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Missed Opportunities for Alice, Software at the Supreme Court


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: March 31, 2014 @ 6:45 pm

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Justice Antonin Scalia, who seemed most favorable to Alice.

Once Chief Justice John Roberts said “[t]he case is submitted,” which occurred this morning at 11:05 a.m., the reading of the tea leaves began.

The Supreme Court was very hot Court, with a lot of questions on the mind of the Justices. After reviewing the transcript I am left believing the Court is likely wondering whether it is possible to find the Alice patent claims to be patent ineligible while also ruling that software patent claims are not all patent ineligible. Surprisingly, it seemed as if Justice Scalia was most persuaded by the patent eligibility of the claims, directly saying at one point that the issues circling the case seem to really be about 102, not 101.

While I support the patent eligibility of the patent claims, particularly the patent claims drawn to a system, it seems undeniable that Alice missed many opportunities to score easy points. Indirect arguments were made by Alice that didn’t seem very persuasive. Indeed, if one is to predict the outcome of the case based on oral arguments alone it did not go well for Alice today. Only three things give Alice supporters hope after this oral argument as far as I can tell. First, the government seems to be asking the Supreme Court to overrule precedent in Bilski that is not even four years old, which simply isn’t going to happen. Second, the egregious overreach and outright misleading nature of the CLS Bank argument should raise a legitimate question or two in the mind of the Justices.  Third, the reality simply is that at least the systems claims recite numerous specific, tangible elements such that it should be impossible to in any intellectually honest way find those claims to cover an abstract idea.

Of course, oral arguments are but one piece of the overall puzzle. By many accounts oral arguments are the least significant piece of the puzzle with many, if not most, Justices relying most heavily on the briefs. In fact, Justice Breyer specifically pointed out that he had read all of the amici briefs and found them quite helpful. Thus, it is really impossible to know how a Justice will decide based even on the questions asked during oral argument. After all, did anyone think the Chief Justice would rule in favor of Obamacare? But still, the way the oral argument went can’t make Alice and its allies feel particularly optimistic.

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Alice Corporation Argument

Early on in the questioning Justice Kennedy asked a critical question and sheds important light on the claimed invention. Kennedy’s question was essentially this: Is there an invention or is what you are claiming so obvious that it could be created by anyone after the requirements were explained. The exchange between Justice Kennedy and Phillips went like this:

JUSTICE KENNEDY: Well, let me put it this way. If you describe that to a second­year college class in engineering and said here’s ­­ here’s my idea, now you go home and you program over this weekend, my guess is ­­ my guess is that that would be fairly easy to program.

MR. PHILLIPS: I don’t disagree with it, Justice ­­

JUSTICE KENNEDY: So the fact that the computer is involved, it ­­ it seems to me, is necessary to make it work. But the ­­ but the innovative aspect is certainly not in the creation of the program to make that work. All you’re talking about is ­­ if I can use the word ­­ an “idea.”

MR. PHILLIPS: I prefer not to use that word for obvious reasons.

(Laughter.)

This was preceded by Phillips attempting to explain the novelty associated with the computer applying rules that block an escrow transaction that would violate the terms of the settlement. This prompted Justice Breyer to seemingly take the first tangent, discussing King Tut handing out gold and using an abacus to keep track, or his mother taking his checkbook away when he tried to write too many checks. But at the end Breyer wrapped up these hypothetical fact patters asking: “So what is it here that’s less abstract that the computer says, stop?” Of course, not that Justice Breyer appreciates it, but his concern is about novelty, not patent eligibility.

Justice Sotomayor then chimed in. While the concerns of Justices Kennedy and Breyer were not directly couched in terms of novelty and obviousness, Justice Sotomayor essentially asked why the claims were patent eligible because they do not appear to be new, which directly and irresponsibly conflates 35 U.S.C. 101 with 35 U.S.C. 102, which up until Mayo v. Prometheus well established precedent of the Supreme Court forbade. Sotomayor said:

You used the word “function” earlier, and that’s all I’m seeing in this patent is the function of reconciling accounts, the function of making sure they’re paid on time. But in what particular way, other than saying do it through a computer, is this something new and not function?

