The Wait Continues: Another Day Without a Bilski Decision

By Gene Quinn
May 24, 2010

After 6 months and 15 days we still wait for a decision in Bilski v. Kappos, perhaps the most anticipated Supreme Court patent decision of all time.  It is now 10:50 am Eastern Time and the Supreme Court slip opinion page has not added another opinion since at least 10:27 am Eastern Time.  At 10:29 am, shortly after American Needle, Inc. v. National Football League (an intellectual property licensing case I will be writing about later this week, in which the Supreme Court ruled the NFL is not a single entity for Antitrust purposes and the Rule of Reason applies to its IP licensing decisions) was added to the slip opinion list, the ruling number column (see R column) was filed in, which seems to be a reliable indicator based on past observances that there will be no more decisions forthcoming from the Supreme Court today.  So, once again, it seems as if the patent story of the day will be the one that never materialized.  The wait for a decision in the Bilski case continues.

The US Supreme Court did decide no fewer than 7 cases today, none of them styled Bilski v. Kappos.  The 7 decisions issued today were:

 

Of course, hyperbole of this kind is all too easy and much overused, particularly when one is so close to such an important event.  Nevertheless, while certain other decisions by the Supreme Court in the patent space may be even more fundamental, such as KSR v. Teleflex, which changed the law of obviousness that applies across the board for all applications, I cannot recall such anticipation over a patent decision.

For those needing proof of the importance of the Bilski case the first evidence was the fact that the general admission line for the Bilski oral argument formed in front of the United States Supreme Court building at midnight the evening before the oral argument.  By the time the public was ushered into the Supreme Court chamber over 300 people were in line and only about 50 would be given a seat for the full argument.  All the other seats were taken up by members of the press (including myself) and members of the Supreme Court Bar.  The remainder of those in line took turns being ushered in to watch a few minutes of the oral argument.  Passersby remarked to those in line, asking what case was so important.  When it was explained that it was a patent case most seemed perplexed, but those in the industry know exactly why this case matters so much.  It is about patentable subject matter and whether the Supreme Court will cut off at the knees developing technologies. See A Bird’s Eye View of the Bilski Oral Argument and Bilski Arguments Complete at the US Supreme Court.

A business method patent case, and a pure business method patent application, should not be of such overwhelming importance.  Unfortunately, the extraordinarily over broad Federal Circuit decision this pure business method case, where the inventors looks, thinks and acts, created enormous potential problems for the patentability of software, medical diagnostic methods, biotechnology method patents and even medical device patents.  So much is at stake.

The difficulty the Supreme Court is facing is in all likelihood this: how do they kill the Bilski patent application as being unpatentable subject matter without also killing the US economy.  A decision that is too broad not only could put an end to the pure business methods akin to the Bilski “invention,” but could also put an end to the patentability of software, business methods and medical innovations. Particularly troubling, of course, are an outright ban on business method patents because on some level every invention could be characterized as a business method, because isn’t the point to use the invention in some commercial embodiment to make money?

Also troubling is the potential unintended consequences that might befall medical related innovation.  The consequences of the CAFC Bilski decision was brought home best by the Medtronic amicus brief, which was filed in support of neither party. Medtronic explained right at the beginning:

The requirement that a process must be tied to a particular machine or apparatus, or must transform a particular article into a different state or thing to be eligible for patenting under 35 U.S.C. § 101 would adversely affect medical technology innovation. The machine-or-transformation requirement would preclude the patenting of significant advances in medical research and development, diagnosis, prevention, and treatment. Without the full range of incentives of patent exclusivity, medical innovation will suffer the loss of investment and a retreat into secrecy, the very harms the patent laws were enacted to guard against. Moreover, impeding the patenting of medical breakthroughs jeopardizes public health goals, including affordable universal access, by deterring the invention and public disclosure of competitive medical technology. The machine-or-transformation requirement is therefore inappropriate and should be discarded.

