Bilski, Kenny Rogers and Supreme Court Rule 46

by Professor John F. Duffy, George Washington University Law School

You got to know when to hold 'em, know when to fold 'em
Know when to walk away, know when to run                       
               
                                       — Kenny Rogers in The Gambler
_____________________________

Kenny Rogers’ hit song The Gambler provides some wise strategic advice, valid not only in cards and but also in law and perhaps in life generally:   If “fold ’em” is an option, sometimes it is the best one. Supreme Court Rule 46 on “Dismissing Cases” provides petitioners in Supreme Court cases the opportunity to “fold ’em,” and in the days remaining before the Supreme Court delivers an opinion in its Bilski v. Kappos case, the most puzzling question in the case has become this: Why won’t the petititoners in Bilski fold?

From the perspective of the petitioners, the case for seeking dismissal seems overwhelmingly strong. In the months since the oral argument in Bilski, every Justice save Justice Stevens has delivered an opinion from the set of cases argued in the November sitting. Bilski remains the only case not decided from that sitting. Because only one case remains undecided and only one Justice has yet to deliver an opinion from that month, there is widespread agreement among those familiar with Supreme Court practice that Justice Stevens is writing the Court’s opinion in Bilski. Thus, the petitioners are now reduced to hoping that Justice Stevens, who once argued in dissent that all software should be outside patentable subject matter, will author an opinion that will be more pro-patent than the positions taken by all but one of the Federal Circuit judges.

But there’s more. Not only do petitioners have no realistic hope of winning anything in the case, they also have much to lose by persisting in the appeal. Petitioners—the named inventors in the application, Bernard Bilski and Rand Warsaw—and their firm WeatherWise have other patent claims, some issued and some pending, that pass the machine-or-transformation test but that may not pass whatever test Justice Stevens is busy constructing.

That’s a quick summary of the case for the petitioners seeking dismissal of Bilski. The details only make the case stronger. Then again, there is also a distinct possibility that petitioners’ side of the case may want to lose.

The Petitioners’ Chances for Victory: Nil.

Any rational consideration of persisting in a legal case should begin with a frank assessment of the chances for gain and loss.   I’ll begin with the chances for gain, for they are as close to zero as can be imagined.

Good poker players learn to read other players’ “tells,” subtle clues which give hints about the likely outcomes if the hand is played to completion. In Bilski, the Supreme Court has also given some awfully clear “tells” that do not bode well for the petitioners.

Most importantly, the assignment pattern of the Court’s opinions strongly suggests that Justice Stevens is writing the opinion. The assignment of opinions in the Court is typically done with two goals in mind: (1) to give each Justice the chance to author at least one majority opinion from each sitting; and (2) to average out the number of majority opinions written by each Justice. Twelve separate cases were argued in the November sitting, including Bilski. (This counts two cases—Graham v. Florida and Sullivan v. Florida—as effectively one case, as the two cases involved the same issue and were eventually decided the same day.) Every Justice has delivered a majority opinion from that month, with the exception of the Justice Stevens. Thus, most Supreme Court watchers would predict that the one remaining opinion from the month—Bilski—was assigned to Justice Stevens.

There is some uncertainty about this result, however. Pursuant to Supreme Court Rule 46, one of those twelve cases (Pottawattamie County v. McGhee) was dismissed two months after the oral argument, so the Justice assigned to write the opinion in that case is not publicly known. Still, Stevens still remains the most likely candidate to have been assigned the Bilski opinion because of the larger pattern of assignments from the Court’s first three sittings (September, October and November). During those three months, 26 cases were argued. If the Court were trying to average out the workload among the Justices, then every Justice save one should have been assigned three majority opinions to write.

By now, all Justices have delivered three majority opinions from those first sittings with the exception of Justices Stevens and Sotomayor. Justice Stevens has delivered only one majority opinion (a case argued in October); Justice Sotomayor has delivered two majority opinions (one each from October and November). It seems highly likely that Justice Stevens was assigned only two majority opinions to write from the first three sittings because Stevens was also writing the principal dissent in Citizens United v. FEC, the hugely important campaign finance case to which the Court gave expedited consideration.   (If, however, Justice Stevens was originally assigned three majority opinions, then he would have definitely been assigned Bilski.) Assuming Justice Stevens was assigned only two majority opinions, then the assignments to write majority opinions in Bilski and the now-dismissed Pottawattamie County case would have been distributed to Stevens and Sotomayor. Sotomayor would seem like the natural for Pottawattamie County, which involved the immunity of state prosecutors from civil liability, because Sotomayor served as a state criminal prosecutor under New York City’s Robert Morgenthau. Stevens, by contrast, was an antitrust lawyer before becoming a judge, and he has shown significant interest in patentable subject matter.

Another clue to the authorship of Bilski comes from the lengthy delay in announcing the opinion. As previously mentioned, Justice Stevens wrote the principal dissent in the Citizens United case, which was heard and decided on an expedited basis by the Court because of the case’s importance to the spring primary season. Stevens’ impassioned dissent in that case ran for 90 pages, and that opinion seems to have delayed the release Stevens’ other majority opinions. Indeed, for two months after the January decision in the Citizens United case, Justice Stevens was the only Justice on the Court not to have delivered any majority opinion during the entire Term.

If, as seems likely, Justice Stevens is writing the majority opinion in Bilski, that is an awful omen for the petitioners. Justice Stevens wrote the majority opinion for the Court in Parker v. Flook (1978), which created the enigmatic rule that certain forms of “post-solution activity” cannot transform an unpatentable principle into a patentable process. Justice Stevens is also one of the few Justices ever to attempt to draw bright-line rules for excluding whole fields from the patent system. His dissent in Diamond v. Diehr, 450 U.S. 175, 193 (1981), sought to promulgate “an unequivocal holding that no program-related invention is a patentable process under § 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer.” 450 U.S. at 219.

In addition to the Court’s fairly clear “tell” that Justice Stevens will deliver the opinion of the Court, there are other signs that the petitioners’ chances for ultimate success are nil. The oral argument did not go well at all for petitioners’ counsel (to put it mildly), and a significant portion of the government’s argument was devoted to arguing that the Court should not impose a more restrictive rule than that sought by the PTO (e.g., a complete ban on business method patents, whether machine implemented or not). See Transcript of Argument at 40-50. In addition, at the Federal Circuit, even Judge Rader—one of the two judges willing to take a more comprehensive view of patentable subject matter—stated explicitly that he would agree the petitioners’ claims were unpatentable as abstract ideas.

Finally, if more evidence were needed, there is the PTO’s extraordinary record of success at the Supreme Court in patent cases. Two recent articles, one by Colleen Chien of Santa Clara University and one of my own, have independently noted that, since the creation of the Federal Circuit, the government’s substantive positions on patent law have always prevailed at the Supreme Court. See Colleen Chien, Patent Amicus Briefs: What the Courts’ Friends Can Teach Us About the Patent System (2010); John F. Duffy, The Federal Circuit in the Shadow of the Solicitor General, 78 G.W.U. L. Rev. 518 (2010).   The petitioners in Bilski must hope that the Supreme Court will finally rule against the government, and in an opinion by Justice Stevens, stake out a much more pro-patent position than every judge on the Federal Circuit save one.

The Value of Dismissal.

The impossibly slim odds of winning would not matter to the petitioners if they had nothing to lose from persisting in the appeal. But petitioners Bilski and Warsaw have at least two pending patent applications on business methods for hedging risk. See U.S. Pat. App. 200030233323 A1 (Dec. 18, 2003); U.S. Pat. App. 20040122764 A1 (June 24, 2004). Furthermore, Petitioner Warsaw also is the named inventor on several issued claims in a patent assigned to the firm WeatherWise.   See U.S. Pat. No. 6,785,620 (2004). Many of the claims in that patent would seem to pass the machine-or-transformation test, as the claims cover “system[s]” that include various modules for storing and manipulating data. Some claims are also directed to a “computer-readable medium having stored thereon instructions,” which is a form of claim for covering business software that the government currently views as permissible but that could be jeopardized by an unfavorable Supreme Court opinion in Bilski.   

