Court Stays Ruling Pending Supreme Decision in Bilski

On January 21, 2010, the United States District Court for the Central District of California issued a ruling in Big Baboon, Inc. v. Dell, Inc. et al, staying further consideration on the motion for summary judgment for invalidity until such time that the United States Supreme Court issues its much anticipated decision in Bilski v. Kappos.  This is exactly what I have been suggesting (see Offering Help), and it has amazed me that other district courts and the United States Patent Office are plowing ahead and making Bilski rulings.  Reality be damned, many district courts and the United States Patent and Trademark Office would rather waste their own time, the time and money of litigants and patent applicants, knowing full well that the United States Supreme Court will issue a ruling that will change the Federal Circuit machine or transformation test announced in Bilski.

There is simply no other reason for the Supreme Court to have taken the case other than to, at a minimum modify the CAFC Bilski test.  There is no Circuit split, and the Supreme Court has not been in the business of giving “attaboy” compliments to the Federal Circuit.  This being the case, it is an extreme waste of judicial and examining resources to pretend that courts, litigants and patent applicants won’t be forced to go through the entire exercise all over again once the Supreme Court issues its ruling.  So for showing tremendous common sense, exhibiting appropriate judicial restraint and staying true to a conservative judicial philosophy a tip of the hat must go to Judge Stephen V. Wilson.  Now if only other district courts and the Patent Office would understand the enormously negative effect of wasting time and money only to have to start all over again we would be getting somewhere.

To give a little context to the story, allow me to begin with the patents being asserted by Big Baboon, which is a great name!  The plaintiff asserts that claims from US Patent No. 6,115,690 and US Patent No. 6,343,275 are being infringed by Dell,, American Honda Motor Co., Amerisourceberge Corp., Fedex Corp., Hewlett-Packard, Ingram Micro, Intel, Staples, United Parcel Service and UTI Worldwide.  It is safe to say that these patents are not typical by any stretch of the imagination.  The ‘690 patent was filed on July 16, 1999, issued on January 29, 2002, and has 395 sheets of drawings.  The ‘275 patent was filed and issued on the same day as the ‘690 patent, and has 392 sheets of drawings.  So unlike many patents in business method or computer implemented process space, these patents are not wanting for disclosure.

As has become commonplace in such litigation, the defendants moved for Summary Judgment asserting that the patent claims are invalid, citing the Federal Circuit’s decision in Bilski for the proposition that the machine or transformation test is not satisfied, therefore meaning that the invention as described is not patentable subject matter.  Of course, the plaintiff, Big Baboon, disagreed.  Upon reviewing the initial papers submitted by the parties the district court, On September 25, 2009, invited further briefing on certain Bilski issues.  The entire Order inviting further briefing, provided courtesy of the Docket Report, is worth a read if you are involved in Bilski litigation or working on patent applications where there is a Bilski rejection, but the Order of Judge Wilson said, in part:

In the course of examining the “precise contours” of the Bilski court’s “machine” test, see 545 F.3d at 962, the Court has identified in interesting precedent: O’Reilly v. Morse, 56 U.S. 62 (1853). The Morse case is not particularly obscure; in fact, it is one of the bedrock cases in American patent jurisprudence. However, in discussing Morse, courts often focus on Samuel Morse’s eighth patent claim, by which he attempted to claim all uses of electromagnetism to transmit print and visual communication. In contrast, courts have offered relatively little discussion of Morse’s fifth patent claim. But cf. In re Nuijten, 500 F.3d 1346, 1357 n.9 (Fed. Cir. 2007) (discussing Morse’s fifth claim).

This Court would like to focus the parties’ attention on Morse’s fifth patent claim, which claimed Morse code as used via telegraph.


In examining Morse’s fifth claim, the Supreme Court held: “We perceive no well-founded objection . . . to his right to a patent for the first seven inventions set forth in the specification of his claims.” Id. at 112. In other words, the fifth claim recited patentable subject matter.

In the present case, the Court wishes to consider the parties’ views on the question of whether Morse’s fifth patent claim is analogous to the patents claimed by Plaintiff. The Court notes that both cases appear to involve a patent for a method of communicating over a machine designed to enable communication. The Court further notes that there may be some parallels between the electromagnetic telegraph in Morse’s fifth claim and the “Web-enabled computer” in Plaintiff’s various claims.

