The Wait Continues: Another Day Without a Bilski Decision

After 6 months and 15 days we still wait for a decision in Bilski v. Kappos, perhaps the most anticipated Supreme Court patent decision of all time.  It is now 10:50 am Eastern Time and the Supreme Court slip opinion page has not added another opinion since at least 10:27 am Eastern Time.  At 10:29 am, shortly after American Needle, Inc. v. National Football League (an intellectual property licensing case I will be writing about later this week, in which the Supreme Court ruled the NFL is not a single entity for Antitrust purposes and the Rule of Reason applies to its IP licensing decisions) was added to the slip opinion list, the ruling number column (see R column) was filed in, which seems to be a reliable indicator based on past observances that there will be no more decisions forthcoming from the Supreme Court today.  So, once again, it seems as if the patent story of the day will be the one that never materialized.  The wait for a decision in the Bilski case continues.

The US Supreme Court did decide no fewer than 7 cases today, none of them styled Bilski v. Kappos.  The 7 decisions issued today were:

• Jefferson v. Upton
• United States v. Marcus
• Hardt v. Reliance Standard Life Ins. Co.
• United States v. O’Brien
• Lewis v. Chicago
• American Needle, Inc. v. National Football League

Of course, hyperbole of this kind is all too easy and much overused, particularly when one is so close to such an important event.  Nevertheless, while certain other decisions by the Supreme Court in the patent space may be even more fundamental, such as KSR v. Teleflex, which changed the law of obviousness that applies across the board for all applications, I cannot recall such anticipation over a patent decision.

For those needing proof of the importance of the Bilski case the first evidence was the fact that the general admission line for the Bilski oral argument formed in front of the United States Supreme Court building at midnight the evening before the oral argument.  By the time the public was ushered into the Supreme Court chamber over 300 people were in line and only about 50 would be given a seat for the full argument.  All the other seats were taken up by members of the press (including myself) and members of the Supreme Court Bar.  The remainder of those in line took turns being ushered in to watch a few minutes of the oral argument.  Passersby remarked to those in line, asking what case was so important.  When it was explained that it was a patent case most seemed perplexed, but those in the industry know exactly why this case matters so much.  It is about patentable subject matter and whether the Supreme Court will cut off at the knees developing technologies. See A Bird’s Eye View of the Bilski Oral Argument and Bilski Arguments Complete at the US Supreme Court.

A business method patent case, and a pure business method patent application, should not be of such overwhelming importance.  Unfortunately, the extraordinarily over broad Federal Circuit decision this pure business method case, where the inventors looks, thinks and acts, created enormous potential problems for the patentability of software, medical diagnostic methods, biotechnology method patents and even medical device patents.  So much is at stake.

The difficulty the Supreme Court is facing is in all likelihood this: how do they kill the Bilski patent application as being unpatentable subject matter without also killing the US economy.  A decision that is too broad not only could put an end to the pure business methods akin to the Bilski “invention,” but could also put an end to the patentability of software, business methods and medical innovations. Particularly troubling, of course, are an outright ban on business method patents because on some level every invention could be characterized as a business method, because isn’t the point to use the invention in some commercial embodiment to make money?

Also troubling is the potential unintended consequences that might befall medical related innovation.  The consequences of the CAFC Bilski decision was brought home best by the Medtronic amicus brief, which was filed in support of neither party. Medtronic explained right at the beginning:

The requirement that a process must be tied to a particular machine or apparatus, or must transform a particular article into a different state or thing to be eligible for patenting under 35 U.S.C. § 101 would adversely affect medical technology innovation. The machine-or-transformation requirement would preclude the patenting of significant advances in medical research and development, diagnosis, prevention, and treatment. Without the full range of incentives of patent exclusivity, medical innovation will suffer the loss of investment and a retreat into secrecy, the very harms the patent laws were enacted to guard against. Moreover, impeding the patenting of medical breakthroughs jeopardizes public health goals, including affordable universal access, by deterring the invention and public disclosure of competitive medical technology. The machine-or-transformation requirement is therefore inappropriate and should be discarded.

Much of the Medtronic brief is devoted to explaining what the company does, some of the key medical innovations created by the company, why these innovations have helped improve the quality of health care for real people, and what technologies they will no longer be able to seek patent protection for, which will all but certainly lead to less medical innovation, which is hardly good for society.  The Medtronic brief goes on to explain:

In the context of medical technology, the proper evaluation and effective treatment of patients depend upon complex correlations assessed over prescribed times. This, in turn, relies upon the generation of predictive models from a comparison of an individual patient’s signs and symptoms against a database of studied human wellness parameters, which contain patterns of diagnosis, chosen treatment, and outcome. These efforts are far from trivial.

At the start of the next section of the brief Medtronic brings home the point — if you cannot diagnose the problem you cannot treat the problem, and treatment advances are typically predated by diagnosis advances. Specifically Medtronic says:

Under the Bilski test, a method of diagnosis unaccompanied by a medical device or treatment step would be patent ineligible. However, the development of a diagnostic test almost always precedes the ability to treat the disease and is often a distinct research enterprise separated by years, if not decades.

Medtronic leads up to concluding (although this appears in the paragraph right before the one labeled “Conclusion”):

The Court of Appeals decision in Bilski opens the door to the use of Section 101 as an instrument for determining precisely what innovation will be acceptable… Tinkering with Section 101 in hopes of crafting a standard generally applicable to past, present, and future technologies, however well intentioned, may bring unforeseeable consequences, including the unfortunate chilling of future innovation.

Thus, it is hardly an overstatement to observe that the Bilski case, if decided improperly, could destroy an already fragile US economy and set back medical research decades.

On that happy note, the question turns to — when should we anticipate a decision in Bilski?  Who knows!  But if you are trying to figure out when the stars might be aligned properly, allow me to observe that according to the Supreme Court Calendar on the Court’s Homepage the Court will have a Non-Conference Day on Thursday, May 27, 2010, and the next Non-Argument Day listed on the calendar is Tuesday, June 1, 2010.  Normally Non-Argument Days are Mondays, but Monday, May 31, 2010, is Memorial Day, a federal holiday, so the Court will be closed that day.

The Supreme Court does not generally issue decisions on Conference Days, having only done so a couple times this term, so Thursday, May 27, 2010 does not seem to be the most likely candidate for a Bilski decision date.  The Supreme Court typically issues decisions early in the term on Argument Days, but there are no more Argument Days for the rest of the term; the Court is working on wrapping up its calendar, which typically occurs by the end of June.

What seems most likely is that the Bilski decision will issue on a Non-Argument Day, which is listed as such on the Court Calendar, which would mean that the next most likely day there may be a decision is Tuesday, June 1, 2010.   Of course, the Supreme Court has been known to issue decisions from time to time on days when the calendar is open, but most in the know are not expecting that as we move forward toward the end of the term.  But then again, most in the know, including myself, predicted that we would have a decision well before now.

If any reliable predictions can be made at this point it seems limited to the fact that the it is almost a certainty that the Bilski decision will not be 9-0 and there will all but certainly be at least one dissent, perhaps more, and perhaps a concurring opinion or two.  When such a contentious case arises it is common for the various opinions to quote or at least reference other opinions of the other Justices.  Thus, drafts are circulated back and forth between and among the Justice’s Chambers.  This adds lag time between oral argument and decision day.  Of course, what would add more time is if during the drafting stage one or more of the Justices have changed their mind, or simply could not sign on to a decision written by one of the other Justices.