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Tuesday, November 10, 2009

Bilski Argument: Substance and Procedure

I attended the Bilski oral argument at the Supreme Court yesterday. Despite prognostications that it would be difficult to get in, I sat in the first row behind counsels' table.  It was not really the first row, as there were four seats in front of us that were next to counsels' tables. I got there at 7AM, but I believe that every member of the Supreme Court Bar was seated, even if they got there at noon, right before we were seated (about 100 seats). I suspect that it may have been harder for the public, as the gallery was a bit full. We were all better off than the morning crowd - they ran out of room for bar members, and some had to listen from a different room.

There was a bit of confusion because argument was scheduled for the afternoon. No one has really written about the procedure (that I could find), so I will. The gist is that there are two lines, and they clear the courtroom at noon. Thus, if you want to go in the afternoon, you have to wait all day (or take your chances arriving later, which seemed to pay off). I suspect the public lines in the front were also divided this way.

A final point - close was nice, but not necessarily a better view. The bench is high up, and all I could see were the heads of most of the justices.

That's enough about procedure - on to substance after the jump...

I'm not going to post a detailed summary. Others have done a nice job here, here, here, here, and here. Instead, I'll highlight some key points. If you're not familiar with the case, take a look at my initial post on Bilski some time ago. To the extent that I suggest ways the argument could have been better, it is certainly not criticism of the advocates, whom I thought were extremely poised under the pressure of heavy questioning in a difficult area.

First, I thought all of the justices (at least those who asked questions) were really struggling with the issue. Even those most likely to affirm seemed troubled by a rigid test, and were looking for a way to maintain flexibility without having patents on things they think should not be patented. This struggle, I think, vindicates my view that there is no rational way to draw the line wihout doing more harm than good, and that we should more rigorously apply other patentability standards to police against bad patents.

Second, I am not as pessimistic about software patents as others might be. It seemed to me that many questions were targeted at how to allow "good" software while getting rid of "bad" software, and the government took a strong position that sweeping exclusions would be a bad thing.

Third, I thought the tone was set very early when Justice Scalia asked about useful arts at the time of the founding. The answer was essentially, "we have examples in our brief," but I don't think that was terribly persuasive. I think an answer that more clearly listed some abstract, non-manufacturing patents from the 1800's (and there are many - we cite some in our Amicus Brief, and Judge Newman cited many in her Bilski dissent) might have changed the tenor of the conversation to why these patents were allowed while others are not.   Morse code came up later, but by then I think the damage was done.

Fourth, I was surprised at the trouble that State Street caused the government's position. Though I think it was the right answer to say that the patent in State Street is patentable, the nuances as to why made it more likely that the Court will stick with the "insignificant post-solution activity" part of the test, which allows the PTO or court to ignore the computer whenever it wants.

Fifth, to that end, I was extremely disappointed that -- in an hour of argument about the meaning of process -- there was not one single mention of 35 USC 100(b), which states the statutory definition of process. I would think that a court filled with textualists would want to know what the text of the statute says. Indeed, the definition, which defines a process as a "new use of a machine" would have cleared up much of the confusion about why a method might be unpatentable in the abstract, but patentable in a machine - when you program software to do something different, you are programming a new use of a machine. Even if you ignore the computer as "insignificant post-solution activity," the new use falls under the statutory definition.

In the end, ignoring 100(b) may be the largest problem with the machine or transformation test, which requires that all processes be tied to a machine or transform matter (and I do mean all - the Federal Circuit recently applied it to a method of treating patients with drugs). There are many, many processes from the inception of process patenting until the present, that are new uses of machines, matter, etc., but that are not tied to machines or "transform" matter. Iron working, glass blowing, medical diagnostics, new uses for old drugs, new uses for old machines, etc., are all historically patentable despite not satisfying the machine or transformation test. The fact that no one even mentioned it one way or the other is pretty surprising.

So, those are my five takeaways. I'll add my voice to the chorus that says Bilski and Warsaw lose their patent 9-0. The only question is how, and what the effect will be on other intangible processes.

Posted by Michael Risch on November 10, 2009 at 09:58 AM in Intellectual Property | Permalink


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Agreed, though I never said 101 (and 100(b)) should cease to exist. I only argue that it should be construed literally. What should cease to exist is the added gloss about "principles of nature" that have no principled link to the language of the statute, nor any principled definition that can be applied in the close cases.

Posted by: Michael Risch | Nov 10, 2009 9:07:38 PM

Michael, I think we have clarified our points of agreement and disagreement. Though I think arguing that 101 should cease to exist is a little different from arguing that it should be inflexible. We do not usually say that autobahns have an "inflexible" speed limit.

