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26 
I almost can’t stand it any more. The anticipation is killing me! When will the United States Supreme Court issue its much anticipated decision in Bilski v. Kappos? One thing is for certain, it will be soon, but how soon? The Court term ends at the end of June, and it would be extraordinary for the Supreme Court to hold over a decision from one term to the next. It has happened in exceptionally rare circumstances in the past, typically when there were enormous Constitutional implications, such as in Marbury v. Madison and Brown v. Board of Education. While Bilski could be earth shattering in the patent world, it doesn’t even come close to Marbury or Brown, and there is absolutely no reason to anticipate the Court will hold over the decision. So that means the end of June at the latest, but I am guessing sooner, much sooner. My prediction: April 21, 2010.
UPDATE: Still no decision as of May 17, 2010 – for more see
Another Day Without Bilski Decision, What Does It Mean?
Recently e-mails were firing back and forth at the Practising Law Institute as we try to figure out when the Bilski decision will issue. PLI will have some programs in store, and I have a number of things planned for IPWatchdog.com as well. It was suggested that the Supreme Court does not issue decisions on days they are not in session. Wondering if this were true I decided to look at the dates opinions have issued at the Supreme Court this term. As of today there have been 38 opinions issued by the Supreme Court this term; see list below with hyperlinks to the decisions.
In 31 cases the opinion was issued on a day the Supreme Court was hearing oral arguments, hence “argument” in the right column. In 5 cases the opinion issued on non-argument days, which are days the Supreme Court calendar marks off as being neither argument or conference days, nevertheless listed on the calendar. In 2 cases the opinion issued on open dates, not identified as argument days, conference days or non-argument days. So it would seem that it is more likely that the Court will issue the decision on a day they have oral arguments scheduled, but there are only 6 more days of oral arguments scheduled at the Supreme Court this term; they are: April 19, 20, 21, 26, 27 & 28. After that the remaining days on the calendar are open, non-argument or conference days.
Then I started to wonder when the Supreme Court issued opinions in patent cases of recent vintage, and here is the table:
| 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 |
What the list of patent cases above shows is that the average lag time between oral argument and decision is 2.82 months. Given that Bilski was argued on November 9, 2009, and it is already April 7, 2010, there has been a 4.93 month lag, well over the average, but right in between the window of the lag between argument and decision in Quanta and KSR. That should suggest that the decision will be handed down any day now. If the decision slips to May or beyond that would make the Bilski lag longer than any of the cases mentioned above.
So what is my projection? Months ago I predicted that the Supreme Court would issue the decision on the day that is least convenient for me. That is what always seems to be the case with big news items. They seem to happen when I am away from my computer and attending to other matters, traveling or teaching. Based on the belief that the decision will issue on either April 19, 20, 21, 26, 27 or 28, my prediction is April 21, 2010. That would be the most awful day for me because of my calendar of events on April 21 and 22. So if you are going to start up an office pool on when Bilski will issue I would beg, borrow and plead for April 21. If that is not available then go for April 22, which would actually be worse for me but not as likely a date given that it is an open date on the Supreme Court calendar.
What does this mean? Who knows really, but the suspense is killing me and I had to write something about Bilski. Sometimes I feel like a kid anticipating Christmas as I wait for the decision, and sometimes I feel like I did when I was driving to the dentist to have my wisdom teeth pulled. Time will tell, but excuse me for praying for Christmas and preparing for the dentist.
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Join the Discussion
26 comments so far.
James Clark
June 17, 2010 09:42 pmUpon information, knowledge and belief, the Bilski opinion surrounds Pat. App. No. 11153118. By reviewing the communications and unprecedented conducts of the Patent office surrounding said Pat. App, and prosecution thereof, one will notice a relationship between it and Bilski. FOR EXAMPLE: said Pat. App. has already been heard by the USCA of the Federal Circuit (Federal Circus), pursuant to a transfer from the USCA for the 8th Cir. The U.S. Supreme Court is performing like the Missouri Supreme Court did regarding several Eminent Domain cases, however, said Pat. App. and Bilski have overwhelmed our high court.
