Yesterday, the United States Supreme Court heard oral arguments in the matter of Bowman v. Monsanto. See Transcript. The case presents the Court a question of patent infringement by farmers planting the progeny of genetically altered seeds covered by U.S. patents.

Monsanto Company and Monsanto Technology LLC (collectively “Monsanto”), sued Vernon Hugh Bowman (“Bowman”), in the United States District Court for the Southern District of Indiana alleging infringement of U.S. Patent Nos. 5,352,605 (“’605 Patent”) and RE39,247E (“’247E Patent”). The district court granted summary judgment of infringement in favor of Monsanto. Bowman appealed to the United States Court of Appeals for the Federal Circuit, which affirmed the district court judgment in favor of Monsanto. See Monsanto v. Bowman (CAFC, Sept. 21, 2011).

Bowman then appealed to the United States Supreme Court, with oral argument in the matter being held on February 19, 2013. While one can never know for certain how the Supreme Court will rule, even a casual observer has to conclude that the Supreme Court seems poised rule in favor of Monsanto. Seconds after Bowman’s attorney started Chief Justice Roberts interrupted asking why anyone would ever patent anything if Bowman were to prevail. Shortly thereafter Justice Breyer openly concluded that Bowman infringed in a matter of fact way. It later may have seemed Breyer was probing for a response he didn’t get more so than announcing his view of the case. Nevertheless, if Bowman loses Breyer he has no chance.

Earlier today, at 10:05 am precisely, the United States Supreme Court heard oral arguments in the case styled Mayo Collaborative Services v. Prometheus Laboratories.  A press release issued by the AIPLA sums the cautious optimism of many: the Supreme Court “appeared to move closer to the Federal Circuit’s understanding of patent eligible subject matter.”  Of course, no one will really know for some time, and there is certainly enough reason to worry after the oral argument.  Predictably Justice Breyer seems ready to rule virtually all process claims unpatentable, and surprisingly Chief Justice Roberts seemed more in agreement with Breyer than anyone else.

In all likelihood it will be at least a couple months before we know the outcome of this case, which holds in the balance the future of medical treatment claims.  In fact, the average length of time for the Supreme Court to decide patent cases since Markman in 1996 is about 3 months.  The most recent Supreme Court cases have lingered on average over 5 months.  How the Supreme Court operates is one of the better mysteries in our form of government, and there will be absolutely no signaling of when to expect a decision.  The Supreme Court will just one day announce a decision.  Notwithstanding, I’m going to hazard a guess that we will have a decision between the end of March 2012 and the end of May 2012.  I don’t see this as an end of the term opinion.

In my earlier article addressing the Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., I suggested the Federal Circuit “still doesn’t get it” on how title to “subject inventions” works under Bayh-Dole.  See CAFC Continues to Struggle with How Title to Subject Inventions Works under Bayh-Dole.  My original view was that the title to the “subject inventions” (i.e., those resulting from federally sponsored research) initially resided with the organization (e.g., Stanford University) which carried out the sponsored research. I now confess that I, like Stanford University, overstated how Bayh-Dole works with regard to title to “subject inventions.”  In affirming the Federal Circuit, a majority of the Supreme Court (6 Justices) later ruled that Bayh-Dole “does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.”  See head notes to the Supreme Court’s slip opinion.

UPDATED: 6/10/2011 @ 12:28pm (see comments)

Earlier today the United States Supreme Court issued its decision in Microsoft v. i4i.  At stake in this closely watched case was whether a patent would continue to carry a strong presumption of validity during litigation or whether that presumption of validity would be significantly weakened.  More specifically, since the inception of the Federal Circuit the law has always been that to overturn the presumption of validity required by 35 U.S.C. 282 and invalidate a patent claim there needs to be clear and convincing evidence presented at trial, regardless of whether the prior art offered at trial was considered by the Patent Office.

Microsoft (NASDAQ:MSFT) wanted to see that changed, with prior art not considered by the Patent Office requiring a lower evidentiary threshold to invalidate. To rule in Microsoft’s favor would have required the Supreme Court to throw away 30 years of well-settled Federal Circuit law, as well as overruling Supreme Court precedent in effect since at least 1934, but which traces back in some form from that date a further 100 years.  That was a bridge too far for the Supreme Court, who ruled today 8-0 (with concurring opinions but no dissents, and with Chief Justice Roberts taking no part in the decision) that in order to invalidate patent claims 35 U.S.C. 282 requires clear and convincing evidence regardless of whether the prior art was known by the Patent Office during prosecution of the patent application.

This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world.  Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.

It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.

At 11:03 am this morning Justice Scalia, sitting in for the recused Chief Justice John Roberts, called the most recent Supreme Court foray into patent law saying: “We’ll hear argument now in… Microsoft Corporation v. i4i Limited Partnership.”  The Chief Justice recuses himself from any and all Microsoft cases before the Supreme Court, so eight Justices are left to decide whether it is appropriate to require clear and convincing evidence to find an issued patent claim invalid during litigation.  In a nutshell, Microsoft and the amici supporting Microsoft would rather have a lower threshold (i.e., preponderance of the evidence) at least with respect to prior art that was not considered by the patent examiner during prosecution of the patent application at the United States Patent and Trademark Office.  On the other side of the case, i4i, along with its amici and the Solicitor General, argue that the current standard should not be changed.

