Bilski Predictions: Justice Stevens

On the Concurring Opinions Blog, Professors Magliocca (Indiana) and Miller (Lewis & Clark) have been wondering when the Supreme Court will release its decision on patentable subject matter.

Professor Miller writes the following:

I … did a little digging on opinions issued from the Court’s first two sittings – the one starting Oct 5, and the one starting Nov 2. Bilski was in the second of these two sittings . . . If the past is any indication, one would expect each Justice to write about 3 majority opinions from this group. Perhaps Justice Sotomayor, as a newbie, would be assigned 2. . . .

The Court has issued opinions in 18 of the 26 cases from its first two sittings; thus [8] remain. Among those yet to issue, there are some that are likely to produce fireworks, such as (a) Stevens, the animal cruelty video/free speech case; (b) Buono, the religious symbol on gov’t land; (c) McGhee, the prosecutorial immunity case; and (d) Graham and Sullivan, both challenging Florida’s life-without-parole sentences for juveniles.

From those two sittings, the following Justices have written the stated number of majority opinions:

  • 3 each for Justices Scalia, Breyer, and Ginsburg. (I don’t think any of them is likely to be the author of Bilski.)
  • 2 each for Justices Roberts, Thomas, Alito, and Sotomayor. (Perhaps one of them is writing Bilski, but I doubt it.)
  • 1 majority opinion from Justice Stevens. (I think he’ll author Bilski.)
  • 0 majority opinions from Justice Kennedy. (He’ll be writing the majorities in the hot-button, sharply divided cases, because he’ll be in the majority in all of them.)

I don’t know when Bilski will issue. But I’m pretty confident Justice Stevens will author the majority opinion. He is, of course, the author of Parker v. Flook and the principal dissenter in Diamond v. Diehr.

183 thoughts on “Bilski Predictions: Justice Stevens

  1. Posted by: Thomas Hobbes | Apr 11, 2010 at 09:18 PM: Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.

    Go get ‘em, AI.

    Noise, you want to jump in here and confirm AI’s position, before this argument gets out of hand? ”

    No need for Noise or anyone to jump in. All I have done is point out the fact that WE THE PEOPLE have a Constitutional Right to our Intellectual Property.

    What other laws may or may not cover trademarks is a red herring topic and a distraction from the facts. The specialty of IANAE and Dear Ping.

  2. Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.

    Go get ‘em, AI.

    Noise, you want to jump in here and confirm AI’s position, before this argument gets out of hand? The nihilists are gaining confidence, what with your reduced presence lately, here on our beloved Trainwreck.

  3. WE THE PEOPLE have a constitutional right to demand a timely decision on Bilski! SCOTUS, stop lollygagging and dish. 6, hit your boy Stevens up on Facebook and tell him to get opinionating. Don’t make me start tweeting!

  4. Perhaps Stevens is not writing majority opinions because he does not feel up to doing so. Prof. Miller’s article reads like numerology.

  5. “Obama will appoint a younger , smarter, and more technology saavy justice to replace Steven’s and the decision will be overturned in a couple years at most.”

    Indeed, I agree, although it will likely be a little bit longer than “a few years”. Any little remnants of feelings of pity or succor that Stevens might still harbor for such claims will be wiped out by his successor. We shall know him by his name and his actions, he shall be known as THE REMORSELESS ANNIHILATOR!!!!!!!!!!!!!!!!!!

  6. “Was this the work of a conservative or of a run amok liberal?”

    OR A DESTROYER!!!!!!!!!!!!!!!!?????????????

    I think A DESTROYER!!!!!!!!!!!!!!!!!!!!!!!!

  7. JV,

    The only thing better than a lesson from AI would be a lesson on any topic in US jurisprudence from a Brit who would like to see the better and stronger US patent “improved” to be like ROW.

    Geesh, next thing you know he’ll be trying to equate art with patentable subject matter glibly using words like “enable” and “useful”.

  8. AI. A late period Rothko or Miro was a new way for an artist to go about his business, scientifically made by a man, under the sun; it was a work of technical character, conceived, reduced to practice, new, not obvious, enabled, useful, and sufficiently disclosed for it to be reproduced. Yet, like the universe itself, it is composed of at least 70% inexplicable dark matter.

    But all of that is still not enough, to render it patentable. What would it take, I wonder, to render it patentable.

  9. Posted by: Just Visiting | Apr 10, 2010 at 12:46 AM None of us want a con law course from someone who doesn’t know the constitutional basis for trademark law.

    ___

    That’s what you said about the Constitutional Right to a patent and look how that debate turned out. Sure you wanna start a new debate on the constitutionality of trademarks? Go ahead, Make my day.

  10. “Do you really need me to give you a remedial course on Property as a conventional Right under the US Constitution?”

    None of us want a con law course from someone who doesn’t know the constitutional basis for trademark law.

  11. Posted by: Ned Heller | Apr 09, 2010 at 06:16 PMThen we have the matter of Flook, one of the worst patent cases of all time. Was this the work of a conservative or of a run amok liberal?”

    Stevens has been holding on to avenge Flook the way Rich held on to strike down anti business methods in State Street.

    If indeed Bilski does take us back to the pre Flook era with Steven’s writing the opin no less, it wont be for long.

    Obama will appoint a younger , smarter, and more technology saavy justice to replace Steven’s and the decision will be overturned in a couple years at most. Similar to the way events transpired after Flook.

  12. Posted by: IANAE | Apr 09, 2010 at 04:40 PM: Trademarks are commerce clause. Also, no more a constitutional right than patents – though much more a common law right.

    Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.

    Bottom line Copyright, Trademarks, and Patents are Constitutional Rights.

    One would think that after thousands of post on this subject and in depth references you would know this fact by now.

    Do you really need me to give you a remedial course on Property as a conventional Right under the US Constitution?

  13. Posted by: Paul Cole | Apr 09, 2010 at 04:00 PM: I have never had to write a specification for a neutrino or a hadron invention.

    Do you know any patent attorney who has?

    And the mind boggles at the thought of a combined hadron and business method invention.”

    Paul:

    Every invention at its core is a business method. Let that boggle the mind for a while.

  14. Stevens once praised Bork. link to highbeam.com

    Stevens even thought of himself as a conservative.

    Then we have the matter of Flook, one of the worst patent cases of all time. Was this the work of a conservative or of a run amok liberal?

  15. And the mind boggles at the thought of a combined hadron and business method invention.

    Sorry Paul, an extensive waste of taxpayer dollars is not novel.

  16. There is a Constitutional Right to a patent, as well as a Copyright, and Trademark as so guaranteed by the Intellectual Property Clause of the US Constitution.

    Trademarks are commerce clause. Also, no more a constitutional right than patents – though much more a common law right.

