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No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day
Thursday, June 17 2010 @ 10:38 AM EDT

No opinion on In Re Bilski will issue today. The next possibility is June 21.

Opinions today were in Dillon v. United States, Schwab v. Reilly, Ontario v. Quon, Stop the Beach Renourishment, Inc. v. Florida Dept. of Environmental Protection and New Process Steel, L. P. v. NLRB. All are available at the link as PDFs, and there are some highlights by Tony Mauro on

According to SCOTUSblog, Schwab was the last undecided case, except for Bilski, argued during the last November session.

I don't know about you, but the suspense is killing me.

Gene Quinn, over on IP Watchdog, is celebrating the 30th anniversary of the case that made your DNA patentable, Diamond v. Chakrabarty, and extrapolating that the court should adopt a similarly expansive view of patents to cover software and business methods. He is worried -- and the longer it takes, the more he worries -- about the Bilski decision with respect to its possible effect on the biotech industry. So I'm not the only one finding the wait difficult, although he and I share no opinions in common.

What is interesting to me is that his reason for supporting an expansive view of what should be patentable is money-making opportunities:

Could you imagine what the US economy would look like without the biotechnology industry? Those 7.5 million jobs are roughly equivalent to the number of jobs the United States has lost since the start of this Great Recession. Without them it is hard to imagine what state the United States would be in from an economic and national security standpoint....

The Bilski case deals with what should be an easy case. The inventor looked, thought and acted. There was nothing tied to any physical apparatus, just a purely mental business method. But rather than limit the decision to the facts of the case the Federal Circuit decided to take the occasion to issue a sweeping decision that called into question the patentability of all methods, particularly software and biotechnology methods. Luckily, the United States Patent and Trademark Office has not interpreted Bilski as broadly as even the express terms of the decision require, so for now patents are still issuing, but a misguided Supreme Court decision continues to be a worrisome fear.

As Judge Newman pointed out in her Bilski dissent: “It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.” Indeed, the real fear posed by narrow-minded interpretations of what qualifies as patentable subject matter is not what we know to be cut off, but rather what we don’t know will be cut off. Had the Supreme Court decided Chakrabarty the other way it is reasonable to assume the biotech industry would never have flourished. Without patents it would have been starved of funding, medical advances would not have occurred and the high paying technology jobs the industry created would not have existed.

Obviously, people can make a bundle with patents, and they do, but the purpose of patents is supposed to be a balance between letting someone milk a monopoly and letting innovation flourish, and when it comes to software patents, I think there can be no doubt that they hinder innovation, particularly innovation in Free and Open Source Software development, as Red Hat and the Software Freedom Law Center and others argued in amicus briefs filed in In re Bilski. There, software patents are hindering innovation, without any doubt at all. And besides, algorithms are math. And math is exempted from patentable subject matter. No human created or made math. DNA either, now that I think of it. So he's really arguing that the law should allow what traditionally was not patentable.

He's free to do that, but I think he should be clearer in expressing it. Here's what he writes:

In Chakrabarty the Supreme Court noted that the United States Congress chose expansive terms such as “manufacture” and “composition of matter,” modified by the comprehensive “any,” in the patentable subject matter law, 35 USC 101, which says:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Furthermore, it was noted, as has been the case in every patentable subject matter decision, that the Legislative History to the 1952 Patent Act explained that it was the intent of Congress to allow patents on “anything under the sun that is made by man.” As a result of the expansive view of patentability demanded by Congress the Supreme Court had little difficulty finding the Chakrabarty innovation to be patentable subject matter.
He might want to add an explanation of what the wording "subject to the conditions and requirements of this title" means. BitLaw explains what he does not:
However, there are certain "inventions" which are not patentable under the Patent Act. Examples relevant to the computer and Internet field can be seen from the recent rules [PDF] issued by the U.S.P.T.O. in connection with software patents (dated October 2005). In these rules, the Office stated that the following items were "clearly non-statutory":
* data structures or programs per se (these are considered "functional descriptive material," which impart functionality when employed as a computer component but are mere descriptive material when claims standing alone)--these items may be patentable when claimed in a different form to include computer-readable medium;

* Nonfunctional descriptive material, such as music, literary works, and compilations or mere arrangement of data;

* Electromagnetic signals, which are considered forms of energy and as such are nonstatutory natural phenomena (which is why computer programs are patentable when embodied in something physical, such as a computer-readable medium, but computer programs are not patentable when embodied in a computer-readable signal stream).

These items are considered indistinguishable from abstract ideas and laws of nature, and therefore are unpatentable.