The first friendly question for Phillips came from a very unlikely place — Justice Antonin Scalia. Scalia is famous in patent circles for calling patent law “gobbleydegook” during the KSR v. Teleflex oral arguments, and being the only Justice in Bilski to refuse to sign onto an opinion that would have found software patent eligible. Yet, Scalia asked:

[W]hy isn’t doing it through a computer not enough? I mean, was the cotton gin not an invention because it just means you’re doing through a machine what people used to do by hand? It’s not an invention.

Scalia then acknowledged that simply reciting a computer isn’t much, and that a computer alone may not impart novelty, but then saying “[b]ut that’s a novelty issue, isn’t it?” Phillips simply said “To be sure, Justice Scalia.” Then Justice Breyer took control of the oral argument again, bringing Phillips back to his King Tut hypothetical, of which he was obviously very proud. But Phillips did successfully turn this to one of his more effective returns, saying:

I think you can meaningfully look at this is to say that this is not simply something that was a fundamental truth, this is not something that simply says use a computer. It’s not simply something that says maintain solvency. It ­­ it operates in a much more specific and concrete environment where you’re dealing with a problem that’s been in existence since the 1970s, a solution in the 1990s, that CLS itself acknowledges needed a solution and came forward with their own solution that looks a lot like ours.

Justice Kagan entered the action with what I can only characterize as a bizarre set of questions that was very difficult to follow. At one point she asked Phillips, “putting the computer aside” what is the invention? This question is hard to fathom and shows a complete lack of familiarity with the law and the Supreme Court’s own precedent on point. The correct answer is you cannot put the computer aside because if you do then you are left with an abstract idea, as was the case in Bilski. It is the very presence of a specifically recited computer and other tangible structure that means the claims do not cover an abst4ract idea. Sadly, my explanation there is more direct and informative than the response from Phillips. Phillips instead explained:

[I]t’s difficult to do that because you absolutely need the computer in order to implement this. But the key to the invention is the notion of being able simultaneously, dealing with it on a chronological basis
to stop transactions that will otherwise interfere with the ability to settle on time and under the appropriate circumstances. And the only way you can do that in a realtime basis when you’re dealing with a global economy is to use a computer. It is necessary to the efficacy of this.

So in that sense, I can’t ­­ I can’t disaggregate it the way in some sense you’re suggesting. It seems to me it’s bound up with in ­­ it’s bounds up with the whole notion of is this an abstract concept.

The problem for Alice here is that Justice Kagan’s question demonstrated an acute lack of familiarity with the issues, law and relevant precedent. I’m afraid Phillips’ answer wasn’t particularly helpful. I mean even though I know what the right response should have been, and I think I know what Phillips was struggling to say, I can’t say I understand what Phillips actually said. How is someone as unfamiliar with the situation as Kagan going to deduce the answer?

Even when Phillips was allowed to run with an argument it seemed he stumbled. When presumably trying to make the case that software has been around for a very long time and it would be inappropriate to judicially rule it patent ineligible he missed a golden opportunity. In fact, Phillips said “software patents [have been] in existence for well over a decade…” In truth, software patents have been around since 1968, which is two full generations. Similarly, Phillips tried to make the point that Congress has done nothing to prohibit software patents, he missed the opportunity to point out that Congress has specifically recognized the patent eligibility of computer-implemented methods (i.e., software) as recently as with the passage of the America Invents Act in 2011.

Ultimately, after much back and forth that seemed to achieve little useful, Justice Sotomayor asked Phillips which of the Federal Circuit opinions was closest to his own opinion of how the case should come out. Phillips identified the opinion of Judge Moore. This lead to the following exchange:

JUSTICE SOTOMAYOR: And if we were to think your method claim is ineligible, do you agree that your systems and ­­ your medium and system claims fail as well? Do they rise and fall together.

MR. PHILLIPS: No. No, I don’t believe they do rise and fall together… I think you could still say that the system claims, which clearly are — are how to create a computer system and how to implement it using that method, would be a much more concrete version of that in a way that would take it out of 101. That said, I, obviously, believe that all of our claims satisfy 101 and should go on to the next stage.

