Archive for the ‘Supreme Court Oral Arguments’ Category

Benefits of a Broad Interpretation of 35 U.S.C. §101

Thursday, May 6th, 2010

Aoil-covered-wildlife4s the nation begins to appreciate the impact of the oil spill in the Gulf of Mexico and the Supreme Court prepares to wade in on the issue of patentable subject matter in Bilski v. Kappos, one can’t help but be reminded of the Diamond v. Chakrabarty, 447 U.S. 303 (1980) case.  In that case the Supreme Court dealt with the scope of  section 101 and whether a living organism constituted patentable subject matter.  Dr. Chakrabarty’s invention dealt with an oil digesting bacteria that could digest about two-thirds of the hydrocarbons found in a typical oil spill.  With its landmark decision, the Supreme Court declared Dr. Chakrabarty’s invention patentable.  That bacteria would later be used to remediate the oil spill from the Exxon Valdez and presumably will be used on the oil spill in the Gulf, as well.

Dr. Chakrabarty’s invention and the Diamond v. Chakarabarty decision underscore the benefits of an expansive interpretation of 35 U.S.C. §101 — an interpretation that encourages innovation and promotes the disclosure of new ideas. 

You can listen to the oral argument in Diamond v. Chakrabarty here: [Listen].

You can read the Court’s opinion here: [Read].

Nominee — Edward C. DuMont

Tuesday, April 20th, 2010

Edward C. DuMont has been nominated to fill the vacancy at the United States Court of Appeals for the Federal Circuit when Chief Judge Paul Michel retires from the bench at the end of May.  I could not find any recordings of Mr. DuMont arguing before the CAFC; however, you can listen to this recording of Mr. DuMont arguing before the Supreme Court in Hercules, Inc. et al. v. United States, 516 U.S. 417 (1996):    [Listen].  The case concerned whether chemical manufacturers could recover from the United States their costs incurred defending Agent Orange tort claims.  Mr. DuMont has argued eighteen cases before the Supreme Court of the United States.

Graham v. John Deere — Part 2

Saturday, November 28th, 2009

Graham v. John Deere was decided in 1966 and for the first time since the passage of the 1952 Patent Act addressed the issue of obviousness under 35 U.S.C. § 103.   As noted in the previous post, the Court also heard oral argument for two companion cases, Calmar v. Cook Chemical and Colgate-Palmolive v. Cook Chemical, on the same day that it heard oral argument for Graham v. John Deere.  Those cases also concerned the standard of obviousness.

The counsel for the patentee spent a good deal of his allotted oral argument time describing the invention as follows: [Listen].

The counsel for John Deere described the invention as follows: [Listen].

Counsel for John Deere addressed the obviousness factors here: [Listen].

I find the oral arguments of patent cases from the Supreme Court  during the 1960’s particularly interesting in that some of the justices are very candid about not being able to understand patent claims.  For example, Justice Black made these remarks: [Listen] and [Listen]. 

 You can listen to the entire oral argument from Graham v. John Deere here: [Listen].   I believe this is currently the only place on the internet where one can listen to this oral argument.

You can read the opinion from Graham v. John Deere here: [Read].

Graham v. John Deere — Part 1

Friday, November 20th, 2009

Since the Supreme Court has apparently decided not to release the recording of the oral argument of Bilski v. Kappos until the end of the term, I thought it might be of interest to revisit another important case from the Supreme Court’s history.  In Graham v. John Deere, the Supreme Court addressed the issue of non-obviousness under 35 U.S.C. section 103.  On the same day that the Supreme Court heard oral argument in Graham v. John Deere, it also heard the oral argument for two companion cases, Calmar v. Cook and Colgate-Palmolive v. Cook.

