Bilski Decision Day: All Eyes Turn to Supreme Court on Monday

Statue outside US Supreme Court building.

Yet another day has come and gone without the United States Supreme Court issuing a decision in Bilski v. Kappos. According to Cover It Live, via the SCOTUS Blog, Chief Justice Roberts announced that the Court will have its final opinions on Monday, June 28, 2010, and that the Court’s term will close with the exception of remaining Orders in pending cases. (see 10:39 am mark of discussion at SCOTUS Blog). This is widely being interpreted as confirmation that Bilski will be issued on Monday, June 28, 2010, which admittedly seems extraordinarily likely, but call me crazy, I have a strange feeling something odd may be boiling behind the scenes.

Allow me to point out that everyone I have spoken to believes that Bilski will be decided this term and with only one day remaining everyone to a person believes the decision will be announced next Monday shortly after 10:00 am Eastern Time. But why wouldn’t the Chief Justice just come out and say that all pending cases will be decided and no cases will be held over until the next term? Why must he say things in ways that leave open the possibility that one or more cases could be held over? For example, the Court could have its “final opinions” issue on Monday, June 28, 2010 and the Court’s October 2009 Term could come to an end, and Bilski still not issue. That would make what Roberts said today true, and we would still have a case held over.

Look, I realize it is extraordinarily unlikely that any cases will be held over, but so far the Supreme Court has addressed a couple terrorism cases, disputes between States, a case dealing with the Enron debacle and if Bilski gets issued on Monday along with the other cases on the Court’s docket that means it gets issued on a day when cases dealing with religion and the Second Amendment are issued.  Yes, the decision is almost certainly going to be issued on Monday, but I perplexed by the lack of transparency and absence of straight-forwardness.  Maybe Judges are just so isolated they lose sight of the fact that we parse their words and wonder, or maybe they are just giving us something to talk about.

Truthfully, isolation and lack of understanding seem a better fit, but it is hard to ignore the fact that Bilski has been pending since November 9, 2009 and Roberts is on record saying the Court should be able to get opinions issued in all cases from this term.  It’s not like they took a heavy workload really, so they certainly should get the cases out, but is it really necessary to have taken 7.5+ months for Bilski?

Assuming the patent truism that a month has at least 30 days, Bilski has been pending for 7.5 months as of today.  That makes Bilski pending the longest by far during the modern era of patent cases at the Supreme Court, which I define as post Markman v. Westview (1996). I define this as the modern era because Markman was fundamentally important and shapes all patent infringement cases, and since 1996 the Supreme Court has showed extraordinary interest in patent cases, and in overruling the Federal Circuit.

In any event, the longest previous lag between oral argument and decision day during the modern era of patents at the Supreme Court was for KSR v. Teleflex, with a lag of 5.07 months. See When Will the Supreme Court Decide Bilski? for discussion of lag times for other cases. This means Bilski will far and away be the longest pending patent case during the modern era of patents at the Supreme Court.  Why is that?  Does the Supreme Court really understand the magnitude of the importance of getting the Bilski case correct?  Do they really believe that Bilski is among the most important cases they have heard this year?  Or can’t they come to any kind of agreement even after 7.5 months?

Bilski is clearly among the most important cases the Supreme Court has heard this year, and is likely far and away the most important.  The matters of terrorism, guns and religion all fall within a certain window, and while the Supreme Court has been known to make enormous mistakes throughout history, the reality is that they normally get the decisions correct in areas that can be understood by a first year law student.  Where they tend to really screw things up is when they start digging around highly specialized areas of law with complicated regulatory schemes, such as the case with patent cases.

