Monday, June 01, 2009

Supreme Court to hear Bilski

On June 1, the day General Motors filed for bankruptcy, the Supreme Court decided to hear Bilski.

The LA Times wrote:

While some software and business consulting giants backed Bilski's quest for a broad, inclusive definition of what is patentable, others, including Microsoft Corp. and IBM, argued in support of the U.S. Patent and Trademark Office's move to impose a physicality test after years of rather liberal interpretations by patent examiners over what qualified as an invention.

The coverage by the New York Times had the following:

But courts have relied on the decision of the appeals court since October to deny patent protection to methods of marketing software products, detecting fraud in credit card transactions and creating real estate investment instruments. In March, a federal judge in San Francisco wrote that the appeals court’s decision signaled that “the closing bell may be ringing for business method patents, and their patentees may find they have become bagholders.”

Joe Mullin in a piece titled Handicapping 'Bilski' at the Supreme Court quoted Mark Lemley:

Mark Lemley, an intellectual property lawyer and professor at Stanford University Law School, says given the Supreme Court's general direction the last few years -- setting limits on patents and the patent system -- it's surprising that the Court appears set to get rid of a ruling that's actually fairly restrictive, if not crystal clear.

"They either looked at the Bilski legal test and said it's an unworkable test, or they looked at their own precedent and decided they didn't like that," says Lemley.

The last time patentable subject matter was addressed by the Supreme Court was in 1981, with Diamond v. Diehr -- before the era of the personal computer. Whichever direction the Supreme Court moves, recent cases suggest the move could be a dramatic one. "If you look at other Supreme Court patent cases in recent years, they show no compunction about overturning settled wisdom in the Federal Circuit and courts of appeals," says Lemley.

Mullin later mentioned LabCorp v. Metabolite, but did not mention Lemley's backing of the patentee in that case.

IPBiz notes the Bilski cert is unusual in the Supreme Court granted cert even though the federal government (solicitor) opposed the grant. More often than not, the Supreme Court follows the government's position.

***Also, Joff Wild at IAM: the Supreme Court's recent patent decisions also tended to be about reversing CAFC practice, or at least modifying it. On that basis, it is possible that the court will actually come out with less restrictive guidelines than did the Federal Circuit.

IPBiz notes that in all the discussion of anti-patent decisions of the Supreme Court, people tend not to talk about Festo, wherein the Supreme Court rendered a more pro-patent decision than did the CAFC (even though the Supreme Court rules were murkier than the bright-line CAFC decision).


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