Patent Law

Incoming

By Gary Odom and Jordan Kuhn

J. Michael Jakes had one helluva day being slammed with well-deserved shots from Supreme Court Justices in oral arguments Monday. Jakes represents Bernard Bilski in his quest for a patent on a ridiculously vague claim for managing risk. On the government's side, Deputy Solicitor General Malcolm L. Stewart's position was stiff as a board in supporting the CAFC's rigid machine-or-transformation test for patentable methods. But that was not entirely a bad thing.

Stewart wanted the damage from Bilski contained, arguing that this particular case should not be the vehicle for circumscribing software patents or medical diagnostic techniques as patent-eligible. "To say that business methods are categorically ineligible for patent protection would eliminate new machines, including programmed computers, that are useful because of their contributions to the operation of businesses."

Chief Justice John G. Roberts Jr. took issue with that, asking why the "most tangential and insignificant use of a machine" might be patentable. "That's like saying if you use a typewriter to type out the process, then it is patentable."

Computer whiz Justice Stephen G. Breyer chimed in. "All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it's a machine."

New face on the bench, Justice Sonia Sotomayor took a long view, worrying out loud that the machine-or-transformation test could foreclose patenting of technologies not yet imagined. Sotomayor's ex-husband is patent maven and blogger Kevin Noonan. "Once you announce an exclusive test, you're shoe-horning technologies that might be different. So help us with a test that doesn't go to the extreme the Federal Circuit did, which is to preclude any other items, something we held open explicitly in two other cases, so we would have to backtrack and say now we are ruling that we were wrong, and still get at something like this."

Remarking on Stewart's admission that the CAFC Bilski opinion "didn't answer all of the hard questions," Justice Breyer added his own nail to the coffin of the CAFC's machine-or-transformation test: "They've left much unresolved."

The Justices repeatedly ridiculed Jakes advocacy of intangible method patentability. Justice John Paul Stevens straight up: "None of our cases has ever approved a rule such as you advocate."

In a rhetorical scold, Justice Breyer beamed about not being boring, getting a laugh in the process: "I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. It was fabulous. And 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?"

Justice Breyer rightly observed that Jake's logic would leave room to patent practically any method of doing business. "Every successful businessman typically has something. His firm wouldn't be successful if he didn't have anything that others didn't have.... And your view would be... anything that helps any businessman succeed is patentable?" To which Jakes replied, "yes."

Chief Justice Roberts considered Bilski's claims going to centuries-old commodity hedging. "I mean, I could patent a process where I do the same thing. I initiate a series of transactions with sellers. I initiate a series of transactions with buyers. I buy low and sell high. That's my patent for maximizing wealth."

The often scalding Justice Antonin Scalia was relatively subdued, content to state the mundanely obvious, that patents are for inventions for manufacture, "not someone who writes a book about how to win friends and influence people." Justice Sotomayor added the example of a method of speed dating as being patentable under the Jakes/Bilski regime.

But Justice Scalia did backside kick the hapless Jakes. "Let's take training horses. Don't you think that some people, horse whisperers or others, had some ... insights into the best way to train horses? Why didn't anybody patent those things?" Jakes retorted: "I think our economy was based on industrial processes." "It was based on horses, for Pete's sake!" Scalia snorted. "I would really have thought somebody would have patented that."

The machine-or-transformation test, Jakes said, "would exclude some valuable inventions that I think everyone would agree are technological under any test, such as data compression, such as FM radio." Justice Anthony Kennedy and Chief Justice Roberts then inquired what part of the Morse code would be patentable under Jake's formula. In the 1840s, Samuel Morse did receive a patent for the electrical telegraph, but a later process patent on the Morse code failed to pass muster because it failed to recite any machinery, relying upon "electromagnetism, however developed".

"You think you can patent an alphabet because it is a process of forming words," queried Chief Justice Roberts. "It could be, yes," Jakes answered. But, Jakes added, that such a claim would have to be novel and non-obvious.

Time and again, Jakes refused to draw a line excluding any process for patentability. His position left the justices questioning whether he was advocating the "ownership" of basic human activities.

The root of the justices' concerns was not opening the gates of patentability to abstractions, coupled with a concern to not be so rigid as to close the door on new technologies unforeseen.

There is no doubt that Bilski's claims will be buried, alongside the CAFC's machine-or-transformation test. It is quite unlikely that the Court will swing wide and terminate software patents. Stewart made it clear that that government was not looking to overturn the CAFC's 1998 State Street decision, which opened the door to patenting software.

The Bilski case has been the subject of intense interest by patent practitioners, drawing nearly 70 amicus briefs, including a succinct brief from Patent Hawk, asking the Court to remain true to itself and affirm its previous precedents.

The Hawk's conservative position is that the CAFC had, by dilution, rendered §112 ¶2 milksop, that putting teeth back into the definiteness requirement would take care of the Bilski ilk. Supreme Court precedent on §101, by contrast, has been quite permissive, not wishing to shut out unforeseeable new technologies from patent protection. The best possible news would be that the Court's damning of Bilski be less about patentability, other than affirming abstract ideas as out of of bounds, and more about banishing vagueness, requiring clear and definite claims.

Full post as published by The Patent Prospector on November 10, 2009 (boomark / email).