Allen Paul
May 24, 2010 06:21 pm>> If you want to kill the economy there would be no faster way than to kill software patents. <> What is at stake is funding of thousands of start-up companies who need patents to attract investors. <<
This might be somewhat persuasive if you could support it — by examples or by surveys. And, what of all the (thousands of) startup companies that can't innovate because of fear of patent suits by the big fellows, or by the patent trolls? Where is the greater harm here?
Is a compromise of some sort possible here? Possibly. Something along the lines of outlawing patent suits of any kind by NPEs would go a long way toward resolving the situation. How about a pledge by patent attorneys, such as yourself, Gene, to refuse to represent NPEs under any circumstances? Even better would be a ban on patents being bought and sold, so that only the original inventor, or heirs, could own patents. And, more money allocated to the USPTO, so that prior art could be thoroughly examined before granting new patents. And, narrowing the scope of patents, so that broad-based "similarity" patent suits are eliminated. Finally, limiting patent suits to actual damages, with strict limits on lawyer compensation. That would hurt, huh?
Derek
May 18, 2010 10:15 am>>>
As the Bilski case stands presently it also will eventually cause problems for medical diagnostic innovations
<<< Such innovations would generally be patentable under the ignored aspect of the MoT test, the transformation prong. In Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), the CAFC found that a patent application directed to the analysis of heart signals was patentable because it transformed the signals from analog form to digital form. "These input signals are not abstractions; they are related to the patient's heart function.” This isn't the first time I've heard a patent attorney gloss over the importance of the transformation test, although to be fair the transformation prong hasn't been fully "fleshed out" (and at this point it looks like it may never be given that chance). For full disclosure: 1) I tried to find the Medtronic brief to see if their analysis countered my point above - alas I couldn't find their amicus brief for Bilski. 2) Ironically, Arrhythmia Research is not cited in the CAFC's en banc Bilski opinion to elucidate the transformation prong even though Arrhythmia Research seems "ahead of its time" and to have been written for exactly this purpose.
Gene Quinn
May 17, 2010 04:49 pmAllen Paul-
Obviously you are not familiar with the case or the enormity of what is involved since you don’t understand the “trepidation”. If you want to kill the economy there would be no faster way than to kill software patents. While you focus on patent trolls or NPEs, that is not at all what is at stake. What is at stake is funding of thousands of start-up companies who need patents to attract investors. So you if you want kill the economy and kill job creation then go right ahead and pray for the Supremes to put an end to software patents.
As the Bilski case stands presently it also will eventually cause problems for medical diagnostic innovations, and without diagnostic innovations there can be no treatments and devices invented, as was pointed out in the Medtronic brief. You simply cannot treat something you cannot discover, and despite what many think the commercialization of diagnostics is not free, and also not done by Universities and federal laboratories.
So it is really YOU who should hang your head in shame. You are not at all knowledgeable about what you write, but that didn’t stop you from having an opinion and casting blame where it doesn’t belong. It is great that everyone can have an opinion and articulate it, but unfortunate those who are not knowledgeable are so confident in their own ignorance that they feel justified in pointing the finger at others.
-Gene
Allen Paul
May 17, 2010 04:43 pmWriting as a non-attorney, as someone who does not make a living from litigation, I might add a somewhat different perspective. And a question — why all the trepidation about the possibility of software being ruled as unpatentable? The problem, you see, is the NPEs, the so-called patent trolls, who buy up portfolios of (mostly software) patents and use them to shake down technology companies. It’s “either you settle, or I’ll sue.” Now, this is good for the IP attorneys among you, but very bad for the rest of us, and especially for those of us whose livelihood depends on technology and innovation. Yes, the patent system, as it stands, has been gamed and abused. And, by who? The patent and IP attorneys. Hang you heads in shame, folks.
step back
May 3, 2010 10:00 pmMaybe some justice is writing his or her last long dissent?
Beuller anyone? Beuller? Stevens?
jon merz
May 3, 2010 11:37 amGene, have you seen anyone compile a list of lower court decisions that have turned on Bilski? Myriad and Ariad come to mind… all of which will require reconsideration if the supremes limit or reverse.
best,
jon
patent leather
May 3, 2010 11:32 amwow, it’s almost been 6 months now, and a record for a patent case. Perhaps this means the decision won’t be a simple affirmation with the machine or transformation test being the only test. Anyone have any tea leaves as to what the delay might mean?