Much of the Medtronic brief is devoted to explaining what the company does, some of the key medical innovations created by the company, why these innovations have helped improve the quality of health care for real people, and what technologies they will no longer be able to seek patent protection for, which will all but certainly lead to less medical innovation, which is hardly good for society.  The Medtronic brief goes on to explain:

In the context of medical technology, the proper evaluation and effective treatment of patients depend upon complex correlations assessed over prescribed times. This, in turn, relies upon the generation of predictive models from a comparison of an individual patient’s signs and symptoms against a database of studied human wellness parameters, which contain patterns of diagnosis, chosen treatment, and outcome. These efforts are far from trivial.

At the start of the next section of the brief Medtronic brings home the point — if you cannot diagnose the problem you cannot treat the problem, and treatment advances are typically predated by diagnosis advances. Specifically Medtronic says:

Under the Bilski test, a method of diagnosis unaccompanied by a medical device or treatment step would be patent ineligible. However, the development of a diagnostic test almost always precedes the ability to treat the disease and is often a distinct research enterprise separated by years, if not decades.

Medtronic leads up to concluding (although this appears in the paragraph right before the one labeled “Conclusion”):

The Court of Appeals decision in Bilski opens the door to the use of Section 101 as an instrument for determining precisely what innovation will be acceptable… Tinkering with Section 101 in hopes of crafting a standard generally applicable to past, present, and future technologies, however well intentioned, may bring unforeseeable consequences, including the unfortunate chilling of future innovation.

Thus, it is hardly an overstatement to observe that the Bilski case, if decided improperly, could destroy an already fragile US economy and set back medical research decades.

On that happy note, the question turns to — when should we anticipate a decision in Bilski?  Who knows!  But if you are trying to figure out when the stars might be aligned properly, allow me to observe that according to the Supreme Court Calendar on the Court’s Homepage the Court will have a Non-Conference Day on Thursday, May 27, 2010, and the next Non-Argument Day listed on the calendar is Tuesday, June 1, 2010.  Normally Non-Argument Days are Mondays, but Monday, May 31, 2010, is Memorial Day, a federal holiday, so the Court will be closed that day.

The Supreme Court does not generally issue decisions on Conference Days, having only done so a couple times this term, so Thursday, May 27, 2010 does not seem to be 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; the Court is working on wrapping up its calendar, which typically occurs by the end of June.

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, which would mean that the next most likely day there may be a decision is Tuesday, June 1, 2010.   Of course, the Supreme Court has been known to issue decisions from time to time on days when the calendar is open, but most in the know are not expecting that as we move forward toward the end of the term.  But then again, most in the know, including myself, predicted that we would have a decision well before now.

If any reliable predictions can be made at this point it seems limited to the fact that the it is almost a certainty that the Bilski decision will not be 9-0 and there will all but certainly be at least one dissent, perhaps more, and perhaps a concurring opinion or two.  When such a contentious case arises it is common for the various opinions to quote or at least reference other opinions of the other Justices.  Thus, drafts are circulated back and forth between and among the Justice’s Chambers.  This adds lag time between oral argument and decision day.  Of course, what would add more time is if during the drafting stage one or more of the Justices have changed their mind, or simply could not sign on to a decision written by one of the other Justices.

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 29 Comments comments.

  1. EG May 24, 2010 11:21 am

    Gene,

    Again, similar to what Nimitz said to Halsey “THE [PATENT] WORLD WONDERS.”

  2. step back May 24, 2010 12:51 pm

    Gene,

    Maybe they are busy filming the backroom drama at the Court in preparation for a major motion picture release?

    Working title:

    ‘The Flash of Specious Genus That Wasn’t There’

    Subtitle: How I learned to stop worrying and love the business method bomb

  3. Alan McDonald May 24, 2010 1:15 pm

    Look for a 5-4 decision with at least 1, maybe 2 dissents and at least 2 concurring opinions.

    Something for everyone.

  4. EG May 24, 2010 1:26 pm

    Alan,

    I predict you’ll be correct in your prognostication. And that will likely be a disaster for us, no matter which side of this issue you’re on.