If the Bilski case were dismissed, a decision about patentable subject matter would be left for the future. From the standpoint of petitioners, the future would better for two reason. First, Justice Stevens would be replaced by a new Justice, likely Elana Kagan. That change has to favor those on the side of the petitioners since Justice Stevens takes a more restrictive view of patentable subject matter than many of the other Justices on the Court. By contrast, the Solicitor General’s Office under Kagan expressly endorsed the position (stated during the Bilski oral argument) that the Federal Circuit had correctly decided State Street Bank v. Signature Financial. See Transcript of Oral Argument at 44. The future also presents the possibility of a different case, with perhaps more attractive facts.

Dismissal: Still Time?

Supreme Court Rule 46.1 allows any case to be dismissed, even after the oral argument, by agreement of the parties. The Rule directs that, upon filing of such an agreement, the Clerk of the Court, “without further reference to the Court, will enter an order of dismissal.” Furthermore, Rule 46.2 allows petitioners unilaterally to seek dismissal by agreeing to pay all the court costs and fees due. (Such costs and fees are not attorneys’ fees but merely the minor costs associated with the appeal that are paid by the losing party in any case.) The grounds on which respondents may object to such a filing are strictly “limited to the amount of damages and costs in this Court alleged to be payable or to showing that the moving party does not represent all petitioners or appellants.” The Clerk of the Court is directed “not [to] file any objection not so limited.”

The Rule reflects a very clear policy that the Court will not plunge ahead to decide a case if the petitioners have decided to “fold ’em,” and that policy makes perfect sense from the Court’s perspective. The Supreme Court has plenty of cases to decide, and important issues eventually percolate back up to the Court if they really need to be decided. Indeed, in the November sitting alone, the Pottawattamie County case was dismissed even though argument had been heard two months earlier and the case involved an important issue about the scope of prosecutors’ immunity.

True, if the Solicitor General’s Office were unwilling to agree to the dismissal, it is unclear what would happen. At oral argument, however, the advocate for the Solicitor General’s Office emphasized that the government thought the Court should never have taken the case because it was an “unsuitable vehicle” to decide questions of patentable subject matter. Transcript of Argument at 48. Moreover, the Solicitor General’s Office is very much a repeat player at the Supreme Court, and thus the Office tends to be willing to follow not just the letter but also the spirit of the Court’s rules. Since those rules reflect a fairly clear policy that petitioners’ dismissals should not be opposed unless the petitioner either is not willing to pay costs or does not represent all petitioners, the Solicitor General’s Office seems unlikely to attempt to thwart dismissal where the petitioners comply with the conditions of Rule 46.

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.  

126 thoughts on “Bilski, Kenny Rogers and Supreme Court Rule 46

  1. 6, it is a war. This battle you lost. Stop calling people a “tard.” It smkes you sound like you are about 14 years old.

  2. 6 wrote: “The Bilski application tardface. Jes us you’re a tard.”

    The abbreviations I use for Diehr CAT, or DCAT, that stands for Concept or Application Test was established as reigning Supreme Court precedent by Diamond v. Diehr, 450 U.S. 175 (1981), a 1981 U.S. A Supreme Court decision which settled the law for 101 patentable subject matter for 30 years.

    Bilski was an opinion set by the CAFC and attempted to set as law the MOT or Machine or Transformation test as the “sole” test for 101 subject matter eligibility.

    The SCOTUS over ruled CAFC on that issue and upheld it’s long standing 101 precedents most recently settled in Diamond v. Diehr.

    And while the CAFC in Bilski relied on some aspects of Diehr by applying a very narrow interpretation of the 1981 decision it was the SCOTUS Diehr and NOT the CAFC Bilski that set the earlier precedent of concept and application.

    So you are wrong. And lose again.

  3. “In fact show me one so called business method that does not pass MOT and still does not pass 101 and I will show you one that fails the Diehr CAT, Concept or Application test.”

    The Bilski application tardface. Jes us you’re a tard.

  4. “6, that is what you said about Bilski and what Stevens was going to do to us. You lost. Take it like a man.”

    That is what I said I would LIKE to happen and what SHOULD have happened if the USSC were to follow the actual law. You will notice however, I had posted several times that what I actually figured would happen was some nonsensical opinion and exactly what happened to MOT. I didn’t “lose” insomuch as I didn’t “win”, and neither did you. There is a difference between wanting something to happen coupled with thinking it should happen, and in thinking what will happen. Tard.

    In fact, overall, I very much “won” in so far as MoT, in loose form is around, which is precisely what I said was the best indicator we have and that I couldn’t come up with anything better save for the subjective “test” of the “useful arts”. And I posted many times that such was too subjective for the court to want to hold that way. And they didn’t, oh well. Hopefully congress will fix at least this blunder for now.

    Further, despite what pingerdoodle states, you probably may as well call examiners god-kings of 101 now. Conclusory findings will be just fine. Watch. Ping thinks differently, but apparently he didn’t read the examiner’s original rejection in Bilski. Conclusory much? Methinks yes. I have news for you, that rejection went through all the levels of appeal just fine.

    Also, regardless of how procedure ends up, you’d be wise to not count yo chickens before they Hatch, or should I say Leahy.

  5. >> don’t think you’ve yet seen Scalia’s disdain >>for software nonsense full-force just yet. But >>you likely will. And I will lol on that day.

    6, that is what you said about Bilski and what Stevens was going to do to us. You lost. Take it like a man.

    Scalia is old. Obama removed plus a new conservative.

  6. 6 wrote: Just ignore AI’s current ret ardation. He apparently thinks he “won”. He’ll be in for a rude awakening when his apps start to wind their way to the CAFC.

    ____________________________________

    You are apparently suffering from the delusion that a level IQ 6 examiner has the same power as a Supreme Court Justice, and that the board is the SCOTUS.

    But just in case you have not been keeping up on current events I am glad to reiterate them here …..

    Business Methods upheld as statutory subject matter!

    MOT is NOT the exclusive test!

    Diehr ( particularly the application test) remains good law!

    Computer software lefted untouched!

    Stevens ( 6 Main Man ) is Gone!

    INVENTORS WIN!

    INVENTORS WIN!

    INVENTORS WIN!

    YAY!!!

  7. IANAE: It seems pretty clear to me how it will be handled.

    AI: Well, you are only one person, right now. And you are not on the SCOTUS, thank God.

    IANAE: The Supreme Court clearly said that MOT is a clue to patent eligibility, and it’s the only clue they mentioned. They provided no clue as to when a claim that fails MOT is non-abstract and therefore patent-eligible.

    AI : Wrong, Justice Kennedy spelled in out quite nicely and I have quoted him exactly several times now. The fact that you simply choose to ignore his opinion and say no clue was given says more about your ability to face reality than anything else.

    IANAE: It stands to logic that if anyone expects to get a non-MOT claim allowed through the PTO as being non-abstract, that person needs to get a clue.

    AI: In the event of no MOT you have the Diehr preemption of concept or application argument to rely on. And since SCOTUS just ruled MOT is not exclusive and cited Diehr as the so called test to pass in that case you have a precedent that is pretty much slam dunk at the SCOTUS level.

    But why worry about it when 99.9% of all so called business method claims pass the MOT test with flying colors?