  17. >>well anyway.Obviously no need need to accent >>the positive NWPA.

    OK. I’ll stay very negative.

  18. Actual Inventor

    I have never had to write a specification for a neutrino or a hadron invention.

    Do you know any patent attorney who has?

    And the mind boggles at the thought of a combined hadron and business method invention.

  19. I’m happy you’re amazed, Inventor. We have that in common. I too am amazed at some of the stuff I read on this blog.

    We probably also have it common that we await with keen anticipation the SCOTUS opinion in the Bilski case.

    You misunderstand my position, I think. I’m not denying that there is an infinitely large number of patentable inventions in the area of methods of doing business. If it wasn’t for businessmen paying we patent attorneys to protect their business assets we would have little or nothing to do.

  20. Posted by: ping | Apr 06, 2010 at 02:45 PM:” there is no Constitutional Right to a patent.”

    Troll bait as your post is dear Ping, it still needs to be addressed nonetheless in the interest of fact, and education.

    There is a Constitutional Right to a patent, as well as a Copyright, and Trademark as so guaranteed by the Intellectual Property Clause of the US Constitution.

  21. Posted by: MaxDrei | Apr 06, 2010 at 09:57 AM: Look, when the Constitution was written they knew the difference between natural philosophy (science) useful arts (technology, engineering, applied science, promotion of technical progress), methods of doing business, and the humanities (fine arts). What has changed since then, pray?

    _______________

    Surely you jest? But even if you do this blog and I fear the Patent Professional Community is filled with those that do not. So for the record here are just a few of the many changes that have occurred in science and technology that you and perhaps our Steven’s are not fully cognizant of.

    Albert Einstien E=MC (2)

    The Neutrino Particle.

    The Super Qauntum Grand Unified Field.

    The Large Hadron Collider up and running, colliding billions of protons at seven tera electronvolts!

    In the face of all this science and technology, how you Max and your English Mates can actually claim business methods are not patent eligible (aka science and technology) and still expect to regarded as learned and intelligent individuals is simply amazing!

  22. Seems… that’s a hardly used word…. well anyway.Obviously no need need to accent the positive NWPA.

  23. With Justice Stevens retiring, might he write less than hi9s share of opinions? It seems counter productive for a retiring justice to write a majority opinion, becasue the person most holding that opinion will not be around to uphold and enforce it in the immediate future. Or maybe the 20 year stare decisis effect will be just as strong even with his immediate departure, due to the Court’s propensity for refusing to overule itself on any case less than 20 years old. Any opinions on that? What does history indicate?

  24. Well, it is settled that J. Stevens is leaving. Thank goodness for 101 issues, but outside of patent law, I greatly admire Justice Stevens and usually agree with his opinions.

  25. the USA stays with its system for the foreseeable future, and ROW with its. Each to optimise its own and we’ll see in the fullness of time which is the “Gold Standard”.

    Maxie,

    Several of your wonderfully bogus ideas can be seen conflicting in this post.

    Your “universality of patent law” is in obvious shambles. Do you persist in holding onto that nonsensical philosophy?

    Your jealousy and hatred of the better and stronger US patent is evidenced by your refusal to acknowledge the truth of the Gold Standard. Why wait for the fullness of time? The strength of the US patent, even given the mucked up job of shoddy prosecution, so outshines your proselytizing putrid of everything EP, that your constant commercials are like an empty wagon, noisily banging down the street.

    n three years it’ll be MMXDrei.
    And we’ll need to drink a lot more when that happens.

  26. Besides I don’t believe any of the regular Bilski critics are even Actual Inventors so their opinion counts even less.

    I think you’ll find nine of them have an opinion that counts a lot more than any inventor – including Bilski himself.

  27. But IANAE, try ordering in London, even today, a half a litre of beer and see how much you get.

    Well obviously you didn’t go metric with your beer. You’d have had to replace all your pre-calibrated pint glasses. Besides, nobody should be ordering half an anything of beer. If the full unit of measure exists, why drink less?

    So, what the current date in Roman numerals?

    “MMX?”

    In three years it’ll be MMXDrei.

  28. “That depends on what you mean by “meritorious”, but either way it’s hard to look at Bilski’s claims (assuming you’re not Bilski himself) and come away with a feeling that he ought to get a patent.

    Is that the sort of case you want before the Supreme Court when they decide what is or is not entitled to a patent?”

    _______________________

    It doesn’t matter what you think of Bilski’s invention. Besides I don’t believe any of the regular Bilski critics are even Actual Inventors so their opinion counts even less.

    But the bottom line is this, this case, like all 101 patent cases simply needs to be decided based on Congressional intent-USC 101, and an Inventors Constitutional Right to his/her discovery.

    Stick with that and Bilski gets his patent slam dunk!

    Whether it is “meritorious” or not is no ones affair but the consumers.

  29. Well, at least we do not use, much, the Empire’s numbering system.

    I, II, III, IV, etc.

    That said, it would seem strange to see anyone who is the “2nd” or “3rd” use 2 or 3 instead of II or III.

    Queen Elisabeth 2, does indeed sound strange. Queen Elisabeth II is much, much better.

    So, what the current date in Roman numerals?

    “MMX?”

  30. In my country we used “gold standard” Roman Empire currency units of pounds, shillings and pence (240 to the pound), till I was an adult. My country gave up trying to bring the rest of the world round, and changed, before it became on that account the butt of everybody’s laughter, to 100 pennies to the pound. Pragmatism prevailed, and London is now the world’s biggest financial trading centre.

    But IANAE, try ordering in London, even today, a half a litre of beer and see how much you get.

    ping, thanks for the laugh. It is all for the best, that the USA stays with its system for the foreseeable future, and ROW with its. Each to optimise its own and we’ll see in the fullness of time which is the “Gold Standard”. Then, harmonization won’t be so much of a problem.

  31. Has anyone thought just how much legislation in how many countries would be needed to implement this change?

    Nobody actually expects it to happen. It’s a typically American way of saying that they refuse to change because they’ve never changed before, and the whole world will agree only when the whole world agrees with America.

    Don’t forget, we’re talking about a country that still uses the imperial system of weights and measures that the eponymous empire abandoned long ago. Not exactly harmonization-friendly.

  32. OT, but cannot resist this notice to MaxDrei, courtesy of my good pal Hal Wegner:

    This morning as the keynote speaker at the 18th Annual International Intellectual Property Conference at the Fordham University Law School U.S. PTO Director David J. Kappos expressed optimism for enactment of the patent reform proposal now before the Congress, including the likelihood of a future global harmonization that includes an American style grace period.

