Finnegan Henderson Persuades Supreme Court to Take Bilski 'Business Methods' Patent Case

Nate Raymond

The American Lawyer

June 01, 2009

Correction: An earlier version of this story incorrectly listed Ropes & Gray as counsel for Retail Decisions Inc. Greenberg Traurig replaced Ropes as counsel prior to the summary judgment argument.

Last fall, when the U.S. Court of Appeals for the Federal Circuit took a look, en banc, at the Patent and Trademark Office's rejection of Bernard Bilski's application for a patent on a method to hedge risk in commodities trading, Bilski was represented by The Webb Law Firm, a little-known Pittsburgh shop. Bilski lost, in a landmark ruling that significantly tightened the standards for so-called "business method" patents. But Bilski didn't give up. He brought in new lawyers from the Washington, D.C., IP powerhouse Finnegan, Henderson, Farabow, Garrett & Dunner and petitioned the U.S. Supreme Court to hear his case.

On Monday, Bilski and his new lead counsel, Finnegan partner J. Michael Jakes, learned that the high court had granted their petition for certiorari. (Akin Gump's justly celebrated Scotus Blog has links to all the Bilski documents, including the Supreme Court's order, the Federal Circuit ruling and briefs from the petitioner, respondent and amici.) The case, Bilski v. Doll, will center on whether business methods -- intangible processes and techniques -- are eligible for patents if they're not tied to particular machines or apparatuses and don't transform an article into a new state or thing. Here's Incisive Media Supreme Court correspondent Tony Mauro on the Court's grant of certiorari.

The Supreme Court's order is big news for Jakes, who overcame significant handicaps in persuading the Court to hear the Bilski case. U.S. Solicitor General Elena Kagan opposed cert on behalf of the PTO, which won the Federal Circuit case. And a significant portion of the patent bar felt that the high court should wait for a better case than Bilski in which to clarify business method patent standards. But in an interview with the Litigation Daily on Monday, Jakes said he had a "pretty good idea" that the Supreme Court would take up Bilski's case. "It did have the earmarks for a fairly significant case, so it certainly had a better chance than your run-of-the-mill patent case," he told us. "We wouldn't have filed the petition if we didn't think we'd have a chance."

Jakes, who heads up Finnegan's appellate practice, was involved with the Bilski case when it was before the Federal Circuit, though not for Bilski: He filed Accenture's amicus brief supporting the Bilski patent. He told us that's how he got the assignment to file the cert petition after Bilski lost in Federal Circuit in October. "There was an interest in moving forward in the case, and because of that there was a connection between Accenture and the Bilski patent owners," Jakes said. "I think they liked what we did in the Accenture amicus brief, and so they were just looking for someone to carry them forward, and so we got the job."

Accenture isn't footing the bill for Bilski's Supreme Court appeal, Jakes said, though he was mum on what he's charging Bilski. Accenture, meanwhile, filed its own amicus brief before the high court, but sans Finnegan. This time, it turned to Chicago's Brinks Hofer Gilson & Lione.

When the Supreme Court hears the case, tentatively scheduled for the beginning of December, Jakes will be making his first argument before the high court.

Some IP lawyers were surprised by the Supreme Court's grant of certiorari, believing the Federal Circuit's en banc ruling would hold for now. Tellingly, the Supreme Court docket shows only nine amici, a rather small number compared to the 39 who tried to sway the Federal Circuit. More are likely to come now, of course. Notable among those who did ask the high court to take the case (in addition to Accenture) was the American Intellectual Property Law Association, represented by William West Jr., of Howrey.

The Supreme Court's decision to take up Bilski could shake up a few recent cases in which federal district courts have granted summary judgment based on the Federal Circuit's ruling. In March, the Northern District of California granted summary judgment against Morrison & Foerster client Cybersource Corp. after it sued Greenberg Traurig client Retail Decisions Inc., over what the decision described as a "method and system for detecting fraud in a credit card transaction." Cybersource appealed last month.

And on Wednesday, the Middle District of Florida dismissed claims by Phelps Dunbar client Every Penny Counts Inc., that Bank of America, represented by Foley & Lardner, infringed a patent covering a system that allows consumers to save or donate part of a credit or debit card transaction. "Those two decisions, based on the Federal Circuit's test, are now undercut, or potentially undercut by the Supreme Court's decision to review," says Ropes & Gray partner James Meyers.