[DG: Open Forum] Fwd: The Supreme Court + Patent Law = IP Heaven

[csev]

Patent News.

/Chuck

Begin forwarded message:

> From: Oscar Lara <oscalara at umich.edu>
> Date: June 28, 2010 4:36:14 PM EDT
> To: si.all.open at umich.edu
> Subject: The Supreme Court + Patent Law = IP Heaven
> 
> Hello Everyone,
> 
> There was huge news coming from the Supreme Court today. And I mean huge news. It was really crowded around there. There were reporters and a bunch of media folk present. I think everyone wanted to know what the Supreme Court was going to decide in this milestone case. That's right, I'm talking about Bilski v. Kappos, the huge patent law case. I mean, what other important issues did the Supreme Court decide today? None come to mind. 
> 
> The Court found that Bilski's patent application was properly denied as it could not be considered a process (more on that below).
> 
> Here's the link to the case: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf
> 
> This case is kinda long, and I skimmed it before heading to lunch (kinda sorta). I'm sure I'm leaving out a lot of stuff (especially on the patent law), but basically here's what happened:
> 
> Brief Patent Law Background:
> Basically, to get a patent, you must invent or discover a new and useful (1)process, (2) machine, (3) manufactures, or (4) compositions of matter. On top of that, the invention cannot be an obvious improvement over a prior invention (or prior art). Basically: to get a patent, it must:
> 1) fall under the above 4 categories
> 2) be new (or novel as the geeky patent folk say)
> 3) useful, and
> 4) not obvious (basically, if, hypothetically speaking, there was a bike without handle bars out there, you can't invent and patent the handle bars)
> 
> Factual Background:
> This guy named Bilski (well, a couple of guys really) tried to patent this idea that explains how buyers and sellers of stuff in the energy market can protect or hedge against the risk of price changes. He claimed it was a process. To be honest, they're not really saying anything that isn't common sense actually (at least to it seems like common sense). The PTO rejected it (rightfully so), and the Federal Circuit (the main court of appeals when it comes to patent law) said they were right. They issued a test saying that a process must be (1) tied to a machine or apparatus, or (2) transform something into something different. They called this test the machine-transformation test. They stated that this was the exclusive test for determining a process.
> 
> This test actually makes a lot of sense, because, to be honest, there's a lot of stuff (to use a PG friendly term) that gets patented. And basically, without such a test, anything can get patented. There's this hilarious exchange from the oral argument between J. Scalia and Bilski's lawyer:
> 
> JUSTICE SCALIA: You know, you mention that there are all these -- these new areas that didn't exist in the past because of modern business and whatnot, but there are also areas that existed in the past that don't exist today. Let's take training horses. Don't you think that -- that some people, horse whisperers or others, had some, you know, some insights into the best way to train horses? And that should have been patentable on your theory.
> MR. JAKES: They might have, yes.
> JUSTICE SCALIA: Well, why didn't anybody patent those things?
> MR. JAKES: I think our economy was based on industrial process.
> JUSTICE SCALIA: It was based on horses, for Pete's sake.
> 
> Supreme Court:
> This was a unanimous decision (9-0). Everyone agreed that Bilski shouldn't have gotten a patent. But most importantly, everyone agrees that the machine-transformation test is useful, but not the only test that should be used. Justice Kennedy (author of the majority opinion) feels that the patent act is designed to include "new and unforeseen inventions" and it's important not to make a rule that will eliminate inventions that people haven't come up with. Justice Kennedy also goes on further saying that it is possible for a business method to qualify as a process, so long as the idea is not abstract or a law of nature. 
> 
> Justice Stevens, however, does not agree with this point and goes on for a couple of pages saying why not. I'm not gonna lie, I haven't really read that far yet, but basically he feels that this can open the floodgates to certain things getting a patent that shouldn't (please correct me if I'm wrong on this).
> 
> Justice Breyer basically felt like writing down what Kennedy and Stevens agreed on. I'm sure there's a law professor out there who wanted to write a law review article on this that's pretty upset.
> 
> Implications:
> Nothing really. It's still going to be hard to determine what is considered a process is under the Patent Act. The Court didn't really give any guidance or and the majority couldn't really agree on a test (at least from what I saw).
> 
> Who in SI Cares:
> This is important (kinda), especially for all you HCI folk that create and design all kinds of crazy things. Also, my mom cares about this. When I talked to her about this case, we talked about it for 20 minutes. Usually she'll cut me off after 5 when I get into a rant about law, but not this time. So, it's kind of a big deal.
> 
> How I Was Able To Write This:
> Yes, I've been ridiculously busy, and I didn't have time to write up something for the YouTube case. But I kinda knew the case was going to be decided, so I wrote this message up over the weekend (the parts that I could), and just added the new stuff from today. Didn't take that long really (10-15 min tops). Yes, I am a huge nerd. I'm okay with that.
> 
> Best,
> Oscar
> 
> PS:
> The Supreme Court did decide some other important issues. The one you'll all hear about in the news (presumably taken out of context) is the gun case. I won't talk about that over SI for many reasons (one being that it's not really SI related...at least I hope not). However, if you would like to have a discussion about it, please email me offlist. I'll be reading the opinion tonight before I go to bed in order to be informed of the issue. Night everyone.
> 
> 

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