    Grace Period: The Director remains optimistic about the possibility that the rest of the world will introduce an American-style grace period because this represents the “gold standard” for a patent system. Panelist John Pegram noted that the first-inventor-to-file provision in the House version of the patent reform bill requires overseas grace period reforms as a trigger for implementation of this critical aspect of the legislation.

  33. The Russian contribution to the liberation of France was not de minimis, but was indirect, and therefore omitted.

    The contribution of the much-vaunted French Resistance, now THAT was de minimis!

    Oh and Max, please add “r@cist” to my previous characterizations of “inarticulate” and “misandrist”.

  34. Punches thanks for the quote which (as you might imagine) only serves to reinforce my view. And I’m most impressed that you are bilingual English/French. Who would have guessed. As to WWII you didn’t mention the Eastern front and the contribution the Russians made to the defeat of the Third Reich. De minimis was it?

    IANAE, loved the reference to Basil. I’d forgotten the squirmingly embarrassing words that come after the always quoted “Don’t mention the war”. Did you know that when they broadcast FT in Spain, poor Manuel has another name, and comes from Italy, not Barcelona.

  35. I have much French family, go several times a year, and am bilingual, so I have total license.

    I must say, their cheese is the best, although the Spanish in particular are catching up, I think.

    Their high-end wines are still the best, too, but they have been eclipsed in the low- to medium-end by other wines from other places in the world.

    And all the French stuff you can get here is for export, and is a pale imitation of what you can get there, if you are in the know.

    By the way, I recently had some of their standard-issue government champagne, and it was quite good! Nice public service, France.

    And about 10 years ago, when someone over there mentioned the war, I (as it turned out foolishly) asked “Which war?”, trying to find out if they were talking about WWI or WWII.

    For them, there is only ONE war, and it is WWII. I was severely rebuked.

    To which I naturally responded: “Oh, the one that the Brits, Canadians, ANZAC’s, and Americans bailed you out of?”

    It never gets tired. To be fair, the younger generation there is somewhat different, especially since they have a large proportion of immigrants in their ranks.

  36. And I absolutely love the fact that the British first beat up on the French, and then had to bail the French out when someone else was beating up on them–something I wholeheartedly stick to my French acquaintances every time they wax superior about food, wine, and culture in general.

    Good for you. Every time they express pride in all that food, wine, and culture that they still have, they should be made to feel bad about something unrelated that stopped happening 65 years ago. Astute observations like those are why Americans are loved and welcomed throughout the world.

    Don’t mention the war. I mentioned it once, but I think I got away with it.

  37. Max–

    For your perusal.

    Sotomayor: “Whether born from experience or inherent physiological or cultural differences, a possibility I abhor less or discount less than my colleague Judge Cedarbaum, our gender and national origins may and will make a difference in our judging. Justice O’Connor has often been cited as saying that a wise old man and wise old woman will reach the same conclusion in deciding cases. I am not so sure Justice O’Connor is the author of that line since Professor Resnik attributes that line to Supreme Court Justice Coyle. I am also not so sure that I agree with the statement. First, as Professor Martha Minnow has noted, there can never be a universal definition of wise. Second, I would hope that a wise Latina woman with the richness of her experiences would more often than not reach a better conclusion than a white male who hasn’t lived that life.”

    To give this the tearing-apart that it truly deserves would take more time than I have right now.

    You can decide for yourself.

    And Paul, I would have a beer with you any day. It would likely remind me of the days where I would drink with the guys from Sandhurst. Except it would have to be a real beer, not an American-type, and we would have to talk about something other than U.S. patent law.

    And I absolutely love the fact that the British first beat up on the French, and then had to bail the French out when someone else was beating up on them–something I wholeheartedly stick to my French acquaintances every time they wax superior about food, wine, and culture in general.

    I am deeply indebted to the Brits for this.

  38. Bizarre? Really? Are you saying it is the product of an over-active imagination? If so, you can help, if you want, by expanding on your Python-esque “Nudge nudge, wink wink, know what I mean” insinuation about Judge Sotomayor that prompted my bizarre remarks.

  39. Punches

    When I express views as to patentability in the US I do so on the basis of consistent case law in the US Supreme Court going back to the early 1800′s that amply justifies the reasonable and moderate statement in KSR: “The combination of familiar elements according to known methods is LIKELY [please note that this is expressed as a probability, not a certainty or a rule] to be obvious when it does no more than yield predictable results.”

    And there is the very valuable guidance in Webster Loom v Higgins 105 U.S. 580 (1881): “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”

    With such valuable guidance from the highest judicial authority in your country, your disinclination to follow it is difficult to understand, especially as it accords with practice e.g. in the UK and before the EPO, and I suspect in most other countries in the world.

    I decline to say anything ad hominem, and if ever we should meet at a conference in the USA I hope we can discuss our different opinions amicably over a suitable beverage.

    Respectfully

  40. As far as I know, she did not say “I am a wise Latina”. As far as I know, she was expressing a thought entirely impersonally. Therefore, IBP, from your latest embarrassing offering, I am forced to conclude that you are of the misogynistic and r+c1st view that “wise Latina” is an oxymoron.

    For once, Sarah chose exactly the right word: “snide” is spot on. I would add “pathetic”. You should be ashamed of yourself.

  41. Max–

    Your comment will cause me to forever now associate the acronym ADR not with “Alternative Dispute Resolution”,
    but with “American Democratic Republic”.

    Nice going!

    Informed readers will know to what I refer with respect to Sonia Sotomayor.

  42. “Thanks for the warning”

    Hey Mooney, don’t you have some skin cutting and some sewing to do? Don’t forget the makeup, the pumps, and that sassy silk robe. And nothing is quite the same without “Goodbye Horses” blaring in the background.

  43. Second, reading about Paul Cole in his English public school gave me a good laugh.

    I felt kind of sad for Paul when I found out he could never be in the monarchy.

    Think of all those lucky Americans who can live every day the American Dream of one day being granted a title of nobility by their glorious country. Or more than one, even. They could sit around all day … collecting royalties.

  44. ad Hominem, IBP? This:

    “She is either woefully inarticulate, a misandrist, or both.”

    More like ad Gynem remarks from a misogynist, I should think. And surely no way to talk about a member of the Supreme Court of the Democratic Republic of the United States of America.

    Always revealing, which commentators on this blog are quickest to discover that the communication skills of others are inadequate.

    I’m still wondering, which of the following postings it was, that led IBP to regret his earlier intemperate rant. But I’m glad he had his rant. First, I learned a new word. Second, reading about Paul Cole in his English public school gave me a good laugh.

  45. By the way, the proximate cause of my angst today is the fact that I am working on TAXES!!!!!!!

    So apologies to anybody at whom I wrongly lash out.

