Bilski Supreme Court Preview: Finnegan Lawyer Challenging 'Machine or Transformation' Patent Test Says He's Ready
By Ben Hallman
November 06, 2009
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If the Litigation Daily were prepping for our first Supreme Court argument--no snickering, please--in a case that's considered one of the critical business controversies of the Court's term, we would be a damn sight more nervous than J. Michael Jakes of Finnegan, Henderson, Farabow, Garrett & Dunner. On Monday, Jakes is arguing Bilski v. Kappos, a closely watched IP case that will help decide whether business methods are patentable. But last Thursday afternoon, when we called him, Jakes was at his desk, sounding decidedly unfazed about his first U.S. Supreme Court argument."Preparation is the antidote for nervousness," he said, in a tone that would make Tony Robbins proud.
Jakes represents Bernard Bilski, the CEO of a small firm called WeatherWise, whose application for a patent on a method to hedge risk in commodities trading was rejected by the Patent and Trademark Office on the grounds that purely abstract ideas are not patentable. Last October the U.S. Court of Appeals for the Federal Circuit upheld that principle, in a landmark en banc opinion that established the "machine or transformation" test for business method patents.
The appellate court ruled that in order for a business method to receive patent protection, it would need to either "transform [an] article to a different state or thing," or be "tied to a particular machine." The opinion sent the patent bar into an uproar, with businesses asserting that the new standard jeopardized patents on all kinds of highly valuable intellectual property, including software.
Bilski and his partner replaced their Pittsburgh lawyers with Jakes, who filed the inventors' petition for certiorari. (Jakes had filed an amicus brief in support of Bilski at the Federal Circuit, on behalf of Accenture.) In June, despite the solicitor general's opposition, the Supreme Court granted cert.
Jakes may not be nervous about what's going to happen at the Supreme Court, but the patent bar certainly is. As our colleague Nate Raymond noted in June, many patent lawyers felt that the high court should have waited for a better case than Bilski in which to clarify business method patent standards. Dozens of law firms figured in the avalanche of amicus filings at the Supreme Court, most of which argued for overturning the "machine or transformation" test. (We wrote about the amicus filings here and here.)
In recent days, we've been peppered with e-mails from lawyers who are watching the case. "The Bilski decision is virtually guaranteed to redraw the landscape for both software and business method patents," wrote Fabio Marino, an Orrick IP partner. "If [the appeals court decision] is upheld, it would signal a substantial shift in patent law, placing severe limitations on the patentability of most software and business methods."
How will the Court receive corporate America's pleas to revise the Federal Circuit standard? Joe Mullin at IP Law & Business searched for clues about how the justices are likely to rule, concluding that the high court's most recent patent rulings have all reigned in patent rights, which would seem inauspicious for those hoping the Court tosses the "machine or transformation" test--including Jakes.
But the Finnegan lawyer, who told us he will base his argument on a section of the patent code that suggests broad protection for any "new and useful process," insists he isn't worried. When we asked what he expect from the Supreme Court, he quipped, "Lots of questions."
We'll let you know after the argument if Jakes's confidence was well founded.
Editor's note: We first reported that Jakes was "nonplussed" about his first Supreme Court argument, under the mistaken notion that nonplussed meant unfazed. We have since been instructed by readers that our usage was incorrect. Nonplussed, according to Webster's, means confused or at a loss for words. Jakes is certainly not that. We regret the error, and thank readers for pointing it out.
