Anticipate This!™ | Patent and Trademark Law Blog

Bilski v. Kappos: Notable Quotes from the Oral Arguments.

Posted in Litigation Commentary by Jake Ward on November 9, 2009

The link to the transcript for the November 9th oral arguments before the SCOTUS in Bilski v. Kappos can be found here.

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, below are some quotes that we found of particular interest:

Transcript at page 7.

JUSTICE SOTOMAYOR: So how do we limit it to something that is reasonable? Meaning, if we don’t limit it to inventions or to technology, as some amici have, or to some tie or tether, borrowing the Solicitor General’s phraseology, to the sciences, to the useful arts, then why not patent the method of speed dating?

Transcript at pages 11 and 12.

JUSTICE GINSBURG: Isn’t that the basis on which the patent law rests in Europe, in other countries? They do not permit business method patents. It has to be tied to technology, to science or technology. So if other systems are able to work with the notion of technology-based, why not ours?

MR. JAKES: I would agree, Your Honor. There are those systems that do have a requirement like that. Ours does not. Ours speaks in very broad terms about having —

Transcript at page 14.

JUSTICE SOTOMAYOR: But a patent limits the free flow of information. It requires licensing fees and other steps, legal steps. So you can’t argue that your definition is improving the free flow of information.

MR. JAKES: Your Honor, I would, because of the disclosure requirement of the patent laws. It requires people to disclose their inventions rather than keeping them secret, so there is a second benefit to the patent system just other than encouraging people to invent, and that is to have that information get to the public generally. And in exchange for that —

Transcript at page 35.

CHIEF JUSTICE ROBERTS: But if you look at your footnote, that involves the most tangential and insignificant use of a machine. And yet you say that might be enough to take something from patentability to not patentable.

MR. STEWART: And all we’ve said is that it might be enough; that is, hard questions will arise down the road as to where do you draw the line, to what extent must the machine or the transformation be central —

CHIEF JUSTICE ROBERTS: So you think it’s a hard question. If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by 2, that process would not be patentable. But if you say use a calculator, then it — then it is?

MR. STEWART: I think if it’s simply using a calculator for its preexisting functionality to crunch numbers, very likely that would not be enough. But what we see in some analogous areas is that the computer will be programmed with new software, it will be given functionality it didn’t have before in order to allow it to perform a series of calculations, and that gets closer to the line. And again —

Transcript at page 47.

MR. STEWART: Well, first of all the only ruling that we’re — backtrack a bit, to say, we oppose, sir, in this case because we recognize that there are difficult problems out there in terms of patentability of software innovations and medical diagnostics.

JUSTICE KENNEDY: You thought we — you thought we would mess it up.

MR. STEWART: I didn’t think —
(Laughter.)

MR. STEWART: We didn’t think the Court would mess it up. We thought that this case would provide an unsuitable vehicle for resolving the hard questions because the case doesn’t involve computer software or medical diagnostic techniques, and therefore, we thought the Court would arrive at the position that I think, at least some members are feeling that you have arrived at, that you will decide this case, and most of the hard questions remain unresolved.
And, frankly, we think that’s true.

Transcript at page 52.

CHIEF JUSTICE ROBERTS: The — the physical step that your process involves is picking — picking up the phone and calling people on both sides of the transaction.

MR. JAKES: It could be. It also requires the sale of a commodity on a fixed price. That is something that takes place in the real world as opposed to a mental process within somebody’s head. Purely mental processes that are done just solely in someone’s mind, I think we all agree, those are not patent-eligible. That’s not our method.

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