The Calmar v. Cook and Colgate-Palmolive v. Cook cases concerned a patent on a cap for a chemical sprayer that prevented leakage of chemicals from the container during shipment.  The attorney for the patentee argued that the patent was non-obvious and asserted 18 guideposts to help determine whether an invention was obvious:

 1) A long-felt need for the invention;

2)  An identified baffling problem;

3)  Skilled and experienced competitors trying to solve the problem, rather than nobody trying to solve the problem;

4)  Begging for an answer — pleas by customers to inventive company to solve the problem;

5)  Struggles that the parties had in attempting to come up with an answer;

6)  Failures of others in trying to solve the problem;

7) Was the problem truly solved by the inventor of the patent;

8 ) Consider the results of the solution (old result vs. new result) (application to new products)

9) Manner of arriving at the solution;

10)  The Patent Office did issue a patent;

11) A new combination of old elements;

12)  All the pertinent art was considered;

13) Utility of the invention — simple solution;

14)  Acceptance of the invention by competitors and the public;

15)  Recognition;

16)  Copying by others;

17) Competitor sought the same protection at the Patent Office;

18) Successes by patentee and infringer with the invention.

The following exchange between counsel for the patentee and Justice Black is one of the more interesting discussions from the oral argument where both parties agree that obviousness is a standard that escapes definition: [Listen].

You can listen to the entire oral argument here: [Listen].

Oral Argument in Bilski v. Kappos

Tuesday, November 10th, 2009

The oral argument in Bilski v. Kappos took place yesterday at the U.S. Supreme Court.  The Court has released the transcript of the oral argument but has not released the audio recording of the argument.  You can read the transcript here [Read]. 

According to the Court’s policy explained on its web site, the audio of the oral argument will not be available until after the end of the present Supreme Court term.

The Court also makes its own set of oral argument recordings. This set of recordings is kept in the Marshal’s Office for the remainder of the Term, during which time it is not available to the general public. At the beginning of the next Term, the recordings are transmitted from the Marshal to the Motion Picture, Sound, and Video Branch of the National Archives. The Archives’ collection contains audio recordings of Supreme Court oral arguments from 1955 through the immediately preceding October Term. Members of the public can listen to or make their own copies of oral argument recordings using their own tape recorders, blank tapes, and patch cords at the Motion Picture, Sound, and Video Branch. Copies of recordings can also be purchased from the Archives.

 

Reply Brief in Bilski v. Kappos

Tuesday, October 27th, 2009

The reply brief in Bilski v. Kappos has now been filed.  You can read it [Here].

Updated with Petitioners’ Brief and Respondent’s Brief:

[Brief for Petitioners Bernard L. Bilski and Rand A. Warsaw ]

[Brief for Respondent David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Trademark Office]

Diamond v. Diehr

Monday, October 26th, 2009

Most people reading this will probably recall that Diamond v. Diehr was the last time that the United States Supreme Court issued a substantive opinion on 35 USC section 101.  The case involved method claims and the use of a computer to control a rubber curing process. 

I had always assumed that the counsel for the inventor in Diamond v. Diehr was a champion of broad subject matter protection and had argued valiantly for a broad scope of protectable subject matter under section 101, including protection for computer software. Therefore, I was surprised when I listened to the oral argument in Diamond v. Diehr that such was not the case:  [Listen] and [Listen].

It’s no surprise that the Solicitor General also argued against the patentability of software during the oral argument.  Previously, the government had argued for a narrow scope of protection under section 101 in Diamond v. Chakrabarty, Parker v. Flook, and Gottschalk v. Benson.  The Solicitor General’s argument in Diamond v. Diehr was no different — although it took some prodding from Justice White for him to address the issue directly: [Listen].

While the Solicitor General in Diamond v. Diehr admitted that computer programs could be novel and non-obvious, the Solicitor General quoted the President’s Commission on the Patent System from the 1970’s in arguing that computer programs should not be patentable — whether claimed purely as a software program or as a process or as a  programmed machine — because searching would be too difficult due to the sheer volume of prior art.    [Listen]

It is interesting to note the position of the Solicitor General’s office now in Bilski v. Kappos.  In the goverment’s brief, the Solicitor General’s office now states:

 This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term “process” in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology—including claims concerning software and other modern technologies—from those that do not. 

