There's a new job opening at the Supreme Court:
Job Description: Complete test of patent eligiblity sketched out by this Court’s decisions in Bilski v. Kappos and Mayo v. Prometheus. Self starter required: must be able to distinguish business methods and other unspecified activities that the Court thinks are not patent eligible from improvements in technology, without further guidance from the Court. Must be meticulous and not allow merely using a computer to do what computers do all the time to be patent eligible, but also must not invalidate all software patents or useful technology performed with a computer. Must appear to be consistent with all prior precedent, since “four is not five.”
Qualifications: None.
Compensation: Eternal gratitude and signed portrait of sitting justices; certain enmity from at least fifty percent of the those who care; one Win Oral Argument card for use in any Federal Circuit case.
Deadline: June 29, 2014.
Submit resumé to Clerk’s Office.
That in a nutshell is the upshot of today’s oral argument in Alice Corp. v. CLS Bank. While the Court in Bilski, Mayo, or Myriad assertively and sometimes aggressively questioned counsel, today the members were clearly looking for Solomonic assistance. Justice Breyer, who in the past has been quite certain about the dividing line between eligible and ineligible subject matter freely expressed his predicament. Breyer quipped that the forty two briefs were “very, very helpful, up to the point where I have to make a decision,” referring to the many amicus briefs laying out different and often conflicting theories of law. Breyer later admitted something fascinating: “what I suspect, in my opinion, Mayo did and Bilski and the other cases is sketch an outer shell” of what the law should be, “hoping that the experts, you and the other lawyers and the circuit court, could fill in” the content. “What would the right words or example be?” he asked CLS’s counsel Mark Perry—a job offer if there ever was one. Perry replied that the USPTO has already provided the examples in its post—Bilski Examination Guidelines, but this did not satisfy Breyer. Perry argued that Bilski and Mayo made this an easy case for a finding against Alice. Justice Ginsburg did not buy that, noting that if these precedents made the current case so easy, then “what is the instruction that escaped a good number of judges on the Federal Circuit?”