SUMwarePremium
join:2002-05-21
kudos:2
2 edits | SCOTUS Greets 'Bilski' Arguments With Doubt, Disdain From Law.com/The National Law Review
November 10, 2009 - said by Tony Mauro :
High Court Justices Greet 'Bilski' Arguments With Doubt, Disdain
U.S. Supreme Court justices from across the spectrum voiced skepticism Monday about whether intangible business methods and other innovations untethered to machines deserved patent protection. The comments, some of which bordered on the derisive, came in the long-awaited argument in Bilski v. Kappos, touted by some as the most important patent case in decades.
The case involves a patent application by Pittsburgh businessmen Bernard Bilski and Rand Warsaw for a way to help utility companies and their customers to regularize costs by considering factors of supply, demand, and weather. No justice who spoke seemed to view the process as patent-eligible, but it was not certain that a vote against the Bilski-Warsaw patent would sweep away patents for computer software or medical diagnostics, as some have feared.
"It is conceivable that the Court will look for a narrow ground to reject Bilksi's patent without deciding the test for eligibility of all patents," said Deanne Maynard, head of the appellate practice at Morrison & Foerster, who attended the argument.
Day Pitney patent counsel Keith McWha was more direct after the argument: "Bilski is dead. It is clear from the questions that the Court is looking for some middle ground to filter business method patentability. Several of the justices seemed to be looking for a narrow ground for decision."
At one point during the hourlong argument, Justice Stephen Breyer said that if everything that "helps a businessman succeed" can be patented, it would "stop the wheels of progress" by granting exclusive rights to innovations that should be available to all.
Sarcastically, Breyer also wondered aloud whether a method he had developed for teaching antitrust law as a Harvard Law School professor that "kept 80 percent of students awake" could have been patented.
Early in the hour, Justice Antonin Scalia invoked a name probably lost on most in the audience -- Lorenzo Jones, a fictional madcap inventor on old-time radio -- to show the absurdity of a broad view of patent eligibility.
Scalia also said that when the American economy was "based on horses, for Pete's sake," someone could have patented a method for training horses -- but no such patents were awarded.
When J. Michael Jakes of Finnegan, Henderson, Farabow, Garrett & Dunner, arguing in favor of the patent at issue, said one benefit of patenting innovations is public disclosure, Justice Sonia Sotomayor countered that patents in fact "limit the free flow of information." Sotomayor, a onetime intellectual property lawyer in New York, was viewed as a potential pro-patent vote, but her comments suggested skepticism.
In face of the barrage, Bilksi's lawyer, Jakes, calmly held his ground with a broad view of eligibility, asserting that absurd claims would be weeded out by other factors used to determine patents, such as obviousness and originality.
Under the "machine or transformation" standard adopted by the U.S. Court of Appeals for the Federal Circuit in the Bilski case, Jakes argued, Alexander Graham Bell's patent for a telephone device might have been rejected. But justices did not appear to buy his argument.
A defeat for Bilski and Warsaw, however, did not seem to mean a warm embrace by the Court of the Federal Circuit's narrow view. Justice Ruth Bader Ginsburg and others voiced some concern about adopting a rigid rule that would fail to anticipate unknown kinds of innovations in the future.
Deputy Solicitor General Malcolm Stewart, defending the U.S. Patent and Trademark Office rejection of the Bilski patent, said the Federal Circuit's ruling left ample room for patenting 21st century post-industrial inventions. Stewart said the Federal Circuit test is not as "rigid or inflexible" as critics have made it out to be. Stewart also said he was not looking for a ruling that would flatly deny eligibility for all business method patent applications.
The dispute began in 1997 with the patent application by Bilski and Warsaw, self-described "math geeks."
A 1998 Federal Circuit ruling in State Street Bank v. Signature Financial Group seemed to bolster their view of eligibility by allowing patents for inventions that produce a "useful, concrete and tangible result," even if they were not traditional innovations like a new machine.
But the Bilski-Warsaw patent claim was rejected by the patent examiner and then through the patent appeals process as unrelated to any machine. The Federal Circuit also rejected the claim, adopting the "machine or transformation" test that was debated Monday by the high court. The Federal Circuit said it was adhering to Supreme Court precedents that have sought to tighten patent scope and eligibility.
A blizzard of amicus briefs was filed in the case, with critics of the Federal Circuit decision warning that if its test is upheld, thousands of existing, pending or future patents would be threatened.
Good analysis at Groklaw - In Re Bilski - Transcript of Today's Oral Argument at the US Supreme Court
Here is the transcript [PDF]
-
From Courthouse News Service
November 09, 2009 - said by Nick Wilson :
Supreme Court Hears Case on Extent of Patent Protection
The Supreme Court heard arguments Monday over what constitutes a patentable product, with one lawyer claiming almost any non-obvious idea could be patented while the other argued it had to have some basis in technology or science. The case could help to define the largely ambiguous standards in granting patents, especially when many are crying foul over the ballooning number of patents.
"How do we limit it to something that is reasonable?" Justice Sonia Sotomayor asked. "If it isn't limited then why not patent the method of speed dating?"
Michael Jakes, from Finnegan, Henderson, Farabow, Garrett & Dunner, represented Bernard Bilski and Rand Warsaw. He argued that the United States Patent Office was too strict when it rejected the men's patent request and said the patent law should be read more broadly to accommodate unforeseen advancements.
Justice Ruth Bader Ginsburg tested the boundaries of Jakes' argument that patents should be broad. "So an estate plan, tax avoidance, how to resist a corporate takeover, how to choose a jury, all of those are patentable?" she asked.
Jakes said they would all be eligible to be patented.
Justices seemed less critical of Deputy Solicitor General Malcolm Stewart's arguments. He represented the Patent and Trademark Office and claimed that a patent had to "deal in the realm of the physical," citing the telephone as an example, where a process was implemented by machines, but ultimately admitted that there are ambiguous areas.
He said the current test used to establish whether something is patentable - whether it is a machine or whether it transforms matter - should be upheld.
Bilski and Warsaw had tried to patent a method to calculate weather-related risks associated with buying energy commodities.
Justice Stephen Breyer mentioned that under Jakes' argument, any new business idea would be patentable so long as it could be reduced to a number of steps and explained. He said every successful businessman would have something patentable.
"You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake," Breyer said to laughter. "I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?"
Jakes replied that it might be patentable.
"Do you think that the framers would have wanted to require anyone successful in this great, vast, new continent because he thinks of something new to have had to run to Washington and to force any possible competitor to do a search and then stop the wheels of progress unless they get permission?" Breyer asked skeptically. "Is that a plausible view of the patent clause?"
Chief Justice John Roberts referred to the men's first instruction to initiate a transaction in their non-patented process. "How is that not an abstract idea?" Roberts said.
Breyer said that in the past, patents were applied to machines, but noted that Jakes is saying to apply it to formation. "And I don't know whether that patent protection will do no harm or more harm than good," he added.
Roberts questioned Stewart's argument that a patent should be rooted in technology if not rooted in science.
"If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by two, that process would not be patentable. But if you say use a calculator, then it is?" Roberts asked.
Stewart said using a computer for its pre-set function, like a calculator, would probably not meet patent requirements but he quickly discouraged the Court from going into computer software or medical technology, saying the case does not involve them.
"You thought we would mess it up," Kennedy said to laughter.
Steward said that using the calculator for something it already does would probably not count as patentable.
-
A report from a patent attorney inside the Court: Bilski Arguments Complete at the US Supreme Court
A decision is expected by the end of June.
The case before the Supreme Court is: Bernard Bilski and Rand Warsaw, v. David Kappos. No. 08-964. |