  5. Carl May 24, 2010 3:07 pm

    q: do you think the german high court’s recent decision to make software patents legal will influence the USSC?
    q: could the USSC ban business and method patents for online purposes, but not in all other cases like medical

  6. Gene Quinn May 24, 2010 3:48 pm

    Alan-

    That would lead to less certainty no doubt.

    I think it could be 9-0 on the Bilski claims being unparentable, but the length of the wait suggests there is division over how much to say beyond that. I suspect some want to affirm the CAFC, some want to completely reverse and reinstate State Street, and some may take a very conservative approach saying what Rader’s first paragraph of his dissent says.

    Will we even get a decision on the merits of the law beyond strictly dealing with Bilski facts?

    -Gene

    via iPhone

  7. DR. STEVE May 24, 2010 5:05 pm

    GENE: I THINK THE KEY HERE IS PATIENCE. I WANT A DECISION TOO; BUT I BELIEVE THEY WANT TO “GET IT RIGHT” THE FIRST TIME, SO WE HAVE ADEQUATE GUIDELINES TO MOVE FORWARD. HENCE, I NEVER WANT TO RE-VISIT THIS ISSUE AGAIN. REGARDS: A US PATENT HOLDER

  8. step back May 24, 2010 5:53 pm

    The Supreme Court justices were waiting to see the final episode of “Lost” (the TV show) before making up their minds.

    “Lost” is how the rest of us will be once the 2-2-2-2-1 concurrences and dissents reveal themselves.

  9. Barbie May 24, 2010 6:49 pm

    I only count 6 in the list … did we all miss something?

    The US Supreme Court did decide no fewer than 7 cases today, none of them styled Bilski v. Kappos. The 7 decisions issued today were:

    * Jefferson v. Upton
    * United States v. Marcus
    * Hardt v. Reliance Standard Life Ins. Co.
    * United States v. O’Brien
    * Lewis v. Chicago
    * American Needle, Inc. v. National Football League

  10. Promotional Products May 24, 2010 6:57 pm

    What do you think of the ruling released today?

  11. The Mad Hatter May 24, 2010 8:47 pm

    I think that no matter what the court decides, the problems in regards to patentable subject matter, prior art, and obviousness will remain. The U.S. Patent and Trademark Office cannot make this call, it can only be addressed by the legislative branch of the government, and the legislative branch does not appear to be willing to address the issue.

    Wayne

  12. Blind Dogma May 25, 2010 7:36 am

    The legislative branch is addressing the issue. They have been addressing it for the better part of a decade now.

    Oh, you meant resolving the issue, didn’t you?

    Now why, Mad Hatter, would Congress turn off the spigot of big money contributions when the polarized aims of opposing deep pockets are so perfectly aligned? Especially in a difficult and esoteric frontier such as patent law?

    And I thought I had a money maker with my Kool Aid…

  13. Michael Feigin, Esq., NY, NJ, PA Patent Attorney May 25, 2010 10:05 am

    I think the answer is simple … the case is really difficult and judging by the oral hearings, some of the justices really didn’t get it. They’re probably having a hard time getting a concurrence on any opinion and the justices don’t want to leave this area of law in disarray. I predict a 6-3 and or 7-2 decision, and it will be a compromise of opinions of the Court … which is exactly what’s causing the delay.

  14. Alan McDonald May 25, 2010 10:39 am

    How about cert. dismissed as improvidently granted for Bilski.

    Wouldn’t that be a kick in the teeth.

  15. EG May 25, 2010 1:41 pm

    Alan,

    Given that SCOTUS kicked LabCorp v. Metaolite back on those very grounds, entirely possible, and unfortunately very typical of SCOTUS “wimping out” on what they see as a “tough” case they don’t understand.

  16. Gene Quinn May 25, 2010 1:51 pm

    Alan & EG-

    Don’t forget, the make-up of the Court changed between granting cert in LabCorp and the decision to dismiss ans improvidently granted. I would be shocked if the same judges who granted cert also dismissed as improvidently granted.

    -Gene

  17. The Mad Hatter May 25, 2010 5:06 pm

    And if they were going to dismiss, I think they would have done so before this.