This response by Phillips is perfect to demonstrate why I am so frustrated. The answer is that the systems claims clearly and unambiguously recite specific tangible structure. So unless the Court is going to rule that a computer, databases and storage devices are imaginary there is no intellectually honest way to say that the systems claims cover an abstract idea. But rather than make a factual argument here he merely makes a generalized, rather non-informative statement. This is frustrating because throughout the argument when a legal explanation was best suited as a response Phillips would make a factual argument. But then here where a factual argument is best suited his response is non-specific.

Time and time again it seemed to me that Phillips was set up to score major point and he either missed the opportunity or made an argument so incomplete as to leave the wrong impression.

Unfortunately for Alice Corporation, Phillips never clearly and completely explained to Justice Kennedy, Justice Breyer or Justice Sotomayor why or how their questions were not on point and really spoke to different patentability questions not before the Court, despite being prodded to make that argument by Justice Scalia. Who knows, perhaps things would have gone just as poorly for Alice even if a good explanation were given because at least Justice Breyer seemed to think his novelty concern related somehow to the presence of an abstract idea. Still, it would have been nice for the point to be made and explanation provided that detailed why the concerns being voiced were unrelated to patent eligibility under 35 U.S.C. 101.

Instead, the argument of Phillips saw both Justice Kennedy and Justice Breyer probe whether it would be possible for the Court to rule that these claims are patent ineligible while not prohibiting the patent eligibility of software, as they were urged to do so by some of the amici filers. Unfortunately, Phillips did not explain that this is how software is claimed and that to find these claims patent ineligible would call into question if not directly invalidate virtually all software patent claims because they are all written similarly.

The rebuttal argument was more friendly to Phillips for several reasons. First, he was given time to actually explain himself. Second, the Solicitor General during his portion of the oral argument made the clear and unequivocal statement the he things “business patents” as he called them, are abstract and patent ineligible. This, however, would require the Supreme Court to overrule Bilski, which was decided only four years ago.

CLS Bank Argument

As I stated above, one of the only things that can give Alice hope is the egregious overreach and blatant misrepresentations embodied in the CLS Bank argument. At the beginning Mark A. Perry, who represented the Respondents, wasted little time before saying something so ridiculous it is hard to believe it was actually said. He started:

Bilski holds that a fundamental economic principle is an abstract idea and Mayo holds that running such a principle on a computer is, quote, “not a patentable application of that principle.” Those two propositions are sufficient to dispose of this case.

Mayo actually did not deal with computers, but rather dealt with a method of optimizing the therapeutic efficacy of a treatment. Second, in Bilski the Supreme Court, by the Court’s own direct acknowledgement, specifically made no broad, sweeping pronouncements about 101. In Bilski the Court merely held that the machine-or-transformation test is not the only test and was too restrictive, that business methods are patent eligible and that the claims were patent ineligible under the abstract idea doctrine. Notably, however, the Supreme Court did not say why or how the claims were abstract, just that they were, which is one of the major criticisms of Bilski. Thus, from the very beginning Perry was so inaccurate as to be practically intentionally misleading. It was terribly disappointing that the Supreme Court seemed so unfamiliar with their own precedent that Perry was not questioned at all on his extreme exaggeration. Instead, his first question was only after he was allowed to outline his entire argument, and it came from Justice Breyer and related to Archimedes.

Justice Sotomayor did, however, quickly focus in on a critical question, asking how Alice could have described the software so it could be patent eligible. Perry responded: “Justice Sotomayor, they have no software, first. They’ve never written software. They’ve never programmed a computer. So that’s a nonexistent set.” A skilled job of obfuscation really. But if the Supreme Court isn’t going to care, and Alice isn’t going to make the point, why should CLS Bank point out that that the way the Alice claims are written is the way that all software claims are written and any decision on these claims will necessarily implicate all software.

