Posts Tagged: "chief justice roberts"

Who knows what goes through the minds of anyone, let alone a cloistered Justice of the United States Supreme Court. What we do know, however, is that 5 Justices, namely Justices Kennedy, Roberts, Thomas, Alito and Scalia all agreed that business methods are patentable subject matter. All 9 Justices agreed that the Federal Circuit misread previous Supreme Court decisions when they mandated that the machine or transformation test be the only test for determining whether a process is patentable subject matter. All 9 Justices agreed that the Bilski application was properly rejected, with the majority agreeing that it was properly rejected because it was an abstract idea, and the concurring minority simply wanting to say that business methods are not patent eligible unless tied to an otherwise patentable invention (see Stevens footnote 40).

Yet another day has come and gone without the United States Supreme Court issuing a decision in Bilski v. Kappos. According to the SCOTUS blog, Chief Justice Roberts announced that the Court will have its final opinions on Monday, June 28, 2010, and that the Court’s term will close with the exception of remaining Orders in pending cases. This is widely being interpreted as confirmation that Bilski will be issued on Monday, June 28, 2010, which admittedly seems extraordinarily likely, but call me crazy, I have a strange feeling something odd may be boiling behind the scenes.

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. Given that the Supreme Court has issued a decision in what society as a whole will undoubtedly view as a far more important decision than Bilski, and since Bilski has been on the Supreme Court docket since oral arguments back on November 9, 2009, it seems virtually assured that the decision will slip to the final day of the Court’s 2009 term, or it will be held over.

From the standpoint of appropriate judicial process within our system of government the Bilski case is an easy one. If the Court were predisposed to do what they are supposed to do, a stretch I know, they would exercise judicial restraint and actually only decide the case before them. At this point unless the case is held over because no decision can be reached it seems a virtual certainty that the Supreme Court will say more than they should, which will lead them to create problems that they never envisioned. Saying too much and not appreciating the unforeseen (at least to them) consequences just so happens to be a Supreme Court specialty, at least when it comes to patent law.

Last week when I wrote Broken Record, No Bilski for You Today, which was a fun combination of Soup Nazi meets LPs, I dangled the thought that perhaps the Supreme Court would not decide Bilski this term and might hold the case over. I said I refused to speculate at this point, but some of those commenting on that article asked me to engage in the speculation, as did others via e-mail and some that I have encountered in the industry since then. I still think it is unlikely that the Supreme Court will hold Bilski over, just because it is an extraordinarily rare occurrence, but with only two more decision days this term (i.e., Monday June 21 and Monday June 28), it seems appropriate to at least ponder the rare occurrence of the Supreme Court holding a case over, which the Court did in Marbury v. Madison and Brown v. Board of Education.