I am just about out of ways to creatively announce that the United States Supreme Court has once again had a decision issue day come and go without issuing a decision in Bilski v. Kappos. So lets get the obvious out of the way quickly. The Supreme Court issued four decisions today, Monday, June 14, 2010, and none of them were the highly anticipated Bilski decision.
I know Supreme Court watching is so much fun that that it should almost be illegal, right? Wrong! Supreme Court watching seems akin to that Bill Murray movie – Groundhogs Day – where he kept waking up every morning in the small town to relive another day — the same day. Unlike in the movie where Murray received chance after chance to get it right, the Supreme Court has but once chance to get this massively important decision correct, so I say let them take their time. Even if that means they hold over the Bilski decision until next term.
And that is where the speculating begins!
Last week when I wrote Broken Record, No Bilski for You Today, which was a fun combination of Soup Nazi meets LPs, I dangled the thought that perhaps the Supreme Court would not decide Bilski this term and might hold the case over. I said I refused to speculate at this point, but some of those commenting on that article asked me to engage in the speculation, as did others via e-mail and some that I have encountered in the industry since then. I still think it is unlikely that the Supreme Court will hold Bilski over, just because it is an extraordinarily rare occurrence, but with only two more decision days this term (i.e., Monday June 21 and Monday June 28), it seems appropriate to at least ponder the rare occurrence of the Supreme Court holding a case over.
First, can the Supreme Court even decide to hold a case over to the next term? Of course they can; they are the Supreme Court. In our system of jurisprudence, whether we like it or not, the buck stops with the Supreme Court and there is no one that can tell them what to do, even President Obama who famously (or infamously) chastised the Supreme Court during his 2010 State of the Union Address. The President will likely find out the hard way, if they don’t show up for his next State of the Union Address (as hinted by Chief Justice Roberts), that the Supreme Court does what it wants, when it wants and that was perhaps not what the Founding Fathers wanted, but it certainly was what Chief Justice John Marshall wanted.
Segue into the first time that the Supreme Court decided to hold over a case. Every first year law student knows the case of Marbury v. Madison. This was perhaps the single most important case ever decided by the United States Supreme Court because it is the genesis of the Supreme Court being the final arbiter of laws in the United States, including the final authority on matters of Constitutional interpretation.
William Marbury was appointed by President John Adams to be a justice of peace for the County of Washington in the District of Columbia. His commission was signed by President Adams, after which the seal of the United States was affixed to it, but the commission was not delivered prior to President Adams leaving office. The new President, Thomas Jefferson, did not want Marbury appointed and this case took on massive importance. There was a belief that if the Supreme Court ruled Marbury had been appointed President Jefferson would simply ignore the decision, and since the Supreme Court has no ability to enforce its decisions it would be rendered largely impotent and make the courts as a whole far less than a co-equal branch of government.
What Chief Justice Marshall did was masterful. Essentially the ruling reached by the Supreme Court was that Marbury was effectively commissioned and entitled to become a justice of peace, but that owing to the United States Constitution the Supreme Court did not have the authority to issue a decision in the case. To reach this conclusion the Marshall reasoned that the Statute passed by Congress that gave the Supreme Court the power to hear the case was unconstitutional because it expanded the jurisdiction of the Supreme Court in ways that were directly inconsistent with the Constitution. In so doing Marshall repeatedly talks about how the Founding Fathers did not envision laws passed by Congress that were inconsistent to the Constitution to be anything other than void, so the Supreme Court voided the Statute as being unconstitutional.
This decision infuriated Thomas Jefferson. He had prevailed in a sense because Marbury was not going to get his remedy sought, which was an order to the President to deliver his commission. That being the case it was politically and realistically impossible for Jefferson to dispute the outcome, but Marshall grabbed for the Supreme Court the power to determine whether laws passed by Congress and signed by the President are constitutional. No where in the US Constitution is that authority found, although Marshall does a masterful job of setting out the case in Marbury v. Madison. The Supreme Court forever more has been the final arbiter of constitutionality, having the power to strike down laws it deems to violate the Constitution.
So what does this have to do with Bilski? Nothing really, although upon rereading the case I do notice that Marshall mentions “letter patent,” which will be a story for a different day. What Marbury v. Madison does show, however, is the type of case that has historically be the kind that is held over by the Supreme Court. This case was of overwhelming importance, at least in terms of how Marshall ultimately resolved the matter and grabbed previously unthinkable power for the Supreme Court. So this is an example of the type of overwhelmingly important decision that the Supreme Court has held over in the past.
The Supreme Court also held over from one term to the next the enormously important decision on desegregation of schools in Brown v. Board of Eduction. In that case the decision was going to impact one of the most socially important issues the Court has ever rendered a decision on.
