Oral Argument in Bilski
posted by Gerard Magliocca
Here are some observations about the oral argument today in Bilski, which dealt with the scope of patentable subject matter and (potentially) the viability of business method and software patents.
1. The Justices seemed to reject the argument that Section 101 should be read broadly since the novelty and nonobviousness requirements were sufficient to prevent things like “a method of speed dating” from being patented. Counsel for Bilski kept responding to the Court’s hypotheticals by saying that the proposed processes could “potentially” be patentable if they met the other statutory requirements. Nobody embraced that view. I think this is a good sign, because in practice 102 and 103 haven’t worked well as gatekeepers.
2. Unfortunately, the suggestions by the Justices about how to limit Section 101 were not well thought out. Declaring that 101 “excludes business methods” or includes only “technology” will just create a decade of uncertainty as people try to figure out what those categories mean. What we need from the Court is a set of factors that can guide the analysis — my own views on that are here.
3. The viability of State Street Bank is in doubt. At least two Justices (Kennedy and Stevens) seemed unclear about whether State Street should survive, even though the Government took the position that the case was correctly decided. I don’t think that the Court will take down software patents in this case, but I think the odds went from about 5% to about 20%.
November 9, 2009 at 8:11 pm
Posted in: Intellectual Property
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Responses (3)
Lässt der US Supreme Court Softwarepatenten die Luft ab? : Verfassungsblog - November 9, 2009 at 11:57 pm
[...] Gerald Magliocca auf Concurring Opinions notiert: I don’t think that the Court will take down software patents in this case, but I think [...]
Joe - November 10, 2009 at 12:09 am
“Potentially patentable?” That’s so vague.
Christa Laser - November 11, 2009 at 5:03 pm
You mention that 102 and 103 haven’t been good gatekeepers, but what about 112? I am currently performing empirical research for a note on claim definiteness and, though not yet statistically significant, claim definiteness seems to disproportionately thwart software-on-hardware patents.
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