Supreme Court Clustering of Patent Cases

The last time that the Supreme Court directly addressed the issue of subject matter eligibility under 35 U.S.C. § 101 was in the early 1980’s. In the waning days of the pre-CAFC era, the Supreme Court decided Diamond v. Chakrabarty, 447 U.S. 303 (1980) and Diamond v. Diehr, 450 U.S. 175 (1981).

An interesting tidbit of history involves the grant of certiorari in the 1981 Diehr case. The Diehr grant of certiorari occurred on March 17, 1980 – the same day that the court heard oral arguments in Chakrabarty. By that time the court had apparently realized that the patent office needed more Section 101 guidance than the one biotechnology case could provide.

Today’s parallel of Bilski v. Kappos and Mayo v. Prometheus is strikingly similar. Of course, the Supreme Court is a different body than it was in 1980 and the Court hears about 50% fewer cases than it did back then. In patent cases where the Government is not a party – such as Mayo v. Prometheus – the court has more recently tended to ask for the views of the Solicitor General (CVSG) before moving forward with a grant of certiorari. The CVSG delay would push-back any decision on certiorari in Mayo v. Prometheus until the spring of 2010 – well after the scheduled November 9 oral arguments in Bilski. Although the Court may not have released a decision in Bilski by that time, the justices will almost certainly know the eventual outcome of that case.

If (1) the Supreme Court’s Bilski decision substantially shifts the patentable subject matter doctrine and (2) the Supreme Court sees Mayo v. Prometheus as important, the court may issue a “grant, vacate, and remand” or GVR order. In that scenario, the Federal Circuit would be asked to apply the new law of patentable subject matter to the facts in the case. In an e-mail, Hal Wegner suggested to me that this is a likely outcome.

  • Chakrabarty
    • Certiorari Granted October 29, 1979
    • Argued March 17, 1980
    • Decided June 16, 1980
  • Diehr
    • Certiorari Granted, March 17, 1980
    • Argued October 14, 1980
    • Decided March 3, 1981

As an aside, up-to-date versions of Mr. Wegner’s highly informative top-ten lists are being maintained online here.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

41 thoughts on “Supreme Court Clustering of Patent Cases

  1. >>How do you define a proper level?

    actually, this phrase you used is rather funny. It appeals to the emotions–the mob. Think through the word abstraction, 6. What is an abstraction? How would one test for an abstraction in a patent claim? Certainly, saying well that does not feel like the proper level cannot be used as the test. So, what test would you apply?

  2. 6, what you are going to find if you take the time to understand patent law is that those who use the law for monetary or political gain become exposed. For example, J. Moore at the Fed. Cir. If you take the time, you will see how many of the arguments to invalidate patents are down right ridiculous. Abstraction is one of those words that is used by the ridiculous to invalidate patents.

    And, those who don’t want software to be eligible for patentability have thrown a screen around the topic with so many wild arguments that few can see through the screen. If you take the time to understand patent law, you will see through the screen.

    But, you have to take the time. It is better to take the time than to be subject to the mercurial arguments of the self interested.

    You need to understand some of the words as terms of art. Abstraction is one of those words that once you understand it you will see through the screen.

  3. That is interesting Actual Inventor.

    6, I am glad to see that your writing has improved.

    Why is whether a transformation in the “classical sense” the issue? That is certainly in direct opposition to SCOTUS precedent. In fact, later arising technologies are meant to be captured by the 1952 act.

    I don’t think you understand abstraction as used in engineering and patent law. What is meant is fairly simple to understand. Please read Bilski dissent of Newman. “Proper level”? How do you define a proper level?

  4. Night Writer Patent Attorney :”Really, it is just aweful to continue to see these same lame arguments that transforming information is not a transformation. ”

    Of course it’s a transformation. In fact all processes are transformations at every level of existence. For example, I have arranged each level of existence below based on quantum mechanics starting with the macroscopic. Now if a process is patentable at the macroscopic level where all can see and measure, it does not cease being the same patentable invention at the say the sub nuclear level. As long as the process can be objectively measured or tested it’s a transformation. And if the process does not preempt a law of nature or scientific principle so that no one else may use the law or principle, it’s a statutory invention.