    In fact show me one so called business method that does not pass MOT and still does not pass 101 and I will show you one that fails the Diehr CAT, Concept or Application test.

  8. “The best the anti-patent group can hope for is a replacement for Stevens, the best the good guys can hope for is that Kagan breaks party lines and votes with the conservatives.”

    I don’t think you’ve yet seen Scalia’s disdain for software nonsense full-force just yet. But you likely will. And I will lol on that day.

    Also, the “best” we can hope for is Leahy getting off his arse and fixing this legislatively.

  9. “Had Scalia been with us, it would have been total victory–complete and total.”

    Had Scalia been with us, it would have been total victory–complete and total.

  10. Just ignore AI’s current ret ardation. He apparently thinks he “won”. He’ll be in for a rude awakening when his apps start to wind their way to the CAFC.

  11. Max: I have no idea where the borderline is crossed, between “abstract” and “not abstract”. I have no idea how the non-obviousness of the foundation “abstract” idea will now get handled in the PTO

    It seems pretty clear to me how it will be handled.

    The Supreme Court clearly said that MOT is a clue to patent eligibility, and it’s the only clue they mentioned. They provided no clue as to when a claim that fails MOT is non-abstract and therefore patent-eligible.

    It stands to logic that if anyone expects to get a non-MOT claim allowed through the PTO as being non-abstract, that person needs to get a clue.

  12. Max: I’m a bit puzzled about the triumphalism. The last time that the UK Supreme court rendered a plurality of opinions and a 3:2 split on a key point of patent law was on novelty in the 1960′s, as I recall (van der Lely v. Bamford). Ever since, it was cited more to show how 50:50 the point is, rather than to extinguish all debate.

    AI: That is UK this is USA, get on the right country at least !

    Max: Now, what does “abstract” mean? Will the CAFC soon tell us, in another bundle of concurrences and dissents? And, if so, what selective use will the individual Justices make, of the various elements in the bundle of Bilski opinions?

    AI: Go read tea leaves. And what does this have to do with the total Mooney smack down?

    MAX: I have no idea where the borderline is crossed, between “abstract” and “not abstract”. I have no idea how the non-obviousness of the foundation “abstract” idea will now get handled in the PTO and (in due course) by the CAFC, for a claim that happens to include a machine element or a transformation step.

    AI: Then you need to go back and read Diehr. Apparently Kennedy did and he laid it out very nicely in Bilski. BTW, I beat MM and 6 silly with this Diehr case last year..lol So it’s particularly satisfying to see it’s principles upheld and used here for victory.

    Max: But, meanwhile, I do not yet see the MM pants as having been beaten off him. Not by a long shot.

    AI: of course you wouldn’t. But thanks for the opportunity to GLOAT some more :-D

    Let’s go to the highlights shall we mate?

    Business Methods upheld as statutory subject matter!

    MOT is NOT the exclusive test!

    Diehr ( particularly the application test) remains good law!

    Computer software lefted untouched!

    Stevens ( 6 Main Man ) is Gone!

    INVENTORS WIN!

    INVENTORS WIN!

    INVENTORS WIN!

    YAY!!!

  13. >>But, meanwhile, I do not yet see the MM pants >>as having been beaten off him. Not by a long >>shot.
    His pants were beaten off him by what he said would happen at the SCOTUS. Stevens did not win. We can always count on you Max to conflate issues. You remind me of the aged aunt in a slapstick sitcom.

    I do agree with you, though, Max, that this is long from being over and the courts can still come up with bizarre definitions of natural law, abstract idea, and natural phenomena. And, that Benson, Flook, and Diehr provide plenty of ammunition to invalidate almost any patent.

    Had Scalia been with us, it would have been total victory–complete and total. We can only hope that Scalia hangs on and Obama is removed from office in the next election and replaced by a conservative who will replace Scalia.

    One thing, though, is that Kagan may not be as strongly opposed to patents as Stevens. But, then Sotomayer sat in the liberal camp and signed onto a shameful opinion. The best the anti-patent group can hope for is a replacement for Stevens, the best the good guys can hope for is that Kagan breaks party lines and votes with the conservatives.

  14. I’m a bit puzzled about the triumphalism. The last time that the UK Supreme court rendered a plurality of opinions and a 3:2 split on a key point of patent law was on novelty in the 1960′s, as I recall (van der Lely v. Bamford). Ever since, it was cited more to show how 50:50 the point is, rather than to extinguish all debate.

    Now, what does “abstract” mean? Will the CAFC soon tell us, in another bundle of concurrences and dissents? And, if so, what selective use will the individual Justices make, of the various elements in the bundle of Bilski opinions?

    I have no idea where the borderline is crossed, between “abstract” and “not abstract”. I have no idea how the non-obviousness of the foundation “abstract” idea will now get handled in the PTO and (in due course) by the CAFC, for a claim that happens to include a machine element or a transformation step.

    But, meanwhile, I do not yet see the MM pants as having been beaten off him. Not by a long shot.

  15. Posted by: West Coast Guy | Jun 30, 2010 at 05:43 PM: Well, yes. At least some of your statements were spot on.

    __________
    :-D

  16. AI Gloating Big Time,

    “Ultimately, it will be Sotomayer that saves the day for a 5/4 split in favor of striking down the the strict machine or transformation test.”

    Well, eh, not really. I think you missed the mark by four justices seeing that there was no split with all nine justices striking down the MoT test.

    “As for as Bilski the SCOTUS will send his case back to be reviewed for 102 and 103, if they can do that. Thats what should be done anyway.”

    Well, I’m not sure that “affirmed” means “reversed” (i.e., sending the case back). A 50-50 guess was a nice try.

    “Look for the SCOTUS to say its long standing precedent is clear and still good law and while the machine or transformation test can be used its not the only one….Also, do not expect the court to specifically address software patents and the ruling while not eliminating software will still leave the issue open for debate and possible future court challenges.”

    Well, yes. At least some of your statements were spot on.

  17. “and possibly bring a couple of non forward thinking justices with him like Scalia and Thomas. Ultimately, it will be Sotomayer that saves the day”

    Posted by: ping | Jun 30, 2010 at 05:20 PM: Um, that’s hardly “In fact AI was right on the money.”

    Considering all that WAS right on the money in this post, I would consider pointing that out as nit picking. None the less as we used to say in High School…

    We Won The Monkeys Lost.

    In this case the baboons too.

  18. and possibly bring a couple of non forward thinking justices with him like Scalia and Thomas. Ultimately, it will be Sotomayer that saves the day

    Um, that’s hardly “In fact AI was right on the money.

  19. Posted by: Night Writer Patent Attorney | Jun 30, 2010 at 03:56 PM: Had Stevens won MM would be all over this blog putting people down. As it is, he apparently is claiming victory while keeping his head low.”

    MM is still locked in his air plane rest room without a reservation and writing Tea Bag epithets on the wall.

    Hey Mooney…

    DING DING DING! We have a winner!

  20. Night Writer Patent Attorney wrote: “Well, Duffy, it seems the real patent attorneys called this much closer than the academics. Should give you pause.”