Interestingly, in an exchange with Justice Kennedy, Perry did say that an example of a patent eligible process would be “a computer running the particular data compression algorithm.” Frankly, I’m not sure how this helps CLS Bank unless the Supreme Court is going to continue to ignore Sections 102, 103 and 112, and instead make everything a question of patent eligibility under 101. But this seems to fit with the theory presented by Alice and most of the supportive amici. They believe these claims are patent ineligible because if you ignore the claims and look at the description of the invention there is no invention present, which really should be a 112 issue, or perhaps a 102/103/112 issue all together. To think that the Supreme Court may ignore the claims and perhaps even say that one needs to look past the claims would be unthinkable if you were dealing with a tribunal familiar with patent law and prosecution. The claims are the entire game, so to speak. Still, how a data compression algorithm would be patent eligible where these particular claims are patent ineligible is hard to see and is asking for a nuance the Supreme Court is likely incapable of making.

Chief Justice Roberts then asked an important question seemingly directed at the nonsensical argument that software is not patent eligible if it merely does something faster than a human, because after all software can do tasks that no human could ever live long enough to do. Roberts asked:

What if ­­ what if you can do it without a computer, but it’s going to take, you know, 20 people a hundred years? In other words, theoretically, you can replicate what the computer does ­but it’s impractical without looking to do it on the computer?

Perry largely dodged this impossible question for CLS Bank while at the same time seemingly giving a direct, forceful reply. He said that this case deals with a single transaction between two parties. He also said: “if what is being claimed is the necessary speed or efficiency or data crunching capabilities, if you will, of a computer, then it would have to be claimed, and there’s nothing claimed here.” Of course, this did not address the hypothetical raised by the Chief Justice, and also belies the fact that patent claims drawn to IBM’s Watson do not incorporate reference to speed or efficiency in data crunching. That he dodged caused Justice Breyer to enter the fray, and Breyer’s questions were similarly deflected as “fallacious.” This is significant because a ruling in favor of CLS Bank would likely mean that claims to Watson, which is truthfully the first generation of the Star Trek omnipotent computer, would be patent ineligible. Thus, it is easy to see why Perry engaged in oral argument judo to get away with not answering this troubling hypothetical.

Toward the end of Perry’s argument is the first time the Court circled back to take any issue with his mischaracterization of the precedent from Bilski and Mayo. Justice Ginsburg asked: “The Federal Circuit in this case split in many ways, and it had our decisions to deal with. You said, given Bilski and Mayo, this is an easy case. What is the instruction that escaped a good number of judges on the Federal Circuit?” Perry responded that “there’s a significant element to the Federal Circuit that disagrees with Mayo and has been resistant in applying it.” He went on to say that proof of this is the argument made in the amicus brief filed by Chief Judge Michel, formerly of the Federal Circuit.

How CLS will fare given the exaggerations and dodging of Perry remains to be seen. Will the Court know enough about the facts, law and their own precedent to pick up on the misdirection and mischaracterization? It is difficult to know.

The Solicitor General’s Argument

If I had to summarize the Solicitor General’s argument in one statement it would be this: Had the patent claims in Bilski included a computer and other tangible limitations the Court still would have ruled the claims to be patent ineligible. Essentially, the government seems to be making an argument based on the belief that Bilski was something that it was not and applying their own misinterpretation of the precedent to conclude that this case is really quite easy.

Solicitor General Verrilli explained:

And, of course, the holding in Bilski was that the ­­ the method for hedging risk was ineligible because it was an abstract idea, and I can’t imagine that if in Bilski the ­­– the claim had been exactly the same but had added use a computer to carry out some of these standard random analysis functions that are claimed by the patent, that you would have found it to be patent eligible. And I — ­­ I would submit for the Court that the key point here, I think, is that now, given where the Court ­­ what the Court has held in Bilski, given what it’s held in Mayo, the abstract ideas exception is really the only tool left to deal with what I ­­ what I think I fairly read Bilski as problem, the proliferation of methods.

General Verrilli also dodged a question from Justice Ginsburg that asked him to address “the argument that your view would extinguish business-method patents and make all software ineligible for patent protection?” While he tried to respond to the software angle in the question he never responded directly regarding business methods, other than to say that he thought a fair reading of Bilski was that it would be quite rare for a business method to be patent eligible.