    _________________________________________

    Quantum Mechanics Levels of Existence

    1. Macroscopic

    2. Microscopic

    3. Molecular

    4. Atomic

    5. Nuclear

    6. Sub Nuclear

    7. Electro weak unified scale

    8. Grand unified scale

    9. Super unified scale

    10. Single Unified scale or super string field were all the processes are considered to be one.

  5. “Information takes time, energy, and space to transform. For example, transforming an unsorted list to a sorted list is every bit a transformation as a chemical reaction. ”

    Look NWPA, nobody begrudges you “protection” for your little data “transformations” (which really no such thing ever occurs). We’re just saying you’re barking up the wrong tree trying to protect it under patent law. Go get your own “data transformation protection Act” if you feel like that needs some sort of gov. mandated exclusive right. If such thinking is clearly present to any reasonable person alive today and thinking in modern terms then congress will no doubt pass it faster than you can say bob’s your uncle. What is your issue with simply doing this?

    ” A physicist would be laughed out of the room.”

    A physicist would tell you to your face that the “transformation” of “data” is not a “transformation” in the classical sense. The same way a “business method” is not a “Useful Art” in the classical sense. Just because our modern language allows for you to conflate issues doesn’t mean that you should be permitted to do so as to influence the law.

    They would probably also go out of their way to tell you to stop abstracting all useful meaning out of the term “information” when you come into learned circles.

    “For goodness sake. Engineering is picking the right level of abstraction and working there. <--- every, every, every, top engineering schools says this." And patent claim writing is sticking to the proper levels of abstraction and not picking an improper level of abstraction <---every, every, every, everyone says this, top schools included.

  6. Really, it is just aweful to continue to see these same lame arguments that transforming information is not a transformation. A physicist would be laughed out of the room.

    And these same lame misapplications of the use of the word abstraction are just ridiculous. Read Newman’s dissent. No one should be permitted to practice patent law or sit on the fed. cir. without understanding the use of the word abstraction in patent law (or for that matter in engineering.) For goodness sake. Engineering is picking the right level of abstraction and working there. <--- every, every, every, top engineering schools says this.

  7. MM-trollbot: >>bits into bits might be 101 subject matter

    Iron age thinking. Information processing is the technology of today and tomorrow.

    Information takes time, energy, and space to transform. For example, transforming an unsorted list to a sorted list is every bit a transformation as a chemical reaction.

    Information is governed by the law of physics just as matter is.

    Any scientist worth his salt knows these truths.

  8. >>Thus, neither the polygon nor the obscurant >>represents a physical item; rather, the >>polygon is an abstraction to define a region >>of an image.

    The board needs to read Newman’s dissent in Bilski to understand the word abstraction as used in patent law. I think if the word abstraction is used the way they are using it, then about 50% of all claims in all the arts would be invalid.

    Including MM’s test tube claims.

  9. MUD Wrote:

    PatentLawNewbie gets a vote from me.

    “The Supreme Court will look at the historical meaning of the term “useful Arts” in the Constitution and determine that it does not encompass “methods of doing business.” ”

    Agreed.

    How would SCOTUS make that determination since no court has defined exactly what a business method is? Since this is law that applies to science & technology the Court would have to create what’s known in science as an “operational definition” of business methods, then rule against it.

    As it stands right now, for all practical purposes, every patent is a business method.

    IMO, to rule business methods as non statutory without a working operational definition, would open the door for an incredible amount of mischief and abuse.

  10. MM, the snippet you posted appears to be an application of the MOT test. If the MOT test is struct down, I don’t see how the BAPI could continue to rule this way.

  11. Whether procedures that transform bits into bits might be 101 subject matter would likely remain moot.

    According to the Board, such procedures are abstractions and fail 101. See Ex parte Gardiner:

    link to des.uspto.gov

    “As claimed, this transformation is to create a volumetric obscurant, which Appellants argue has uses in simulations such as creating the visual effect of an airplane flying through a cloud. Reply Brief 5. These arguments, however, have not persuaded us that the claim is drawn to transforming an article to a different state or thing. The polygon is discussed on pages 1 and 2 of Appellants’ Specification as defining an area in which to simulate realistic-looking obscurant elements (e.g. clouds) in an image. Thus, neither the polygon nor the obscurant represents a physical item; rather, the polygon is an abstraction to define a region of an image. Thus, (1) the steps of spreading sub-pixels recited in claims 1 and 20, and (2) the step of modulating the density of the sub-pixels recited in claim 1 do not transform any physical object. The image is not a physical object and the data, which is part of a simulation, does not represent a physical object. Accordingly, we conclude that claims 1 and 20 do not transform such an object or data representing such an object.”

