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 IPWatchdog.com.
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