Bilksi opinion written by Justice Kennedy

The Bilski decision is out, with the opinion of the court written by Justice Kennedy
comprising only sixteen pages and concluding:

Today, the Court once again declines to impose limita-
tions on the Patent Act that are inconsistent with the Act’s
text. The patent application here can be rejected under
our precedents on the unpatentability of abstract ideas.
The Court, therefore, need not define further what consti-
tutes a patentable “process,” beyond pointing to the defini-
tion of that term provided in §100(b) and looking to the
guideposts in Benson, Flook, and Diehr.

And nothing in today’s opinion should be read as endors-
ing interpretations of §101 that the Court of Appeals for
the Federal Circuit has used in the past. See, e.g., State
Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357.
It may be that the Court of Appeals thought it needed to
make the machine-or-transformation test exclusive pre-
cisely because its case law had not adequately identified
less extreme means of restricting business method pat-
ents, including (but not limited to) application of our
opinions in Benson, Flook, and Diehr. In disapproving an
exclusive machine-or-transformation test, we by no means
foreclose the Federal Circuit’s development of other limit-
ing criteria that further the purposes of the Patent Act
and are not inconsistent with its text.

Justice Stevens with whom JUSTICE GINSBURG,
JUSTICE BREYER, and JUSTICE SOTOMAYOR joined, concurred
in the judgment but wrote a text far lengthier than 16 pages.

The Kennedy text is NARROW in scope and focusses on
simply "abstract idea NOT patentable"-->

Even though petitioners’ application is not categorically
outside of §101 under the two broad and atextual ap-
proaches the Court rejects today, that does not mean it is
a “process” under §101. Petitioners seek to patent both
the concept of hedging risk and the application of that
concept to energy markets. App. 19–20. Rather than
adopting categorical rules that might have wide-ranging
and unforeseen impacts, the Court resolves this case
narrowly on the basis of this Court’s decisions in Benson,
Flook, and Diehr, which show that petitioners’ claims are
not patentable processes because they are attempts to
patent abstract ideas. Indeed, all members of the Court
agree that the patent application at issue here falls outside of §101
because it claims an abstract idea.

Many commentators have noted that the Stevens opinion
looks as if it might have been written as intended as a majority opinion,
which would have ended the patentability of business method
patents. Stevens only got four votes, which votes coincided with
the "liberal" wing of the court. Curiously, Stevens appeared to have
been targeting Scalia as the fifth vote:

Bilski may be best remembered for what almost happened, but did not. There were four votes for holding that business methods are categorically unpatentable. Justice Stevens was the apparent leader of the effort to get a fifth vote, writing an extensive historical treatise that probably was designed to attract Justice Scalia’s vote. But Justice Scalia’s vote never came. So Justice Stevens’ opinion, in his last day on the Court, was a concurrence in the judgment and not a pathbreaking majority opinion. [by Stan Panikowski, patent and appellate litigation partner at DLA Piper LLP in its San Diego, appearing on the IAM blog]

If Stevens was reaching out to Scalia, one suspects Kennedy's vote was not on the table, even early in the game. One wonders how many times the combination of Stevens, Ginsburg, Breyer and Sotomayor ( Souter ) with Scalia has shown up in 5-4 votes?

On bad predictions about Bilski:


Bilski: from Lemley to Mullin to the internet -->

Lemley said via e-mail: "And the fact of disagreement plus
the fact of a Justice Stevens opinion makes it more likely
that it will include a significant limit on patentable subject matter."

Commentators such as Lemley and Mullin are simply out of touch
with the influence of Justice Kennedy in the current
Supreme Court.

See

The power in being the swing vote

Of a followup by Mullin:

The Court’s liberal wing—Stevens, along with justices Stephen Breyer, Ruth Bader Ginsburg, and Sonia Stotomayor—favored a ban on business method patents; the conservatives—Chief Justice John Roberts, joined by justices Samuel Alito, Antonin Scalia, and Clarence Thomas—joined the moderate, and frequent swing voter, Justice Anthony Kennedy, who wanted to leave open the possibility of patent grants on business methods.

Observers were hard-pressed to explain the split. "It could just be a coincidence," suggests Lemley. Says Dragseth: "I don't know why they ended up on opposite sides of this thing.”

**In passing, of a different case on June 28 wherein Kennedy sided with the liberal wing (not the conservative wing), note the decision in UCal Hastings vs. the Christian Legal Society wherein Justice Ginsburg was joined by justices John Paul Stevens, Anthony Kennedy, Stephen Breyer and Sonia Sotomayor. The Christian Legal Society required its officers and voting members to subscribe to basic Christian beliefs, but Justice Ginsburg wrote:

“Compliance with Hastings’ all-comers policy, we conclude, is a reasonable, viewpoint-neutral condition on access to the student-organization forum. In requiring CLS -- in common with all other student organizations -- to choose between welcoming all students and forgoing the benefits of official recognition, we hold, Hastings did not transgress constitutional limitations.”

***From a comment to a guest post on Patently-O [Why Bilski Benefits Startup Companies]

Also, you should step up in the world and get away from Lemley and Samuelson. Neither has a clue.