    Actually, Actual Inventor was closer than anyone. In fact AI was right on the money. See for yourself. Way back in June of 2009 AI posted the following prediction:

    “http://www.patentlyo.com/patent/2009/06/bilski/comments/page/6/#comments
    Just read the Boston AIPLA Amicus brief for Cert. Wow! Now I see why the SCOTUS granted Cert and there is no doubt that the Bilski test will be struck down as the exclusive test for 101 eligibility.
    However it wont be unanimous. The SCOTUS itself has historically been split like the entire population, on 101 issues and old Stevens, the Diehr dissenter is still on the bench. He could finally get his chance for revenge for Flook and possibly bring a couple of non forward thinking justices with him like Scalia and Thomas.
    Ultimately, it will be Sotomayer that saves the day for a 5/4 split in favor of striking down the the strict machine or transformation test.
    As for as Bilski the SCOTUS will send his case back to be reviewed for 102 and 103, if they can do that. Thats what should be done anyway.
    Look for the SCOTUS to say its long standing precedent is clear and still good law and while the machine or transformation test can be used its not the only one. A pioneering technology or inventions test can also be considered. Such pioneering inventions will make it pass 101 and most likely 102 but may still fail under 103 with KSR.
    The court will also point out that physical acts that carry out a series of steps to make or use some thing are all eligible whether are not they are dependent on a machine or transform any article. Leaving patent attorneys to argue over the meaning of the work “make.” You gotta love patent attorneys.
    Also, do not expect the court to specifically address software patents and the ruling while not eliminating software will still leave the issue open for debate and possible future court challenges.
    Well, there you have it! Hmm wonder if I can submit an Amicus brief. The court needs to hear from an “Actual Inventor”

    Posted by: Actual Inventor | Jun 05, 2009 at 10:41 PM”
    __________

  21. Had Stevens won MM would be all over this blog putting people down. As it is, he apparently is claiming victory while keeping his head low.

  22. >>a lot closer than you might think

    We got it right and the academics got it wrong. Had Stevens prevailed we would be having a different conversation.

    Stevens lost and we can only hope his line of reasoning will die out with him leaving the SCOTUS. It must be a great disappointment. He and Stern have lost. I feel no sorrow for either of them as I believe their opinions are result oriented and as such evidence that Stevens is not fit to serve on the SCOTUS.

    I will vote for a conversative for president so as not to get another Sotomayer (unless a miracle occurs and Kagan votes for patents and against her clique.)

  23. Duffy, amongst the other academics was a lot closer than you might think (and a lot closer than many real patent attorneys care for). Had Stevens prevailed, weda been tossed back to the stone age – as it played out, the potential gambit of purposefully losing almost achieved the time warp.

  24. Well, Duffy, it seems the real patent attorneys called this much closer than the academics. Should give you pause.

  25. “she was very much involved in the oral argument.”

    Funny how some people love to hear themselves talk…

  26. Choice B:

    How do you think I’m gonna get along without you when you’re gone?
    You took me for everything that I had and kicked me out on my own
    Are you happy? Are you satisfied?
    How long can you stand the heat?
    Out of the doorway the bullets rip to the sound of the beat (Look out)

  27. Choice A:

    But it’s been no bed of roses
    No pleasure cruise -
    I consider it a challenge before the whole human race -
    And I ain’t gonna lose

  28. Because this is the day, there won’t be a need to keep reporting the release of Supreme Court decisions as it occurs.

    Please tune into link to scotusblog.com for a real-time and hands-on report of opinions as the clerk hands them to the public.

  29. >>about 101 and Google’s patent.

    I think Duffy may have made a 180 degree turn on this, but I will give him credit for finally getting it right. And, I am loath to fight with someone on our side when the opposition to information processing patents is so insanely irrational.

    Just read the top articles even in the New York Times and what is clear is that information processing is on the verge of replacing 10′s of millions of people. How could a machine that is repacing people not be eligibl for patentability? Stevens comment that you just go and get some twerp to program the computer is not only insulting but shows an ignorance so vast that I do not think he is qualified to sit on the supreme court.

  30. Plus, who else can get Congress to move at lightening speed (even if the final question of legality is yet to be answered – think appointments).

    It’s a good thing he’s emulating me.

  31. Nice article. Sometimes I agree with him and sometime I don’t, but in my opinion, Duffy is the leading legal thinker about patent law. If you ahve not already read it, read his article about 101 and Google’s patent.

  32. Just a guess that Judge Sotomayor will have written the majority opinion. She has had contact with IP and is in a good position to do so. Also she was very much involved in the oral argument.

  33. Which of those multi-national corporations actually gives a shxt about owning business method and/or software patents?”

    Hint: one of them begins with “Micro” and ends in “soft” another starts with “IB” and ends in “M.” Those are just two really big ones.

    (This is what happens when you spend too much time in mom’s basement…)

  34. Mr. Cole,

    I too am astonished at all matter of statements made on anonymous internet message boards these days. It’s as if humanity has collectively found its mental rubbish pile (if not loo) that it has missed these past few ten-thousand years. I’m hopeful that the Bilski hysteria seen here will be equally deserving of a place in the dustbin.

  35. 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.

    Same could be said of Dred Scott eh? Could it be that the owners simply want there Constitutional and Statutory rights to be recognized and upheld? And thats a worth while pursuit no matter the cost, even if the political winds of the day seem to be blowing against them.

    After all Professor Duffy, not you, nor Professor Dennis nor anyone on this blog and out there in the entire esteemed patent community can objectively define what a business method is and why such a thing should be banned.

  36. Lente lente currite noctis equi (again).

    It is getting towards evening London time, and those of us with an interest in Software Patentability will be scanning Patently O and the SCOTUS webiste every few minutes between about 3.00 and 3.30 UK time tomorrow (hence the reference to Dr Faustus).

    And Dr Zaius, over here the MOT test is something that my automobile is subject to every year as a condition of keeping it on the road.

  37. My prediction:

    The Mo-T test will stand as yet one of several available tests to determine patentable subject matter, and one new test will emerge. The new test shall be called the MON-Back test.

  38. Mr. Bakels, I can understand why it seems odd that litigants can unilaterally kill a Supreme Court case right up until the moment it issues.

    The Supreme Court generally takes cases either (1) because the question presented is really important, or (2) to restore uniformity where lower courts have given different answers to the same question of federal law. (Supreme Court Rule 10). And both of those things have more to do with the public interest and with the law in general than with the litigants in an individual case.

    That said, the Supreme Court isn’t a legislature, and the Constitution limits the courts to deciding “cases” and “controversies.” When the parties settle, when one party dies, or where the dispute is otherwise rendered moot, the Supreme Court has to drop the case, even if a lot of work has gone into it and the public would benefit, because there is no longer a “case” or “controversy” for the court to decide.

    There are at least 2 reasons why this isn’t such a bad thing.

    1. If the case is truly important enough to deserve review at the Supreme Court, another one will come up soon enough. In a big sentencing case 3 years ago, Mario Claiborne, the defendant, was shot while out on bail while his Supreme Court case was pending–after oral argument had already happened. The Court dismissed it as moot. link to supremecourt.gov The Court granted cert in another case presenting similar issues and decided it the following term. If the Bilski issue is that important, but the petitioners drop the case, there should be other cases out there soon enough. In fact, Mayo v. Prometheus presents similar issues and has been on hold for months while the Supreme court decides Bilski. If Bilski drops it, the Court can just grant cert in Mayo, pick up where it left off, and issue an opinion next fall. link to supremecourt.gov

    2. Actual facts and actual adversaries tend to make for better decisions. The Supreme Court doesn’t make law in the abstract. Whatever rule they announce in Bilski will have to be applied to Bilski’s actual patent application. If it turns out that Bilski doesn’t care about his patent anyway, the court won’t have to consider the effects of its decision at the time it makes it.

    Perhaps the rule is inefficient, but I think it’s fine in the long run as it restrains the judiciary and makes for higher quality decisions.

  39. more popular than you think

    1) I’m the guy that Prof. Duffy is emulating
    2) He’s not that advanced yet in his poetical stylings. Give him time.

  40. “lyrics is more popular than you think…”

    1) It’s professor Duffy – who the heck are you;

    2) he’s not using lyrics to hit on vulnerable chicks.