Within the 2005 guidelines is a flowchart that Examiners should use when evaluating inventions for subject matter eligibility. These guidelines can be seen separately here.

BitLaw also provides a history of software patents, showing that it certainly has not always been the case that software could be patented, nor is it clear that it will be in the future, which is what Quinn is worried about. A broader history of patents in general is here, provided by the law firm Ladas & Parry. They're an IP firm, and so they have a gung ho view of patents, of course, and they don't deal with software patents on that page. But this paper, The Expansion of Statutory Subject Matter Under the 1952 Patent Act [PDF], takes you through the history in the US of computer software and patents. The US Supreme Court in Gottschalk v. Benson, for example, denied a patent on the grounds that "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." And math is not supposed to be patentable. You can listen to the oral argument in that case, by the way, thanks to the wonderful Oyez collection.

It's not like it's never been held that software was made up of algorithms and that they are math and hence not patentable. For some reason, Quinn continues to argue that software isn't math, and seems to think this is a revolutionary concept invented by Groklaw. Hmm. Don't give me ideas about getting a patent. Kidding.

If you look at the Patent Law itself, you will see that conditions means some things like the condition that a patent be nonobvious, for example. Here's the list of requirements, and here's a flowchart from the 2005 rules showing the guidelines examiners follow. The first requirement on the list is that it be statutory, meaning that the law allows it to be patented. And that is precisely the question before the court now in In Re Bilski, what can and what can't be patented?

And my anxious hope, as we await the opinion, is that the justices of the US Supreme Court take into consideration the need for openness and sharing in the development of FOSS software. It's foundational. And if you think that doesn't matter to the economy, just consider that every time you go to Google, you are using Linux. Yes. The Internet itself is not patented. It's FOSS too. Did it not contribute mightily to the world economy?


No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day | 211 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day
Authored by: Anonymous on Thursday, June 17 2010 @ 10:47 AM EDT
Has Hollywood bought up the copyrights to the movie from the supreme court

[ Reply to This | # ]

News Picks
Authored by: stegu on Thursday, June 17 2010 @ 10:53 AM EDT
Discussions on news picks go here.
Please provide a link to the news item
you are referring to, as news tend
to scroll off the sidebar faster than
the main articles are updated.

[ Reply to This | # ]

Off Topic
Authored by: stegu on Thursday, June 17 2010 @ 10:54 AM EDT
Discussions off topic for the main article,
but on topic for Groklaw, should take place here.

[ Reply to This | # ]

Authored by: stegu on Thursday, June 17 2010 @ 10:58 AM EDT
Should you find any errors in the main article,
here is the place to suggest corrections.
Please indicate in the title of your post
what the error is, and what your suggested
correction would be, e.g. speling -> spelling

[ Reply to This | # ]

Authored by: stegu on Thursday, June 17 2010 @ 11:00 AM EDT
Contributions to the ongoing COMES project can be submitted here. Please use
HTML tags in your transcription, but post your documents as "Plain Old
Text" to make it easy for PJ to cut and paste.

[ Reply to This | # ]

No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day
Authored by: Anonymous on Thursday, June 17 2010 @ 11:03 AM EDT
Isn't the wait for the court to rule on Bilski some kind of record length of

[ Reply to This | # ]

No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day
Authored by: wood gnome on Thursday, June 17 2010 @ 11:40 AM EDT
I'm afraid they'll limit the decision, thus leavin' out the absurdity of
software patents in general.
The multi-billion US (lawyer) economics concerned will be taken into account,
without saying so, of course. Just too bad for the world.

If the Supremes were to rule against software patents in general, the effect
around the world (the next battleground is Europe) would be almost final. THAT
is what makes this one so important.

PJ, you're not the only one.....

[ Reply to This | # ]

Your BitLaw quote...
Authored by: msfisher on Thursday, June 17 2010 @ 12:02 PM EDT
Two things in your extract from BitLaw REALLY caught my eye: “…data structures…”
and “…These items are considered indistinguishable from abstract ideas and laws
of nature, and therefore are unpatentable…”

What is DNA? Aside from “a biochemical material” it is a data structure.
Instead of data being carried on a punch card, tape, or magnetic storage device,
it’s being carried in a biochemical structure. The data being carried is the
blueprint for the organism for which the DNA is coded. Hmm. “Coded”. Even
molecular biologists use a computer programming term when describing DNA.

Clearly, Diamond v. Chakrabarty goes against the USPTO’s own rules since data
structures within an organism must exist in nature.

Here’s a thought: since the DNA in question existed before the patent, should
not the DNA itself constitute prior art?

