The long-anticipated petition appealing the landmark Bilski decision of the U.S. Court of Appeals for the Federal Circuit is being filed at the Supreme Court today, setting the stage for a showdown over whether so-called "business methods" -- processes and procedures, not widgets -- are patentable.
"This is the fundamental question of patent law," says J. Michael Jakes, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, who is taking the case to the high court. "It doesn't just affect business methods, but software and the biotech industry as well."
In last October's Bilski decision, an en banc majority of the federal circuit ruled that a process for anticipating and hedging risk in commodities markets did not deserve a patent, because it was not tied to a machine, and did result in a physical transformation. The ruling sent shock waves through the patent law world, with critics saying the decision would slow innovation in the areas of information technology and financial services, where patents are sought -- and had been granted -- for new processes that are less tangible than a physical invention.
But as we reported here when the decision was issued, some analysts said the decision brought the federal circuit more in line with current Supreme Court sentiment against broad interpretation of patent law. So, will the Supreme Court accept and grant the petition filed today, or let the federal circuit ruling stand?
Jakes thinks the high court has already expressed interest in resolving the issue and will give his petition close consideration. He also disputed the notion that the Supreme Court would find the federal circuit's Bilski ruling compatible with its patent law views. "The Supreme Court, given the opportunity, has never said this was the test." Jakes also points to the fact that the federal circuit, on its own motion, heard the Bilski case en banc, as a signal to the justices that the case warrants high court attention.
Jakes urges the Court to "return to first principles" and allow patents for any innovation other than "abstract ideas and the laws of nature." He rejects hypotheticals suggesting that under that broader view, for example, someone could patent a new way of pitching a curve ball. Other tests for obviousness and innovation would kick in, he says. "It would have to be an amazingly non-obvious or new way of throwing a curve ball to be patented," Jakes says. "There's nothing new about throwing a curve ball." Supreme Court baseball aficionados like Samuel Alito Jr. and John Paul Stevens might like to debate that proposition.
When the Bilski case was before the federal circuit, Jakes was the author of one of 38 amicus curiae briefs arguing for a broad interpretation that would allow business methods to be patented. After the decision came down, Jakes says he was introduced to officials of Equitable Resources Inc., the natural gas company that owns the patent application at issue, which was filed by inventors Bernard Bilski and Rand Warsaw. Equitable gave Jakes the nod. Jakes has more than 20 years of appellate experience in the patent field, and clerked for the legendary Giles Rich, the late federal circuit judge who wrote the State Street Bank decision, which dealt with business method patents.
At the widely read Patently-O patent law blog Dennis Crouch yesterday was wondering whether Bilski is the right vehicle for the Court to decide the business methods question. "Issues of obviousness would almost certainly cloud" the case, Crouch said, adding, "There are many other potential cases in the pipeline, and the Supreme Court may properly wait to see how the new Bilski rule develops before weighing in."