  41. There was a guy named Kelly
    who I told it to.
    He said surely to get cracking,
    before it’s stolen from you.

    Then I told a Lawyer?,
    that claimed it wasn’t a go.
    so for the SNQ question,
    Kelly’s the one that knows

  42. Is seems amazing to me that the parties simply can withdraw a case from the SCOTUS. In my country, the Supreme Court still can pursue cases where parties withdraw – “in the interest of the (development of) law” (yes, it is an exception, but it is possible). Isn’t the purpose of SCOTUS interference (accepting certiorari) to develop the law, more than serving the specific interest of the parties involved?
    I would feel sorry for Justice Stevens if his career ends with his “farewell present” being taken away.

  43. Is a horse’s brain patentably distinguishable from a Supreme Court Justice’s brain?

    We’ll know when the hay comes out of the barn on Monday.

    (Are there any SCt Whisperers out there? Anybody? Bueler? Anybody?)

  44. The government’s objective surrounding the Bilski opinion is a direct and proximate result of business method Pat. App. 11153118 entilted, “System and Method for Out of Area Behavior Modification in Schools,” recognized as PUBLIC (and private) SCHOOL DISCIPLINE. The sole inventor of Pat. App. 11/153,118 would obtain an international monopoly in “[S]econdary level educational environments,” which the U.S. government wants. Rejecting Bilski will allow the U.S government to capitalize on App. 11/153,118. The Federal Circuit (circus) improperly heard, ruled whereas affirming the decision of the U.S. District Court of Eastern Missouri; Case No. 4:05-cv-1344, Clark v. Crues et al., a Civil Rights Complaint changed by the District Court into a Patent Infringement Lawsuit(the court ordered plaintiff to amend his complaint to include a patent infringment cause of action) even though no patent had been claimed. The District Court then dismissed Clark’s Patent Infringment claims “With Prejudice” because he had no valid patent, whihc Clark never claimed to have. The Bilski conspiracy began in August 2005; Case No. 4:05-cv-1344. If only Ronald Reagan was still president!

  45. The state of the horse’s brain undergoes a transformation…

    Thomas Jefferson wrote extensively about various states of the horse brain in his 1803 letters to Franklin.

  46. If they were to decide the case on the grounds that most people seem to agree on — obviousness — they could in dicta ask that Congress clarify patentable subject matter.

    I don’t think the issue of obviousness is before the court. Did the PTO even reject the application for obviousness?

    I wonder whether this will come down to interpreting “useful arts” in the Constitution, or whether the Court will read “process” from the statute as narrowing “useful arts.” It occurs to me that certain justices like Scalia might say that “useful arts” has the meaning it had in the late 18th Century, and so Congress has no authority to expand patentability to processes that, say, Thomas Jefferson would not have recognized as a useful art.

    Of course, the “method of training a horse” that was discussed at oral arguments arguably is a useful art, but is it a process? The state of the horse’s brain undergoes a transformation…

  47. Professor Duffy was a hapless law clerk for Justice Scalia. He remains close to Scalia’s circle through the Federalist Society and professional contacts. Is there any reason to doubt that Professor Duffy has received word that the opinion is devastating. Might this piece be Cassandra’s best efforts at warning King Priam?

  48. Justice Stevens is writing the Court’s opinion in Bilski. Liberal justice Stevens will issue an opinion against corporation (more likely to have business methods inventions) that supposedly “favors” the individual inventor (less likely to have business methods inventions).

    At first, it will seem that Liberal justice Stevens will diminish the ability to get business methods patents. However, Corporations will figure a way to work within the new legal structure (via their high priced attorneys) and the individual inventor will be left out in the cold.

  49. Needless to say, nothing but perseverance can lead a man to the way of success. In other words, a persevering man never does his work without succeeding in it. This is indeed unchangeable truth.

  50. You see unlike Schechter, the court here is not thwarting the power of the Executive branch; rather, it is thwarting the power of some of the most power political entities on the planet:multi-national corporations.

    Which of those multi-national corporations actually gives a shxt about owning business method and/or software patents?

  51. It is interesting that most seem to be resolved that it will be Stevens who will hammer the proverbial nail in the coffin of software patents. Those should remember it was Stevens who was the most liberal toward the definition of what could be a software “component” in Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746 (2007).

    There, the Supreme Court addressed whether §271(f) extends to computer software first sent from the United States to a foreign manufacturer on a master disk, or by electronic transmission, and then copied by the foreign recipient for installation on computers made and sold abroad. The Majority, led by Justice Ginsburg, held that §271(f) applies to “the very components supplied from the United States, and not copies thereof,” and thus because the foreign manufacturer did not install the actual copies of software that Microsoft exported from the United States, it was not liable under the statute.

    The Majority determined that software could become a “component” but only when “an actual, physical copy of the software [is] delivered by CD-ROM or some other means capable of interfacing with [a] computer.” Id. at 1755-56. Ginsburg reasoned that the “extra step” of placing the intangible software “onto a medium that can be read by a computer … is what renders the software a usable, combinable part of a computer,” and distinguished it from the abstract. Id. In their concurring opinion, three justices, led by Justice Alito, were of the opinion that a ‘physical object’ such as a disk incorporating the computer program is required at all times, and that an otherwise infringing computer would no longer infringe once the disk is removed. It was enough to find in this case that, because no “physical part of the disk became a physical part of the foreign-made computer,” no component was ‘supplied’ from the United States.

    In his dissent, Justice Stevens, took the most liberal view of the technology, believing that even a copy of software could constitute a component of an infringing device. Stevens declared that a computer program, “[w]hether attached or detached from any medium … plainly satisfies the dictionary definition of [a ‘component’].” Id. at 1763.

    We shall see on Monday…

  52. While you may not agree with my theories and ideology I dare say that I have a prediction that is very likely to be realized in short order. Given the past performance of SCOTUS on matters of technology in general, not to mention patents, I suspect that the Bilski decision with be another prime example of Schechterization of the acts of Congress and the Executive branches endeavours. I have already argued ad nauseum that the Courts have assumed a power to undermine patents on equitable grounds, despite the fact that Congress has seen fit not to allow the same. I think that SCOTUS should move very gingerly in this area given the international implications of their decisions-not to mention the powerful commercial interests that they are up against. I think that they made a grave mistake in taking this case on. You see unlike Schechter, the court here is not thwarting the power of the Executive branch; rather, it is thwarting the power of some of the most power political entities on the planet:multi-national corporations.

  53. magnum opus

    also possible that the delay is because votes have changed

    Gee, where I have heard that before.

    How big a wave of re-examination requests

    See and vote on the latest thread.

  54. I’m not an attorney, so please be gentle…

    Do you see the MoT test or its application by the USPTO changing as a result of Monday’s decision?

  55. From a USPTO/District Court docket management perspective, this case has the potential to crank the docket size up to 11 (ok, Duffy can quote Kenny Rogers, I can quote Spinal Tap). If the Court intends to upend the law on patents, they are unlikely to find a principled way to make that change non-retroactive. How big a wave of re-examination requests and declaratory relief actions can we expect?

    If they were to decide the case on the grounds that most people seem to agree on — obviousness — they could in dicta ask that Congress clarify patentable subject matter. Congress, at least, has the ability to make changes that are not retroactive and wouldn’t bury the USPTO and the courts. Unfortunately, the Court is probably as aware as the rest of us that the Senate is where good ideas go to die via filibuster.

    Innovation is what drives our economy — just read the back of your IPhone: “Designed by Apple in California. Assembled in China.” I hope that starting Monday, I won’t be able to buy a knockoff that reads “Designed by Apple in California. Assembled in China, software reverse engineered and rewritten in China, and imported without any patent royalty payments to Apple.”

