Alphabets, horse Whispering,
and Speed Dating
Most Justices came to the oral argument with their favorite examples of
innovations they thought were unpatentable and tested them out on
Bilski’s lawyer, Michael Jakes. Justices
Kennedy and Roberts, for instance,
quizzed Jakes about whether a new
alphabet could be patented. Dutifully
sticking to his script, Jakes said yes insofar as it was a practical application
of knowledge that could be expressed
in a series of steps.
Under Bilski’s theory of patent subject matter, Justice Scalia suggested
that innovations in horse-training
techniques, such as horse whispering,
would be patentable. Yet, no such patents have issued for them. Scalia asked
Jakes to explain why. When Jakes answered that the U.S. economy in the
19th century was based on industrial
processes, Scalia derisively commented that the economy back then was
based more on horses.
Scalia also asked Jakes if an improved method for winning friends and
influencing people was patent-eligible,
conveying by the tone of his voice that
he thought the very idea was absurd.
The patentability of speed-dating
methods was raised by Justice Soto-mayor, who worried that without some
sort of technology limitation patents
would extend too far and impose too
many costs on society.
That Bilski’s theory would also allow patents on estate planning, tax
avoidance, and jury selection methods
was of concern to Justice Ginsburg who
plainly regarded these methods as beyond the patent pale.
Justice Breyer asked Jakes if a professor could patent an improved meth-
the Court will likely
leave questions about
the patentability of
to future cases.
od of teaching antitrust law. After Jakes
affirmed this, Breyer asked him to suppose the Court was not willing to go
that far; did Jakes have anything to offer as an alternative formulation of patent subject matter? Jakes did not.
What test to use?
That Bilski will lose his appeal is certain. But the Justices were plainly
struggling during the oral argument
about what test should be used to distinguish between patentable and unpatentable processes.
The test will certainly not be the
patent subject matter rule that the
Court of Appeals for the Federal Cir-
cuit (CAFC) used between 1998 and
2008. It focused on whether a claimed
method produced a “useful, concrete,
and tangible result.”
In the decade after the CAFC an-
nounced this test, the PTO was flood-
ed with applications for patents on a
wide range of methods in many fields
of human endeavor, including sports
moves, business methods, arbitration
procedures, charitable giving tech-
niques, and dating methods.
After the Supreme Court in 2006 expressed dissatisfaction with the CAFC’s
views of patent subject matter (see my
July 2008 column “Revisiting Patentable Subject Matter”), the CAFC decided to revisit patent subject matter.
It heard Bilski’s appeal en banc (with
all 12 judges on the court, not just the
usual three-judge panel) and articulated the machine-or-transformation test
mentioned previously, under which
Bilski’s method was unpatentable.
As formulated by the CAFC, the
machine-or-transformation test has
been criticized for being too formalistic, failing to articulate a normative or
policy-based grounding, and too easily subverted by a simple mention of
technology (for example, a computer)
in the claims.
Yet, the PTO has defended this test
as practicable for conducting examinations. In its brief to the Court, the
Solicitor General explained why the
PTO believed this test was consistent
with the Court’s prior rulings and why
it would be workable in making subject matter determinations.
During the oral argument, three
other bases for resolving the patent
subject matter question posed by Bil-
ski’s application came up.
Difficult Questions Ahead
Bilski is an easy case under the machine-or-transformation test because
Bilski didn’t mention any technology
in his application: no telephone, no
fax machine, no computer.
Several Justices were skeptical of
the view that merely mentioning a conventional technology in a patent claim
could suffice to convert an unpatentable process into a patentable one. A
method of calculating historical averages of prices, for instance, should not