Analysis

It took less than two minutes Monday for the high-stakes patent case in the Supreme Court to descend to the level of questioning whether “Lorenzo Jones” could get a patent on one of his hare-brained inventions, if Bernard Bilski and Rand Warsaw could get one on their theory about managing business risk.  “Jones,” an old-time radio figure who thought his creations in a garage would bring him fame and fortune, made an appearance in the first question, by Justice Antonin Scalia.

Scalia also suggested the seeming absurdity of a patent for Dale Carnegie’s influential 1936 book, How to Win Friends and Influence People.  But it was the “Lorenzo Jones” comment that set the tone for the entire argument in Bilski, et al., v. Kappos (08-964).  It would take a most inventive analyst to find a way in the argument for the risk-management idea under review to fit into the Patent Act’s coverage.  The idea had no defenders whatsoever on the bench

The largest question left unanswered when the one-hour argument was over was whether the Court would go forward and issue a major new ruling interpreting patent law, when the practical result here seemed so evident.  Lawyers and judges have invested heavy resources in the Bilski case, and it does raise a fundamental question that may well need answering. But, when there may well be no formulation of patent law that would salvage the Bilski-Warsaw creation, why bother?

J. Michael Jakes, a Washington lawyer arguing for a patent on that invention, faced a seemingly unending litany of hypotheticals to test how far he would take his plea for wide access to a patent monopoly.  Justice Sonia Sotomayor wondered if a patent would be available on “a method of speed-dating,” Justice Ruth Bader Ginsburg asked about methods for avoiding corporate takeovers or picking a jury, Justice Stephen G. Breyer brought up a successful businessman’s right to protection for “how he made his money” and a method for teaching antitrust law that “would keep 80 percent of the students awake,” Chief Justice John G. Roberts, Jr., wondered about a business model counseling “buy low and sell high,” and Justice Anthony M. Kennedy questioned patent rights for someone who went to the Bureau of Statistics and worked out a table of life expetancy.  On and on the hypotheticals went.

While Jakes was prepared to say that patent law “does exclude some things,” such as a poem or another work of literature, he answered many of the hypotheticals by saying that, potentially, some of them would qualify.  He was arguing for an expansive scope of patentability, repeatedly emphasizing the simple need to be “new and useful,” and he clearly did not want to foreclose many possibilities.  “If it is novel and unobvious, it should be patentable,” he said straightforwardly.

Justice John Paul Stevens told Jakes bluntly that “none of our cases” supported his position, but the lawyer did not back down, saying the Court had never addressed one like this.   Jakes tried to take advantage, as he had in his brief, of the patent success for Alexander Graham Bell’s telephone, suggesting that that was a process that manipulated electronic signals, but Justice Scalia retorted that it was actually a “transformation” within the Patent Act because it started with sound turned into electricity and turned back into sound at the receiver.

Deputy Solicitor General Malcolm L. Stewart, speaking for the Patent Office and for the Federal Circuit Court’s patentability test, began by contrasting Dale Carnegia’s writing and Bell’s telephone.  Bell’s invention, he said, “was in the realm of the physical,” while Carnegie’s book was about “public speaking and negotiation, and didn’t deal in the realm of the physical.”

Justice Samuel A. Alito, Jr., promptly asked whether “this is a good case” to get into the broad area of patentability.  Stewart suggested it was, at least for a narrow ruling validating the Federal Circuit’s test, leaving harder questions for down the road.  But Justice Sotomayor then suggested a concern that seemed to be shared by at least some of her colleagues, commenting that “I have no idea what the limits of the Federal Circuit rule would be in the medical field or the computer world.”  Justice Breyer chimed in that the lower court had left “a lot for the future.”

Stewart, while not pressed very hard, did not escape entirely without some trouble.  Chief Justice Roberts told him that he had understood the government’s argument until one of the final footnotes in the merits brief.  There, in footnote 30, the Solicitor General’s brief said the Bilski/Warsaw claims might satisfy the Federal Circuit test if they had tied it to “machine implementation,” such as using a computer network.

“That takes away everything you said in 54 pages,” the Chief Justice commented acidly.  Stewart backed off a bit, saying that the risk-management notion would not be patentable if a computer were “just used to crunch numbers.”  It would have to have something that “gives it functionality.”

Justice Breyer also joined the Chief, suggesting that, if all that were needed were to tie a theory to a computer to make it patentable, “all you would need to do would get someone who knows computers asnd he can set up every business application” to make it eligible.  Again, Stewart responded by urging the Court to keep its decision narrow, agreeing with a comment by Justice Ruth Bader Ginsburg that the case could be decided “without making any bold steps.”

Still, after this argument, it might be a fairly “bold step” to decide the case at all.  Whether the Court is prepared to rule may depend upon the degree to which it accepts the assurances of the Solicitor General that the Federal Circuit would modify its test if it threatened to stifle “emerging technologies.”

Posted in Bilski v. Kappos, Uncategorized