    In my opinion, if you read the plain language of the original laws, software isn’t patentable, nor are medical diagnostic routines. New computers are, as are new diagnostic instruments. As was argued in some of the briefs, these issues were not addressed in the original law because no one was able to foresee them. That’s why the original legal cases were fought, so these things could be patented.

    I disagree with the case law which expanded what could and couldn’t be patented. I think that this was properly something that should have been addressed by the legislative branch, and that if the legislative branch was not willing to change the law to allow patenting of those things, then so be it.

    Wayne

  18. step back May 25, 2010 6:18 pm

    Mad Hatter,

    Which “original” law are you talking about? The 1952 Patent Act or the Code of Hammurabi?

    Which part of “any” don’t you understand?

    35 USC 101: Whoever invents or discovers
    ***any ***
    new and useful
    process, machine, manufacture, or composition of matter,
    or ***any***
    new and useful
    improvement thereof,
    may obtain a patent therefor,
    subject to the conditions and requirements of this title.

    (That said, it won’t matter what part of “any” you understand or not. It will only matter what part of “any” the 9 robed flashes of genius understand or refuse to understand.)

  19. IANAE May 26, 2010 12:05 pm

    “As was argued in some of the briefs, these issues were not addressed in the original law because no one was able to foresee them.”

    If I understand this argument correctly, inventions are only patentable if Congress can foresee them.

    Was that argued in the amicus brief filed on behalf of Joseph Heller?

  20. The Mad Hatter May 26, 2010 1:00 pm

    IANAE & Step Back,

    Yep, Joe Heller filed a brief.

    Think – marijuana was legal in the USA until your legislature passed a bill, and your president signed it, which made marijuana an illegal drug in the early 20th century. The police couldn’t take action against growers and sellers until there was a law. That’s how extending patentability to cover new fields should have been handled, the legislature should have passed a law, and then the executive signed it.

    new and useful
    process, machine, manufacture, or composition of matter,

    Let’s see – software isn’t a machine, isn’t a composition of matter, isn’t a manufacture. It isn’t a process either. So it cannot be patented (the second part of your quote is just an extension saying that improvements of these four items can be patented) according to the plain language of the law.

    Simple, isn’t it?

    Wayne

  21. step back May 28, 2010 5:48 am

    Mad Hatter,

    You write:

    Let’s see – software isn’t ….

    Firstly you should enlighten us all on what your definition of “software” is is.

    Then the rest of us can decide whether you individual definition of the term “software” comports with the specification and claims of specific patent applications.

    For example, let’s say we had a claim that reads as follows:

    1. A method for use in intended environment X, the method comprising:
    (a) providing first software stored in a memory of a data processing machine;
    (b) providing first hardware coupled to, and interactable with the data processing machine;
    (c) providing network interface means for interfacing the data processing machine with the internet;
    wherein the first software is configured for causing the data processing machine to perform the following functions: ….

    Given that the “software” is recited to be “stored” in a physical entity (the memory of a machine), the software is an integral part of the machine and is thus a manufacture. It is not merely descriptive matter but rather it is functional matter because it is recited to “cause” the computer to perform specific tasks.

    With all that said, please recall that there is no “software” in the Bilski patent application.
    It has a method claim that recites physically transformative steps, namely, initiating first interactions with first parties in the hedged transaction and initiating second transactions with counter-positioned second parties.

    Of course, the US Supreme Court is free to do whatever it pleases, including ignoring the plain language of the Bilski claims and making up an entirely different story about what Bilski is trying to patent. After all, Benson v. Gotchalk had a “reentrant shift register” and the SCt. decided that such was not a machine means.

  22. The Mad Hatter May 28, 2010 7:16 am

    step back,

    Firstly you should enlighten us all on what your definition of “software” is is.

    Then the rest of us can decide whether you individual definition of the term “software” comports with the specification and claims of specific patent applications.

    OK, let’s use the definition of software from wikipedia. Gotta love Wikipdedia.

