Groundhogs Day: Speculating on No Bilski Decision this Term

United States Supreme Court

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.

Editorial Note:

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


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

26 comments so far.

  • [Avatar for Rosemary]
    June 21, 2010 03:03 pm

    I was wondering if the Bilski case could really be put off until the Fall with Justice Stevens retiring? Not sure how that works. Thank you. Any ‘heads up’ on this would be much appreciated.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 18, 2010 07:36 pm

    pop asks “How much of a stretch is it to use a DVD player?”

    OMG! Don’t get me started! It isn’t so much the use of the DVD player as it is all the options, menu items, etc. etc. With the old fashion VCRs there were play, stop, fast forward, rewind and record. I think it is the digital aspects that cause the problem, but who knows for sure. I bought them a dual VCR/DVD player that was fairly simple to use and now I have it because it was too complicated.

    That is the problem with folks like Stevens deciding these types of issues. I don’t know, but I suspect most of the tech gadgets seem like black magic to him at 90 years old. Folks like that ought not to make important decisions that impact technology if you ask me.


  • [Avatar for Blind Dogma]
    Blind Dogma
    June 17, 2010 06:04 pm

    Another thing to consider regarding the knowledge/wisdom of Stevens is the possible crafting of an opinion covering not only his legacy, but his evolvement over the span of thirty years.

    A Stevens’ opinion need not be dire news for those that take the “any” of “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” seriously.

    Crafting such a legacy piece may not be an easy task in trying to keep open the future and reconciling the opposite bookend.

  • [Avatar for pop]
    June 17, 2010 05:31 pm

    I would think it would be harder to find tapes! I mean, even a VCR has a remote, unless you walk across the room to hit the buttons. How much of a stretch is it to use a DVD player?

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 05:08 pm


    Maybe so.

    I think what I was trying to say is that if he were truly passionate I would have thought him to be better informed. On IP broadly he is OK, but his patent work strikes me as the work of a 90 year old man who just isn’t capable of understanding the technology. Kinda like trying to watch my father operate a DVD player, which by the way he refuses to use any more. Do you know how hard it is to find an old fashion VCR that works?


  • [Avatar for Bobby]
    June 17, 2010 04:38 pm

    You seem to be confusing knowledge or wisdom for passion. Stevens pretty clearly has passion on IP issues. I’ve read that he was initially alone on the Betamax decision, but managed to get a majority. The Bilski case clearly matters to him, and it reasonable to assume that he would want to write the decision as a closing note for his career.

  • [Avatar for Alan McDonald]
    Alan McDonald
    June 17, 2010 11:30 am

    With today’s decisions Bilski is now the oldest argued case on the docket.

    That being said we have only 4, 7 or 11 more days to wait.

    While not being remembered for PATENT cases, Stevens was a force in COPYRIGHT with the Betamax decision.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 16, 2010 07:28 pm

    John Doe-

    You are acting like Stevens is some IP Wizard or oracle. In fact, Stevens knows very little about IP and his decisions demonstrate that.

    You are also acting like Stevens is the IP expert on the Court. The fact that he has been around for so many IP decisions doesn’t make him an expert, and doesn’t change the fact that there have been few IP decisions issued by the Court over the years.

    In the greater public Stevens will not be remembered for his IP opinions, they are but a minor footnote to his overall enormously liberal view of the law.

    If Stevens writes the decision in Bilski that would be a disaster because it would take the Federal Circuit 5 to 10 years to reverse the Supreme Court. In the meantime entire industries will be destroyed thanks to his myopic view of innovation and his general lack of understanding of technology.


  • [Avatar for John Doe]
    John Doe
    June 16, 2010 06:02 pm

    The fact that one has a different perspective on a topic than you (or even a “wrong” perspective) is irrelevant to the question of how passionate he is on the topic. As you surely know, Stevens has written a larger share of the modern and important IP cases than any other single Justice currently on the court.

    Stevens would no doubt strenuously object to the Court handing down a decision on this issue without his input. Even if he has the power to delay matters, I highly doubt that the Chief Justice would overrule an about-to-retire Stevens on that question. And I’d bet money that he will even choose him to write the final opinion.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 16, 2010 03:03 pm

    “IP is Justice Stevens’ area of passion…”

    That is hard to imagine since he gets it wrong consistently. His patentable subject matter opinions are worth of a failing grade if written by a law school student. He confuses 35 USC 102 with 35 USC 101 consistently. When asking if something is patentable subject matter he routinely weaves in discussion of whether the invention is novel, which has absolutely nothing to do with whether the invention is one that is entitled to be considered patentable subject matter.

    If IP is his passion he should be ashamed of himself and consider a new passion.

    By the way, it is not as if Stevens has anything to say about it. It will be up to the Chief Justice ultimately.


  • [Avatar for John Doe]
    John Doe
    June 16, 2010 02:00 pm

    No chance that this case gets held over. None.

    IP is Justice Stevens’ area of passion and there is no way he is going to retire without weighing in on this one. He won’t delay his retirement over just one case – so you have to figure its coming down by the end of this month.