Of course, the fair reading of Bilski is that the Supreme Court said business methods are patent eligible. Thus, given General Verrilli’s arguments and the rather disingenuous brief filed by the government, it seems to me that it is the government’s position that that they don’t like Bilski and it should have been decided differently.

Conclusion

I am sometimes criticized as being an idealist, but I have to say that this oral argument was particularly disappointing.  I expect better at the Supreme Court.

Regardless of the outcome oral arguments, and written arguments, should be informative and within the boundaries of fair representation. While Phillips missed many opportunities at least his argument was not disingenuous or based on reckless and unfair characterizations of the holdings of recent Supreme Court patentable subject matter cases. But is there enough here for Alice to prevail? That is a question we will have to wait on until sometime in June likely.

Regardless of what the Supreme Court ultimately rules, the factual truth is that the Alice claims, particularly the system claims, do not cover something that is abstract simply because there are many tangible elements recited. See Patent Twilight Zone. If the Supreme Court does ultimately rule that these claims, particularly the system claims, cover abstract ideas then all software patent claims will be unnecessarily challenged regardless of substance of the innovation because software patent claims are structured identically to the claims present in this case. Furthermore, if things that are objectively and clearly tangible are decreed by the Supreme Court to be abstract ideas then where will the line be drawn? Everything would run the risk of being patent ineligible. Of course, these points were never made by Phillips, which is truly unfortunate and rather depressing.

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Posted in: Bilski, Business Methods, Computers, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patentability, Patents, Software, Technology & Innovation, US Supreme Court

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

19 comments
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  1. Gene writes: “I have to say that this oral argument was particularly disappointing. I expect better at the Supreme Court.

    Not me. I expected this bad or worse.
    You could see the scientific cluelessness of the Supreme Court justices from miles away when they started lathing baseball bats out of tree trunks in Myriad v. ACLU.

    Add to that the complexity of patent law (i.e. the purpose of claim is not to disclose the whole of “the invention”) and you have a sure fire recipe for disaster.

  2. JUSTICE BREYER: “There is a risk that you will take business in the United States or large segments and instead of having competition on price, service and better production methods, we’ll have competition on who has the best patent lawyer.”

    Gene,

    When I saw this quote on Patently-O, I almost exploded. What gall and nerve Breyer has to say clap trap. This “philosophy wonk” of a Justice hath no shame at all. Once more, a back-handed and derogatory slap at patent attorneys, just like in Mayo (i.e., the “draftsman’s art”). I’ve got nothing but loathing for Breyer who is intellectually dishonest (i.e., you can’t square Mayo with Diehr), and continually (and in my opinion deliberately and unprofessionally) demeans what you and I do for our clients. We who are patent attorneys can only hope Breyer will retire soon. (And tell those Democrats to leave Ginsburg alone, they need to tell Breyer to step down PDQ.)

  3. EG,

    Not only are the Justices demeaning of and disrespectful of patent lawyers/agents, they are equally dismissive of inventors and what they do.

    It’s as if anybody can have any “idea” whatsoever. Then you find a bunch of Silicon Valley coffee sippers lazing about their local coffee shop, toss them a few shekels and say, “have it finished by the end of the weekend”. Simple as that.

    Then you find a crafty, sneaky and dishonest patent “draftsman” and say, “draft me up something clever before the end of the week.”

    And with this you have fooled everyone because all you did was come up with an abstract “idea” and then say apply it to a “computer” thingy machine-gee, where the patent “draftsman” was complicit in hiding the true truth of all this subterfuge by his clever use of lawyer words.

  4. Gene, Thank you for your review of the transcripts. I was dumbstruck at the questions and examples being used by the Justices themselves. Breyer’s King Tut hypothetical questions were positively absurd on their face and spoke volumes on the lack of understanding the nature of inventions themselves, let alone software. I was so disgusted I couldn’t read through the whole thing and appreciate you taking the time to summarize. I actually felt badly for Phillips once Breyer began his line of ‘hypotheticals’. How does one even begin to address such an inane set of questions? I’d have been thrown off my game, too, if I had a limited amount of time to make my point and had that thrown at me. Perhaps that’s why I’m not a lawyer. If the USSC ultimately rules against Alice, we may all be going back to using the hammer and chisel and abacus.

