In re Bilski is Good Law Until the US Supreme Court Says Otherwise (Article – WSJ.com)

Article – WSJ.com. Subscription required after WSJ takes this article off the free space on its site.

In re Bilski is being applied as it waits for its hearing before the US Supreme Court in the fall as Bilski v. Doll. A Ninth Circuit district court judge ruled a business method patent invalid based on the Bilski standard of transformative use. The patent holder, DealerTrak Holdings, Inc., intends to appeal the holding.

This is a good chance for me to take a flying leap of logic and talk about how case law and the courts work in the USA.

We have two court systems: the federal system (which holds exclusive jurisdiction over matters involving federal statutes like patent and copyright) and the states’ systems (which holds jurisdiction over state-based matters like contracts and torts). These systems come in hierarchies. I’ll talk about the federal system only (state systems vary from state to state, but they follow this same basic model).

In the federal system, the lowest court is the district court. These are the trial courts; this is the only place where the parties actually have to show up. This is where juries are sworn, testimony is taken, and a record of the litigation is produced (through transcription and discovery). The record is very, very important. There is at least one district court in every state.

The district court judges, who are Article III judges with lifetime appointments just like their appellate brethren, can appoint, under Article I of the Constitution, so-called “magistrate” judges (I was lucky enough to take my law-school Trial Advocacy class with the New Hampshire magistrate, Hon. James Muirhead). Magistrates handle a lot of pre-trial work; they also sometimes handle the trial, if the parties agree. Magistrates report to the district judges. Magistrates’ appointments are for a term of years, not for life.

The district court judges and magistrates must follow the holdings of every appellate court that sits directly above them as they make their decisions. The Court of Appeals for the Federal Circuit (CAFC) sits above each and every district court in matters where the CAFC has exclusive jurisdiction — like patent matters. This means that the district court judges must know and apply CAFC law when deciding matters that fall under the exclusive jurisdiction of the CAFC, no matter which so-called “circuit” the district court sits in. If the matter does not fall within the exclusive jurisdiction of the CAFC, then the district court must apply the case law of its own individual circuit court of appeals, as well as its own case law. It must also, of course, follow US Supreme Court case law. The district court can overturn its own case law, but it must follow the case law from its own circuit court and the CAFC, and from the US Supreme Court.

The US has 13 circuits (numbered 1-12, and the federal circuit). Each circuit has one regional court of appeals; they hear the cases that come out of the district courts with a decision with which one of the parties is unhappy. They rule based solely on the record of the case (which is why the record is very, very important), the attorneys’ briefs, and sometimes oral arguments, and on existing law, including their own and US Supreme Court case law. It is free to overturn its own case law. It can follow the holdings of other circuits or it can branch out on its own and hold something entirely different.

When there is a split in the circuit courts of appeal on a question of law, the field is ripe for the US Supreme Court to step in to settle the matter (another ripening field for the US Supreme Court is when one of the lower courts rules in a way that they think needs to be examined). The US Supreme Court can pick and choose most of the cases it will hear (there are some that it must hear, specifically those with which original — trial — jurisdiction rests with them, such as disputes between the states), and it does not choose to hear most of the petitions for writs of certiorari (“cert”) that come before it. Denying cert says nothing about the case below; it simply says that the US Supreme Court chooses not to hear the matter.

The US Supreme Court sits above all other courts (both state and federal) in the country. The only case law it must apply (and it is free to overturn this) is its own.

Courts do not like to overturn their own case law. It tends to make something of a splash in the legal world when a court does that, and the higher the court is, the bigger the splash an overturned case makes.

Bilski has been decided by the CAFC. The holding — well, the parties disagree with it; hence the petition for cert to the US Supreme Court. The US Supreme Court granted cert on this one; they will hear and finally decide the questions presented by the case. Until the Nine Wise Ones (or at least a majority of them) say otherwise, the CAFC rule of “transformative use” stands, and by the CAFC ruling the district courts are bound.

In re Bilski again

The US Supreme Court has granted cert on In re Bilski (now styled Bilski v. Doll). The case is now pending before the Nine Wise Ones. Here are the court filings (from the point of view of the USPTO).

Bilski, as you recall, requires that business method patents have some sort of “transformative” characteristic — that is, the invention must somehow transform data or information input into something surprisingly different coming out.

The questions presented to the Court are:

1. “Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. “Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

I hope Bilski gets overturned; I don’t like its holding. I REALLY hope Bilski gets overturned.

Small world…


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The Rule of Six never ceases to amaze me. You know, the one that says that there are only six degrees of separation between every living human being on the planet.

Shortly after I posted the new US Supreme Court nominee mention, I got a FaceBook message from the mother of one of my daughter’s college friends telling me that the Judge Sotomayor’s brother is my friend’s allergist.

I do think an introduction is in order here.

Sotomayor nominated to high court

Sonia Sotomayor nominated to high court — first Hispanic – Yahoo News.

So. US Supreme Court Justice David Souter has a potential successor. A female, brainy, bipartisan appellate judge (who was first appointed to the federal bench by President Bush I and appointed to the federal appellate bench by President Clinton) with lots of judicial experience (this is Good) who has a rip-roaring case of juvenile diabetes (this is not so good).

I like her as a potential Supreme Court Justice (the first Hispanic and the third woman in the history of the Court); she’s careful, not flashy and keeps her views to the case at hand, but I wonder how the rigors of life among the Nine Wise Ones will wear on a fragile system. Well, assuming she’s appointed (and appointment, while likely, ain’t certain; she has her detractors on the Senate Judiciary Committee, who are throwing around phrases like “judicial activist with her own agenda”), we shall see.

Congratulations, Judge Sotomayor. May your decisions be sound for a long time to come.

And thank you, Justice Souter, for waiting to retire until after Mr. Obama was sworn in!!!!!