See page 9 of Respondent’s Brief in Bilski v. Kappos.

 

In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. As with many types of technology, the patent-eligibility of software cannot be resolved as a categorical matter. Rather, the eligibility of a claimed software invention depends on the content of that  invention and the form in which it is sought to be patented. 

As the Board noted below, the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine ( i.e. , the computer itself ) or involve a transformation of matter ( i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip). Pet. App. 177a-178a. This conception of the machine-or-transformation test is reflected in non-binding interim examination instructions issued by the PTO in August 2009. See United States PTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101  (Aug. 24, 2009) ( Interim Instructions).17  The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Id. at 6. Such a computer, “when programmed to perform the process steps” so that it performs the specific function  contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. Ibid.; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)(“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”). In addition, “transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.”

 

 See Respondent’s Brief at pages 38-39 in Bilski v. Kappos. 

 You can listen to the entire oral argument in Diamond v. Diehr here:   [Listen].
 You can read the Supreme Court’s opinion in Diamond v. Diehr here:  [Read].

Diamond v. Bradley

Sunday, September 13th, 2009

It has been more than a quarter of a century since the Supreme Court issued a substantive opinion concerning 35 USC section 101 — Diamond v. Diehr.  On the same day that the Court heard the oral argument in Diamond v. Diehr, it also heard a companion case in Diamond v. BradleyDiamond v. Bradley concerned 35 USC section 101 in the context of an apparatus claim for a computer.  Chief Justice Burger took no part in the decision which resulted in a 4-4 split decision by the remaining eight justices.  As a result, the CCPA’s judgment was affirmed.

Obviously, computing has advanced significantly in the last quarter of a century.  However, the following sound bite truly puts that advancement in perspective. [Listen]  (“[W]ord processors — you know, those machines that are replacing typewriters in offices.”)

LabCorp v. Metabolite

Thursday, September 10th, 2009

With the Bilski v. Kappos briefing currently taking place, I thought it might be of interest to post the briefs from the Lab Corp v. Metabolite case.  As readers may recall,  the Supreme  Court dismissed the writ of certiorari in Lab Corp. v. Metabolite in 2006 as having been improvidently granted.

Petitioner’s Brief

Respondents’ Brief

Petitioner’s Reply Brief

Supreme Court’s Dismissal and Justice Breyer’s dissent

Bilski briefs

Sunday, September 6th, 2009

I noticed that the ABA has a nice site where one can easily access the briefs being submitted for the Bilski v. Kappos case.  The link is:  http://www.abanet.org/publiced/preview/briefs/nov09.shtml#bilski

So far, 45 amicus briefs have been filed — easily outnumbering briefs on file for any other case being argued in October or November.

Oral Argument of Brenner v. Manson

Wednesday, August 26th, 2009

Brenner v. Manson was decided by the US Supreme Court in 1966.  The case dealt with whether a method claim to produce a product is patentable when the putative inventor knew of no use for the produced product.  The Supreme Court decided that the method claim did not satisfy 35 USC section 101 under those circumstances.

This oral argument* is primarily of interest in regard to Bilski v. Kappos for the policy arguments that are made in regard to the purpose of section 101.  Interestingly, Justice Fortas, in writing for the majority, concluded the opinion with this final sentence: “[A] patent system must be related to the world of commerce, rather than to the realm of philosophy. . . .”  One might find that statement useful when considering whether 35 USC section 101 was intended to cover business methods.

Finally, in the Court’s opinion there is one interesting line that seems particularly apt for a patent case even though the Court was dealing with statutory construction rather than claim construction.  Justice Fortas wrote “[A] simple, everyday word can be pregnant with ambiguity when applied to the facts of life. . . .”