    (Aaron Feigelson at 12:01 Tuesday tipped me off to this interesting case)

  12. Hlelo my Daer Ydoa,

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    I tnik u r ososoo rhgit auobt waht u worte auobt aovbe & i pary u r rgiht as rian aoubt waht t Spuerems r gnnua tnik aobut taht.

    T mroe ptneats t mcuh mroe bteter 4 ervyedoby ni t ip idnusrty! Tahnks aolt.

    What’u tnik?

  13. Mud and PatentlawNewbie,

    Square with the Courts’ express statement that “methods of doing business” have NEVER been ruled as a categorical exclusion AND that Congress’ has an explicit section on defenses with “methods of doing business”, you must.

    Overcome those two, a challenge will be.

    Law from two bodies, the Supremes overturn unlikely it is.

  14. Entry vote:

    PatentLawNewbie gets a vote from me.

    “The Supreme Court will look at the historical meaning of the term “useful Arts” in the Constitution and determine that it does not encompass “methods of doing business.” ”

    Agreed. The conflation of “procedure” with “process” or “method” (including “method of operation”) might be ripe for instruction but may also be left to pass. This was already stated with adequate clarity in Diamond v. Driher.

    “(a) For purposes of 101, a “process” is “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”

    The Bilski procedure simply attempts to transform other people’s money into the practitioner’s money; this leaves the underlying substrate unaltered (not to digress into the fallibility of the method). Whether procedures that transform bits into bits might be 101 subject matter would likely remain moot.

  15. CONTEST

    The Supremes will:

    A) Strike down the MOT test 100%.

    B) Affirm that so called business methods are not a separate category of patents and are no more than processes. Therefore no reason exist to declare business methods as non statutory.

    C) Reaffirm the “Preemption Doctrine” of Diehr, Flook, and Benson as the appropriate analysis for 101 statutory subject matter while maintaining the long settle precedent of reading the claims as a whole.

  16. Dennis:

    I appreciate and enjoy the fact that you publish a variety of articles, not just discussing cases, but also on PTO and court practices and statistics.

    Keep up the great work.

  17. attorney

    That is a really good point. Frankly I had forgotten about Classen (and I usually track this obsessively); and it seems Hal Wagner had too, since he left it off the list.

    Slight clarification of your post, though. Classen filed its petition, and two of three respondents filed oppositions. The Supreme Court requested the third respondent (Biogen) file an opposition to the petition. So the additional briefing sought is only from one party, which had not previously filed a brief. Whether this is significant depends, since the court usually requests a response whenever the petition is mildly meritorious. But it is hard to imagine that Biogen will come with arguments against cert. that Merck and SmithKline had not, so if the court wasn’t persuaded by the existing opposition briefs, a new one will have a hard time reversing the tide.

  18. Does everyone forget that Classen Immunotherapies v. Biogen, the first case decided by the CAFC citing Bilski, is actually on petition for cert and that the USSC has asked for additional briefing from the parties after conference?

  19. Bilski’s advocates need to hit a home run. I’d be satisfied with a single, double, or even a walk. The PTO just wants to get out of the inning without too much damage…

  20. “and you will NOT be able to use any old general purpose computer to reject such a claim.”

    We shall see old friend. We shall see.

    “In fact, I recently took a case to the board where an examiner tried just that.”

    Do go ahead and post a numba.

    “They slapped him down, reversed in full, saying he must show that the processor of the reference is configured to perform the functions of my claim. ”

    Sounds to me like I’ll have to rely on getting an APJ that understands tha lawl, or I’ll have to take the time to hold his hand through it.

    “it’s not the only test.”

    That’s not bad, I agree somewhat, there are many ways to show that subject matter is not statutory. Not the least of which is probably the Useful Arts test.

    ” but I need to have a contest entry that is different. ”

    All you did was summarize that other guy’s Amicus Brief.

  21. Contest entry:

    The Supreme Court will look at the historical meaning of the term “useful Arts” in the Constitution and determine that it does not encompass “methods of doing business.” Therefore, business methods will be unstatutory. (this would leave open software claims being patentable; but since those aren’t on appeal, the Surpeme Court will probably not satisfactorily address them).

