[A2k] Michael Carroll's blog and link to a webcast of "Patentable Subject Matter After the Bilski Oral Argument"

[Mike Palmedo]

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wcl.american.edu/pijip/go/carroll11202009



Michael Carroll

November 20, 2009



On Thursday, November, 19, 2009, PIJIP and the Federal Circuit Bar
Association co-hosted "Patentable Subject Matter After the Bilski Oral
Argument." Focusing on the recent oral argument in In re Bilski in the
United States Supreme Court, the event featured counsel for the parties --
J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, who argued
for petitioner, and Raymond T. Chen,  Solicitor and Deputy General Counsel
for respondent, the United States Patent and Trademark Office -- along with
Dr. Nancy Linck, Rothwell, Figg, Ernst & Manbeck. and Randolph Ross,
WilmerHale, each counsel for groups of industry amici. The co-moderators
were Professor Joshua Sarnoff, counsel for amici curiae Law Professors &
AARP, and Thomas C. Goldstein (WCL '95), counsel for amicus the American Bar
Association.



The case has drawn a great deal of interest because it addresses the
question: What is the proper legal standard for determining whether a kind
of process is capable of receiving patent protection?  In the decision under
review, the Federal Circuit, sitting en banc, held that to be patentable
under Section 101 of the Patent Act of 1952, as amended, a process must
involve use of a machine or a transformation of matter from one thing or
state to another.



The audience included viewers of the live webcast from 15 different time
zones.



The participants addressed a range of interesting questions.  For example,
why did the Court take this case now without awaiting further developments
under the Federal Circuit's new standard?  Michael Jakes believed the
breadth of the holding and the procedure below attracted the Court's
attention.  Randolph Moss suggested that not only had the issue of
patentable processes been thoroughly vetted in the record below, but also,
the issue falls within the Court's "interesting question" jurisdiction.



Counsel for amici articulated the main points they hoped the Court took away
from their briefs and addressed the question of what the range of likely
holdings from the Court might be.  Participants generally agreed that the
Court might choose to rule narrowly, affirming the rejection of the patent
in suit, but only on the ground that it attempted to claim an abstract idea.
On the other hand, the Court might articulate a standard even more searching
than the machine-or-transformation test, one that could call into question
the patentability of some software. Participants agreed that many of the
Justices appear to be quite concerned about the rapid rise in patenting of
business method patents.



To hear the details, and to listen to the lively question and answer session
- including a question from AIPLA President and former Commissioner of the
USPTO, Q. Todd Dickinson - click here:
http://media.wcl.american.edu/Mediasite/SilverlightPlayer/Default.aspx?peid=
ac95d68a5a734ae98122e856efcdbc75



Mike Palmedo

Assistant Director

Program on Information Justice and Intellectual Property

American University Washington College of Law

4801 Massachusetts Ave., NW

Washington, DC 20016
202-274-4442 | wcl.american.edu/pijip



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