And the Wait Continues… Bilski… Wait Continues… Bilski…

Again another Supreme Court decision day has come and gone and we do not have a Bilski decision. Shocking! Hardly. The stars seemed to be lining up nicely for today. Yesterday was the 30th Anniversary of Diamond v. Chakrabarty, and my Internet connection was out this morning for a time, so I was convinced today would be the day and I was going to miss it. But stand down! Call in the dogs! Put away the search lights. Another no Bilski day at the corner of Maryland Ave and First Street NE in our Capitol city, the District of Columbia.

On Monday I wondered whether the Supreme Court would hold Bilski over until next term in Groundhogs Day: Speculating on No Bilski Decision this Term. On June 10, 2010, Chief Justice John Roberts spoke at the Judicial Conference of the District of Columbia Circuit at Nemacolin Woodlands Resort, located approximately 40 miles south of Pittsburgh, Pennsylvania. In his 17 minute speech the Associated Press reports that Roberts explained the Supreme Court should be able to issued decisions in all of the cases argued this term. Not exactly a guarantee that Bilski will be forthcoming this term, wouldn’t you agree?

Now before we jump to conclusions, leap on board with theories or speculation, lets take a look at what the AP report says. AP reporter Joe Mandak writes:

Roberts said the court has issued 55 opinions on the 82 cases it has heard this term, and another case settled. The court should be able to issue 24 opinions, which will cover the remaining 26 cases, by the end of June, he said.

I have been unable to find a copy of Robert’s speech to confirm the “should be able” language, which is not directly quoted in the AP report. Some of Robert’s speech is quoted, but of course that part which is relevant for Bilski watchers is not directly quoted.

Unfortunately, it seems that the Supreme Court is not as transparent as one would expect. If you go to the Court’s Speeches page the last speech posted was one given by Justice Ginsburg on March 23, 2010, and the one before that is a speech given by Justice Breyer on September 22, 2009. So it seems that a complete index of speeches this is not. Likewise, despite the power of the Mighty Mountain View Giant, a Google search came up empty for the full text of the speech.

So we are left to ponder whether the Supreme Court will issue Bilski on Monday, June 21, or perhaps Monday, June 28, or perhaps they will announce another Thursday decision day for Thursday, June 24. Or maybe, just maybe, Bilski will be held over until next term. If that happens things will get extremely interesting, particularly if Elena Kagan is confirmed, which seems to be fairly certain at this point. Kagan as Solicitor General ostensibly oversaw the filing of the government’s brief the first time around, which should disqualify her from considering Bilski on the merits. That could leave a 4 to 4 split. Thus, it does seem likely we will get a Bilski decision this term, but what is the hold up?

The longer the wait the more one must consider the possibility that something strange is going on. There is plenty of opportunity and reason for the Supreme Court to simply have issued a quick ruling explaining that the Federal Circuit decision was extremely overbroad given the facts of the case. The Supreme Court could have opted to simply remand to the Federal Circuit for failure of the Federal Circuit to consider the fact that Congress must have wanted pure business methods to be patentable since they crafted a prior user right defense specifically for business method patents. Still further, the Supreme Court could have issued a simple, direct and to the point decision like they did in Diamond v. Chakrabarty. The long wait seems to preclude those outcomes, and other similar outcomes, so what does the Supreme Court have in store for us? Are they working on some magnum opus or is it just that they cannot agree and won’t be able to issue a decision this term?

From the standpoint of appropriate judicial process within our system of government the Bilski case is an easy one. If the Court were predisposed to do what they are supposed to do, a stretch I know, they would exercise judicial restraint and actually only decide the case before them. At this point unless the case is held over because no decision can be reached it seems a virtual certainty that the Supreme Court will say more than they should, which will lead them to create problems that they never envisioned. Saying too much and not appreciating the unforeseen (at least to them) consequences just so happens to be a Supreme Court specialty, at least when it comes to patent law.

The wait continues and the suspense grows… and so does the fear of the unknown.


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Join the Discussion

21 comments so far.