    Don’t know if this will be a good thing or will actually happen, but I need to have a contest entry that is different. Also, some of the justices are enamored with looking to the historical meaning.

  22. 7’s Contest Entry:

    >>I think SCOTUS will do with Bilski. Reverse in >>full, saying they don’t like bright line >>tests, and that while the MOT is one test of >>statutory subject matter, it’s not the only >>test.

  23. 6,

    When I say “software,” I mean “a processor configured to ….” That will remain statutory subject matter, and you will NOT be able to use any old general purpose computer to reject such a claim.

    In fact, I recently took a case to the board where an examiner tried just that. They slapped him down, reversed in full, saying he must show that the processor of the reference is configured to perform the functions of my claim.

    Night Writer,

    Good point. Mooney does seem to have the proper disdain for patents and assumption that nothing is patentable that many a Dudas era SPE has. I could see him being a SPE.

    I have already summed up what i think SCOTUS will do with Bilski. Reverse in full, saying they don’t like bright line tests, and that while the MOT is one test of statutory subject matter, it’s not the only test.

  24. In light of the season, Examiner Mooney’s true character is downright scary. I’d say it is more trick than treat.

  25. Well, let’s have a contest: submit a one paragraph (less than 150 words) paragraph that sums up what the SCOTUS will do in Bilski.

    I’d give 2 to 1 odds right now that they will overturn Bilski.

    In my opinion, 7 is better than 6. And, I think we are making MM angry by referring to him as Examiner Mooney, when his title is Supervisory Patent Examiner Mooney. You know those government types. Although, I must say when Mooney gets mad it is quite a treat as you get to see his true character.

  26. “Then again, you’re probably crying as it is, as Kappos is telling you that you actually have to allow cases. ”

    I didn’t realize that was what he was telling me. Here I was thinking he just wanted me to do a worse job on RCEs.

  27. “Examiner Mooney, you’ll cry because Bilski will be overturned, and software applications will still be statutory subject matter. ”

    LLLLLLLLLLLLLLLLLLLLLOOOOOOOOOOOOOOOOOOOOOOOOOOLLLLLLLLLLLLLLLLLLLLLLLLLL

    Even if Bilski is overturned IN FULL, software will not be “statutory subject matter”. Ever.

  28. “LOLOLOLOLOLOL at anyone who thinks SCOTUS took Bilski only to affirm.

    They will KSR it. It’s a bright line test. They’ll strike it down and say they don’t like bright line tests.

    MM and 6 will cry.

    LLLLLLLLLLLLLLLOOOOOOOOOOOOOOOOOOOLLLLLLLLLLLLLLLLL

    I’m pretty sure that I have made it very clear that I do not believe they will affirm in full.

  29. DC “As an aside, up-to-date versions of Mr. Wegner’s highly informative top-ten lists are being maintained online here.”

    I’m disappointed to see that Mr. Wegner has confused himself about Breyer’s dissent in LabCorp. It’s not the first time Wegner has blown it, of course.

    On the other hand, I didn’t realize (or had forgotten) that Apotex petitioned for cert on the Sanofi-Labs decision (Plavix patent validity). That definitely deserves a re-hearing, as it is one of the Federal Circuit’s (and Newman’s) worst “result-oriented” non-obviousness decisions ever written.

  30. Examiner Mooney, you’ll cry because Bilski will be overturned, and software applications will still be statutory subject matter.

    Then again, you’re probably crying as it is, as Kappos is telling you that you actually have to allow cases.

  31. “They will KSR it. It’s a bright line test. They’ll strike it down and say they don’t like bright line tests. MM and 6 will cry.”

    Why would I cry? I love KSR.

  32. You’ve got a good point, 7. Bilski seems like exactly the kind of thing SCOTUS would quickly kill. I think the comedy of all this were the amici who thought it was a good opportunity to push the envelope even further to kill software patents. Methinks that’s not happening, unless SCOTUS wants to read things into the statute in the same way the Fed Cir did with Bilski.

  33. LOLOLOLOLOLOL at anyone who thinks SCOTUS took Bilski only to affirm.

    They will KSR it. It’s a bright line test. They’ll strike it down and say they don’t like bright line tests.

    MM and 6 will cry.

    It will be a good day.

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