What makes patent cases so enormously difficult is that there is never just one case that will be affected.  The same law that decides during litigation whether a patent claim is valid is the same law that is used by the United States Patent and Trademark Office to determine if a patent should issue in the first instance.  Procedurally the standards are quite different between litigation and prosecution of the patent application at the USPTO.  One thing, for example, is that the patent applicant is legally presumed to be allowed a patent unless the patent examiner can find a reason to deny.  See, for example 35 U.S.C. 102, which explains “A person shall be entitled to a patent unless…”

Another small, but extremely illustrative example is the fact that during litigation Judges are to interpret the claims narrowly, but during patent prosecution the patent examiners are to interpret the claims broadly.  There are reasons for both and both make sense.  Judges are to figure out what right you have and to the extent possible try and save the claim as being valid under a narrow construction given your claim is presumed to be valid.  In so doing the prosecution history becomes a part of deciding what narrowing the actual language of the claim deserves.  During prosecution the patent examiner pulls, twists and tortures your claim to see if it could reasonably (or unreasonably in the opinion of many patent attorneys) be stretched to overlap with the prior art.

The reality is litigation and prosecution are totally different, yet the same law applies.  When the Supreme Court makes a decision regarding litigation it will have impact for prosecution, and many times unintended consequences because the consequences were never considered, or really understood.  The same is true when the Supreme Court makes a decision regarding a rejected patent application, as will happen in Bilski.  The law made here will have great impact on numerous pending patent litigations across the country.

Nowhere was the lack of understanding by the Supreme Court more on display than in KSR v. Teleflex.  Writing for the Court Justice Kennedy wrote this seemingly innocuous statement: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”  The enormity of the naivety on display was not lost on patent practitioners, but was apparently lost on Kennedy and the other Justices of the Supreme Court.

Rigid preventative rules probably shouldn’t restrict a learned District Court Judge familiar with technology from making a common sense ruling, that is true.  Unfortunately, there are no patent attorneys who are District Court Judges and few, if any, District Court Judges who majored in any science while in school.  But lets say for a minute that it makes sense, and it does at least theoretically, not to tie the hands of experience Judges.  What about patent examiners?

At any given time there are more than 6,000 patent examiners working for the United States Patent and Trademark Office.  It might come as a shock to the Supreme Court, but these patent examiners are not lawyers.  In fact, it is the extremely rare case that you find a patent examiner that is a lawyer.  Furthermore, many are very young and right out of college, or nearly out of college.  They have varying levels of unfamiliarity with the law.  So explain to me how a flexible, case-by-case test makes sense for those without a law degree, with little to no experience or interaction with the law and who were hired solely because of their technical knowledge and taught just enough process and law to compare prior art to patent applications?

The fact is that a rigid test might not be consistent with Supreme Court precedent, but that is a problem with the precedent, not the desire to have a rigid test that can both be explained to and applied by 6,000 plus hard working patent examiners that have limited familiarity with the law.  Simply stated, the problem is the Supreme Court having unrealistic expectations and a complete lack of understanding about what consequences will follow from their decisions.  So did they all of the sudden wise up in Bilski?  Perhaps.

There were numerous amici briefs filed in the Bilski case, explaining a variety of horrible outcomes should the Court rule in any one way.  One of the more powerful, in my opinion, was the Medtronic brief that simply explained that without patents it would not exist as a company and much, if not most, of what they do would not be patentable under Bilski.  It would have extremely negative consequences for the future of health care, potentially end scientific advancement that benefits society by keeping people alive longer.  Who knows, maybe this go through to them?

Something must have gotten through to the Supreme Court otherwise they wouldn’t have taken 7.5+ months to decide a case that Judge Rader, now Chief Judge of the Federal Circuit, explained could be decided in one single sentence.  In his dissent now Chief Judge Rader explained:

This court labors for page after page,  paragraph after paragraph, explanation after explanation to say what could have  been said in a single sentence:  “Because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.”

I am not looking for a one sentence decision, although it could have been.  So either the Supreme Court has realized that despite Justice Scalia’s pronouncement that patents are merely “gobbledygook,” there is far more to it than that and an incorrect decision could not only make them look foolish but also kill the economy and forestall live saving treatments and biotechnology innovations.