    Grrrr…

  46. The “feeling” that he “ought” to get a patent?

    IANAE = Paul Cole?

    Instead, how about the “legal determination” that he is “entitled to patent protection”?

    I know it rings hypocritical considering that I went off the rails with the ad hominem, but let’s try to keep things at least a little bit legal.

  47. An invention need not be “meritorious;” only novel and non-obvious, provided it falls within the broad statutory categories.

    That depends on what you mean by “meritorious”, but either way it’s hard to look at Bilski’s claims (assuming you’re not Bilski himself) and come away with a feeling that he ought to get a patent.

    Is that the sort of case you want before the Supreme Court when they decide what is or is not entitled to a patent?

  48. Sorry INANE, Paul used the lofty word “meritorious,” which as IBP pointed out, is not the test for patentability. An invention need not be “meritorious;” only novel and non-obvious, provided it falls within the broad statutory categories. Thus, the decision is only about the extent of those statutory categories – nothing more.

  49. IANAE–

    “Patentable” implies 102, 103, 112, 101, the entire Patent Act and 37 CFR, the subject-matter of which is inventions and the rights pertaining thereto. “Patentable” encompasses “patent-eligible”.

  50. He should have used the word “patentable” instead,

    No, “patentable” would imply 102 and 103 considerations. Paul’s trying to say there’s no invention at all, which is exactly the question before the Supreme Court.

    I completely agree with Paul that the Bilski decision might be problematic if they try to come up with a general rule based on a case that’s nowhere near the boundary that rule would establish. And for the record, I’m not British.

    And I personally don’t believe that Sonia Sotomayor has demonstrated that she is should be entrusted by society with the responsibility of either drafting an opinion, or with deciding an appeal.

    Too late, that’s been her job for some years now.

  51. Warning–total ad hominen coming:

    re Paul Cole’s 06:32 comment:

    No “meritorious” invention?

    Paul is once again trying to import his personal view of patent practice into the U.S..

    Now-historic comments of his, such as:

    “… an examiner’s job is to decide whether an invention meets the unobviousness standard or not…”,

    “I completely agree with you about unexpected results – without such results how can there be said to be an invention?”,

    “On the issue of onus, there is a question whether there is an objection of lack of inventive step on the face of the document.”, and

    “The message which this posting hoped to develop is positive decisions which might be included in the inventive step guidelines…”

    reveal to me his misunderstanding of fundamental concepts of US patent prosecution.

    Now his use of the word “meritorious” belies what I believe to be his rather tedious aristocratic posture.

    He should have used the word “patentable” instead, but that would be rational and pedestrian, and insufficiently lofty for someone who seems to be so covetous of the moral high ground.

    Paul Cole, likely a product of the traditionalist British school system, living in a monarchic society, exhibits all the characteristic scars.

    And just deeply wishing he could be called to the House of Lords, his highest possible aspiration, since he can NEVER be in the monarchy.

    Sorry Paul, it’s a tone I’ve heard all-too-often. It’s anachronistic and boring.

    But it shouldn’t go unaddressed.

    And I personally don’t believe that Sonia Sotomayor has demonstrated that she is should be entrusted by society with the responsibility of either drafting an opinion, or with deciding an appeal. She is either woefully inarticulate, a misandrist, or both.

    In any case, she is unqualified.

  52. However, it was not treated conservatively.

    Therein lies the rub.

    Paul, I have a feeling that we see eye to eye on many topics.

  53. Anon

    The need is that of the court to dispose of the case before it.

    There may be many groups affected by the decision, each with its own agenda. But their interests, and insofar as they have put in amicus briefs their arguments, should only be relevant insofar as they affect the question before the court.

    Obviously there has to be rule-making and in Bilski it is difficult to see how this can be avoided. But it is better to make a narrow rule covering the situation before the court and closely analogous situations. Comprehensive general rules are apt to have unintended consequences, and the making of such rules should be a matter of great caution.

    I have argued elsewhere that the KSR decision was intended to be conservative, essentially confined to its own facts, and to demand corrections that the CAFC had already implemented in its decisions before the Supreme Court opinion in that case was handed down. Infsofar as it made observations as to patentability, it did so conservatively and there is little in its judgment which is not to be found in preceding case law. However, it was not treated conservatively.

    In particular, unnecessary judicial rhetoric should be avoided. The reference to the better mousetrap in Graham adds little of value to the practitioner while gratuitously insulting inventors in the mechanical arts. And those who consider that engineering structures are predictable have not tried building and testing complex structures intended to survive real conditions. The danger is that judicial indignation when faced with what in my opinion is a plainly unmeritorious case may provoke opinions which may blight patents in a whole field of technology in which meritorious inventions may arise.

  54. I understand it will not be a good situation, but why? What do you think he’ll say based on his decision/opinion trend?

  55. will say no more than they need

    Part of the problem (and a guarantee that there will be people unhappy with the decision no matter what) is that “what is needed” is hotly contested.

    Whose needs?

    Why that person’s (or group’s) needs?

    What level of need satisfaction is possible before someone else’s needs are too adversely affected? How is the balance of needs to be considered? Where is the fulcrum to be placed?

    Will a well developed and extensive opinion be rendered that will only focus on the “say no more” portion be cognizant of the fact that a Supreme Court opinion will be amplified, turned and twisted by rampant agendas? One only has to look at the conflicts of precedent to see that even leaving a term of discussion out can raise inadvertent questions and cause collateral damage in the application of the decision.

    There may not be a clean simple stroke.

  56. As has been said before Bilski from the standpoint of patent prosecutors is not a good case to go before the Supreme Court. In my opinion there is no meritorious invention here, see the withering comments of Judge Sotomayor in oral argument. Hopefully the Supremes will say no more than they need.

    If you study her background, you will see that Judge Sotomayor is familiar with IP law. So she would be in a good position to draft the opinion.

  57. Say whatever else that you will, but MM with his srs face on isn’t as amusing.

    They said the same thing about Uncle Milty.

  58. Just wondering what it really means “Stevens will write the majority opinion” I am not too familiar with his previous decisions – what direction will he take us?

  59. And I don’t mean the exception of the accelerated examination where the applicant is expressly doing part of the examiner’s job. Last I checked the Continuation Rules package that had mandatory ESD’s was still illegal.

    Like that will stop us – Ha!

  60. >>After you take a shot, NWPA, I’ll give you my >>own answer to the question.

    Oh please don’t wait for me.

  61. Oh Oh Oh me me me

    Since there is no requirement to file an application,

    there is no Constitutional Right to a patent.

  62. “Since there is no requirement to petition for accelerated examination, there is NO REQUIREMENT for anyone but the examiner to do a search.”

    Since there is no requirement to file an application, there is no requirement for the examiner to do a search.