    For example, let’s say we had a claim that reads as follows:

    1. A method for use in intended environment X, the method comprising:
    (a) providing first software stored in a memory of a data processing machine;
    (b) providing first hardware coupled to, and interactable with the data processing machine;
    (c) providing network interface means for interfacing the data processing machine with the internet;
    wherein the first software is configured for causing the data processing machine to perform the following functions: ….

    Given that the “software” is recited to be “stored” in a physical entity (the memory of a machine), the software is an integral part of the machine and is thus a manufacture. It is not merely descriptive matter but rather it is functional matter because it is recited to “cause” the computer to perform specific tasks.

    Under that definition Microsoft Windows would be patentable – even though there is nothing in the current version (Windows Seven) that is novel – it all came from either earlier versions of Windows, from Mac OSX, or from Linux/Unix.

    With all that said, please recall that there is no “software” in the Bilski patent application.
    It has a method claim that recites physically transformative steps, namely, initiating first interactions with first parties in the hedged transaction and initiating second transactions with counter-positioned second parties.

    Of course, the US Supreme Court is free to do whatever it pleases, including ignoring the plain language of the Bilski claims and making up an entirely different story about what Bilski is trying to patent. After all, Benson v. Gotchalk had a “reentrant shift register” and the SCt. decided that such was not a machine means.

    Bilski could be considered a checklist with calculations – if a=b then do this, and if c=d then multiply by x.

    Now software can be part of a machine, a good example would be the fuel injection system that I worked on at one point, where the software took inputs from sensors, evaluated the inputs, and modified the amount of fuel injected into the engine. The machine would be patentable, whereas the software alone wouldn’t.

    Going back to your description, let’s look at it again:

    1. A method for use in intended environment X, the method comprising:
    (a) providing first software stored in a memory of a data processing machine;
    (b) providing first hardware coupled to, and interactable with the data processing machine;
    (c) providing network interface means for interfacing the data processing machine with the internet;
    wherein the first software is configured for causing the data processing machine to perform the following functions: ….

    The description above could apply to an advanced fuel injection system (and yes, I know of fuel injection systems that connect to the internet). It could also apply to my laptop computer when it loads software that has been installed on the hard drive. Which did you have in mind?

    FYI, you might want to read this and this, I was meaning to email these links to Gene, but hadn’t gotten around to it yet. And yes, I wrote both.

    Wayne

  23. Blind Dogma May 28, 2010 10:35 am

    Gentlemen,

    Nice trick of embedding a previous statement in a sub-box. For a free glass of Kool Aid, can you tell me how to do that?

  24. step back May 28, 2010 11:53 am

    BD,

    I’ll drink the Kool Aid even if you charge for it. 🙂

    Look up the “blockquote” metatag in an HTML tutorial

  25. IANAE May 28, 2010 3:06 pm

    Wayne, there’s already a law. Section 101 is already worded in pretty much the broadest terms imaginable (I’d even say the last three categories are so broad as to be redundant), and reading it restrictively does nothing but betray the reader’s bias against certain fields of technology.

    Software is a set of instructions for carrying out a process. Running the software performs the process. Nothing wrong with claiming software as a process, at least not until the Supreme Court has their say.

    If you like Beauregard claims for some reason, software is also a manufacture or composition of matter once you write it down where a computer can see it.

  26. Just visiting June 1, 2010 10:22 am

    Bilski not out again … wtf

  27. The Mad Hatter June 1, 2010 6:19 pm

    To learn how to use Blockquote and other HTML commands see W3Schools, the blockquote link is:

    http://www.w3schools.com/tags/tag_blockquote.asp

  28. Blind Dogma June 1, 2010 11:31 pm

    Thanks Mad Hatter,

    A round of Kool Aid to everyone! (Gene is picking up the tab).

  29. Ellen Schwier June 29, 2010 5:54 pm

    Robert Ambrogi has written up his thoughts on the Bilski case. You can read what he has to say here:

    http://www.ims-expertservices.com/newsletters/june/bilski%27s-lesson-avoid-abstraction-063010.asp