comma or an ambiguous pronoun can sink the claim. When it comes to this message board, there are certain levels of grammar that are needed (or not needed). You don’t need perfect grammar or spelling, but if the person who is reading your post doesn’t understand (or misunderstands) your point, then your writings have been wasted.

    Also, what I find, even with native-English writers, is that if their “point” is difficult to follow because of their grammar, it is likely because they haven’t thought hard enough about what they wanted to say to distill it down into something coherent. Less can be more when it comes to clarity.

    FYI — if I have a face-to-face with an important client and they are speaking to me in broken English, that is one of the most frustrating things I can face. A lot of trouble can ensue when party A thinks one thing and party B thinks another thing because they cannot communicate clearly with each other. In those situations, a translator is a necessity.

  28. NewHere May 24, 2010 11:46 am

    @Blind Dogma
    “he is showing a lack of a basic writing skill”

    I agree with you.

    When writing knowing others are going to read it, and fail to make it intelligible, obviously the result is a showing of a lack of writing skill. I was thinking that honesty would “set me free”, and earn me that break Daeng Bo talked about. Well, I was wrong again with another bad assumption.

    Simple and to the point, I find it hypocritical within a profession (if you are), that members of the same profession are non-English speaking people, seeing what has taken place here is unacceptable in my opinion. While you are right and I have no choice but to agree, that writing skill is important, but the emphasis of that importance comes with some understanding. The same understanding you, may give a client that writes his / her idea in less then standard patent application terms.

    I believe the approach that is taken in such a case, is not the same one taken with me, I would hope not from a profession point of view.

    Clients are taken to task because they fail to make ideas intelligible, to you ? What then is the right approach to take when professionalism is important. I have to say Sir, professionalism follows you like a bad work record, the same professionalism followed in your office should be followed outside of your office as well. Never know who you are talking to, and to offend because of a showing a lack of professionalism skills is also unacceptable and comes with its own cost.

    Than you, I hope this is the end of this ?

  29. Joe Milstein May 24, 2010 11:51 am

    Seven opinions from SCOTUS today (so far), none of which is Bilski.

  30. Blind Dogma May 24, 2010 12:34 pm

    Clients are taken to task because they fail to make ideas intelligible, to you ?

    You are not my client, nor am I yours. A blog for communicating ideas is simply different.

    As to my clients when they are unintelligible , they learn to be intelligible since they have to pay for my time in any translation efforts. Law is all about the words and understanding. I believe it to be a critical problem with “quality” at the Office when this basic tenant is so misunderstood, and so often ignored by the examing corps. Daeng Bo being a case in point, where he would rather be offended then try for understanding.

    Than you, I hope this is the end of this ?

    As to the end of this – I hope not – unless you feel that your first attempt does not merit another retry (were you just spouting off, or did you have something important to say?)

    Again, the reason why I ask is because I want to understand. What you wrote earlier is simply not understandable.

  31. Blind Dogma May 27, 2010 7:58 am

    I must have missed your post earlier Just Visiting – you scare me with how much I find myself agreeing with your points of view.

    Just stay out of the Kool Aid business OK?