Just visiting
April 28, 2010 10:04 amNo opinion today. Apparently, only 4 cases are undecided from the November oral argument sitting — of which two are juvenile life imprisonment cases and obviously, Bilski. I don’t know the identity of the fourth.
scotusblog.com is where I found this info.
Blind Dogma
April 27, 2010 07:57 amThey keep ordering more Kool-aid. I say give them as much time as they want.
Gene Quinn
April 26, 2010 09:48 amAnother day, no Bilski decision. What is taking them so long?
-Gene
Just visiting
April 26, 2010 08:06 amWell … if Gene’s supposition that SCOTUS will issue the decision on an oral argument day, then we are looking at just today, tomorrow, and Wednesday.
Anybody have an idea as to what cases have yet to have a decision issue?
patent leather
April 8, 2010 05:27 pmSotomayor is patent attorney Kevin Noonan’s ex wife. Let’s hope she isn’t out to get revenge on him 😉
Taiwanese Office Action
April 8, 2010 03:55 pm“Sotomayor is the closest thing to an IP expert the Court has probably ever seen.”
No argument on this; I just wanted to point out that Ginsburg’s only daughter Professor Jane Ginsburg has written and lectured fairly extensively on IP (mostly copyright). Some suggested her fingerprints were on the Grokster decision. So Ginsburg may have some unexpected IP savvy too. Not that this will make her pro-patent. Just sayin’
jb
April 8, 2010 03:23 pmAlthough Sotomayor has a strong IP background, I was somewhat concerned about her suggestion that patents stifle the flow of information (paraphrasing). Valid and enforceable patents may inhibit a company’s commercialization plans, but not clear how they stifle the flow of information or, as some suggest, innovation. Anyone can look at and review a patent’s disclosure and can even further innovate based on the patent’s disclosure. I was also surprised by several of the Court’s voiced concerns that are actually addressed cleanly by novelty/obviousness standards. Several patent standards have already been changed/reformed (e.g., doctrine of equivalents, obviousness, DJ actions, willful infringement). I think Mr. Bilski is likely out of luck, but if the decision goes further, I think would be problematic for the patent system, innovation and the US economy.
Second Year Law Student
April 8, 2010 12:55 pmThanks Gene. I’ll bring it up the topic in class tomorrow for discussion and report back.
Gene Quinn
April 8, 2010 12:47 pm2L-
Sotomayor was not involved in granting cert. Cert. was granted on June 1, 2009. See:
https://ipwatchdog.com/2009/06/01/us-supreme-court-grants-cert-in-bilski/id=3865/
Sotomayor was confirmed at some point thereafter, I believe in July 2009. She was, however, the hottest Judge on the bench, repeatedly referring to the CAFC decision as “extreme.” She asked counsel about offering another test that would allow the Court to pull back from the “extreme decision reached by the Circuit…”
The most senior Justice in the majority will take or assign the opinion to another Justice who is also in the majority. So the odds of her getting the opinion are low, at least at first glance. Having said that, there is no “expert” on IP matters on this Court. Sotomayor is the closest thing to an IP expert the Court has probably ever seen. She has experience from practice, at least on soft-IP issues, and experience with soft-IP issues on the 2d Circuit. She also seems extremely prepared for this case and went down into the weeds asking questions and if memory serves is the one who brought up the Morse patent and some other references. She seemed thoroughly prepared. With the other Justices likely preferring to author cases of greater social importance a patent issue could flow downhill to someone like Sotomayor who gets it and seems willing to dive into the thick of it.
What have you heard your professors say about the case, if anything?
_Gene
Second Year Law Student
April 8, 2010 12:35 pmGene,
Do you know if Justice Sotomayor was involved in granting cert for Bilksi? She certainly has written on IP issues, being in the 2nd Circuit, but my general thought would be that if she wasn’t involved in granting cert then she wouldn’t push to write the opinion. I’m not really sure how all of that works.