  • [Avatar for Sith]
    June 18, 2010 08:37 pm

    kicking the can down the road for a further en banc Fed. Cir. decision.

    And, of course, another visit back up to the Supremes…?

    But without the bookending legacy of a Stevens decision? Aye, perhaps the paduan is onto something, but perhaps the delay is Stevens fighting for a legacy position, and not an “i” on the matter.

    Hard it is, to tell. Much shadows, the dark force brings.


  • [Avatar for Meager Associate]
    Meager Associate
    June 18, 2010 06:36 pm

    pop – your comment got me thinking (a dangerous pastime I know), and I am not so sure that a short, remanding opinion is not out of the question.

    Basically, my thought process is that, following oral argument, the Justices were set up in two camps: a minority would affirm and endorse MoT; and a majority would affirm but with less strict test. As the opinions circulated and time wore on, however, the Justices, especially those in the second camp, found the problem to be more complex than they had first thought – Sup. Ct. precedent, public policy, statutory language, legislative history, technological developments, and maybe some special interests politics pulled in many different directions and resisted formulating an easy, consistent test. I think we saw the hints of this uncertainty in oral argument when CJ Roberts questioned as to why simply adding a specialized computer to satisfy MoT didn’t upend the government’s logic underlying statutory subject matter. Eventually, the two camps split further, exchanged some membership, and all the time could never come up with anything “better” or more satisfying than MoT.

    So they gave up. They knew, from KSR commentary, that they needed to speak specifically and articulate a definite test, but, for the reasons above, could not. And now, with the end of term breathing down their neck, they decide to vacate and remand with some consensus remarks and instructions to the Fed. Cir. to “try again.” It is these comments on remand that are now being fleshed out. The consensus remarks may range anywhere from “define MoT better” to “reformulate a brand new test without regard to our contradictory precedents.” (I would prefer the latter, tabula rasa, approach.) Anyway, that’s my conspiracy prediction for how Bilski might be a relatively short vacate and remand opinion, kicking the can down the road for a further en banc Fed. Cir. decision.

  • [Avatar for EG]
    June 18, 2010 08:17 am

    To all:

    I’m glad everyone is getting a kick out of me “waxing lyrical.” We need to retain our humor in these days of uncertainty, including waiting for Bilski (and whether “anything under the sun that is man-made” will remain patent-eligible under 35 USC 101 per Chakrabarty).

  • [Avatar for Alan McDonald]
    Alan McDonald
    June 18, 2010 08:11 am

    Step Back,

    Other possibility is that Bilski comes down on Thursday June 24.

  • [Avatar for step back]
    step back
    June 17, 2010 08:57 pm

    Mad Hatter,

    Like sausage making, bikini waxing is something I would prefer to not witness.
    Sometimes the squeal is more than what a macho man can manage. 🙂
    Besides, it is the product of the process rather than the process itself that counts.

  • [Avatar for The Mad Hatter]
    The Mad Hatter
    June 17, 2010 08:51 pm

    EG, is this what you mean: A day without a Supreme Court decision is like a day without a bikini waxing?

    I have a strong feeling that the majority of American men would rather watch a woman undergoing bikini waxing than watch the Bilski being argued before the Supreme Court, however the court case is far more important!

    Whenever the ruling comes down, it’s going to make interesting reading.


  • [Avatar for step back]
    step back
    June 17, 2010 07:35 pm

    Days without Bilski are days for pondering upon the unponderable much as Rodan’s, The Thinker ponders all day on his rock without reaching conclusion.

    At this point it should be left to an upward lofting into the air of a fair and balanced coin.

    What are the possibilities?
    1) Heads= Bilski comes down on June 21
    2) Tails= Bilski comes down on June 28
    3) Edge= Bilski gets held over for re-argument

    OK geniuses out there, what are the other possibilities?

  • [Avatar for pop]
    June 17, 2010 05:44 pm

    I think Gene is right about one thing. I don’t think they would take such a long time to decide this case just to issue a short or predictable decision. Whatever they chuck out, in June, or if it gets held over, is going to be long and will probably have hefty consequences to go with it.