How about a new thread? “Stuff that shouldn’t be patentable and why?”

#1 Any organism or any portion of any organism.
#2 Any discovery of something which occurs in nature.

BTW, it bugs me no end to think someone could get a patent on a piece of me.

[ Reply to This | # ]

Software Patent Proponents and others
Authored by: deck2 on Thursday, June 17 2010 @ 12:12 PM EDT
It is interesting that PJ pointed out that for Gene Quinn and his ilk that it is
ALL about making money. My observation is that there are many people in the US
and the world that want monoplies and particularly government granted
monopolies. These people want a protected revenue stream that they really don't
want to have to do any work to protect by out competing their business rivals or
anyone else. They want to hold the business world in thrall while they extract

The out-briefs of the jurors in the MS -- i4i case highlight one of the things
that they love, the assumption by juries that Patents are valid because they are
issued even though the USPTO has said that validity is the courts to sort out.
That is what these monopolists and potential monopolists want to keep. This is
misdirecting billons of dollars from productive wealth producing endeavors to
fight these cases.

Sometimes I just want to throw up my hands and walk away; the problem is that I

[ Reply to This | # ]

The Stock Market
Authored by: Anonymous on Thursday, June 17 2010 @ 12:23 PM EDT
I think they should issue their decision on a Friday, after the markets close.
Whatever their decision, the market should have time to digest it.

[ Reply to This | # ]

Issue Date
Authored by: bsm2003 on Thursday, June 17 2010 @ 01:15 PM EDT
These cases will not be distributed until the last day of the
Term. June 29 is when the will issue decisions in these cases.

Bilski v. Kappos
Definition of modern inventions eligible for patents

McDonald v. City of Chicago
Incorporation of Second Amendment against the states

Monsanto Company v. Geertson Seed Farms
Proof needed to justify nationwide order to stop an activity that may threaten the environment

[ Reply to This | # ]

The next possibility is June 21.....
Authored by: tiger99 on Thursday, June 17 2010 @ 01:28 PM EDT
Monday could turn out to be a very good day indeed, if all goes well. SCO are in
BK court, as far as I can see. Wouldn't it be nice if SCO went to Chapter 7 and
software patents went to /dev/null on the same day?

[ Reply to This | # ]

Here's what I hope....
Authored by: Anonymous on Thursday, June 17 2010 @ 01:52 PM EDT

I hope they realize that entering a program in a computer is no different then entering a math formula into a calcluator.

I know there's patent attorney's out there such as Mr. Quinn who believe that should be a patentable act.

However, I have faith the Supremes would arrive at the - in my humble non-legal opinion - correct decision once they realize that direct, entirely accurate, analogy is correct.


[ Reply to This | # ]

The Bilski case deals with what should be an easy case.
Authored by: Anonymous on Thursday, June 17 2010 @ 03:24 PM EDT
That's according to Gene Quinn, who goes on
> There was nothing tied to any physical apparatus,
> just a purely mental business method.

Words fail me. I had a fleeting image of drilling a hole
in Mr Quinn's head and patenting whatever I found in there...

[ Reply to This | # ]

What does America stand for?
Authored by: Anonymous on Thursday, June 17 2010 @ 04:17 PM EDT

Be curious to see, say, Gallup do a worldwide survey of what the world thinks
America stands for.

You can put the usual stuff in it, like the Bill of Rights. But in my survey,
you have to add greed. Wonder how high that would rank. Yes, you might want to
add some other countries, too, and see where they stand compared to us.

I'm a Yank who has read too much Twain.

[ Reply to This | # ]

Quinn's misunderstanding
Authored by: bprice on Thursday, June 17 2010 @ 05:31 PM EDT
For some reason, Quinn continues to argue that software isn't math, and seems to think this is a revolutionary concept invented by Groklaw.
Of course, prior art is meaningless to Quinn in his quest for more and more bogopatents, but here's a short list of some books from my bookcase, all on (or assuming that) programming is math.
  • Dahl, O.-J., E. W. Dijkstra, C. A. R. Hoare, Structured Programming, Academic Press, 1972, ISBN 0-12-200550-3.
  • Aho, Alfred V, John E. Hopcroft, and Jeffery D. Ullman, The Design and Analysis of Computer Algorithms, Addison Wesley, 1974, ISBN 0-201-00029-6.
  • Dijkstra, Edsger W., A Discipline of Programming, Prentice-Hall, 1976, ISBN 0-13-215871-X.
  • Goos, G., and J. Hartmanis, eds, Language Design and Programming Methodology, Springer-Verlag, 1980, ISBN 0-387-09745-7 & 3-540-09745-7.