  5. this whole thing is disgusting
    I refuse to participate in any patent-related activity from now on
    trade secrets forever…

  6. patents or no patents but if those idiots in wash dc don’t wake up soon, putin or chinese will take good care of them and the rest of the people in this used to be the greatest country on earth

  7. angry dude,

    May I suggest at least that if you are intent on the trade secret route, that you at least maintain the vigilance of your records so as to be able to obtain Prior User Rights as any such rights may arise?

    Of course, this is not legal advise and I am not your attorney – this is merely a general observation that the Prior User Right may be a valuable inoculation if you decide not to use the patent system yourself.

  8. Without a clear 3/4 short sentence explanation of what has been created that is inventive and solves a real life problem with ingenuity Alice faced an uphill battle. The point is covered in a previous post of mine on this blog about two years ago when the first opinion of the Federal Circuit was published,The Supreme Court needed to be told that this was a great invention, really useful, doing with a computer what could not be done by hand because of the speed of treansactions in modern banking, and that a machine configured to receive this data and process it in the specified way was a remarkable and much needed technical achievement for which recognition by a patent was amply justified. If Alice could not say that then the Supreme Court was no place for them – they should have stayed away.;

  9. Gene, I think that Phillips’s argument on behalf of Alice had to be a bit of what it was, rather than what we mere patent draftsmen would have preferred. A bunch of us are of the opinion that the claims certainly pass muster under section 101, but may be subject to attack under 103. Phillips had to save the claims under both sections.

    My point is that the patent bar as a whole (and, I daresay, your ideal argument) would have championed the claims’ eligibility under 101 but been willing to throw them under the 103 bus, in order to get a better 101 precedent from Scotus.

  10. I should add that Phillips probably thought he had to add the new and non-obvious attributes of his client’s invention in his argument, given Scotus’s propensity to conflate them into the 101 analysis.

  11. AC-

    I don’t know that Alice needed to worry about 103 here and now. Of course ultimately if they prevail the fight will go on to determine novelty and non-obviousness, so no admission could or should be made, but particularly with Justice Scalia feeding up a softball he had an excellent opportunity to say that these are novelty and non-obviousness concerns, not about patent eligibility.

    It is also ridiculous in my mind to simply refuse to make the correct argument because SCOTUS is too stupid to understand the winning argument. It seems no one actually pointed out to the Court that this is what happens when you conflate 101 with 102/103/112 as was done in Mayo. While Mayo was an easy case it still should have been treated under 102 and 103, not 101. By “declining the invitation of the government” to allow the various sections of the statute to do the work which they are meant to do it then pushes all future patentability arguments into 101 rather than 102/103/112.

    We all know that eventually the Supreme Court will overrule Mayo. Mayo is an aberration. Someone in a brief somewhere should have pointed out that this is what happens you the Court overrules generations of Supreme Court precedent and ignores the statute and now says everything is to be decided under 101.

    -Gene

  12. Susan-

    Thanks for reading. I understand what you are saying. I do think, however, that someone arguing this case should not have been at all thrown by the King Tut hypothetical. This Supreme Court knows nothing about patent law, they know nothing about science, and they don’t even use e-mail according to Justice Kagan. See: http://www.politico.com/story/2013/08/kagan-supreme-court-email-95724.html

    This being the case, and knowing their love of absurd hypotheticals, Phillips should have known enough to be prepared. I can’t also help but think the argument would have gone differently if argued by a patent person. As soon as those hypotheticals started coming out I knew right away that the Court was once again trying to conflate 101 with 102/103/112. The answer should have been that this case is about 101. While Mayo does say that 101 should be properly conflated with 102/103/112, that was a case that dealt with a law of nature and meaningless process steps added. Here the entire process is tethered to a computer with specific physical limitations. In Mayo the concern was about preemption, and even the Solicitor General acknowledged in his brief that preemption is not a concern at all with any of the claims.

    Even if we have to live with the ridiculous Mayo decision for a while longer it could have been easily distinguished, but it wasn’t. While I expect more from Supreme Court Justices who seem to actually believe they know everything about everything, a Supreme Court advocate should have been able to make a much better presentation.