You can listen to the oral argument Here.

You can read the opinion Here.

*I believe this is the only place on the Internet where you can currently listen to this oral argument.  I ordered it from the Supreme Court archives.

Bilski v. Kappos

Sunday, August 23rd, 2009

Mark your calendar.  The oral argument for Bilski v. Kappos before the United States Supreme Court has been set for Monday, November 9, 2009.  You can view the entire docket sheet [Here].

Oral Argument of Diamond v. Chakrabarty

Monday, August 10th, 2009

Following Gottschalk v. Benson in 1972 and Parker v. Flook in 1978, the U.S. Supreme Court again had the opportunity to consider 35 USC section 101 in Diamond v. Chakrabarty in 1980.  The Court held that a patent claim for a live, human-made microorganism is patentable subject matter as either a manufacture or composition of matter under 35 USC section 101. 

The counsel for the patent applicant argued, in part, that because the USPTO had recognized microorganisms as a unique subclassification in its classification system and had issued at least 60 patents for microorganisms that the PTO had already recognized microorganisms as being patentable.  You can hear part of that argument [here]. 

Interestingly, the USPTO just recently published a PowerPoint presentation on business methods.  It is available [here].  In this presentation, the USPTO recognizes that it issued 1600 business methods in 2008.  Assuming the PTO issues roughly 157,800 patents every year, the 1600 patents accounted for only 1.0% of all patents issued by the USPTO. 

You can listen to the entire oral argument in Diamond v. Chakrabarty [here].

You can read the Court’s opinion [here].

Oral Argument of Parker v. Flook

Wednesday, August 5th, 2009

Parker v. Flook was the U.S. Supreme Court’s second chance to assess 35 USC section 101 in the context of a computer related claim.  The opinion was written by Justice Stevens and he was joined by Justices Brennan, White, Marshall, Blackmun, and Powell.  A dissenting opinion was filed by Justice Stewart, Chief Justice Burger, and Justice Rehnquist.  A few years later in Diamond v. Diehr, Justices White and Powell would switch sides and join Justice Stewart, Chief Justice Burger, and Justice Rehnquist (i.e., the dissent in Flook), leaving Justices Stevens, Brennan, Marshall, and Blackmun as the dissent.  Notably, Justice Stevens is the only member still serving on the Court.  He joined Justice Breyer and Justice Souter in dissenting in the dismissal of the Labcorp v. Metabolite case in 2006.

As a patent attorney who admittedly favors patent protection for software and business methods, it is difficult to read the Parker v. Flook decision and find any logic in it.  The opinion tries to inject elements of 35 USC section 103 into the 35 USC section 101 analysis.  The Court and the public would be better-served to let sections 102, 103, and 112 serve their intended purposes rather than trying to make a complete analysis of patentability under 35 USC section 101.  With the Court’s recent decision in KSR v. Teleflex there are ample constraints on claiming obvious uses of a natural phenomenon.  And, with the Federal Circuit’s cases concerning section 112, there is ample protection against overbreadth in claiming.  One would hope that the Court will take the opportunity with the Bilski v. Doll case to clarify the law by expressly overruling Parker v. Flook

You can listen to the Parker v. Flook oral argument here [Listen].  You can read the decision here [Read].

Oral Argument of Gottschalk v. Benson

Wednesday, July 22nd, 2009

With the briefing to the Supreme Court underway in regard to the Bilski v. Doll (Bilski v. Kappos?) case, I thought it would be of interest to readers to post the oral arguments to the Supreme Court for some relatively recent section 101 cases.  Today’s posting is the oral argument to the Supreme Court from Gottschalk v. Benson [Listen] that took place more than thirty-six years ago on October 16, 1972.

Here is a link to the text of the opinion:[Read]

It is interesting to listen to the Applicant’s policy argument in regard to the patenting of software [Listen] and the government’s reply [Listen] and to reflect on how things have both changed and not changed in the last thirty-six years.