We will have some kind of answer on Monday, and on Wednesday, June 30, 2010 at 1pm Eastern Time I will be joining a panel hosted by PLI to discuss whatever happens.  So stay tuned for continuing coverage on

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22 comments so far.

  • [Avatar for Neal]
    August 26, 2010 05:31 am

    Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents.

  • [Avatar for IANAE]
    June 28, 2010 09:13 am

    “I do see the distinction about a crowded and fast moving art field – but do not see that as a legal distinction”

    No, it’s not a legal distinction. It’s a distinction of how people should feel when they’re trying to do something in that field and they see a patent blocking their path, because of how narrow the obstacle is and how many other paths are available to them.

  • [Avatar for Blind Dogma]
    Blind Dogma
    June 26, 2010 10:28 am


    I would think that “particularly in software, where there are often several different ways to accomplish the same goal.” is immaterial to the discussion (and sounds more like a copyright argument, rather than a patent argument).

    I do see the distinction about a crowded and fast moving art field – but do not see that as a legal distinction – just a track race with a larger number of contestants (a race between two and a race between one hundred are still both races). I do not believe that sheer number of contestants change any legal parameters of patentability.

  • [Avatar for step back]
    step back
    June 25, 2010 08:25 pm

    I wish it would come out ASAP as only the Supreme Court can put an end to this madness.

    Or increase the madness.

    See you all on the other side of this weekend.
    Have a good one. It may be our last
    (good one that is).

  • [Avatar for patent leather]
    patent leather
    June 25, 2010 06:23 pm

    Having the case held over would not be good. Having the patent owner withdraw the appeal is also not good. The USPTO is now applying the MoT test exclusively and is giving out 101 rejections like candy (even on stuff that should pass the MoT test). Litigation-wise, patents are also being held invalid under 101 under the MoT test. As fearful of the decision as I am, I wish it would come out ASAP as only the Supreme Court can put an end to this madness.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 25, 2010 02:46 pm


    LOL. You are a funny guy.

    And, I really do pity you poor PHOSITAs.


  • [Avatar for John Spevacek]
    John Spevacek
    June 25, 2010 02:41 pm


    Come on, all this speculation accomplishes what…? At least you know that the decision will happen some day, even if it is next term. Pity us poor PHOSITA’s who don’t know WHEN and WHERE the next big technical breakthrough will come from and WHAT it will be, all of which are far more open ended than what you face. You only need to worry about the WHEN and WHAT.

    (But I certainly do enjoy the show of watching you sweat it out!)


  • [Avatar for IANAE]
    June 25, 2010 02:15 pm

    “Why? I don’t understand the legal basis (I understand a policy basis) for differentiating either term or scope based on art field.”

    I didn’t mean that to sound normative. It’s more of an expectation of what sort of claims one should be able to get allowed in a crowded and fast-moving art, particularly in software, where there are often several different ways to accomplish the same goal.

  • [Avatar for Blind Dogma]
    Blind Dogma
    June 25, 2010 01:51 pm

    but the scope of allowable patents should be relatively narrow, with lots of possibilities to design around the claims

    Why? I don’t understand the legal basis (I understand a policy basis) for differentiating either term or scope based on art field.

  • [Avatar for IANAE]
    June 25, 2010 10:57 am

    “To claim that something from that period deserves protection for being ‘innovative’ today is absurd,”

    The claim is that something deserves protection today for having been innovative during that period. Nothing is innovative 17-20 years after its ritual disclosure to the public. The patent term is more about how much reward we give the inventor in exchange for his disclosure, and it seems the world has agreed to pay a flat rate.

    Sure, 20 years is short for a drug, but the drug companies make up for it with correspondingly high prices, and in some cases by the threat of death if you don’t use their product.

