Colleen Chien: Government's brief will dictate Bilski result

If Professor Colleen Chien is correct, the Supreme Court will take the advice of its friend the U.S. government in deciding the outcome of Bilski v. Kappos. Recently Chien, of the Santa Clara University law school, wrote an article examining the influence of amicus briefs in patent law cases. In "Patent Amicus Briefs: What the Courts' Friends Can Teach Us About the Patent System," Chien examines more than 1500 amicus briefs filed in patent cases in the past 20 years.

Chien notes that, although amicus briefs appear in general to have influenced the Supreme Courts' agenda, the briefs of certain amici matter much more than others. Of all the amici, the federal government by far carried the most weight: "[a]micus briefs authored by the United States predicted the winner 90% of the time at the Supreme Court." (Compare this staggering success rate with that of university amici, only 6% of whom argued on the winning side.) Moreover, "In every single Supreme Court patent case ... in which the US government filed an amicus brief except for one, the Court sided with the government." In practical terms, this means that one can predict the outcome of a case just by looking at the government's brief.

The reasons for this? Government briefs not only consider matters of patent law, but may also examine public policy concerns, the market, antitrust and consumer issues, and international agreements and comity. Thus, government briefs are likely to reflect a larger number of interests (as well as privileged access to certain information). What this means for Bilski, Chien claims, is that, "If history is any indication, the Supreme Court will almost certainly follow the US Government's lead and rule that the method is unpatentable and likely adopt some of its reasoning as well."

In Bilski, Elena Kagan -- President Obama's new Supreme Court nominee -- wrote the amicus brief opposing certiorari and the merits brief, arguing that petitioner's business method cannot be patented. Kagan largely relies on a contention that methods of organizing human activity only are unpatentable under 35 U.S.C. 101; and on the point that Bilski's claim is too abstract to be patent-eligible. Perhaps most importantly, Kagan strongly urges the Court to issue a narrow ruling. As she puts it,

"The [Circuit] court’s decision ... properly leaves questions not presented by petitioners’ application, such as the circumstances under which computer software may be patented, for resolution in future cases ... petitioners’ patent application involves none of the frontier technologies on which the petition dwells ... they are essentially irrelevant to the proper disposition of this case ... Further review is not warranted."

In other words, if Chien's prediction holds and the Supreme Court heeds the counsel of their friends in the government, those hoping for a sweeping pronouncement on computer software patentability will likely be disappointed.

However, the federal government is far less categorical on the continued viability of the machine-or-transformation test, the potential patentability of business methods, and the question "how abstract is too abstract?" As to business methods and processes, for instance, the government does not insist strongly that they are inherently either patentable or unpatentable, but states only that they are “subject to the same legal requirements for patentability as applied to any other process or method.” This reticence leaves the Court some room to wrestle with borderline issues. Perhaps these sticking points have caused the Court's delay in issuing a decision, as the Justices formulate language that could provide for a future process patent; revisit the machine-or-transformation test; and perhaps address the limits of abstraction.

Then again, the delay might mean that the Court will hold over the decision until next term ...