Bilski v. Kappos: Both Sides Have Strengths, Weaknesses

Lora Bentley

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.

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Add Comment      Leave a comment on this blog post
Nov 15, 2009 6:59 PM Riskable Riskable  says:

I think at this point there's a consensus that the SCOTUS will rule that business methods aren't patentable.  All that's left to debate is the scope of the ruling since it could very well do away with software and pharmaceutical patents as well.

I found it particularly entertaining that the layers representing Kappos tried their darndest to argue against business method patents without arguing against software and pharmaceutical patents.  Their attempt at an articulated surgical strike against business method patents without far-reaching implications for Big Pharma and Big Software was feeble at best.  The justices appeared to see right through their carefully-chosen edge cases--asking the lawyers why their arguments wouldn't apply to software or pharmaceutical patents.

"Uhh, we ask the court to please, please PLEASE only rule on business methods.  Please?"  =)


"I'll give you three really good reasons why software should not be patentable:  1) All software can be represented as pure math.  2) All software is nothing more than a list of instructions--no different than a cake recipe.  3) Software is a form of speech."

Feb 16, 2010 7:02 PM peter s.thomas peter s.thomas  says:

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