Yesterday the United States Supreme Court heard oral arguments in the case of Costco Wholesale Corporation v. Omega S.A.  The case is a copyright dispute that adds one layer of additional facts not considered by the Supreme Court in their 1998 ruling in Quality King Distribs., Inc. v. L’anza Research Int’l, Inc.

The dispute arose because Omega, S.A., sought to prevent the petitioner, Costco Wholesale Corporation, from reselling genuine watches originally sold by Omega to authorized foreign distributors. Omega, a Swiss company that manufactures watches in Switzerland, did not authorize the importation of the watches by Costco, despite the fact that Costco legally purchased the watches abroad. Thus, the question in this case will be whether copyrighted materials made abroad and legally purchased abroad can be imported without the express permission of the copyright owner. In other words, does the first sale doctrine extinguish the rights of the copyright holder when the goods are made abroad and sold abroad.

Having had some time, although admittedly not much time, to digest the Supreme Court’s decision in Bilski v. Kappos I am increasingly of the belief that the Supreme Court did an admirable job, at least insofar as they go. While I will reserve my right to change my mind, I am pleased by the Supreme Court decision, and bolstered in this belief by the fact that industry organizations such as BIO and LES are praising the decision, while at the same time anti-software patent advocates are apoplectic. So the Supreme Court must have done something right.

Yes, it certainly would have been nice for the Supreme Court to actually give us a test and not merely point out that the Federal Circuit got it wrong. We already knew the Supreme Court thought the Federal Circuit got it wrong when they granted cert. in the case. There is simply no other reason for the Supreme Court to choose to hear a case from the Federal Circuit given there could never be a split among the Circuits given that all patent cases go to the Federal Circuit. Having said that, I am glad the Supreme Court followed the physicians motto — do no harm — and if getting no test was required in order for there to be no harm then I suppose we ought to be well enough thankful. But what does the decision in Bilski v. Kappos actually mean?

UPDATED: June 21, 2010 at 11:55 am

Straight from the Broken Record department, the United States Supreme Court has again not issued a decision in Bilski v. Kappos. At this point it seems that not having a decision is anything but surprising, and in fact rather predictable.  Bilski has now been pending for nearly 7.5 months.

The Court issued four decisions this morning, which were:

Monsanto Co. v. Geertson Seed Farms Kawasaki Kisen Kaisha Ltd. v. Regal-Beloit Corp. Rent-A-Center, West, Inc. v. Jackson Holder v. Humanitarian Law Project

What makes this “no Bilski day” at the Supreme Court particularly interesting and noteworthy is the fact that the Supreme Court did issue a terrorism and First Amendment decision in Holder v. Humanitarian Law Project today, a decision that many if not most would have thought to be harder and more important than the Bilski case.   Chief Justice Roberts, joined by Justices Stevens, Scalia, Thomas, Alito and Kennedy, the Supreme Court held in Humanitarian Law Project that the preenforcement challenge to 18 U.S.C. 2339B does create a case or controversy capable of being addressed by the Courts under Article III of the United States Constitution.  On the merits the Supreme Court held that the material-support statute is not unconstitutionally vague and the United States Court of Appeals for the Ninth Circuit improperly merged the vagueness challenge with the First Amendment challenge.  Finally, the Supreme Court ruled that the material-support statute does not violate the plaintiffs First Amendment right to free speech or the First Amendment right to freedom of association.

I am just about out of ways to creatively announce that the United States Supreme Court has once again had a decision issue day come and go without issuing a decision in Bilski v. Kappos.  So lets get the obvious out of the way quickly.  The Supreme Court issued four decisions today, Monday, June 14, 2010, and none of them were the highly anticipated Bilski decision.

I know Supreme Court watching is so much fun that that it should almost be illegal, right?  Wrong!  Supreme Court watching seems akin to that Bill Murray movie – Groundhogs Day – where he kept waking up every morning in the small town to relive another day — the same day.  Unlike in the movie where Murray received chance after chance to get it right, the Supreme Court has but once chance to get this massively important decision correct, so I say let them take their time.  Even if that means they hold over the Bilski decision until next term.

And that is where the speculating begins!

It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball of preference is history, tied together with a healthy bit of speculation based on how similar cases and issues were previously addressed by the Court. No single case could be more telling with respect to how the Supreme Court may rule than a case in which they did not rule — Laboratory Corporation of America v. Metabolite Laboratories. In this case the United States Supreme Court decided not to issue a ruling, which may not seem noteworthy at first glance. After all, approximately 8,000 petitions are filed with the Supreme Court each year, and an additional 1,200 applications of various kinds are filed per year that can be acted upon by a single Justice. There is simply not enough time to consider each case where Supreme Court review is sought, so the Court has historically been very selective in choosing cases, normally only issuing full opinions in roughly 80 to 100 cases each year. But, as is frequently the situation with the Supreme Court, there is more than meets they eye with respect to Lab Corp.