by Mark Malek

Last week we reported that the Supreme Court heard oral arguments on In re Bilski.  Since the Bilski case can have some major ramifications on determining the types of patentable subject matter, we wanted to take a deeper dive into what was actually discussed at the hearing.  What we found was that the Supreme Court Justices presented several entertaining scenarios during the oral arguments.

At issue in this case is whether a system for hedging risks in commodities trading is patentable subject matter pursuant to 35 U.S.C. § 101.  This decision may have a profound effect on software inventions, business method inventions and pharmaceutical inventions, mainly because these inventions generally lack structure elements, i.e., these are not machines with big moving parts that one can lay hands on.  Instead, these inventions can generally be defined as a set of steps that must be followed in order for the invention to be carried out.

“I invented a way of catching fish once.  I got one about *this big* using it.

The profound effect that the case may have was almost immediately evident when Justice Scalia noted, “[w]hat is wrong with [the analysis that useful arts] always was thought to deal with machines and inventions?”  Of course, that is a broad question.  Did Justice Scalia mean that all inventions must be machines?  I doubt it.

Justice Ginsburg goes on to ask “[s]o an estate plan, tax avoidance, how to resist a corporate takeover, how to chose a jury, all of these are patentable?”  I believe the court is trying to make a point that the simple process of laying out the steps on how to carry out a plan cannot be patentable.  If that were the case, then all the content of instructional manuals, for example, would be patentable, and carrying out the steps in those instruction manuals could lead to infringement.  Can you imaging the patent portfolio that the “Dummy” family of books might have?

“Don’t do anything in this book, lest we sue you for infringement.”

Clearly just trying to make his point, Justice Breyer questions Bilski’s attorney and notes “anything that helps any businessman succeed is patentable because we reduce it to a number of steps, explain it in general terms, file our application, granted?”  Unfortunately, Bilski’s attorney takes the bait and responds “[i]t is potentially patentable, yes.”  The point that Justice Breyer is getting at is that the patent system was meant to advance science and technology, not stifle development.  Allowing patents to be granted on any new idea would certainly be counterproductive.  Bilski’s attorney backs off his broad view shortly after Justice Breyer gets through with him.

Of the other funny comments by the Court, Justice Sotomayor makes a reference to a method of speed dating.  I’ll bet Justice Sotomayer would be surprised to know that there is a patent currently pending for such a thing.  Shortly after the speed dating debacle, Justice Breyer chimed back in with the following hypothetical: “You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake.  They learned things.  It was fabulous.  And I could probably have reduced it to a set of steps and other teachers could have followed it.”

“No speed dating patents.  Not on my watch.”

Justice Scalia takes a slightly different route and focuses on horse training.  “Don’t you think that some people, horse whisperers or others, had some, you know, some insights into the best way to train horses?  And that should have been patentable under your theory.”  The point Justice Scalia is trying to make is that it was odd that nobody ever patented those methods back in the day, especially if, under Bilski’s theory, this type of pure method patent would have been patentable.  Bilski’s attorney, however, tries to save himself by nothing “I think our economy was based on industrial process.”  Jusctice Scalia slams that door pretty quickly when he says “[i]t was based on horses, for Pete’s sake.  I would really have though somebody would have patented that.”  Funny you should bring that up Justice Scalia, because in 1962, a patent was issued on a method for training horses.

Stephen Breyer
the tech-savvy justice

An interesting position taken by the Government was that “software innovations can have the effect of causing the computer to be a different, special purpose computer.”  In a million years, I would have never characterized a software invention as a different computer.  Since my computer has about 40 different software programs running on it, I guess I have 40 different computers.  No wonder why patents take so long to draft! I’m working on 40 different computers!!  I guess I would have characterized software much the same way that Justice Breyer did – “this is not a machine.  The machine is a computer.  This is a program that changes switches, and that is a different process for use of the machine.”

A ruling in Bilski is not expected until sometime next year.  The Supreme Court’s ruling can have a profound effect on software patents.  In future posts, we will examine some alternatives that the Court can look at to protect software.  I do not think that it is the intention of the Supreme Court to do away with software patents, or with business method patents for that matter.  I believe that patent law needs to carve out some sort of protection for software patents.  Software specific patent protection can solve many of the issues facing the patent system, and these will be explored in future posts.  Please let us know your thoughts as well.