  56. Prof. Duffy filed a brief and participated in oral argument at the en banc stage at the CAFC. Might be worth disclosing that here.

    This is a very odd post 3 days before the opinion issues, and reads like a taunt dressed up as something else. To paraphrase the section headings:

    1. You can’t possibly expect to win.
    2. Why don’t you just give up now?
    3. I’m serious. There’s still time.
    4. No? Oh wait, maybe you actually *want* to lose. Do you actually want to lose?

    I have to agree that the petitioners are likely going to lose. But given the extraordinary delay in this case, I think all bets are off.

    It’s probably a fair bet that Justice Stevens got the majority opinion back in November after the straw poll. It could be the delay is because he spent a lot of time writing his Citizens United dissent and its very carefully polishing his unanimous magnum opus smackdown of the petitioners to be delivered on the last day of the term.

    It’s also possible that the delay is because votes have changed, because there are a lot of separate opinions, because Justice Stevens has somehow found himself in dissent again, because the Justices simply found other cases more interesting, or because some reference took longer than expected to arrive in the mail through interlibrary loan. It’s also possible that Justice Stevens’s views have evolved. Parker and Diamond were both from back when he was regarded as a conservative.

    This post strikes me as the conventional wisdom on Bilski, plus a Kenny Rogers hook and some taunting of the petitioners. I suppose we’ll see Monday whether it’s deserved or not.

  57. Perhaps they want to lose so no one can patent Market-Destroying Algorithms and slow down their progress?

    That actually makes sense, as it is the only real world effect of these sorts of patents.

  58. ping it aint the Office’s job to protect anything. The job is to promote.

    Ah, our lawyer loves to play word games. Later our lawyer will complain about pedanticism and ‘Clintonesque’ arguments. But I digress.

    The patent statutes are intended to promote the progress of science and the useful arts. Increasing a bank account is neither science nor is it a “usefulart” in any meaningful sense of the term. To put it another way, if increasing the size of one’s bank account is a useful art, then so are methods of thinking pure thoughts. Either the term has a restrictive meaning, or it means nothing. Which is it?

    You didn’t read Ned’s post closely enough (there’s a nuance thingy there). Ned did say “invented by man”.

    There’s no nuance. The patent statutes do not allow everything “invented by man” to be eligible for patenting. I can invent all kinds of abstractions (e.g., an invisible helper who lives in my mind and helps me solve problems) but they aren’t eligible for patent protection even if they are useful to me (e.g., they make me happy).

    The accumulation of money is no less abstract than the accumulation of fame. Can I patent a method of becoming famous for 1 week? Promote the progress, indeed.

  59. Looking at the ownership of EQT, it’s a High Frequency Trading love-fest.
    Perhaps they want to lose so no one can patent Market-Destroying Algorithms and slow down their progress?

  60. Dropping the case now would not be a good idea. The USPTO is now following the MoT test exclusively and rejecting lots of applications under 101. Thus, the supremes can only make the situation better, not worse

  61. What they claimed was being a commodities market maker.

    Right, which seems overly broad relative to the new ideas actually disclosed. It seems to me that 102 and 103 should have been enough to knock those claims back to where they have looked more like a patentable invention.

  62. You are confusing…

    Sorry Sunshine – I’m not confused at all. I do beleive that you have confused the two and think them mutually exclusive. Kinda happens when you ha_te money (my token peace offering to RWA).

    focus on protecting inventions

    There’s part of your problem – it aint the Office’s job to protect anything. The job is to promote. You be looking at the wrong job. “Don’t feel bad, though. You’re not alone.” Even Breyer gets caught up in the anti-patent fever sometimes.

    Not everything, Ned. Sorry.

    Sorry, Malcolm – you didn’t read Ned’s post closely enough (there’s a nuance thingy there). Ned did say “invented by man“. Sure, it’s a bit circular (one too many red pill today), but I agree completely with Ned on what he said.

  63. Ned: This would mean that future business method innovations will remain secret. Just how this benefits mankind is not readily apparent.

    For starters, it will allow the USPTO to focus on protecting inventions with substantial utilities other than increasing the value of a number in one’s accounting ledger.

    ping I would daresay it is the primary useful art.

    You are confusing creating useful methods and compositions with the reward for creating useful methods and compositions. Don’t feel bad, though. You’re not alone. People laboring under the same delusion have applied for patents on methods of obtaining patents.

    Ned: Congress’s declared intent to allow patents on everything invented by man that is useful

    Not everything, Ned. Sorry.

  64. I look for a Stevens opinion that is joined by only a few justices with a couple of opinions concurring in the result. I do not anticipate dissents unless someone chooses to disagree with Stevens that way even though they agree the invention is not patent eligible. The upshot will be more questions than answers because no opinion will be joined by a majority of justices.

  65. Bilski has a chance even if Stevens writes the opinion. If Bilski is to lose, the Supremes will have to decide that a useful application of mathematics is not patentable subject matter — perhaps because it does not result in a transformation of something physical. This would mean that future business method innovations will remain secret. Just how this benefits mankind is not readily apparent. But it clealy flies in the face of Congress’s declared intent to allow patents on everything invented by man that is useful primarily to promote dissemination of technical for the benefit of all mankind. Even Stevens can understand this intent.

  66. Duffy has a point, but I’m still not convinced that other, less drastic scenarios are ruled out. Stevens losing the majority due to a switch, or Stevens being forced to write a narrow, non-sweeping opinion to keep everyone on board are still 10+% chance in my estimation. Maybe I’m just one of those over-confident applicants?

    I still like the conspiracy theory for a 1-line per curiam remand requesting the Fed Cir to reformulate a test without regard to Flook.

  67. Of course it is always possible that Stevens will author the opinion and reference MM’s aunt and her uncanny ability to recommend a movie.

    Let’s hope the idiots stay in the closet this day.

  68. Notwithstanding and Duffy nonsense,the opinion is going to be pro patent and written by one of the conservatives. Thomas or Roberts.

    They will figure out that the PTO is a bunch of lazy sods. You academics get it right below the noise level.

  69. Duffy But the presence of a multibillion-dollar corporation controlling the litigation decreases the chances that the strategy is due to simple inventor over-optimism.

    Because giant corporations so rarely make inane decisions.

    LOLOLOLOLOLOLOLOLOLOL.

  70. If that remedy is not the outcome the party stands to benefit from, there’s no real case or controversy between the parties.

    Are you seriously arguing that gaining a valid patent would not benefit Equitable Resources? That is the assumption that the above statement requires.

    It was Prof. Duffy who proposed that maybe Equitable Resources secretly wanted to lose the case. If that were true, then clearly Equitable Resources stand to benefit in at least two very different ways, depending on whether they win or lose their appeal. Thus it is not a black and white issue. The potential gain of a valid patent completely obliterates your assertion that it would have been abuse of process. As long as they have acted in good faith (i.e., put forth their best arguments), it cannot be abuse, even if they have a different interest in invalidating all business method claims.

    In Marbury v. Madison, Madison won the case, but the implications of the judicial review precedent absolutely diminished the power and interests of the Executive branch. Bilski obviously will not be as important as that case, but like Marbury, there is a lot more at stake here than just what was argued in November. Unlike Marbury, Equitable Resources surely knew at argument that a decision in this case may be applied to thousands of other cases. It would be naive for anyone to think that their interests end at getting a patent, or that they had not considered the implications of if they were to lose this case.

  71. It’s no answer to argue essentially that the patent system went off the rails 100 or 150 years ago.

    Nominee for the Random Thought of the Day award.

    in order to mix 101 and 103 on a sliding scale

    Funny only in a macabre sort of way – we get enough conflatin between 101 and 102/103 as it is without a test trying to tie the items together (plus look at who would have to administer such a test).

    and not merely insurance,

    Cause we all know that insurance is not a useful art.

