Saturday, June 26, 2010

Bilski: from Lemley to Mullin to the internet

Joe Mullin writes of the Supreme Court on Bilski:

Whichever side Stevens is on, the long delay likely means there is disagreement among the justices, says Stanford Law professor Mark Lemley.

"If it was 9-0, it would be out by now. So there is disagreement—probably not on whether Bilski can get a patent, but on the test to be employed," 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."

For past recycling of Lemley by Mullin, see

Elsewhere, PatentHawk (Gary Odom) reminds us of Stevens' first case:

The first case Justice Stevens authored was Parker v. Flook, 437 U.S. 584 (1978). Flook tried to patent use of a known algorithm, applied to computerized updating of alarm limits. The claimed method tripped over § 101 as not "eligible for patent protection," as being merely "the identification of a limited category of useful, though conventional, post-solution applications of such a formula."

**In discussing Supreme Court decisions expected on June 28, 2010, Reuters did allude to Bilksi, although Bilski was not first on the list:

In eagerly awaited rulings, the nation's highest court is expected to decide the constitutionality of a national board that polices auditors of public companies and whether gun rights extend to every state and city in the nation.

The nine justices could also decide a dispute closely watched by some software, biotechnology and financial companies on whether business methods can be patented if they involve a machine or transformation [Bilski].

Of the case featured by Reuters:

At issue is whether the Public Company Accounting Oversight Board (PCAOB) violated the U.S. Constitution's separation of powers principle, because board members are not appointed by the president.

At stake in the case is how corporate America is audited and a key provision of the Sarbanes-Oxley corporate reform law adopted in 2002 in response to the Enron and WorldCom accounting scandals.

If the Supreme Court strikes down the board, the ruling will put pressure on Congress to revisit the law, opening it up for potential changes in the reporting duties of companies.

***Of Lemley on Bilski, from IPWatchdog:

Professor Mark Lemley of Stanford Law School, in a group of 20 law and business professors, presented a brief amici curiae to the Supreme Court in the Bilski case critical of the “machine-or-transformation” test. “A rule that freezes the definition of patentable subject matter in time will hobble new areas of innovation.” In the amici brief, they offer a simpler test for patentability. “Where an idea is claimed as applied, it is eligible for patentability, but if it is claimed merely in the abstract it is not.”

***After the Bilski decision, Heidi Ledford wrote in the journal Nature:

"It's not the blockbuster opinion that some people expected," says Mark Lemley, a law professor at Stanford University in California.

Nevertheless, Lemley agrees with the spirit of the decision: "This is not an area in which you can formulate clear tests that divide patentable from unpatentable subject matter," he says. "You just have to look at individual cases."

Rochelle Dreyfuss gave more substantive comments:

Rochelle Dreyfuss, a law professor at New York University, notes that there is no indication of what constitutes an 'advanced' diagnostic medicine technique.

"On the one hand, it sounds like they don't want to rule out patents on medical diagnostics," she says. "But they don't just say 'diagnostics'. They say 'advanced diagnostics'. What is an advanced diagnostic?"


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