The Brown case came to the Supreme Court in 1952. The Court consolidated Brown with four other cases, collectively referring to all five cases under the name of Brown v. Board of Education. Thurgood Marshall, who would later himself become a Justice of the United States Supreme Court, personally argued the case. He raised a variety of legal issues, the main issue being that segregating school systems was unequal violative of the Equal Protection Clause of the Fourteenth Amendment to the U.S. Constitution.
When the Justices of the Supreme Court meet to attempt to resolve the case and reach a decision it was realized that the Justices were deeply divided. Most have been reported to have wanted to change the law in Plessy v. Ferguson, which reprehensibly said: “If one race be inferior to the other socially, the Constitution of the United States cannot put them upon the same plane.” Plessy established separate but equal, and it seemed that the Supreme Court wanted to at least declare segregation in public schools to be unconstitutional, but they had a various reasons for wanting to reach the conclusion, making it impossible to reach a decision by the end of the June 1953 term. Brown was held over to the next term, and the Supreme Court decided to rehear the case in December 1953.
While most would clearly agree that Bilski is not of the same magnitude of importance as Brown v. Board of Education, from an economic perspective Bilski could be enormously important, and a decision catastrophic if the wrong determination is made. Thus, it is certainly possible to believe that as in Brown there is a variety of views as to how to resolve the case, although it almost seems a certainty that the Federal Circuit decision that Justice Sotomayor openly referred to as “extreme”, and a decision that Justice Breyer, who wanted the Supreme Court to rule on unpatentable subject matter grounds in Lab Corp. v. Metabolite, also condemned during oral arguments.
Simply put, the Supreme Court simply does not take Federal Circuit cases to agree with the Federal Circuit. There is no differences among the Circuits to resolve, so when a case is take it is to overrule the Federal Circuit, which is virtually guaranteed. So does the lengthy wait signal that the Justices cannot come to a majority on how to resolve this issue? Perhaps it does.
One particularly important and relevant correlation between Bilski and Brown is the fact that the Supreme Court will change its makeup. Chief Justice Fred Vinson died on September 8, 1953, and was replaced by Governor Earl Warren of California, who became Chief Justice on October 2, 1953. Of importance for Bilski, Justice Stevens has announced his retirement and he is virtually certain to be replaced by Solicitor General Elena Kagan. In his term on the Court Stevens has not been a friend to the patentability of software over the years, See Exploring Justice Steven’s Patent Past for Clues, and was against an expansive view of patentability when he dissented in Diamond v. Diehr. So if the case were to be held over a vote against Bilski and a vote that likely wants to expansively rule that software and many other things are unpatentable, would be gone.
After Brown was reheard in 1953, Chief Justice Warren was able bring all of the Justices to agree to support a unanimous decision declaring segregation in public schools to be unconstitutional. Could Chief Justice John Roberts be able to work similar magic in the absence of Justice Stevens? It is impossible to say, but one thing is certain, a plurality decision in Bilski would do far more harm than good. So if the Supreme Court is only going to agree that the Bilski application should not issue as a patent, and is unable to decide why and what the test should be, they should hold off rather than make things worse.
The reality is that the Bilski decision could, but shouldn’t, have any implications for software, medical diagnostic methods (and therefore medical devices) and biotechnology. The decision could be enormously good for innovation and the US economy, or it could be catastrophic; essentially taking future innovations out behind the wood shed and shooting them dead before they are ever a glimmer in the eye of the inventor. I don’t think the Supreme Court would intentionally destroy the economy, but at times they like to say more than they should and they simply don’t understand patent law enough to say anything more than absolutely necessary.
Unfortunately, Justice Scalia and some of the others like to pontificate about things they really don’t understand and issue a ruling that addresses only the case on appeal but raises scores of questions for other cases. Specifically, for reasons beyond me they actually articulate those questions they are not resolving and say that lower courts, or the Patent Office, can figure it out. Such a ruling in Bilski would be a disaster. It almost certainly lead to enormous uncertainty and variation at the District Court level, would be difficult if not impossible for the Patent Office to articulate to 6,000 plus examiners who are not lawyers and would divide the Federal Circuit.
The longer this goes the more I hope the Supreme Court will hold the case over to the October 2010 term. Racing to do what they have so far this term been unable to do in the final two weeks of the term seems likely to lead to a decision that will cause more harm than good. Racing to get the opinion out so the Justices can go on Summer vacation or teach a class abroad would do injustice to patent law, the US economy and innovation in general. Just thinking about it makes me nauseous.
Updated at 8:11 pm ET to add the word “not” in this sentence: “While most would clearly agree that Bilski is not of the same magnitude of importance as Brown v. Board of Education…“