    …or is it? (invite to AI)

    It is a black and white issue.

    It’s not a black and white issue if phrased slightly differently: A company can want to lose AND want to win – the question in grey being which do they want more? Classic conflicted state – sorta like wanting to see Ned actually cite a case correctly but doing so would prove me wrong. Of course, we all would like Ned to cite a case correctly, but Iza ha_te to be wrong. Chris rightly points out that plenty of grey exists when an outcome can benefit a party no matter what happens.

    And would anybody be really surprised if a big bad corp tanked something on purpose? Happens everyday irl.

    Of course that’s an abuse. Do you want the Supremes writing a precedential decision that affects your rights based on a case that was effectively only argued by one side and to which you were not a party?

    Happens all the time – why should this case be any different? Or do you think that every case is argued effectively from both sides all the time? Can I have a slice o’ that pie in the sky?

    Look what happened in Beauregard.

    I lol’d – if there was ever definite proof that my man IANAE is not Malcolm, this be it. I just can’t see Malcolm taking such a light view of anything related to Beauregard. Then again, I didn’t think that Ida ever see Malcolm welcome a Supreme decision that promotes outing of information related to private views (and inthe name of bravery, no less). Must be a nuance thing. (btw – is Cali really that f’ned up with a 51% Constitution change? – that would esplain lots)

    “do you think the source of pseudonymous posts on this blog (yours or mine, for example) is less suspect than the source of pseudonymous posts on Wikipedia?

    Are you really trying to say that pseudonymous posts on a blog deserve any serious or legal weight? Now that would be funny (see comment above about macabre).

    This is all probably right, but there’s always the slight possibility that Stevens lost his majority during the writing, and the flip caused further delay as both sides’ opinions were revised to reflect that. That happens every so often, and one of the tell-tale signs of a flip is when the dissent author had no majority opinions from a given sitting.

    Compare to:

    They could have released any opinion weeks ago, no matter how simple or how complicated. The fact that they haven’t released an opinion may speak to a deadlocked decision, perhaps a tussle between those camps wanting a simple decision and those wanting a complicated one. Perhaps some Justices want to apply judicial efficiency and a minimalist approach while certain other judges want a magnus opus.

    Posted by: ping Jun 21, 2010 at 03:14 PM -

    link to patentlyo.com

    Oooh – feeling all scholarly, quoting myself.

  72. If managing that risk were more complicated than “how much do people like you pay over a typical year? Okay, divide that by twelve”, it might be worthy of something.

    No, it wouldn’t. It’s still just a bunch of numbers on an errand boy’s bill. The result is the same: an increase in a number on the payee’s ledgers. Is increasing the size of one’s bank account a substantial utility under 101? Is making money a “useful art”?

    you’d have to claim the actual new thing you do, and it would have to be non-obvious over the various kinds of fixed-payout annuities, layaway plans, insurance premiums, and the like that are well known.

    Per se impossible. No unexpected results. And the problems themselves are no less abstract than any other mathematical problem.

  73. But in fact the product is not fixed as the market value of the rental property is constantly changing. Also, my need for the use of the rental space also changes over time.

    The product is fixed because per your lease you rent the same amount of space every month, even though your needs may fluctuate. Also, you don’t consume the space and need to acquire more at then-market rates. You keep using the same space throughout the term.

    For consumable commodities, it is common to buy enough to satisfy your short-term needs at regular intervals. If managing that risk were more complicated than “how much do people like you pay over a typical year? Okay, divide that by twelve”, it might be worthy of something. But you’d have to claim the actual new thing you do, and it would have to be non-obvious over the various kinds of fixed-payout annuities, layaway plans, insurance premiums, and the like that are well known.

  74. Rent is a fixed payment for a fixed product/service.

    Yes, that’s what an applicant would say if he/she was desperate to make him/herself appear innovative.

    But in fact the product is not fixed as the market value of the rental property is constantly changing. Also, my need for the use of the rental space also changes over time.

    This is the key to understanding the biz method baloney: anyone can introduce complications into an abstraction (“paying for something”) and then propose “solutions” to problems presented by those complications or ways of exploiting those complications to generate more profit for one party. It’s a frigging joke and the weasels who are proponents of patenting this jnnk know this. The con artists on wall street have been “innovating” jnnk for years in their attempts to skim money off whoever they can get to buy into their pyramid schemes. The weasels ride in with their patents on money-making methods simply because there is a deep pocket to be picked. In what sense is this “progress in the useful arts”? Where is the substantial utility?

    It’s no answer to argue essentially that the patent system went off the rails 100 or 150 years ago.

  75. Don Schlitz wrote the Gambler. Kenny Rogers made it famous, to be sure, but he did not write the lyrics quoted at the top of this post.

  76. What they described in their application was a way to evaluate co located counterparties using historical weather data to generate Monte Carlo simulations.

    What they claimed was being a commodities market maker.

  77. It’s still beyond comprehension why this is considered innovative by anybody in view of ancient contracts for future payments, e.g., rent. -MM

    Ha ha, that would be funny if Stevens took a page from KSR against bright-line tests in order to mix 101 and 103 on a sliding scale. That is, the scope of patent eligibility increases as the nonobviousness increases.

  78. It’s still beyond comprehension why this is considered innovative by anybody in view of ancient contracts for future payments, e.g., rent.

    In order to make the service affordable, and not merely insurance, you have to find a counterparty to accept the opposing risk. The challenge is doing that is the geographic specificity of weather risks.

    What they described in their application was a way to evaluate co located counterparties using historical weather data to generate Monte Carlo simulations.

    More here link to uspto.gov

  79. It’s still beyond comprehension why this is considered innovative by anybody in view of ancient contracts for future payments, e.g., rent.

    Rent is a fixed payment for a fixed product/service. You’ll want to cite an agreement to make a fixed payment for a variable or contingent service, like maybe a salaried firefighter.

  80. Fixed Bill refers to an energy pricing program in which a consumer pays a predetermined amount for their total energy consumption for a given period. The price is independent of the amount of energy the customer uses or the unit price of the energy

    It’s still beyond comprehension why this is considered innovative by anybody in view of ancient contracts for future payments, e.g., rent.

  81. Whether the company “wants to lose’ or not is of course not a black and white issue.

    It is a black and white issue. The win/lose question is about whether the party desires the remedy it has asked of the court. If that remedy is not the outcome the party stands to benefit from, there’s no real case or controversy between the parties.

    Appealing to SCOTUS for a definitive application of the law can’t and shouldn’t be held as an abuse, whether the party “wanted to lose” their appeal or not.

    Of course that’s an abuse. Do you want the Supremes writing a precedential decision that affects your rights based on a case that was effectively only argued by one side and to which you were not a party?

    If one party wants to lose the case, both parties are in agreement and the case is moot. Look what happened in Beauregard.

    There may be a question as to whether the attorney presented the best arguments he could have presented, using the best evidence he had available, which is another, even more subjective issue.

    That’s exactly why the courts can only hear cases where both parties want to win. It’s presumed that they will put forth their best arguments, and the court will make a fully informed decision that balances the two competing interests.

  82. the real party in interest in the case is Equitable Resources Inc.,

    Bernard Bilski and Rand Warsaw worked for Equitable Resources when they invented Fixed Bill Energy Pricing (the subject of the patent application). That would account for why Equitable is the real party of interest.

    link to en.wikipedia.org

  83. It definitely should. If one party wants to lose, there is no case or controversy between the parties, so it is presumably at least an abuse of process.

