GUEST BLOG: SOME FIRST HAND IMPRESSIONS OF THE EN BANC BILSKI ORAL ARGUMENT

This guest post was written by Charles R. Macedo, Jung Hahm, Howard Wizenfeld and Norajean McCaffrey. [i]

On May 8, 2008, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in In re Bilski and Warsaw, No. 2007-1130 (Fed. Cir.), to consider the boundaries of patent-eligible subject matter.   While various amici tried to frame the debate to question what, if any, business-related and computer-related inventions should be excluded from patent-eligibility, the argument at the Court focused more narrowly on what types of business-related inventions should be eligible for patent eligibility.

Charley Macedo and Jung Hahm went to the Courthouse to give their first hand impressions of the oral argument.  Mr. Macedo was principal attorney, along with Messrs. Lo Cicero and Hahm, on the amici curiae brief submitted on behalf of Reserve Management Corporation, PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group in In re Bilski.

In addition to Appellants’ counsel, David Hanson, and Acting Solicitor Raymond Chen,  representing the Director of the Patent and Trademark Office (“PTO”), the Court allowed counsel for two of the amici from the financial services  industry to participate in the oral argument: Professor John F. Duffy on behalf of Regulatory DataCorp, Inc. (“RDC”), and Mr. William Lee  on behalf of Bank of America (“BOA”) and certain other financial service entities.  In describing the  scope of patent eligible subject matter, RDC took a broader but more moderate view, whereas BOA took an extremely  narrow view that was, as Mr. Lee phrased it, “at the far end of the bell curve.”

When we arrived at the courthouse an hour and a half before the argument was scheduled to begin, about a hundred people were in line in front of us.  Thereafter, another hundred or so joined the line .  The courtroom was packed with lawyers, press, business people, and even some judges.  This attention, like the over thirty amici submissions, reinforces just how important business-related patents are to the U.S. economy.  While not everyone agrees that business-related patents are beneficial, everyone at yesterday's argument recognized that innovation in this area exists and is important to foster.  If we assume that good patents achieve this goal, then the answer from yesterday's argument should not be to use  the test of patent-eligible subject matter  under Section 101 as an exclusive  filter.  Rather, as Judge Rader suggested at the argument, the answer should be to  also allow the other parts of the Patent Act , such as Sections 102, 103, and/or 112,  to weed out the bad patents.

In the oral argument,  the Court asked five abstract questions about the meaning of the word "abstract" and sought useful, concrete and tangible answers.  Unfortunately, the answers were not forthcoming.  Many members of the Court  seemed reluctant to adopt a “pornography-like” rule  to identify an unpatentable abstract idea: "I know it when I see it."  Such a rule would not provide any guidance to the PTO examiners reviewing business method patent applications.   

The Court therefore turned to the tests proposed by each counsel  to determine whether a process is patent-eligible under Section 101 and pressed them to define the words of their respective tests.  However, it became evident that no satisfactory definitions were available to allow a more refined test.  This demonstrates why, as Professor Duffy advocated, the Court should avoid trying to provide any bright line tests.

During the argument, the PTO said it would not advocate  and could not provide any bright line test.   Exasperated,  Judge Michel asked if the PTO would at least provide even a “blurry line test.”

Whether the Court will be able to muster enough Judges to agree on a majority opinion including the bright line (or even a blurry line) test the Court is seeking remains to be seen.  For now, it appears that the majority of the Court wants to preserve the patent eligibility of software innovations, and recognizes that at least some innovations in information technology should also be patent eligible. Which of those innovations should be included within the realm of patent eligible subject matter  appears to be the focus of the debate by the panel.  If and how the Court reaches  a conclusion is yet to be seen.   

We will be providing a full report on the argument  for IP Law 360 , and suggest readers check out our firm website for a full report:  www.arelaw.com.  Those interested in a copy of the report may also send an e-mail to Charley Macedo at cmacedo@arelaw.com

[i] Charles R. Macedo is a partner and Jung Hahm, Howard Wizenfeld and Norajean McCaffrey are associates at Amster, Rothstein & Ebenstein, LLP.  Their practices specialize in intellectual property issues including litigating patent, trademark and other intellectual property disputes, prosecuting patents before the U.S. Patent and Trademark Office, and other patent offices throughout the world, registering trademarks and service marks with the U.S. Patent and Trademark Office, and other trademark offices throughout the world, and drafting and negotiating intellectual property agreements.  They may be reached at cmacedo@arelaw.com, jhahm@arelaw.com, hwizenfeld@arelaw.com  and nmccaffrey@arelaw.com.  This Guest Blog is not intended to express the views of the firm or its clients.  Mr. Macedo was principal attorney, along with Messrs. Lo Cicero and Hahm, on the amici curiae brief submitted on behalf of Reserve Management Corporation, PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group in In re Bilski.