  • [Avatar for American Cowboy]
    American Cowboy
    June 17, 2010 05:27 pm

    EG, is this what you mean: A day without a Supreme Court decision is like a day without a bikini waxing?

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


    No need to apologize. Re-commence waxing! I just couldn’t resist!


  • [Avatar for EG]
    June 17, 2010 04:41 pm

    Gene, AC & SB,

    Sorry, I was “waxing lyrical” to lighten the Bilski drama.

  • [Avatar for step back]
    step back
    June 17, 2010 04:15 pm

    A day without Bilski is a day still brimming with HOPE

    –for both sides 🙂

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 04:11 pm

    AC, EG-

    Don’t you mean “A day without Bilski is like a day WITH Sunshine.” ????

    I prefer the plague one though myself.


  • [Avatar for NewHere]
    June 17, 2010 03:07 pm

    @patent leather

    I couldn’t agree more, about this case being more challenging.

    The patent system needs work, pro-patent or not I see the the way the Supreme Court rules could spell big problems for everyone.

    One such problem, issues another patent test or set of patent tests, that would jump start the patent re-exam work to an all new level imo. The re-exam work would be on-going while the PTO continues to grant such patents without end. And so, that challenging them on the basis of test(s) outcome (valid or not), becomes a cost out-of-control for both pro-patent and not – as well the courts.

    Not saying the way it is, but seems to me that just about anything can be patented; case in point, the patent granted on a ” known form of networking”.

    It seems while the PTO finds ways to make the process faster (with checks & balances), it finds few / no ways to get as much out of the 20mins exams have to exam an application. I say this because so many patents just get through and granted, that are the problem for many that have to deal with them in the future.

  • [Avatar for American Cowboy]
    American Cowboy
    June 17, 2010 02:56 pm

    I guess you could say “A Day Without Bilski Is Like A Day Without Sunshine.”
    I was going to say “A day without a Supreme Court decision involving patents is like a day without the bubonic plague.”

  • [Avatar for EG]
    June 17, 2010 02:44 pm


    I guess you could say “A Day Without Bilski Is Like A Day Without Sunshine.”

  • [Avatar for patent leather]
    patent leather
    June 17, 2010 01:57 pm

    I doubt very much the case will be held over. The case is no doubt more challenging than most of the other cases they heard this term and some justices probably had to spend a lot of time boning up on the issues. Whatever the Supreme Court rules, I predict it will be very bad news (at least for those of us who are pro-patent) and I am not looking forward to it.

  • [Avatar for IANAE]
    June 17, 2010 01:40 pm

    “In today’s Stop the Beach Renourishment case the decision was 8-0, but it took 4 opinions to get there.”

    In that case, only the result mattered. In Bilski the reasoning matters, and will be applied to a great many cases with different facts. The Supremes would do the patent system a grave disservice to issue any opinion signed by fewer than five justices.

  • [Avatar for Les]
    June 17, 2010 01:11 pm

    Dan –
    Justice Stevens wrote 3 of the opinions issued thus far in June alone, including one that issued today.

    Scan the J column for the designation JS.

  • [Avatar for Alan McDonald]
    Alan McDonald
    June 17, 2010 01:03 pm

    I’m still expecting a 5-4 decision in which there are at least 2 concurring opinions and 2 dissents.

    In today’s Stop the Beach Renourishment case the decision was 8-0, but it took 4 opinions to get there.

    Bilski is now the oldest argued case on the docket.

  • [Avatar for Dan Ballard]
    Dan Ballard
    June 17, 2010 12:33 pm

    IF Bilski is held over and IF new Justice Kagan recuses herself then MAYBE then-retired Justice Stevens [who has not authored an opinion for quite some time] could be “called back” to take part in consideration of the case. Which MAYBE why Senator Leahy is floating the idea of amending the law to permit the calling back of retired Supreme Court justices: . Lots of IF’s and Maybe’s.