    Sure, 20 years is long for software, but the scope of allowable patents should be relatively narrow, with lots of possibilities to design around the claims. Fast-moving arts always find new ways of doing things. If someone managed to patent something really pioneering 20 years ago that is so fundamental it’s still in use today, good for them. They probably deserve the 20 year term.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 25, 2010 10:50 am


    Nothing sensationalist about what I wrote. All 100% true. The sky won’t fall, but an incorrect decision will significantly damage the economy and destroy segments of the economy. Whether you want to acknowledge it or not, patents are essential in order to obtain financing from VCs. If biotech companies, for example, cannot get patents they can’t get funded, period.

    You say: “the safer side to err on is less patentable subject matter…”

    That is not what the law says, not what the legislative history explains was Congressional intent and not what the US Supreme Court has said repeatedly for several generations now. The side to err on in the US is on the side of finding patentable subject matter.

    I do agree with you though that the patent term is something that needs to be looked at. 20 years for software is too much, at least in theory. Unfortunately so many of these patents spend 10 to 12 years or more pending at the patent office, so the real term is not nearly 20 years, but closer to 8 to 10 years. So the Patent Office needs to speed up and the term needs to be adjusted down.

    The offensive thing about software patents is the term. In other areas of innovation the technology is usable after it falls into the public domain. Rarely is software useful if it has enjoyed a full 20 year term. The only time it becomes an issue is in the iPhone situation, for example, where Apple has applications pending since 1998 or earlier, then they issue a decade later, and they are fundamental to the entire smart phone industry. So we focus on the most revolutionary innovations, yet many somehow reach the conclusion that those should be prevented.


  • [Avatar for pop]
    June 25, 2010 10:48 am

    I think the Phil Collins version is a remake, but it’s still my favorite. 🙂

  • [Avatar for Blind Dogma]
    Blind Dogma
    June 25, 2010 10:47 am

    Taken without permission, but too good to pass up – full credit to Pr. Duffy for identifying a flavor of kool-aid ( ):

    A Final Point: A Desired Defeat?

    All of the above makes the crucial assumption that the petitioners in Biski want to sustain the patentability of business method patents such as their own. But that assumption may be wrong. The patent application at issue is no longer owned by Bernard Bilski, Rand Warsaw or even WeatherWise, the small start-up company that holds similar patent claims on hedging energy consumption risks and is merely a licensee of the patent application at issue in the case (see Paul Schaafsma news article noting the licensing relationship). As the petitioners’ briefs in the Supreme Court disclose, the real party in interest in the case is Equitable Resources Inc., renamed EQT Inc. during the pendency of the case. See Petitioners’ Reply Brief at (i). That corporation has market capitalization of $5.4 billion (see EQT Financial Report). A quick search of the PTO’s database does not show any issued patents owned by this corporation, and the company’s most recent annual report filed with the SEC makes no mention of patents or intellectual property. It is not at all clear that such a company really wants to have patent protection for innovative ways to manage energy costs or risks, or for any other form of business method. Large companies are often the targets of patent infringement litigation, and start-ups often see patents as a means to compete against established firms. Indeed, the Warsaw patent on hedging risk—which is assigned to WeatherWise, not EQT—could itself provide a reason why the petitioners’ side of the case would welcome defeat.

    It remains a puzzle why the petitioners in this case are persisting in an appeal that seems not only doomed but also capable of establishing new and unpredictable restrictions to the scope of patentable subject matter. I had previously thought that “irrational exuberance” provided the best answer—that the Bilski petitioners were likely to remain unrealistically optimistic about their chances for success right up to the end. But the presence of a multibillion-dollar corporation controlling the litigation decreases the chances that the strategy is due to simple inventor over-optimism. Perhaps the entity controlling the petitioners’ side of the case is really quite wily, for there would be no cause to “fold ’em,” if the petitioners’ side would view thorough defeat as victory. That would explain much.

    This runs to the same rationale why Microsoft uses the patent system so much, yet seeks to weaken it beyond absurdity.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 25, 2010 10:37 am


    LOL! Excellent! I love it!