    … and you call yourself a lawyer (j/k). Whether the company “wants to lose’ or not is of course not a black and white issue. They own the patent and pending apps, so they quite clearly stand to benefit if the claims are found to be valid. They also may benefit in a less concrete and less provable way if their appeal fails. Surely there are also drawbacks either way. Even if they “want to lose,” that is not the same thing as having no conflicts or controversy with the lower court’s decision; far from it, in fact. Appealing to SCOTUS for a definitive application of the law can’t and shouldn’t be held as an abuse, whether the party “wanted to lose” their appeal or not. There may be a question as to whether the attorney presented the best arguments he could have presented, using the best evidence he had available, which is another, even more subjective issue.

  84. IANAE,

    “do you think the source of pseudonymous posts on this blog (yours or mine, for example) is less suspect than the source of pseudonymous posts on Wikipedia?”

    The pseudonymous comments are the “review” or “peer review” of the article, but the identity of author of the originating post is known and not dubious. Also, to the best of my knowledge, the content of the originating post does not change (but sometimes the post is supplemented).

    “At least on Wikipedia if an edit is completely ridiculous it gets reverted or corrected, and then posted to Conservapedia instead.”
    :-)

  85. The impossibly slim odds of winning would not matter to the petitioners if they had nothing to lose from persisting in the appeal. But petitioners Bilski and Warsaw have at least two pending patent applications on business methods for hedging risk. See U.S. Pat. App. 200030233323 A1 (Dec. 18, 2003); U.S. Pat. App. 20040122764 A1 (June 24, 2004). Furthermore, Petitioner Warsaw also is the named inventor on several issued claims in a patent assigned to the firm WeatherWise. See U.S. Pat. No. 6,785,620 (2004).

    Is there any reason to believe that those patents have any value even if they claimed eligible subject matter under 101?

  86. This is all probably right, but there’s always the slight possibility that Stevens lost his majority during the writing, and the flip caused further delay as both sides’ opinions were revised to reflect that. That happens every so often, and one of the tell-tale signs of a flip is when the dissent author had no majority opinions from a given sitting.

  87. WCG, do you think the source of pseudonymous posts on this blog (yours or mine, for example) is less suspect than the source of pseudonymous posts on Wikipedia?

    At least on Wikipedia if an edit is completely ridiculous it gets reverted or corrected, and then posted to Conservapedia instead.

  88. Nice, incisive article by Professor Duffy on Bilski. Still, better get out that Ouija board (and “pray for rain”).

  89. Malcolm Mooney,

    A Patently-O guest post that is subject to peer review or review in general.

    Malcolm,

    Dubious means “questionable or suspect as to true nature or quality[.]” I do not question or suspect the origin of the signor idenfied as “John F. Duffy or “Dennis Crouch” on Patently-O. I do question of suspect the origin of the signor idenfied as “John F. Duffy or “Dennis Crouch” on Wikipedia.

  90. if it could be proved that EQT “desired defeat,” would that raise any substantial legal issues for EQT going forward? If not, should it?

    It definitely should. If one party wants to lose, there is no case or controversy between the parties, so it is presumably at least an abuse of process.

    The petitioner could make some argument about needing certainty in the law for their business, although I suppose that would be seeking an advisory opinion which also isn’t quite kosher.

    Shouldn’t there be some more severe converse penalty, taking a case all the way to the Supreme Court and then withdrawing it because you fear a bad result? That kind of gamesmanship would not be well though of by the Justices.

    At this point, I’d rather just have an answer and learn how to work with it as opposed to having to go through this interminable tension all over again.

  91. I would personally prefer a decision that said,

    1) BMs are patentable as stated in STB
    2) MOT is not the exclusive test, but a good one.

    I think we are going to get 2, but the opposite of 1.

    The Supremes will decide the case on the constitution, as Rich was right in STB that the statutes do not exclude BMs as patentable subject matter and as was observed in oral argument here, simply requiring the recitation of a computer (as in STB or Beauregard) elevates form over substance.

    But, we shall see.

  92. In my opinion, I would not cite to it because the reliability of Wikipedia is dubious at best

    Compared to what?

  93. West CG -
    I think you will find that the web page citations are not critical and you will forgive her those trespasses as I have done.

  94. if it could be proved that EQT “desired defeat,” would that raise any substantial legal issues for EQT going forward? If not, should it?

    It definitely should. If one party wants to lose, there is no case or controversy between the parties, so it is presumably at least an abuse of process.

  95. The “Desired Defeat” angle is a fascinating one I had not previously considered. One can certainty appreciate how it would be in EQT Inc.’s financial interest to have a very restrictive test for processes, thereby reducing EQT’s exposure to future infringement litigation (assuming most infringement threats to EQT will be based on business method claims).

    Of couse, this is all unfounded speculation at this point, as there is less than a scintilla of evidence to suggest that EQT desires defeat. However, as a non-attorney, I have to ask you law-talking guys out there: if it could be proved that EQT “desired defeat,” would that raise any substantial legal issues for EQT going forward? If not, should it?

  96. Posting such lengthy speculations as to how Bilski will turn out just 72 hours before we all get to find out is pointless.

    The posts have the same lack of subject matter as seven months ago, they’re just less novel and more obvious now.

  97. Posting such lengthy speculations as to how Bilski will turn out just 72 hours before we all get to find out is pointless.

  98. If Justice Stevens is the author of the majority opinion, it could be the last decision published on Monday (and the term). Reverse senority is used to determine the order in which decisions are released on a given day. Since Justice Stevens has the most senority, any majority decision he authors will one of the last ones published on that day (except for maybe an opinion written by the Chief Justice).

  99. Les,

    I clicked on the link and began sifting through the pages. I have a cause for concern. I saw cites to Wikipedia. I know that some courts have accepted Wikipedia as a reference, but not all. In my opinion, I would not cite to it because the reliability of Wikipedia is dubious at best because it can be edited, published, and undone at a later date after the author’s bias has been placed into the history of the page. Also, it is not subjected to peer review.

    I am about to read the brief, but just the mere use of Wikipedia gives me cause for concern about the amici’s position.

  100. it should be a case that depends on the particular rule crafted.

    IANAE is, of course, on target again. The interesting point of this is the question on the strength of whatever opinion flows out of the Supreme Court in possible later challenges if the meat of that “flow” is shown to be not neccesary to the decision (Supreme Dicta is still mere dicta).

  101. After waiting so long I’m simultaneously desperate for the opinion and terrified of what I know it’s going to say. Somehow I doubt Bilski will wise up and fold today.

  102. The Petitioners’ Chances for Victory: Nil.

    As I noted some months ago, this is what makes the case so dangerous for the patent profession. If there must be a case that establishes a general rule for all patents, it should be a case that depends on the particular rule crafted.

    Every Justice has delivered a majority opinion from that month, with the exception of the Justice Stevens. Thus, most Supreme Court watchers would predict that the one remaining opinion from the month—Bilski—was assigned to Justice Stevens.

    Aren’t we missing a crucial point here? For Stevens to author the majority opinion, he must first be in the majority. If four other justices share his opinion, it will already look pretty bad for these abstract “inventions” no matter who writes for the court.

  103. Was Justice Stevens listening to Kenny Rogers when he made the decision to retire? Was he dealt a hand containing the Biski card and then decided to fold ‘em? Is he retiring because of Bilski? Did Bilski do Justice Stevens in? Conspiracy theorizing members of the patent bar want to know….

    What a decision to go out on…this opinion could be a doozy if Justice Stevens is the author….

  104. In my opinion, analysis of the patentability of Bilski’s claims misses the point. The real question that has attracted all this attention from the patent community and business in general (and likely keeps Bilski and Warsaw interested in the case) is whether M&T goes too far in restricting patentable subject matter under 35 U.S.C. 101.

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