    Your move.

  63. MM: “Do you believe that a persuasive demonstration that thinking is a “physical” process would render methods of thinking patentable under 101?”

    I’ll non-answer that. I think the Supreme Court will go to great lengths (if necessary) to always understand the term “physical process” in such a way that a method of thinking is not one. Doesn’t matter how persuasive the demonstration, you won’t be using any definition of “physical” that they will apply to section 101.

    It’s kind of pointless to define “physical” to include thinking anyway, because the definition would be so broad as to render the term meaningless. Of course, it’s equally pointless to require a drop-on-your-foot-physical aspect to a claimed process, when processes are clearly statutory subject matter apart from compositions of matter and the like.

  64. MM-

    Les : There is no requirement that applicants search.

    Not true, of course, in the case of a petition for accelerated examination.”

    Since there is no requirement to petition for accelerated examination, there is NO REQUIREMENT for anyone but the examiner to do a search.”

    Anything else would be redundant as the examiner is expected to find the most relevant art.

  65. Les: I respectfully submit that you are mistake on too points. Some Inventors don’t read the prior art.

    I corrected your obviously false statement, Les. Keep trying, though.

  66. Les : There is no requirement that applicants search.

    Not true, of course, in the case of a petition for accelerated examination.

  67. NWPA: I think it is explained well enough in this string MM.

    LOL. You wrote: think that Stevens and Stern actually have a much deeper problem in that they believe that thinking is not a physical processing.

    I found the statement odd. I asked: Do you believe that a persuasive demonstration that thinking is a “physical” process would render methods of thinking patentable under 101?

    You refused to answer this question. Why? Apparently found found it “offensive”, as you stated in this non-answer pouting comment to MaxDrei:

    They have a deeper problem that if worked out may help them to understand informmation processing. Render? Obviously I left the area of legal reasoning and took a deeper look at the opinions being expressed. Obviously this is not going to translate into legal reasoning directly and thus the question was offensive.

    I’ll just throw the question out to the peanut gallery for anyone to answer: Do you believe that a persuasive demonstration that thinking is a “physical” process would render methods of thinking patentable under 101?

    After you take a shot, NWPA, I’ll give you my own answer to the question. Go ahead. Surprise me.

  68. Ianae-

    “isn’t that a perfect example of the applicant being in possession of closer art than the PTO examiner found in his search?”

    No. It is an example of the applicant’s attorney becoming aware of a document referred to by another examiner.

    “Applicants pay a search fee because a search is performed by the PTO, not because examiners are the only ones responsible for searching”

    You are wrong. Examiners ARE the only ones RESPONSIBLE for searching. There is no requirement that applicants search.

    “They are often intimately aware of art that may not even have been filed at the PTO, and therefore would elude the examiner’s search. ”

    Applicants may be aware of there own disclosures and offers for sale. But the PTO is responsible for finding any non-patent prior art that may exist.

  69. They are often intimately aware of art that may not even have been filed at the PTO

    I thought examiners were responsible for prior art which included more than just prior art filed at the PTO.

    only ones responsible for searching.

    Show me where it is the responsibility of anyone but the examiner to perform a search. And I don’t mean the exception of the accelerated examination where the applicant is expressly doing part of the examiner’s job. Last I checked the Continuation Rules package that had mandatory ESD’s was still illegal.

    Are you always a je-rk, or is it just a bad day for you?

  70. >>are incapable of explaining your own reasoning >>to us.

    I think it is explained well enough in this string MM. Unless you want me to explain to you why the sky is blue–again.

  71. Les: “I respectfully submit that you are mistake on too points. Inventors don’t read the prior art. They are busy inventing.”

    I respectfully submit that your grammar are mistake on too points.

    I didn’t say inventors sit around reading patents. They are busy inventing by applying their knowledge in their field to the existing art in their field. They are often intimately aware of art that may not even have been filed at the PTO, and therefore would elude the examiner’s search. Corporate assignees might be even more aware of art, if they monitor their competitors’ products.

    Les: “It’s the PTO that has the fancy searching system and it is the PTO examiner’s that are responsible for searching. That’s why applicants are required to pay a search fee.”

    Applicants pay a search fee because a search is performed by the PTO, not because examiners are the only ones responsible for searching. They still pay a search fee even if they also have an obligation to search, e.g. they request accelerated examination with an ESD.

    Les: “Second of all, it is quite common for art to be cited by an examiner in a foreign counterpart application. That is likely what happened here.”

    Isn’t that a perfect example of the applicant being in possession of closer art than the PTO examiner found in his search?

  72. “That is likely what happened here.”

    Considering that’s not what happened then it likely isn’t what happened here. Ya tard.

  73. Maxie,

    Look, when the Constitution was written they knew

    The last person I’m gonna trust to tell me about US jurisprudence is a Brit that believes in “universal” patent law.

    Until you can tell me why the US patent is better, different and stronger, your opinions on what the Constitution means or doesn’t mean won’t impress me much.

  74. Woo hoo

    Not often I can get IANAE in a wrong statement, but “it’s predicated on the assumption that the applicant will have the closest art” is plain wrong.

    Applicant is not predicated to supply the art for examination – they are only required to disclose art that they may be aware of.

  75. morally on you

    God only knows
    God makes his plan
    The information’s unavailable
    To the mortal man
    We work our jobs
    Collect our pay
    Believe we’re gliding down the highway
    When in fact we’re slip slidin’ away

  76. IANAE -
    I respectfully submit that you are mistake on too points. Inventors don’t read the prior art. They are busy inventing. It’s the PTO that has the fancy searching system and it is the PTO examiner’s that are responsible for searching. That’s why applicants are required to pay a search fee.

    Second of all, it is quite common for art to be cited by an examiner in a foreign counterpart application. That is likely what happened here.

    If the foreign examiner could find the art, why didn’t 6?

  77. Now why MM is that a strange statement that I made?

    Why? Well, mainly because I’ve never heard Justice Stevens say that “thinking is not physical processing” but also because I do not know why holding such a belief would be a “deep problem” for US patent law. And you apparently are incapable of explaining your own reasoning to us. I asked you a straightforward follow up question and you refuse to answered it.

    Do you think you can make it a couple more days before you lose your shxt again? I’m not betting on it.

  78. “The whole system is predicated on the assumption that the office can and will find the closest art.”

    Actually, it’s predicated on the assumption that the applicant will have the closest art, which is why he has an affirmative duty to disclose it to the examiner.

    If you’re in doubt, send a non-final as a courtesy and give the applicant a chance to argue over the IDS reference. There’s usually a miscommunication somewhere when the applicant’s claims appear to be invalid over art he disclosed.

  79. 6:

    you asked:

    Wut should I hypothetically do?