Bryan
April 8, 2010 10:14 amGene,
I did much the same calculation recently, and came to much the same result. I looked also to some of the older cases on Sec. 101, but they seemed all to have a shorter argument-to-decision time than Bilski has already reached.
EG
April 8, 2010 09:53 amGene,
I was aware that Stevens wrote the opinion for Parker v. Flook and you’re right, it’s awful. How can that which is “unknown” be prior art under 35 USC 103. Again, like you suggested, let’s hope Stevens has “matured” in his old age. I also hope that Sotomayor gets this opinion, as she’s the most IP-literate of all the SCOTUS justices, and has the least chance to “muck it up.” Being the junior justice (who tend to get the least favored subjects to write opinions on), she’s also got the best chance of getting it as IP law (up until recently) is not a favored subject at SCOTUS.
Gene Quinn
April 8, 2010 09:46 amEG-
Perhaps Justice Stevens view has matured, but he wrote the majority opinion in Parker v. Flook and he dissented in Diamond v. Chakrabarty. See this review of his patent history at:
https://ipwatchdog.com/2009/11/12/exploring-justice-stevens-patent-past-for-clues/id=7252/
I am nervous about Stevens. The quote you mention does suggest he would be on the pro-software patent side. So do his brief comments at the Bilski oral argument, particularly when he said that he had always respected Judge Rich and wondered what he might think about this particular case. Given Rich wrote State Street that would suggest Stevens is in the pro-software patent crowd. Perhaps Stevens wouldn’t be so bad, but still he makes me nervous.
-Gene
EG
April 8, 2010 08:07 am” If he [Stevens] writes the opinion that would all but certainly mean that software is not patentable.”
Gene,
I wouldn’t necessarily agree. Why? Because of Stevens’ dissenting opnion in Microsoft v. AT&T. Consider this last paragraph from his dissent:
“I disagree with the Court’s suggestion that because software is analogous to an abstract set of instructions, itcannot be regarded as a “component” within the meaning of §271(f). See ante, at 9–10. Whether attached or de-tached from any medium, software plainly satisfies the dictionary definition of that word. See ante, at 9, n. 11 (observing that “‘[c]omponent’ is commonly defined as ‘aconstituent part,’ ‘element,’ or ‘ingredient’”). And unlike a blueprint that merely instructs a user how to do some-thing, software actually causes infringing conduct to occur.It is more like a roller that causes a player piano to pro-duce sound than sheet music that tells a pianist what todo. Moreover, it is surely not “a staple article or commod-ity of commerce suitable for substantial noninfringing use” as that term is used in §271(f)(2). On the contrary, its sole intended use is an infringing use.”
That doesn’t sound like the view of someone who believes software is patent-ineligible. In fact, Stevens had a far better grasp of how software works compared to the Ginsberg’s majority opinion and Alito’s concurring opinion (note Stevens’ to [architectural] blueprint which is what the other opinion’s characterized software as).
Gene Quinn
April 7, 2010 08:58 pmStep-
That is my feeling as well. Add on top of that the fact that she has general familiarity with IP issues and the fact that no one on the Court seems to be all that interested in IP, and I suspect she will get the nod. I also suspect it will be good for patentability if she does, in fact, author the opinion.
-Gene
step back
April 7, 2010 06:57 pmI would be surprised if Sotomayor does not write the opinion.
During orals, it appeared like she was the one who understood the difference between “information” and physical process (but then again, maybe she didn’t).
Gene Quinn
April 7, 2010 06:41 pmBen-
I would be shocked if Stevens writes the opinion. If he writes the opinion that would all but certainly mean that software is not patentable.
I think the most likely outcome will be that Bilski’s invention is not patentable, but that the machine or transformation test is thrown out, or kept as “a test” but not “the only test.” I suspect the Court will go back toward State Street, but likely not all the way. It should be a limited ruling explaining that the Federal Circuit went too far in reaching this decision, scaling back and directly addressing only the facts of Bilski.
I wouldn’t be surprised if Sotomayor writes the opinion actually.
-Gene
Ben Daniel
April 7, 2010 06:34 pmSo, what do you think the decision is going to be? Do you agree with others saying that Stevens is going to be writing the opinion?