Bilski at the Supreme Court

Bernard Bilski’s petition for certiorari is due within days (unless an extension is granted). I think that there is a real question of whether (and how) the patent community should react to presentation of the case. Should the patent community support this case for Supreme Court review, wait for a better situated case, or sit content with the machine-or-transformation test outlined by the Federal Circuit in the en banc Bilski decision? Each position has its merits.

The case is well developed, parties and amici have already invested time standing behind the case. Yet, the underlying invention is not compelling (a method of hedging the risk of bad weather by using commodities trading) and issues of obviousness would almost certainly cloud the issues. There are many other potential cases in the pipeline, and the Supreme Court may properly wait to see how the new Bilski rule develops before weighing-in.

22 thoughts on “Bilski at the Supreme Court

  1. 22

    I would be surprised if SCOTUS took Bilski. The Federal Circuit decided it en banc by a lopsided margin, and in a lot of ways Bilski is a Fed Circuit response to SCOTUS pressure in much the way the the Lockner Court gave in when faced with court stacking. It is the Fed Circuit’s way of saying to SCOTUS, “I get it. Tighten up on business method patents.”

    If SCOTUS took it at all, it would be to fine tune Bilski, rather than reverse its general thrust. But, I doubt that the Justices have the appetite for that endeavor, not because Bilski itself is a complicated case, but because they doubt their ability to predict how subtle adjustments to it would impact patent practice in different cases. If they punt by denying cert, they leave the door open to loosen up Bilski in facts that provide better guidance about what a modified rule should look like, rather than flying blind on the impact that a tweak would have in dissimilar cases.

  2. 21

    Thanks Andrew,

    I hope the case goes up. I think the Rader dissent frames the best reasons for accepting cert and clarifying the law. I’m not sure what the reasoning is for those people who think there is a better case. Bilski is a perfectly framed case for review. It has been groomed for review and I believe it will be accepted.

  3. 20

    AllSeeingEye, I’m not the best person to ask that question, but from what I have seen, the Supreme Court is very permissive on accepting amicus briefs from just about anyone. Of course, there is a very big difference between accepting and considering (or even reading).

    What I’ve heard from several Supreme Court specialists is that amicus briefs are far more important at the petition stage. Indeed, amici can often make the case for importance more credibily than the petitioner.

  4. 19

    Bad cases make bad law. Let Bilski rest in peace.

    Should this appeal succeed on its merits? No! No point in appealing it, is there?

  5. 18

    My thought on this is . . .

    I couldn’t care less how it goes.

    Changing the rules always results in me making more money.

    You don’t actually worry that the patent system doesn’t properly serve to protect the rights of inventors, do you?


    Another day, another thousand dollars.

  6. 17

    Finnegan Files Petition For a Writ of Certiorari in U.S. Supreme Court in Bilski Case
    January 28, 2009
    Related Professionals: Jakes, J. Michael
    Press Release
    January 28, 2009
    Contact: Chuck Kabat, Schwartz Communications
    781.608.3812 cell

    Finnegan Files Petition for a Writ of Certiorari in U.S. Supreme Court in Bilski Case

    Washington, DC – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, one of the world’s largest intellectual property law firms, announced today that it has filed a petition for a writ of certiorari in the case In re Bilski. The petition seeks to overturn a decision issued on October 30, 2008 by the U.S. Court of Appeals for the Federal Circuit which set forth a test requiring that a patentable process either be tied to a machine or apparatus or involve a transformation of one thing into something else. Applying this test, the Federal Circuit affirmed the rejection of the Bilski business method patent application by the U.S. Patent and Trademark Office.

    “Bilski goes to the heart of patent law by asking what can be patented,” said J. Michael Jakes of Finnegan. “The Supreme Court has not addressed this fundamental issue since 1981, and, in light of the very limiting test put forth by the Federal Circuit in Bilski, the time is right for the Supreme Court to weigh in.”

    Inventors Bernard L. Bilski and Rand A. Warsaw said, “We welcome the Supreme Court reviewing the case. The creation of new business methods is critical to spurring economic growth in this country. The Federal Circuit’s Bilski decision is a throwback to the 19th century when our economy was primarily manufacturing based, and fails to recognize that many inventions are based on ideas not necessarily tied to a machine or piece of equipment. Prior to the Federal Circuit’s decision, the ability to patent a business method put the U.S. squarely ahead of the rest the world in protecting valuable intellectual property assets that are integral to encouraging innovation in today’s economy. The Federal Circuit’s decision represents a step backward.”