    Professor Dijkstra's only work of fiction (that I know of) was a series of chapters, each published as a monograph in the EWD-xxxx series, about "Mathematics, Inc.", showing how the world is damaged by pretending software and other mathematics to be patentable. There's a treasure trove of Dijkstra's work on mathematics/software in the University of Texas web site. Just look around, starting from the URL in the link above.

    Tony Hoare published a lot of work, in the 60's, 70's and 80's on the mathematical nature of programming, but I can't find any among what's left of my 'library'.

    --Bill. NAL: question the answers, especially mine.

    [ Reply to This | # ]

  • One thought struck me while reading this...
    Authored by: Bernard on Thursday, June 17 2010 @ 09:05 PM EDT
    ...that Mr Quinn is a patent attorney, and patents are his
    tool of trade.

    Which immediately brought to mind the old saying:

    Give a man a hammer, and everything starts to look like a

    So I don't necessarily ascribe any ulterior motives to Mr
    Quinn's position, but rather I think he has a highly skewed
    viewpoint. In his world, everything is inherently
    patentable, with only narrow exceptions set out by the

    [ Reply to This | # ]

    Authored by: Ian Al on Friday, June 18 2010 @ 05:04 AM EDT
    What would be the change in the number of jobs in the pharmaceuticals business
    if the inventors like the universities and not-for-profit groups like Welcome
    Trust gave their IP away for nothing?

    As far as I can see, the only change would be that some folk would be able to
    get their illness cured whereas now they cannot afford to. That would reduce the
    amount of drug production by a small amount because of early treatment. Most of
    the jobs are in drug production and that would not change. The operatives are
    not paid stunningly high amounts because of the high profits made on patent

    If the pharmaceuticals business did not make so much profit from patent
    medicines and could not research so many new drugs then the need for more, less
    effective, drugs would increase resulting in more jobs. However, more people
    would be able to afford the drugs which would reduce the need and the jobs in
    production. Perhaps it's a wash.

    Patents just mean more profit, fewer jobs and more ill people.

    Ian Al
    SCOG, what ever happened to them? Whatever, it was less than they deserve.

    [ Reply to This | # ]

    The USPTO is outrageous!
    Authored by: Ian Al on Friday, June 18 2010 @ 05:15 AM EDT
    * Electromagnetic signals, which are considered forms of energy and as such are nonstatutory natural phenomena (which is why computer programs are patentable when embodied in something physical, such as a computer-readable medium, but computer programs are not patentable when embodied in a computer-readable signal stream).
    Oh dear, I find myself thinking that they are wrong! Electromagnetic waves should be non-patentable. However, signals carried by electromagnetic waves should be patentable if they meet all the other criteria. WiFi, mobile phones, TV and radio transmission, CAT scans, Xray photography, the curing of dental fillings with blue light, the use of heat to cure rubber, the use of light to illuminate buildings. OK, I've stopped, now. That list is part signals and part processes, some of which gained patents and, in my view, with just cause.

    Perhaps I have been overcome by pedantry and have been outraged by the incorrect use of the word 'signal'. However, the USPTO should have the highest expertise in spotting such errors. It should be a core skill.

    Ian Al
    SCOG, what ever happened to them? Whatever, it was less than they deserve.

    [ Reply to This | # ]

    Partial predictions, anyone?
    Authored by: Anonymous on Friday, June 18 2010 @ 07:28 AM EDT

    What the majority decision will be is unpredictable, at this point, I think. But surely we can make some partial predictions, based on the track records of the Justices?

    Here are mine.

    I think Roberts and Alito will support the petitioner (i.e. favor patentability). That's because a huge beneficiary of broad patentability will be large corporations, which will use process, method, and software patents as a weapon to block small companies from disrupting their markets. Roberts and Alito have shown themselves to be very sympathetic to large, powerful corporations, to the point of ignoring what most people feel to be the spirit of the Constitution.

    [ Reply to This | # ]

    The decision on Bilski is patented
    Authored by: DannyB on Friday, June 18 2010 @ 09:40 AM EDT
    The decision won't be released until the patent issues.

    The price of freedom is eternal litigation.

    [ Reply to This | # ]

    No decision on today (21st)
    Authored by: Anonymous on Monday, June 21 2010 @ 12:25 PM EDT
    Well, no decision on the 21st.

    That leaves the 24th, 28th, or it will be held over until the
    next session (lets hope it is not that).

    [ Reply to This | # ]

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