Posted by: TJ | Nov 10, 2009 9:02:28 PM

TJ - I agree that 102 is not so flexible (though 103 and 112 are) - that's why foreign prior art is a problem. However, I also argue that 101 should be inflexible. It is everyone else who wants to be flexible.

To answer your points on Einstein:
1. Agreed - 102(f) would not apply
2. Sure, 112 can be indefinite, but it's easy in your hypothetical, which is little different than Morse.
3. I'm not sure I'm reading Gore the same way you are, but in any event, where the pre-existing process is not done by someone, but instead is natural, I think the appropriate question is inherency, and that Burk & Lemley have it right when they say that inherency is determined by public benefit, not the "secrecy" of someone else's practice of a method. The sun's process was surely not secret.

Let's say you're right. I think that means that 102 needs to be adjusted to make the public use of a product that's made in a foreign country a public use of the process. Whether it's secret or not is another story. That's a rigorous application of 102 (which satisfies infringement/invalidity dichotomy) and solves the problem. It has the added benefit of answering your first hypothetical about the process in the sun a public use.

That's a rule change that is more clear, doctrinally sound, and normatively preferable than trying to figure out what's a principle of nature.

Posted by: Michael Risch | Nov 10, 2009 7:31:59 PM

Michael, I can see how you might say that section 101 interpretation is so flexible that you can mix the normative with the descriptive, but that is simply not so with section 102, where the rules are well established and easy.

So say that Einstein discovers nuclear fusion and files a claim on "the process of transforming on one element to another by nuclear fusion." That reads on the process as implemented within the sun.

1. The suggestion you made in in "Everything is Patentable," to use 102(f) to bar this claim, does not work. Einstein did not steal the invention from observing the Sun, he independently created the same process in the laboratory.

2. The other suggestion to use 112 to bar the process because Einstein did not invent "every" implementation of nuclear fusion can work. But that is only for the reason that I have outlined before and you are familiar with: one can use 112 to reject any and every claim ever patented because no inventor ever creates or enables "every" implementation. The result of twisting 112 to bar whatever we think is "bad" will be arbitrariness no less than the subject-matter limits you are trying to get rid of.

3. Finally, the argument would be that the infringement-invalidity symmetry would prevent anybody from infringing. Not true, because the infringement-invalidity symmetry is incomplete. To anticipate a process, the process itself must be performed in the United States. W.L. Gore stands for that. In contrast, to infringe a process claim, one need only use the *product* of the process in the United States under 271(g). Especially if you want to also overrule Nuijten and make signals and energy a "manufacture," that literally gives the holder of a nuclear fusion patent a monopoly on solar energy.

Posted by: TJ | Nov 10, 2009 6:24:00 PM

Well - the normative and descriptive collapse for me on this question. I see your point, of course. True that "foreign" prior art creates a problem - I address this in Everything is Patentable; it creates a real problem for indigenous peoples.

However, the sun does not create such a problem. It was "used" by others in this country and was also in public use. I realize this creates might create a problem in extraterritorial infringement, but I can live with that. You have to assume there is some use in the US, or else you could never find an infringer and we wouldn't care anyway. I think there is also 102(f) on derivation - see Oskar Liivak's article on that.

So, I would maintain that 102 is still the way to think about nature based inventions. That said, I am with you that Bilski makes a total mess of things under my view as well as under the traditional view.

Posted by: Michael Risch | Nov 10, 2009 4:10:44 PM


I think we need to separate out the normative from the descriptive. I understand your normative point--expand 102 and contract 101--though I don't agree with it. Descriptively, that cannot be the case. There is no novelty bar because nuclear fusion was not in public use "in the United States," at least prior to 1945; and it was not described in an enabling printed publication before that either. And it falls pretty easily into the 101 "natural phenomenon" exclusion, until the Federal Circuit eviscerated that exclusion in Bilski.

Posted by: TJ | Nov 10, 2009 2:58:56 PM

It is patentable subject matter. The problem is novelty.

Posted by: Michael Risch | Nov 10, 2009 2:21:36 PM

I'll add that I am still disappointed that no one has yet told me why nuclear fusion in the sun is not patentable given that it indisputably transforms matter.

Posted by: TJ | Nov 10, 2009 2:03:39 PM

Thanks Michael for this. The bottom line reminds me of Grokster, which put the hardest question (the precise contours of Sony) off to another day.

Posted by: Bruce Boyden | Nov 10, 2009 12:31:17 PM

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