Today, November 9, 2009, the U.S. Supreme Court heard oral arguments in the patent-related Bilski v. Kappos case (previously Bilski v. Doll).   (For more background on the case, see my previous news post regarding Bilski v. Doll.) Although the Supreme Court’s opinion will not likely be written and available until 2010, the transcript from today’s hearing is informing in itself.  From my initial read, it appears that the SCotUS recognizes the potential impact their decision may have and also appreciates that the Federal Circuit’s rule provided in their decision may not be the optimal solution.  Maybe I’m being a bit optimistic, but I am pleased to see the court recognize the distinctions between patent eligibility (as defined by section 101) and patentability (as defined in sections 102, 103 and 112) as well as recognize the inherent limitations of implementing the machine-or-transformation test.

Here is a link to the Bilski v. Kappos transcript as provided by the Supreme Court on their website (click here for the source page).  Interesting quotes that jump out at me immediately are:

Justice Sotomayor:  “No ruling in this case is going to change State Street.” (page 30)

Chief Justice Roberts:  “Mr. Stewart, I thought I understood your argument up until the very last footnote in your brief. And you say this is not –simply the method isn’t patentable because it doesn’t involve a machine. But then you say but it might be if you use a computer to identify the parties that you are setting a price between and if you used a microprocessor to calculate the price. That’s like saying if you use a typewriter to type out the — the process then it is patentable. I — I — it — that takes away everything that you spent 53 pages establishing.”  (page 33)

One of my favorite exchanges was the discussion with Mr. Stewart, the Deputy Solicitor General, speaking on behalf of Kappos, regarding how the USPTO would have come out on the State Street Bank patent given the current proposed patent eligibility test.  (pages 43-46)  The conversation begins with the question from Justice Kennedy:

Justice Kennedy:  “How would you come out in the State Street case today, if all of the arguments were made under your test?”  (page 43)

The conversation proceeds to the logical conclusion of the machine-or-transformation test, wherein using a computer to carry out business method instructions would make eligible and otherwise ineligible process:

Justice Breyer:  “All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it’s a machine. So all the business patents are all right back in.” (page 46)

Finally, as Mr. Jakes (representing Bilski) notes in his rebuttal on page 51, “To speak briefly about the State Street Bank case that was a type of business method that was implemented on a machine. The Federal Circuit said it didn’t matter. They weren’t looking at whether it was in machine form or method form. Their reasoning would have applied the same either way, and to do otherwise would be to place form over substance. And in a sense, that’s what some of the transformation debate is about. It’s form over substance. Why should transformation be the key? The key should be: Is it a practical application of a useful result?”

Thank you Mr. Jakes.  You have very clearly stated a position I hope is adopted by the Supreme Court in their decision; to rely on the machine-or-transformation test is purely placing form over substance.

Tags: patent eligibility, patent law, supreme court, uspto