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Handicapping Bilski

Patent lawyers can barely control their excitement -- or anxiety -- in the wake of this week's news that the Supreme Court has agreed to review In re Bilski, the Federal Circuit's October en banc opinion that is seen as having sounded the death knell for business methods patents, including software patents. At IP Law & Business, Joe Mullin handicaps how the case might turn out.

He did not have a lot to go on, given that the last time the Supreme Court directly addressed the issue of patentable subject matter was in a 1981 case, Diamond v. Diehr -- barely the dawn of the personal computer era. But the court has taken four patent cases in recent years. And each time, Mullin notes, "the justices voted by a wide margin to limit the power of patents." After going through the decisions and arguments in each of the four recent cases, Mullin offers his racecard.

So, tally it all up, and you have Breyer and Stevens authoring the blistering LabCorp dissent, and vocally questioning whether software is patentable; Justice Kennedy concerned about an exploitive business model based on patent litigation; Justice Scalia, taking pot-shots at a court widely perceived as pro-patent rights; and Chief Justice Roberts making a joke about a patent-holding company, despite its lower-court victory.

Justices Samuel Alito, Ruth Ginsburg, and Clarence Thomas are tougher to read. And then there’s the strong likelihood that the retiring Souter, a patent skeptic, will be replaced by Sotomayor. While her record is thin on patent issues, she was a trademark litigator at one point in her career, giving her experience on the "enforcement" side of a different kind of IP right.

Mullin's observations do not add up to a sure bet either way, although his piece seems to suggest that the smart money would be on a bet against business method patents. The lawyer who wrote the cert petition, J. Michael Jakes of Finnegan, Henderson, Farabow, Garrett & Dunner, is hopeful, saying his argument is based solidly on Supreme Court precedent. But Edward R. Reines, a patent litigator at Weil, Gotshal & Manges, tells Mullin, "It's very difficult to believe the Supreme Court will be more welcoming to Bilski than the Federal Circuit was."

Posted by Robert J. Ambrogi on June 3, 2009 at 01:17 PM | Permalink | Comments (4)

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