    Of course, with Perry and Verrilli misrepresenting things so severely they should be most criticized. If you are going to just make stuff up at the Supreme Court what are we all doing here?

  13. Step-

    Re: comment that you expected this bad or worse at the Supreme Court…

    I would agree with respect to the Justices. I was shocked that Justice Scalia seemed to get it completely, which from previous patent cases wouldn’t have been at all predictable, at least to me.

    I really expected more from the advocates. Alice missed opportunities over and over again to make winning arguments, explain the issues and distinguish Mayo as I have above. I really thought Perry nearly lied outright about what the relevant precedent holds, so his entire argument was fiction. Then he completely dodged the tough questions. It was really a poor performance all around by everyone involved if you ask me.

    -Gene

  14. Good job Gene. I read the transcript. A couple of comments. Kagan and Sotomayer may actually not be inclined to join with Stevens thinking on this. The most important statement in the transcript was: Gingsburg it was 5 to 4!

    My prediction is that this decision is not going to be too bad. I think Scalia sounding like understood it is a great plus as if he had signed on to the majority opinion in Bilski none of this would have happened.

    Gingsburg talks about a patent as if it is a theft from her pocketbook.

    But, you know, Deener is still right on point to understand computers. The SCOTUS held that the method was patentable. That these methods get complicated because of the machines. The method could be done by a person (just like these methods on a computer), but who would want to do it.

    Oh well….

  15. Judges are people not machines. If they are convinced that a patent relates to a genuine invention they will feel inclined to support it. If they are convinced that there is no patentable invention they will find a pretext to hold it unenforceable. They have the knowledge (or access to the knowledge) to write an opinion either way. So which will they do? All depends on their inclinations.

    So if Alice wanted to win they had to convince the Justices that they were wearing the white hats and CLS Bank the black hats. Simply and straightforwardly, not by complex and convoluted argument. The details of 101/102/103 and the convoluted case law may affect the reasoning, but probably not the outcome. We will see whether or not they have done that.

  16. Paul, I think there is a lot of truth to what you say, of course, but many of the Justices lack the basic skills to be able reason about science and technology. And the Justices certainly lack the proper framework to reason about inventions. This is critical as it determines whether or not they attack this on 102/103/112 or 101.

  17. “I would agree with respect to the Justices. I was shocked that Justice Scalia seemed to get it completely, which from previous patent cases wouldn’t have been at all predictable, at least to me.”

    Gene,

    This is not the first time that Scalia has shown some knowledge about what’s going in these patent cases. In Bowman v. Monsanto, it was pretty clear to me that Scalia was not only prepared as to the law, but also as to the technology involved. This may well reflect having a law clerk who is doing his/her “homework” on both the law and technology, and is getting Scalia quickly up to speed for “intelligent” oral argument. If that’s true, that’s a huge positive for us for patent cases in the future. Now if only the other Justices in Our Judicial Mount Olympus would do likewise . . .

  18. EG,

    I was most troubled by the references regarding the “Bilski 4” – that somehow legislative intent is still very much ‘up in the air’ to be twisted like a nose of wax, based solely on a previous Court’s losing faction’s refusal to respect a majority opinion (troubled, but given Supreme Court politics, not truly surprised).

    I have always thought it clear exactly why Stevens’ view in Bilski was doomed, because otherwise even explicit writings of Congress would not be safe from ‘interpretation’ from Mount Olympus, and the Constitutional delegation of authority to write patent law given to Congress would have been rendered meaningless (kudos to lower case anon).

    I thought that the parts of the oral arguments highlighting what appears to be merely a more convoluted attempt to do what the Bilski Court refused to do were tremendously compelling.

    That being said, the tea leaves available for being read, any prognostication based on these tea leaves is nothing more than an opinion of what should be and bears little (if any) relation to what will be.

    Again, my hopes are for a Chakrabarty/Diehr echo to the Benson/Flook of Bilski/Prometheus.

    Hope springs eternal.

  19. EG-

    We can certainly hope that Scalia has seen the light. Whatever the reason, he has come miles and miles from patents being gobbledygook!

    -Gene