Beating Up on Bilski

Poor Bilski. Among the many stories on Justice Anthony Kennedy’s departure and new nominee Brett Kavanaugh from myself and health-care colleagues Brian Broderick, Jacquie Lee, Jeannie Baumann, Alex Ruoff, Mary Anne Pazanowski, and Mary Anne again, and again, there was my story on Bilski v. Kappos, much reviled by many in the patent world.

Kennedy wrote the opinion in Bilski, which addressed what kinds of inventions can be patented under 35 U.S.C. § 101. The court hadn’t addressed the statute in ages, and critics say the 2010 opinion mashed it up. Bilski resurrected imprecise terms such as “abstract idea” and “laws of nature” to describe what can’t be patented, they say, and it rejected a bright-line test for a claimed process invention the Federal Circuit was using—saying it was only a “useful and important clue” to figure out if an invention is patentable.

"Well, I don’t need clues,” Polsinelli PC senior partner and former U.S. Patent and Trademark Office Director Todd Dickinson told me. “I need to know what’s patent-eligible.”

Patent attorneys, inventors, investors, examiners, and federal and administrative judges have struggled to sort it all out since.

“It left all patent decision-makers, of whom there are many thousands, without any guidance at all because the term ‘abstract idea’ is inherently vague and unclear and indeterminate and subjective,” former Federal Circuit Chief Judge Paul Michel told me.

For those in the life sciences world, it’s what came after Bilski that really hurts: Mayo and Myriad, which held claimed inventions unpatentable as laws or products of nature, and Alice, which has been paired with Mayo to set out the framework now used to determine patent subject matter eligibility.

Bilski reflected Kennedy’s preference for flexible rules and at least recognized the consequences of tinkering with patent subject matter eligibility, Hans Sauer, Biotechnology Innovation Organization deputy general counsel and vice president for intellectual property, told me.

“I think many people faulted the Bilski decision for not giving a lot of guidance, but at the same time, I think it was commendable for being so conscious about being careful and taking baby steps, rather than big sweeping steps,” he said. “They were concerned about quashing innovation that patent law seeks to encourage.”

For some reason, the next case, Mayo, abandoned restraint and “announced its own broad and sweeping test,” Sauer said. Kennedy didn’t author Mayo or the other two follow-up opinions, although he joined them.

In any event, Sauer argued, the “deplorable” Section 101 state of affairs today can’t be blamed on Kennedy—or at least Kennedy alone.

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