    1. Send AF.

    2. Send non-final.

    3. Send final (based on the IDS sucka).

    4. One of the above and state in the action LOLOLOLOLOLOLOL.

    5. Choose your own answer.

    The answer is 2. Send non-final.

    The reason is, it was your job to find the IDSed info in the first place. The whole system is predicated on the assumption that the office can and will find the closest art. Since you didn’t do your job properly in the first go around, the second go around is morally on you…

    Instead of LOLOLOLOLOL, the action should include an apology for wasting everyones time and not finding the IDSed docs on your own.

  80. Think on this: Stern proposes MOT as the test to the Benson court. They do not accept it, but wander afield and develop instead the wholly preempt rule.

    Next, in Flook, they extend wholly preempt to include dissection. I don’t know if Stern proposed this, because I understood that if one applied the MOT test, Flook was lacking. The initial data gathering steps, for example, did not transform anything. Ditto the end number.

    So I think Stevens finally has a opportunity to actually adopt the MOT as the presumptive test; and perhaps opine on what Useful Arts means.

  81. IANAE – I am sure that you are right yet again, but can you explain what you mean by this?

    I thought “homey don’t do answers,” so why should he?

  82. He who switches on the italics should switch them off again when he leaves, please.

    Ping thanks. I appreciate it that you hung my thought out again, and I’m quite amused that you did it just to tell us all that you don’t find it interesting.

  83. The interesting thing is whether there is any philosophical link between not patenting a mental act and not patenting an “isolated” segment of the human genome.

    That’s not interesting at all.

    This “particular machine” thing is nonsense

    IANAE – I am sure that you are right yet again, but can you explain what you mean by this?

  84. My money is on Justice Thomas writing the opinion. The opinion will delve into th history of the patentability of a process. As his Quanta opinion shows, Justice Thomas is a master at delving into this type of history to develop an originalist understanding of patent law. I would imagine that originalism could be a unifying approach in Bilski, uniting patent skeptics with the agnostics or even the zealots (to the extent the last are represented on the Court).

  85. “The fact that Judge Rich repudiated the mental steps doctrine in the late 1960′s and early 1970′s is a strong indication that a process should not be unpatentable simply because all or some of the computer implemented steps could also be performed by a human mentally.”

    I don’t mind a claim to a process that could also have been performed mentally, as long as the claim says at least one step is performed elsewhere than in a human brain. This “particular machine” thing is nonsense, because all computers are fancy Turing machines (i.e. generic machines) and that’s all you need for an awful lot of processes.

    But also someone at the patent office should check those claims for novelty and non-obviousness. Just in case.

  86. actually the patent office used to reject computer programs because the program claims covered “mental steps,” in other words, a person could use mental thoughts to implement the algorithm. Judge Rich rejected the mental steps doctrine in Musgrave, “As may be seen from the statutory language, it contains nothing whatever which would either include or exclude claims containing “mental steps” and whatever law may be on the subject cannot be attributed to Congress.”

    The Supreme Court made a reference to “mental steps” in Benson, but in Flook and Diehr the Supreme Court omitted references to “mental processes.”

    The Supreme Court has never squarely addressed the mental steps doctrine. The fact that Judge Rich repudiated the mental steps doctrine in the late 1960′s and early 1970′s is a strong indication that a process should not be unpatentable simply because all or some of the computer implemented steps could also be performed by a human mentally.

  87. Look, when the Constitution was written they knew the difference between natural philosophy (science) useful arts (technology, engineering, applied science, promotion of technical progress), methods of doing business, and the humanities (fine arts). What has changed since then, pray?

    Why is it that the EPO acknowledges the patentability of methods of data processing but not of mental acts.

    The interesting thing is whether there is any philosophical link between not patenting a mental act and not patenting an “isolated” segment of the human genome.

  88. Asimov’s thinking machine may not be as far off (or as silly) as you may think.

    If it’s a thinking machine then methods involving it pass the machine-or-transformation test by definition. So what’s the problem?

  89. Anon: Yes, I think it is antithetical to promote and a silly approach.

    MaxDrei: After reading your last post, I now see why you did not find MM’s question silly.

  90. He proposes to link the useful arts back to useful arts at the time of the Constitution

    Isn’t such antithetical to “Promote”?

    MaxDrei,

    Why is “but a natural response to your silly statement,“?

    I do not think that establishing the physical nature of thinking is in any way silly when contemplating machines that can think. One can often look to science fiction of yesterday to see actual implementations today. Asimov’s thinking machine may not be as far off (or as silly) as you may think.

    In fact, I think it rather silly of you to dismiss the view, given the forum that we converse in.

  91. Sorry Night, you’ve lost me now. I pondered “the calculus of law”, looked up “calculus” in the dictionary and found out that it is a small stone as used in an abacus, then gave up.

    Sounds nice though, I must admit.

    That well-known product of highly creative thinking, the European Patent Convention, also puts stones in the way of natural philosopher/inventors, in that it prohibits from patentability “schemes, rules and methods for performing mental acts”.

    That was why I wanted an answer to MM’s question.

  92. I don’t know. Max might come after me if I don’t answer. Cranky, it is probably because I am a dolt. No doubt about it.

  93. It would take me 5 pages at least to explain how a metal model of human thinking has affected SCOTUS jurisprudence.

    Is that because your theory lacks coherence or because you have to spend 4.5 pages educating us heathens?

    That’s a rhetorical question – you don’t have to answer it.

  94. I would add Max, that I think both Stevens and Stern are nice people and that their beliefs are understandable. In fact, my grandfather was an electrical engineer and he had the same mental model of computers and information processing as Stern and Stevens.

  95. Max, I do welcome straight speaking, and prefer it. Thank you for that.

    I am surprized at you, but not upset. The calculus of law (render) is not directly translatable to philosophy (not believing thinking is a physical process).

    It would take me 5 pages at least to explain how a metal model of human thinking has affected SCOTUS jurisprudence. To imagine that I or anyone could go from philosophy to the calculous of law directly is silly.

  96. No. And here’s what I think, NWPA. (you welcome straight speaking, I take it)

    The question was neither “silly” or “offensive” but a natural response to your silly statement (which I suspect would offend both Stevens and Stern), and which was positively begging for it.

    If you are now upset, you have only yourself to blame.

  97. MaxDrei:

    >>”Do you believe that a persuasive >>demonstration that thinking is a “physical” >>process would render methods of thinking >>patentable under 101?
    This is what I said: “I think that Stevens and Stern actually have a much deeper problem in that they believe that thinking is not a physical processing.”

    Why should I spend the time to defend myself against such a silly characterization of my statement?

