By Charles R. Macedo, Amster Rothstein & Ebenstein LLP, cmacedo@arelaw.com[i]
On May 8, 2008, the Federal Circuit will be hearing oral argument in the In re Bilski case on the issue of what is a patent-eligible process. There have been over twenty amici curiae briefs submitted. These “friends of the Court” are from a wide range of industries and professions, including the financial services and sales sector, the computer and software sector, the biotechnology and pharmaceuticals sector, as well as legal and other associations and academics.
In today’s IP Law 360, we have published a Roll Call and Score Card of the amici briefs (Download docs1396650v1bilski_roll_call.DOC). A copy will also be available at our firm website: www.arelaw.com/articles/index.html. We provide here a Roll Call of the amici parties sorted by industry with links to their amici briefs (where available):
Financial Services and Sales Sector
Since the Bilski claim at issue is directed to a financial service product (i.e., a method of managing risk), the industry that most obviously is directly interested in the outcome of this case is the financial service and sales sector. In this regard, there are five submissions from the financial services and sales sector, including the submissions by: Reserve Management Corporation, PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group (“Reserve et al”), American Express Company (“AmEx”), Regulatory DataCorp, Inc. (“RDC”), CFPH, Inc. (“CFPH”), Financial Services Industry (“FSI”), and Pacific Life Insurance Company, The Hartford Financial Services Group, Inc., and John Hancock Life Insurance Company (U.S.A.) (not available). (The author is principal attorney on Reserve et al submission).
Computer Software and Hardware Sector
A number of the questions posed by the Federal Circuit are directed to issues impacting the patentability of computer software and hardware, e.g., whether an process needs to be tied to a machine or needs to transform matter in order to be patent-eligible (Question 4). There are seven briefs submitted by corporations in the software and computer sector, including the submissions by Accenture (“Accenture”), Koninklijke Philips Electronics N.V. (“Philips”), SAP America, Inc. (“SAP”), Yahoo! Inc. and Professor Robert P. Merges (“Yahoo!”), Dell, Inc., Microsoft Corporation, and Symantec Corporation (“Dell/Microsoft/Symantec”), International Business Machines Corporation (“IBM”), and Red Hat, Inc. (“Red Hat“).
Biotechnology and Pharmaceutical Sector
Much of the debate challenging the State Street “useful, concrete and tangible result” test for patent-eligible subject matter centers around comments made by Justice Breyer in his dissent from the dismissal of a petition for certiorari in Lab Corp. of Am. Holdings v Metabolite Labs., Inc., 126 S. Ct. 2921, 2928 (2006) (Breyer, J. dissenting), where he questioned the applicability of that test to pre-Diehr decisions by the Supreme Court. The Lab Corp. case involved a claim directed to a method of diagnosing a disease. In that petition, several members of the financial service sector weighed in on the debate because it appeared that the Supreme Court may address the State Street test. Thus, it is perhaps not surprising that the biotechnology and pharmaceutical sector has in turn weighed in on Bilski. In particular, to present two diametrically opposing views, briefs were submitted by the Biotechnology Industry Organization (“BIO”) (arguing in favor of a broad view of patent-eligible processes), and Eli Lilly and Company and The Association of American Medical Colleges (“Eli Lilly”) (arguing for a narrow view of patent-eligible processes).
Associations
A dozen different industry and law associations submitted amici briefs to the Federal Circuit in Bilski, including the American Intellectual Property Law Association (“AIPLA”), the Boston Patent Law Association (“BPLA“), the Federal Circuit Bar Association (“FCBA “), the Houston Intellectual Property Law Association (“HIPLA”), the Business Software Alliance (“BSA”), the Washington State Patent Law Association (“WSPLA“), the Intellectual Property Owners Association (“IPO”), the American Institute of Certified Public Accountants (“AICPA “), the Computer & Communications Industry Association (“CCIA”), the Software & Information Industry Association (“SIIA“), the Federation International Des Conseils En Propriete Industrielle (“FICPI”), the Consumers Union, the Electronic Frontier Foundation, and the Public Knowledge (“CU/EFF/PK”), the American Civil Liberties Union (“ACLU”), and End Software Patents (“ESP”). Significantly, the patent law associations generally favor a broader scope of patent-eligible subject matter, while the non-patent lawyer associations seek a narrower scope of patent-eligible subject matter or in some cases, simply propose rules that would eliminate patent protection.
Academic
Perhaps because of the academic nature of the questions being posed --e.g., what should be the scope of patent-eligible processes -- a large number of academics have also weighed in with their own amici curiae submissions. These briefs include both collective and individual briefs by academics, including: 22 Law and Business Professors (“22 Prof.”), Roberta J. Morris, Esq., Ph.D. (“Morris”), Jason V. Morgan (“Morgan”), Gregory Aharonian (“Aharonian”), Professor Robert P. Merges (see Yahoo!), Professor John Duffy (see RDC), 10 Law Professors (“10 Prof.”), Professor Lee A. Hollaar (“Hollar”), Professor Kevin Emerson Collins (“Collins“), William Mitchell College of Law Intellectual Property Institute (“WMC”).
[i] Charles R. Macedo is a Partner at Amster, Rothstein & Ebenstein, LLP. His practices specializes on intellectual property issues including litigating patent, trademark and other intellectual property disputes, prosecuting patents before the U.S. Patent and Trademark Office, and other patent offices throughout the world, registering trademarks and service marks with U.S. Patent and Trademark Office, and other trademark offices throughout the world, and drafting and negotiating intellectual property agreements. He may be reached at cmacedo@arelaw.com. This article is not intended to express the views of the firm or its clients. Mr. Macedo was principal attorney on the amici curiae brief submitted on behalf of Reserve Management Corporation, PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group in In re Bilski.
