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Congratulations to Judge Dow. He left the Northern District bench to become Counselor to Chief Justice Roberts. As Counselor, Judge Dow will focus on “Court-wide policies and initiatives” and “matters of judicial administration.” Our local loss is the country’s game. Anyone who has appeared before Judge Dow knows that he is exceptionally bright and…

The Intellectual Property Law Association of Chicago (IPLAC) is hosting a 2018 Supreme Court IP Review on Friday, September 21, from 8:30am-6:15 pm at the Chicago-Kent College of Law at Illinois Tech — 565 W. Adams St.

They are offering 6.5 hours of CLE credit for topics including:

  • Reviews of last terms cases, including WesternGeco,

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The Supreme Court hears oral argument today in Bilski v. Kappos. The Court will decide the proper test for Section 101 patentability and will either decide or at least significantly impact the patentability of software and business method patents. Here are the questions presented:
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.
For more on the history of both the Bilski case, check out my recent article with my colleague Mike Grill in the Northwestern Journal of Technology and Intellectual Property. Patently-O has compiled the amicus briefs — click here for the briefs supporting Bilski or neither party, and here for the briefs supporting the government. The briefs supporting the government include a brief by a group of Internet Retailers that, I am proud to say, cites my law review article arguing for an even application of the Twombly pleading standard as to both patent plaintiffs and patent defendants — click here for the amicus brief and here for my article from the John Marshall Review of Intellectual Property Law.
Click here for the SCOTUSBlog’s preview of the argument. For post-argument CLE options, click here for a list of courses compiled by Patent Docs and here for information on a CLE from IPWatchdog’s Gene Quinn, who plans to attend oral arguments.
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Continue Reading Patentability at the Supreme Court: Bilski Oral Arguments

The patent blogosphere loves a cert grant in a patent case. A patent case pending before the Supreme Court gives months of blog material and lots to debate, not to mention months of law review articles like the one I have slated for publication later this summer. So, it is no surprise to see some strong commentary lighting up the patent blogs. Here are two of the most thorough and interesting:
Patent Docs (predicting that the Supreme Court moves away from the Federal Circuit’s “bright line” machine-or-transformation test and questioning whether the Court will address the patentability of diagnostic method claims as raised in Justice Breyer’s dissent from the Court’s dismissal of Cert in Labcorp v. Metabolite); and
The Prior Art (handicapping the Supreme Court’s eventual decision, including a brief look at appointee Judge Sotomayor’s potential impact on the decision).
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Continue Reading More Bilski Commentary

Earlier today, the Supreme Court granted cert in Bilski, the Federal Circuit’s en banc decision limiting the patentability of business method and software patents. Many commentators are predicting that the Supreme Court will further restrict business method and software claims through the machine or transformation test, although it is hard to imagine that either type of claim will be completely eliminated. Of course, the Supreme Court could also move the law back toward the State Street decision allowing business methods and software to be patented more freely. The questions presented are:
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.”
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.
For more takes on the cert decision and its implications, check out:
271 Patent Blog;
IPWatchdog;
Patently-O;
SCOTUS Blog; and
WSJ Law Blog.
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Continue Reading Supreme Court Grants Cert in BIlski

Several years ago, Georgetown University law student, and now fellow GULC alum, Sarah Levien Shullman analyzed Supreme Court arguments and found that you could predict the winner based on the Court’s questions. The party that was asked more questions almost always lost. According to Adam Liptak’s recent New York Times story* — click here to read it — Chief Justice Roberts, as an appellate judge, reproduced the study with a sample of cases since 1980 and confirmed the results, explaining to the Supreme Court Historical Society:
The most-asked-question ‘rule’ predicted the winner — or more accurately, the loser — in 24 of those 28 cases, an 86 percent prediction rate
The study made me think about predicting district court outcomes. A study of district court outcomes based on questioning would be much hard to perform accurately because the data set is much larger and the decision making body is much larger and less interrelated. My experience says that, at the district court level, you can learn more from the tone and substance of a court’s questions than from the number of those questions. But I am curious to hear what you think.
* Tip of the hat to the Legal Writing Prof Blog for identifying the story.
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Continue Reading Judicial Questions are a Losing Proposition?

I have noticed that my news updates tend to be patent-focused, so today they focus on trademarks and copyrights:
IP Law & Business (subscription required to access the article) has an interesting article in the February/March 2009 issue identifying Justice Ginsburg as the Supreme Court’s “champion of copyright holders” because of recent opinions supporting broader copyrights. The article also identifies Justice Breyer, based on dissents in the same cases, as leading the cause for narrower copyrights. And the article predicts that the Supreme Court is trending toward a narrower view of copyrights.
Seattle Trademark Lawyer Michael Atkins has a timely post (click here to read it) that traces the March Madness trademark back to the Illinois high school basketball playoffs, as early as the 1940s. The NCAA and the Illinois High School Association have since pooled their rights and both have a license to use the marks.
Victoria Pynchon has a great series of posts looking at laches in trademark law based upon a recent Ninth Circuit decision — click here and here.
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Continue Reading Copyright & Trademark News

The legal blogosphere is full of analysis and commentary regarding the Patent Reform Act, here is more of the best:
FileWrapper;
Patent Baristas (surveying industry responses to the Act);
Patent Docs (discussing the witness list for Patent Reform Act hearings);
Patently-O (damages provisions analysis), and here and here;
Washington State Patent Law Blog.
And the Bilski amicus briefs began coming into the Supreme Court today. Click here for Dennis Crouch’s post with links to many of the amicus briefs. And here for Crouch’s post discussing the PTO’s Bilski guidance to Examiners.
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Continue Reading Patent News: Patent Reform & Bilski