After reviewing the parties’ submission of supplemental briefs on the Morse’s fifth claim, Judge Wilson issued the following stay order on January 21, 2010:

The Court has carefully considered the parties’ briefs regarding O’Reilly v. Morse, 56 U.S. 62 (1853). At present, the Court is not convinced that Morse is adequate precedent.

The possibility remains, however, that the Supreme Court’s pending decision in Bilski v. Doll, No. 08-964, 129 S. Ct. 2735 (2009), may influence or affect this case. Relevant parts of the Morse case were raised in the course of Supreme Court proceedings in Bilski. See, e.g., Oral Argument at 21–50, Bilski, No. 08-964 (Nov. 9, 2009); Brief of Regulatory DataCorp, Inc., et al., as Amici Curiae in Support of Neither Party, Bilski, No. 08-964 (Aug. 6, 2009) .

Therefore, the Court finds that the prudential course is to stay its decision on the pending motion.

Accordingly, the Court STAYS the motion for summary judgment of invalidity based on patentable subject matter, pending the Supreme Court’s decision in Bilski v. Doll. The parties are ORDERED to inform the court within one week of the Supreme Court’s decision, and the Court will issue such further orders as it deems necessary.

Now we sit and wait for the Supreme Court to issue a decision in Bilski.  How long we will have to wait is really anyone’s guess, although it will be sometime between now and the end of June 2010.  I personally suspect the ruling something between late March and early May.  If past karma has any relevance, the Bilski ruling is almost certain to be issued on a day when I am traveling or teaching.  I will be teaching the PLI Patent Bar Review Course in Chicago from March 17 – 21, traveling out on March 16.  I will be teaching the PLI Patent Bar Review Course in New York City from May 12 – 16, traveling out on May 11.  I will also be speaking to the Toledo Intellectual Property Law Association on April 13, and out of the office for that trip from April 12 – 14.  So if you have a Bilski pool at your office see if you can get one of those dates.  It seems when big news breaks I am on the road and unavailable to immediately write.

For more information on the case see:

Washington State Patent Law Blog


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Join the Discussion

4 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 8, 2010 10:13 am


    Probably not, but a question like that SHOULD definitely keep them awake at night.

    It is amazing how those who know nothing about a subject and nothing about science are so quick to exclaim with great arrogance that things are “common sense” and so trivial that they don’t deserve a patent. I think it was Thomas Jefferson’s time as the first US patent examiner that changed his view on the patent system. He was so overwhelmed by reviewing patent applications, which shouldn’t have taken long if it the standard were “this is genius” or “this is common sense” check the box.


  • [Avatar for step back]
    step back
    February 8, 2010 05:53 am


    Like POP, I have a sick and uneasy feeling about how the “You lie/Not true” faction of the US SCt will rule regarding modern science, information technologies and so forth.

    One gets a pensive glimpse at the Ghost of Bilski future simply by looking at KSR past.

    Those on the SCt who profess to channel the Founding Fathers were Yankee cock-a-doodle sure in KSR that electronic throttle and brake design is a matter of “ordinary” creativity, simple market forces and thus undeserving of patent protection.

    But then again look what’s happening to poor Toyota and their trials and tribulations of recent regarding very similar subject matter: electronic throttle and brake designs.

    If all this stuff is as simple and as “common sense” as easing in the last piece of the puzzle into the jigsaw assemblage, why is a well regarded engineering firm like Toyota having trouble? I doubt though that a question like that keeps any of the Justices awake at night.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 7, 2010 10:28 am


    I couldn’t agree more. This will be the superbowl of decisions. It could not only impact software and business methods, but also diagnostic methods. If it impacts diagnostic methods that would also have incredibly negative affect on medical treatments and medical devices because there necessarily needs to be a diagnosis in order to find a treatment and a tool to cause treatment. Take the money out of diagnostic methods and research will go elsewhere and that will have a significant negative impact on the advancement of health care.

    I think these issues all need to be decided, but Bilski is the wrong case. It should be an easy case. Simply say NO to purely mental methods and processes. Then wait for a better case that crystallizes the other issues.


  • [Avatar for pop]
    February 6, 2010 09:33 pm

    It’s funny. For a small portion of the population who cares, this Bilski decision means everything, and for everybody, it means nothing. Waiting for this is like waiting for Christmas as a child. I honestly don’t even know what kind of decision I am hoping for other than maybe an “ataboy”, which you pointed out is very unlikely. Whatever happens, it will mean a change, and for those of us with an interest in i the matter, this is the superbowl of decisions.