    I’ll answer it just for you MaxDrei. No not render. They have a deeper problem that if worked out may help them to understand informmation processing. Render? Obviously I left the area of legal reasoning and took a deeper look at the opinions being expressed. Obviously this is not going to translate into legal reasoning directly and thus the question was offensive.

    Does that render you satisfied Max?

  98. NWPA, I think methods of “thinking” and methods of “data processing in a computer” are both “physical” and both “subject to the laws of nature” but are not the same thing at all. At 12.16am you were asked, straight out:

    “Do you believe that a persuasive demonstration that thinking is a “physical” process would render methods of thinking patentable under 101?

    and I was looking forward to your answer because I liked the question and I too found “strange” your statement about Stevens and Stern.

    In your 7.26am posting, to my disappointment, I found no straight answer. Can you give one now?

  99. I’d like to see everyone write one paragraph of what they think the holding of Bilski will be.

  100. >>http://docs.law.gwu.edu/facweb/claw/EiprUarts.pdf

    Above is a paper by Stern. He proposes to link the useful arts back to useful arts at the time of the Constitution. Kind of like with the right of a jury. So, if you want to be part of the useful arts you have to link yourself back to a useful art at the time of the Constitution. He gives as a problematic example of vacuum tubes, going to light bulbs, going to candle making.

    The fact is that computers have enabled a new science and engineering discipline (or at least vastly excelerated an existing one). Just look at the ACM suggested curriculum for computer science and one could simply not say that it is NOT both a science and an engineering discipline.

    MM: You are right. I meant with Stern. I would not characterize my interaction with Stevens as an argument. I have argued extensively with Stern, though. I do think that if Stern and Stevens spent some time to understand modern theories on cognition that they would change their views on information processing. It is new and hard to understand. It is also understandable why someone trained so long ago wouldn’t understand information processing.

    Now why MM is that a strange statement that I made? Please spend some time to tell us why information processing is not a science nor engineering.

    My heels always feel like they have been nipped at after interacting with you.

  101. NWPA I think that Stevens and Stern actually have a much deeper problem in that they believe that thinking is not a physical processing.

    What a strange statement.

    Do you believe that a persuasive demonstration that thinking is a “physical” process would render methods of thinking patentable under 101?

    The fact is if you analyze and argue with them you leave with a sense that they are from medieval times.

    You’ve never argued anything with Justice Stevens.

  102. Quote from the 89 year old Justice Stevens:

    What really for me marks a conservative judge is one who doesn’t decide more than he has to in order to do his own job. Our job is to decide cases and resolve controversies. It’s not to write broad rules that may answer society’s questions at large.

    This after Stevens labeled his judicial philosophy a conservative one.

    From Friday April 2, 2010.

    No broad rules that answer society’s questions at large = MoT test out (no brightline rule) + business method and software patents remain (not touched, as that would answer society’s questions at large.

    “doesn’t decide more than he has to” = Bilski fails for simplest reason given to date. No further resolution to patentable subject matter.

  103. Ned let’s hope Richard H. Stern has nothing to do with the opinion. Mr. Stern is responsible for Benson and he has very backward views of information processing.

    I think that Stevens and Stern actually have a much deeper problem in that they believe that thinking is not a physical processing. The fact is if you analyze and argue with them you leave with a sense that they are from medieval times.

  104. If I specifically told them that the amendment would place the application in condition for allowance (or otherwise indicated such) then see MPEP 706.07(f)(M).

  105. Why do you have to send another final action? Why not just an advisory action that the amendments now raise new issues in view of the new references.

  106. I believe you are correct MM. Now, same exercise where I did not formally indicate such an amendment would be allowable in an interview.

  107. I find myself in somewhat of a predicament. So perhaps you patent professionals can help me out.

    The hypothetical situation is:

    1. A case is at AF. I had previously determined that a relatively simple amendment would render the claims distinguished over the references of record. I believe I told them such in an interview. They didn’t decide to take the claims when I offered them. I also indicated some deps as allowable straight up in the action.

    2. Now they submit an AF amendment making the changes and submit an IDS which includes a foreign PCT which has just had its english national stage get published. They also call and beg for me to enter the amendment since the amendment they want to make should clearly distinguish over the art of record (and I may have told them to make the change before anyway). I tell them “OK, I’ll probably allow it in and push for allowance with my primary” before I realize they have submitted an IDS (substantial amounts of refs btw). They say “ok, and if you don’t enter it we’re just going to [RCE? and] bring up the deps you already indicated as allowable”.

    3. Of course the recently published English national of the foreign pct turns out to likely be a 102e.

    4. ???

    Wut should I hypothetically do?

    1. Send AF.

    2. Send non-final.

    3. Send final (based on the IDS sucka).

    4. One of the above and state in the action LOLOLOLOLOLOLOL.

    5. Choose your own answer.

  108. Two Bobs,

    LOL about your 9600 baud prize.

    Shouldn’t that prize go to the SCt Justice who authors the Bilski majority opinion? Or will that be too much (too fast, too furious) of a tech advance for them to handle?

  109. Interesting. Stevens is very familiar with who Richard H. Stern is. Stern was on and, I believe, actually authored the government’s briefs in both Benson and Flook. He filed a brief in Bilski. I suggest that Stevens would trust Stern’s views above others by virtue of this past association. In fact, it was Stern who first proposed the particular machine or transformation of matter test.

    Stern argued in his brief this time that Bilski does not have the kind of utility authorized under the constitution. If the case decided on this basis, everything else can be left undisturbed — which the Supremes prefer.

    However, they also prefer not to decide cases based on the constitution if they have any other alternative.

  110. “nothing will be provided as new guidance”

    sounds right, and Justice Stevens explains why in the 1978 Flook case, and a majority on the current Court may agree with him. unfortunately, there is a slim to none chance of the dithering “political class” stepping in here and actually doing there elected jobs.

  111. “What the patent bar has to ask now is, “Why doesn’t Bilski abandon his patent application and moot the case?” Clearly, the Supremes are going to destroy eligible subject matter under Section 101.”

    Indeed.

    Can you smell what the Stevens is cookin’?

    It’s Stevens off the top rope! OH MY GOD! We’re going to have to rename him STEVENS THE DESTROYER!

  112. What the patent bar has to ask now is, “Why doesn’t Bilski abandon his patent application and moot the case?” Clearly, the Supremes are going to destroy eligible subject matter under Section 101.

    Because his appeal is already paid for, he still might be able to salvage some claims, and the issue is bound to come up in another case sooner or later anyway. At least Bilski’s claims are far enough removed from the physical world that the Supremes can invalidate them without reading the word “process” out of section 101, if that’s what they want.