  • [Avatar for pop]
    June 15, 2010 01:33 pm

    At this point I’m not even sure what kind of decision I would want. I can imagine a decision that people agree with, but find problems in the wording that lead to unintended abuses later. I think that some processes should be patentable, but not all of them. The examiners are supposed to follow guidelines to decide which are rubbish and which aren’t, but this case could have a huge influence on how they decide, and if processes remain patentable at all.

    After reading the Bilski transcript, I would be ashamed of a system that let him have his patent. The whole alphabet comment still gets to me. We can’t just let everything in willy nilly, but how do we set down objective rules that make everybody happy. They have an enormous decision on their hands and I’m glad they are giving it a lot of thought instead of just turning around a quick decision; although that could just mean they are fighting and not making any progress.

    I can’t really say that I am on any “side” anymore. I think anybody who takes an extreme one-sided viewpoint on this doesn’t fully comprehend the details, which is always where the devil hides. I just hope that when the chips fall, things feel fair for both large and small business alike.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 14, 2010 08:10 pm

    OK… now I get Jason’s comment.

    Thanks C.T. That is supposed to say “not of the same magnitude…”

    Having said that, if the Supreme Court gets Bilski wrong it could wind up being the most important case period. A decision inartfully worded could kill the biotech industry, as well as the medical diagnostic industry. In addition to irreparably damaging quality of life through far less medical innovation it would further destroy our economy. But save an epically catastrophic decision there is no way to compare the magnitude of importance between Bilski and Brown.


  • [Avatar for C.T.]
    June 14, 2010 08:03 pm

    While most would clearly agree that Bilski is 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.

    This must either be a typo….or proof that you have spent far too much time hanging out with patent attorneys!

  • [Avatar for Jason Proe]
    Jason Proe
    June 14, 2010 05:17 pm

    Equating Bilski’s importance to Brown v. Board is a bit of a stretch. However, I do agree that the comparison for examining how the Court might handle the case is instructive and very interesting. Thank you for the article.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 14, 2010 05:10 pm


    You raise a very good point. There are a lot of folks just waiting to see what happens and the extension fees add up in a hurry, that is for sure.

    My thinking is that we won’t wind up with anything worse than the current Federal Circuit decision. It is reasonable to believe those things you are writing now and filing will be fine later regardless of what SCOTUS says as long as you are targeting the CAFC Bilski standard. Prosecution is an entirely different matter, of course, particularly if you represent clients with enough money to prosecute so as to minimize prosecution history estoppel.

    Still, I would rather them get it right rather than throw something out there that is nonsense, like KSR. If they are careless with what they say, something the Supremes have been known to be, that could do extreme damage. They routinely show an inability to understand patents and the consequence of their actions. For example, thanks to Festo to be allowed to prevail under equivalent infringement you have to demonstrate that the written description requirement was violated at the time of filing the patent application. Of course the Supremes didn’t say that, but that is the consequence of what they did say about needing to prove that you could not foreseeably write a claim covering the equivalent at the time of filing. Thus, if it was unforeseeable it isn’t supported by the written description. What a mess.


  • [Avatar for Ceyda Maisami]
    Ceyda Maisami
    June 14, 2010 05:00 pm

    “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.” Isn’t it more harmful to build a patent portfolio on a strategy that may be worth nothing (depending on the outcome of Bilski)? We all need to know whatever the test is and start working with it (or around it), this wait is just painful. The USPTO is making so much money from the extension fees as everybody is on hold waiting for Bilski before moving forward with any amendments, appeals, issue fee payments…

  • [Avatar for T]
    June 14, 2010 04:35 pm

    On June 10th Chief Justice Roberts stated at the Judicial Conference of the District of Columbia Circuit that SCOTUS will by end of June issue opinions for all cases argued in the current term.

  • [Avatar for Mark]
    June 14, 2010 03:51 pm

    And if Kagan recuses herself, we risk a 4-4 split.

  • [Avatar for Chris]
    June 14, 2010 03:26 pm

    Special announcement about a SCOTUS decision coming on Thursday?

    Hrmmmmmmm…… Wonder what that will be.

  • [Avatar for step back]
    step back
    June 14, 2010 03:04 pm

    Maybe, just maybe, they are learning to appreciate and love, just as Bill Murray did in the movie Groundhog’s Day, the target of their earlier derision?

  • [Avatar for IANAE]
    June 14, 2010 01:59 pm

    “We might see Kagan authoring the opinion …”

    Not likely, since she filed the government’s brief.

    Of course, it would make the outcome rather predictable…

  • [Avatar for Feigin, Patent Attorney NY NJ PA]
    Feigin, Patent Attorney NY NJ PA
    June 14, 2010 01:28 pm

    Looks like it will be next term. We might see Kagan authoring the opinion … they’ll throw it to the new person.

  • [Avatar for EG]
    June 14, 2010 01:21 pm


    Someone on a different patent blog posted the following: “We really need to get some folks outside One First Street for the next couple of weeks with “Free Bilski” signs, picketting.” I about fell out of my seat laughing!

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 14, 2010 01:15 pm

    Thanks for the heads up Scotusblog!


  • [Avatar for Scotusblog]
    June 14, 2010 01:11 pm

    Just FYI – the Court announced there will be opinion(s) on Thursday this week. So we have three, not two, more opportunities this term.

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