  • [Avatar for Bobby]
    June 25, 2010 09:57 am

    You response seems to be a bit sensationalist. The sky is not going to fall here, no matter how Bilski turns out.

    Some industries may slow down or grow, but they will go on. Also, I’d have to say that the safer side to err on is less patentable subject matter, particularly since the lobbyists are going to tend to push for stronger IP laws, and thus a change that causes ACTUAL harm to an industry will get attention quite quickly.

    There are arguably bigger issues to address, such as the one-size-fits-all patent lifespan. 20 years for pharmaceuticals, where you may spend over a decade in research and testing for FDA approval is very different than 20 years in software, where you may have a working product using that patent out within months and a much faster turnaround. 20 years ago, Windows 3.1 and HTML 1.0 weren’t publicly available quite yet, and patents from that era would just now be expiring (although some even older may still apply due to patents lifespans previous to 1995 being based on issue date). To claim that something from that period deserves protection for being ‘innovative’ today is absurd, and the same will probably be true of looking at software today 20 years from now, so even if software patents could result in a net benefit, it may likely be a net burden by the time it expires.

    Addressing that issue would not be easy, and it would probably involve making US patent law a lot more complex and need more regular changes, but to me, that seems to be the most fundamentally broken element of US patent laws, although it seems unlikely to change.

  • [Avatar for pop]
    June 25, 2010 07:56 am

    Like I have said before, I don’t actually know what would make me happy at this point. If they handed me a piece of paper and pencil and said “you do it,” I’m not sure what I would write, and not just because I’m not a lawyer and don’t know how to word it properly. There are so many people that have an interest in this outcome and there are so many considerations and effects to consider that no doubt some people will think they have won and later realize they actually lost, and visa versa.

  • [Avatar for EG]
    June 25, 2010 07:07 am


    Time to get out that Ouija board. And pray hard for some sanity from SCOTUS which is asking for alot.

  • [Avatar for Les]
    June 25, 2010 05:17 am

    Chillax guys – You know how the Supremes are:

    You can’t hurry love. No, you just have to wait. Love don’t com easy. It’s a game of give and take.
    You can’t hurry love. No, you just have to wait. You got to trust, give it time. No matter how long, long it takes.

    Which is not to say, we don’t all wanna scream: Set me free, why donchya babe, Let me be, why donchya babe….You just keep me hangin’ on.

  • [Avatar for Meager Associate]
    Meager Associate
    June 24, 2010 11:00 pm

    I’ve had a change of heart.

    I’ve come to grips with the fact that Bilski is going to be another KSR-style blow to the patent regime. The opinion was finalized weeks ago, but they held it to the end because it’s Stevens’ final opinion and it’s a “legacy” opinion. Stevens will make some dramatic, poignant statements about how sharing ideas and skills is at the core of human nature, and how processes involving only human actions and constructs belong to all mankind. “To make such developments exclusive to anyone impoverishes us all” or something like that.

    Sadly, our only true hope is for Stevens to over-reach and implicate diagnostic patents as invalid. Only then might Congress intervene and “reset” section 101. I don’t know what language they will use to broaden 101 back out – I thought that “any . . . process” was already clear enough.

  • [Avatar for john]
    June 24, 2010 09:53 pm

    How will outcone affect current patents? Can it make them null and void?

  • [Avatar for Erin]
    June 24, 2010 09:25 pm

    Patent Infringement is a growing problem. Since law does not require manufacturers to inform patent owners that they are using the patent owner’s invention, Patent infringement can be unintentional. In most cases, it will be up to the owner of the patent to pursue Patent Litigation, a costly and time consuming process. It is always a good idea, if you are going to get a patent, that you do extensive research to make sure that no one already has a patent, and that you continue to monitor the industry to ensure that no one uses your patent with out your consent.

  • [Avatar for pop]
    June 24, 2010 08:33 pm

    It’s not scopes trial, but this thing is getting epic enough to warrant its own movie if it does get held over.