Bilski v. Kappos: Both Sides Have Strengths, Weaknesses


When the U.S. Supreme Court heard arguments in the case of Bilski v. Kappos earlier this week, many tech companies sent their representatives, and patent lawyers also sat in. They wanted to find out how the parties had framed the issues and how the court would focus its attention. If they could see that, then maybe they could attempt to predict how the court would rule in this "most high-stakes patent case."


Or at least, that's what I would be thinking if I were in their shoes. But I didn't get to watch the arguments. However, Patently-O contributor Jennifer Browning's "day of" summary was very informative. For instance, she pointed out:

Justices Sotomayor, Kennedy and Breyer were particularly active, with only slightly lesser participation by Justices Scalia and Ginsburg and Chief Justice Roberts. ...Justice Sotomayor indicated that "how" to approach a problem can't be enough to make it patentable, rather, it has to involve some transformation.. ...Justice Breyer indicated that in the past, we respected machines, now, this was asking to respect information.


Browning noted that some of the justices seemed to indicate Bilski's position -- that any "new method that helps...to conduct business" is patentable -- is too encompassing, particularly if it involves only human activity and is not somehow tied to a machine or does not result in a transformation.


Commenting on the Patent Office's argument before the Supreme Court, Goodwin Procter partner Stephen Schreiner told me in an e-mail:

The Patent Office took a very conservative approach, repeatedly telling the Court that the new machine-or-transformation test for process patents should not affect software patents or pharmaceuticals...The Patent Office affirmed its view that software patents are eligible as machines because using software to reprogram a computer produces a special purpose machine, that is, a new machine under the patent statute.

In her discussion of the Patent Office's argument, Browning said Roberts was concerned that the Patent Office was placing form over substance with the position that a method is patentable if it "is simply tied to a calculator or a computer." Along those same lines, she said, Kennedy and Stephens wondered how software could "transform" a computer since it "appeared to be merely a new process on an old machine." The Patent Office didn't have an answer, in Browning's view.


Second-hand observations of the proceedings from two people won't tell us how the court will ultimately rule, but as is true in any case that makes it to the highest court in the land, each side has its strengths and its weaknesses. Stay tuned.