    Wayne Sobon, Associate General Counsel and Director of Intellectual Property of Accenture and founder of, agreed, noting, “The Federal Circuit’s Bilski decision approaches the U.S. economy as if the incredible revolutions in software, the internet and business innovation of the last 30 years never happened. That’s just wrong. In today’s knowledge and services-based economy, innovation and competitive advantage depend just as much on creating new business processes as creating new widgets. Patent law should reflect the current realities of the economic marketplace.”

    The Supreme Court could decide on whether to grant the writ of certiorari before the current term ends in June 2009. Amicus curiae, or friend of the court, briefs are due on or about February 27, 2009.

    Finnegan’s petition is available on its website at

    About Finnegan
    With more than 375 intellectual property lawyers, Finnegan is one of the largest IP law firms in the world. From offices in Washington, DC; Atlanta, Georgia; Cambridge, Massachusetts; Palo Alto, California; Reston, Virginia; Brussels, Belgium; Shanghai, China; Taipei, Taiwan; and Tokyo, Japan; the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. The firm also represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit

  7. 16

    New Light–
    Wheeler can’t be squared with Comiskey. Notice who wrote the panel opinion in Wheeler–Judge Newman, one of the dissenters in Comiskey. The only voodoo that could “justify” Comiskey would be if the Federal Circuit (or the Supremes) were to announce that 101 determinations fall under the subject matter jurisdiction exception to the ordinary rules of appellate review. Except I doubt that would happen because nobody would believe them.

  8. 15

    smashmouth wrote:

    “What I really hope is that the Supremes grant cert in Comiskey. I’m still dumbfounded that the Federal Circuit could sua sponte raise 101 when there were perfectly good grounds for affirmance under 103, and the parties had NEVER argued 101 over the course of 9 years.”

    Can anybody point out how to square this with: In re Wheeler (08-1215):?


    The Board rejected the claims based solely on grounds of anticipation. The court noted that it cannot, after reversing the anticipation rejections, substitute other rejections that might be more appropriate because its appellate review is limited to the grounds relied on by the Board:

    “Our appellate review is limited to the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194, 196 (1947) (“[A] reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency. If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”).”

    Does it follow that the CAFC cannot exam applications on 102/103/112 grounds, but CAN, sua sponte, examine applications on 101 grounds?

    Has the name change for the BPAI administrators from Chief Examiners to Judges been so long ago that the CAFC believes that the BPAI is fully a part of the judicial branch and that they must support their brethern?

    Does 101 serving as a threshold somehow change the Office’s status under Chenery (“…a determination or judgment which an administrative agency alone is authorized to make…”), or has the CAFC been awarded new powers?

    Are we all just stumbling in the dark?

  9. 14

    Dear Mr. Dhuey,

    Can you give your thoughts on Amicus briefs? These days, it seems like everyone and his brother files an Amicus brief, more often than not to get their name out.

    In several of the federal circuits, leave of the court is required for filing. The S.C. appears to have no such rule.

    Must the S.C. (or the parties for that matter) accept all briefs? Notice to the relevant party is now required under the new S.C. rules so that the party can adjust arguments based on arguments advanced in the amicus brief. Can the party reject somehow?

    Of course, the court need not follow the arguments advanced in amicus brief, but my question is whether the brief must be accepted from anyone with an opinion or is there a way to limit the number of such briefs?

  10. 13

    FYI, it appears that Bilski did not seek an extension, so his cert. petition is due on Thursday (90 days after entry of judgment). Amicus briefs in support of petitioner Bilski will be due 30 days after docketing of the petition. That will probably mean a deadline of March 2nd or so for amici in support of Bilski.

  11. 12

    You are SO clever Mooney. You must be making a reference to “jumping the shark.” That shows that you are a savvy pop culture aware vanguard. Everyone is very impressed, but not as impressed as you.

    Why don’t you use your talent to find some real work and stop trying to bother real patent attorneys.

  12. 11

    Given the Supremes’ lack of understanding of technology, Bilski seems like the *perfect* case for them to review. Not a technical word to be found in the claims.

  13. 10

    I have a lingering sense of “Be careful what you ask for, you might get it.” I’m not sure I trust the Supremes to take up Bilski and attempt to clean up the mess made by the Federal Circuit. The Supremes are eminently capable of screwing things up even more. I hope a cleaner case comes up SOON.

    What I really hope is that the Supremes grant cert in Comiskey. I’m still dumbfounded that the Federal Circuit could sua sponte raise 101 when there were perfectly good grounds for affirmance under 103, and the parties had NEVER argued 101 over the course of 9 years. It takes a rare case to get Newman and Moore on the same page, and even making sense (although I’m not so convinced about the views Judge Newman expressed in her solo dissent).