  113. How scholarly? Is it enough to predict that the MoT test is struck down, Bilski loses anyway, there will be lots of pages devoted to quoting prior precedent, nothing will be provided as new guidance, and everyone will later claim to be victorious?

    The 9600 baud modem – does it make that particular sound when it connects?

  114. That Stevens is writing the majority opinion has been the conventional wisdom for several weeks now.

    What the patent bar has to ask now is, “Why doesn’t Bilski abandon his patent application and moot the case?” Clearly, the Supremes are going to destroy eligible subject matter under Section 101.

    Blame Mr. Bilski and his counsel for not giving up this case.

  115. Let’s have a contest to see who’s the last person to post a scholarly prediction of the outcome of Bilski prior to the release of the actual decision. Winner gets a copy of the MPEP dating back to the late 1990s and a 9600 baud modem.

  116. Malcolm–

    Ah, I failed to carefully read your post before jumping all over you. I missed the “per se”.

    Apologies–it was just so fun to feel like one of the guys for a couple of minutes!

    And you know that future blog history will eventually invest in my misquotes of you the quality of truth.

  117. It’s not a game but a direct-to-cable movie

    Whatever. My main point stands – as handy as patents are for preventing people from treating or curing cancer, it’s much easier to prevent them from doing so (and therefore better promotes the useful arts) if you don’t bother inventing the treatment in the first place.

  118. where I’m going with this?

    Oh, Oh, Oh, I know I know Mr Kotter,

    You are going for yet another smack down on the “Written Description Doctrine” from NAL!

    She did compliment Malcolm last week – must be making good ‘ol Malcolm a bit delirious.

  119. You can’t underestimate the importance of early detection, especially considering the high development cost of those games.

    It’s not a game but a direct-to-cable movie directed by James Cameron’s ex-wife’s brother-in-law.

  120. MM: inventions that tell you if you’re likely to enjoy Hellspawn VIII: Curse of the Green Brownie.

    You can’t underestimate the importance of early detection, especially considering the high development cost of those games. Those companies need every incentive to innovate. Even the Founding Fathers knew that the “useful arts” includes Electronic Arts.

  121. IBP, please note that there is a difference between a sequence of letters and a composition of matter comprising a sequence of nucleic acids.

    It’s sort of like the difference between a recipe printed in a cookbook and a claimed method for making a cake (*ahem*).

    is anyone actually claiming the sequences in the abstract?

    I don’t think so. And there is no Beauregard claim format for DNA sequences. Evidently promoting inventions which can save lives is less important than promoting inventions that tell you if you’re likely to enjoy Hellspawn VIII: Curse of the Green Brownie.

  122. MM: I’ve said it many times, I see no rational basis for your opinions on this matter.

  123. No, but I agree with the current law which holds that DNA sequences per se are not patentable under 101. They are just information, not compositions of matter or methods

    Okay, but is anyone actually claiming the sequences in the abstract? Surely those would be anticipated anyway. Myriad was claiming “an isolated DNA”, which sounds like a composition of matter to me.

  124. Mooney: “Portions of molecules are not compositions of matter.”

    Mooney: “Arrangements of atoms are not compositions of matter.”

    Mooney: “DNA segments composed of atoms are not composed of matter”.

    Mooney: “Atoms are not matter.”

  125. NWPA Does anyone really think that a DNA sequence is an embodiment of a law of nature?

    No, but I agree with the current law which holds that DNA sequences per se are not patentable under 101. They are just information, not compositions of matter or methods — and it doesn’t matter whether the sequences are written on a “computer-readable media” or not. See where I’m going with this?

  126. “Should have said “8 remain.” In my notes, I had collapsed the 26 to 25 because of the two cases against the state of Florida, argued the same day, raising the same juvenile sentencing 8th Amendment challenge.”

    They were argued right before Bilski fyi. There was quite a line for those cases as well.

  127. Can even Supreme Court Dicta ovecome case law at the CAFC level?

    That’s up to the CAFC to decide.

  128. Good catch on the arithmetic, Michael.
    My bad.
    Should have said “8 remain.” In my notes, I had collapsed the 26 to 25 because of the two cases against the state of Florida, argued the same day, raising the same juvenile sentencing 8th Amendment challenge.

  129. You see the scarey part of this is that J. Stevens has a chip on his shoulder about this. I suspect he would do as much damage as he could if he is in the majority.

    In the minority, then J. Stevens will be but a puff of toxic air to avoid.

  130. If Roberts is in the minority, then Stevens picks who writes the opinion. And, if Stevens writes a majority opinion that says information processing and diagnostic methods are not eligible for patentabilty then the fed. cir. would follow even if it was dicta. I think people could come up with some senarios where this wouldn’t be the case, but it would be quite an up hill battle.

  131. Doesn’t SCOTUS almost always have a “majority” opinion with one or two cosigners and then a bunch of “concurring in part, dissenting in part” opinions from each of the other Justices?

    All the holding is likely to be is that MoT is not the one true test. Most likely, Justice Stevens will simply focus on pointing out that there are things that pass the MoT test that aren’t elible to be patentable subject matter (which is true), while avoiding pointing out things that don’t pass MoT and yet are eligible to be patentable subject matter. Even if Justice Stevens writes that Software and even Electronic Circuits are not eligible to be patentable subject matter, won’t it most likely be dicta that is specifically disavowed by practically the entire remainder of the Court?

  132. Maybe the biotech people can now appreciate how bizarre the opinion in Benson is. That a method of processing information embodied in a circuit is a law of nature. Does anyone really think that a DNA sequence is an embodiment of a law of nature?

  133. What I hope for is an opinion written by Chief Justice Roberts with a bitterly writen minority opinion from J. Stevens.

    There have been hints that Roberts gets it and does not want to let patents be destroyed during his tenure.

  134. I see you clerked for J. Michel who has a history of strange opinions on 101.

  135. He is, of course, the author of Parker v. Flook and the principal dissenter in Diamond v. Diehr.

    Can a minority opinion holder be the author of the majority opinion?

  136. Are you assuming that Justice Roberts will be in the minority? If J. Roberts is in the minority, then it will surely be J. Stevens that writes the opinion.

    But, if we are lucky–at least those of us that think that information processing methods and diagnostic methods should be eligible for patentability–J. Stevens will be in the minority.

    J. Stevens took up the banner of J. Douglas the author of Benson. J. Stevens in my opinion simply does not understand patents or technology. And some of his comments in the oral arguments displayed a vast ignorance of information processing methods. We can only hope that he retires before his hand guides patents any further.

  137. Ugh. I hope he does not write Bilski. In Flook, he worked an obviousness standard into the patentable subject matter standard under 35 USC 101. It would be bad for patent law if he tried to bring back the reasoning of Parker v. Flook. It would be… messy.

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