  14. 9

    ASE “The notion that someone is qualified to call a claim gibberish, is p0mp0us and vitriolic.”

    And then Fonzie landed back on his water skis, and his leather jacket wasn’t even wet.

  15. 8

    The case should be petitioned, granted and heard. The Supreme Court owes us clarification of subject matter precedent in view of the conflicting state of subject matter jurisprudence and particularly in view of Bilski’s contra-position to the holding in Benson that the machine or transformation was not to be viewed as a “test.”

    Like I said before, Bilski is begging for S.C. review.

    As for “patent community” its a nice plattitude and it sounds awful nice but what is it?

    “In sociology, the concept of community has caused infinite debate, and sociologists are yet to reach agreement on a definition of the term.”

    I once heard that there is not one Patent Office but a different patent office for each person who interacts in some way with the system. Since most people have individual and often competing agendas, the idea of a patent community does not make a lot of sense.

  16. 7

    I’m ambivalent about Bilski, because the case itself is not very pretty. And given the Supreme Court’s lack of understanding of technology generally, I’d much prefer a cleaner case. One where the proponents of patents have a better argument why patents are good for the U.S. Maybe the Intel case.

  17. 6

    “There must be something approaching a bona fide invention out there that would present the issue more narrowly (i.e., more starkly) than Bilski’s gibberish.”

    On the other hand, this might be a way for SCOTUS to “have its cake and eat it, too”: it can vacate the CAFC’s Bilski nonsense and restore some semblance of order to 101, while also maintaining its “Tough on Patents(TM)” facade by rejecting Bilski’s app on other grounds (mental steps, enablement, 102/103, whatever.)

    – David Stein

  18. 5

    “There are many other potential cases in the pipeline, and the Supreme Court may properly wait to see how the new Bilski rule develops before weighing-in.”

    And that is undoubtedly what they will do.

    There must be something approaching a bona fide invention out there that would present the issue more narrowly (i.e., more starkly) than Bilski’s gibberish.

  19. 4

    The Supremes are not going to take this case, unless they intend to go farther and throw out those “business methods” — which many of them consider to be of “dubious validity”

  20. 3

    No, please no cert for Bilski.

    They’ll affirm on the facts of the case and leave us where we are.

    I’d rather see Ex parte Koo, Noguchi, or Cornea-Hasegan go up. Maybe even Godwin.

    Cornea-Hasegan has B’gard claims, too. That makes it a great case.

  21. 2

    “issues of obviousness would almost certainly cloud the issues.”

    I’ve looked over Bilski again, and I see no rejections for obviousness either by the examiner, the BPAI, or the CAFC in their new-found Comisky powers of conducting de novo examination themselves, so what obviousness issues are there to cloud things up?

    I hope you haven’t let Moonbeam convince you that 101 is about obviousness.

    Seems to me that Bilski is the best way to get State Street before the USSCt. Why is the “useful, concrete, and tangible result” test of State Street no longer valid? We’ve got tens of thousands of patents and applications riding on State Street.

    I’m not saying State Street is or should be good law, I’m just saying we need something more than Michel’s muddled, half-baked opinion and a plethora of concurrences and dissents to tell us it’s not good law.

  22. 1

    The patent community should absolutely support the appeal of this case.

    1) There is no more important question involving 35 USC in the foreseeable future.

    2) Certiorari would be particularly prudent because the CAFC basically stated: “We are going to stick very closely to what SCOTUS told us last time. That’s the whole logic of our ruling.”

    2a) Even more so, certiorari would be particularly prudent because the CAFC has acknowledged that SCOTUS’s 29-year-old pronouncement on this issue “may be” (!!!) inconsistent with the vast, qualitative shifts in the software field. Of course, the CAFC then went on to state that it didn’t feel justified in changing position… but this can be read as: “regardless of how compelling recent trends in computing may be for reevaluation, SCOTUS won’t let us do so.”

    3) Not only is the case well-developed, but the new application of Diamond v. Diehr is also well-developed, thanks to a slew of BPAI and CAFC decisions (each of which rejects the case at bar using a particular twist of Bilski… many of which were contradictory.)

    4) If SCOTUS were to affirm a rejection of Bilski’s application under 103 – or even under the mental steps doctrine – then it would have to vacate the CAFC’s ruling (thereby reinstating State Street.) And it would probably be compelled to address the definition of a “method” in the context of modern computing in a more direct manner.

    – David Stein

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