There's a new job opening at the Supreme Court:

Job Description:  Complete test of patent eligiblity sketched out by this Court’s decisions in Bilski v. Kappos and Mayo v. Prometheus.  Self starter required: must be able to distinguish business methods and other unspecified activities that the Court thinks are not patent eligible from improvements in technology, without further guidance from the Court.  Must be meticulous and not allow merely using a computer to do what computers do all the time to be patent eligible, but also must not invalidate all software patents or useful technology performed with a computer.  Must appear to be consistent with all prior precedent, since “four is not five.”

Qualifications:  None.

Compensation: Eternal gratitude and signed portrait of sitting justices; certain enmity from at least fifty percent of the those who care; one Win Oral Argument card for use in any Federal Circuit case. 

Deadline:  June 29, 2014.

Submit qualifications to Clerk’s Office.

That in a nutshell is the upshot of today’s oral argument in Alice Corp. v. CLS Bank. While the Court in Bilski, Mayo, or Myriad assertively and sometimes aggressively questioned counsel, today the members were clearly looking for Solomonic assistance.  Justice Breyer, who in the past has been quite certain about the dividing line between eligible and ineligible subject matter freely expressed his predicament. Breyer quipped that the forty two briefs were “very, very helpful, up to the point where I have to make a decision,” referring to the many amicus briefs laying out different and often conflicting theories of law. Breyer later admitted something fascinating: “what I suspect, in my opinion, Mayo did and Bilski and the other cases is sketch an outer shell” of what the law should be, “hoping that the experts, you and the other lawyers and the circuit court, could fill in” the content.  “What would the right words or example be?” he asked CLS’s counsel Mark Perry—a job offer if there ever was one.  Perry replied that the USPTO has already provided the examples in its post—Bilski Examination Guidelines, but this did not satisfy Breyer. Perry argued that Bilski and Mayo made this an easy case for a finding against Alice. Justice Ginsburg did not buy that, noting that if these precedents made the current case so easy, then “what is the instruction that escaped a good number of judges on the Federal Circuit?”

Justice Kennedy likewise was looking for a solution from the parties and the government, asking Alice’s counsel Carter Phillips if there was any “common ground” between Alice and the government, to which Phillips responded decisively “No.”  Solicitor General Verrilli argued that computer software is patent eligible only if the software innovation “improves the functions of the computer technology” or “is used to improves another technology” is eligible, but offering no way of deciding what counts as “technology.”  Chief Justice Roberts was not impressed by this approach, stating he was “doubtful that” the government’s “non-exhaustive list” of six factors was “going to bring about greater clarity and certainty” in Section 101. Justice Breyer was also skeptical of the government’s distinction between patent eligible and patent ineligible uses of a computer, asking “How is that justified?"

Justice Ginsburg is one justice who conveyed a strong sense that she knows the right answer here.  When Phillips argued that Congress had decided to leave business methods alone in the America Invents Act, and that it had indicated that the “solution to the problem is to get it out of the judicial process and create an administrative process,” Justice Ginsburg rebutted that “four Justices of this Court did not read the legislative history” the way that Alice did. Justice Scalia then did the math, reminding her that “four is not five.”  

While the candor of some the justices in admitting that they seeking real guidance was refreshing, the overall shallowness of the questions was disconcerting. Instead of looking for a systematic approach to identifying an ‘abstract idea,’—the very heart of the problem— the Court never really got beyond asking whether a particular hypothetical was abstract or not.  While analysis by example can be illuminating, it does not provide a robust framework, the result being precisely the mishmash of conflicting elaborations that already prevade the precedent.  Many important issues were left untouched. For example, there were no questions about:

• whether preemption matters (it’s mentioned in Benson, Diehr, Bilski and Mayo), and if so how to determine the scope of preemption;
• how to distinguish between hardware and software implementations of abstract idea;
• does it make any sense to say that computers perform “mental steps”;
• whether there is a presumption of validity for Section 101 for issued patents; if there is, what counts as “clear and convincing evidence”;
• is Section 101 a “gateway” or “threshold” question that must be decided first;
• does patent eligibility depend on resolving any factual questions, such as what counts as "conventional" or "routine";
• how to interpret claims for patent eligibility or whether or not claim construction is necessary;
• what role if any does POSITA play in deciding patent eligibility;
• is it proper to distill the claim down to a plain English gist, or must every claim limitation be considered;
• how to distinguish between a general purpose computer and a particular computer, and why such a distinction would even matter;
• is there conflict between Flook/Mayo and Diehr and how the Court should resolve it.

That the Court did not reach even one of these topics and yet at the same time several of its members are obviously looking for guidance, signals to me that they know they have a problem with existing precedent, but they do not fully realize its complexity.  Several of my colleagues suggested that other cases, such as Ultramercial or Accenture would have been better for the Court to address.  I do not believe another case would make any difference at this stage. 

The Court has put out the Help Wanted sign, but the problem is that no one can do the job for them.  Over sixty of us “experts” have tried and apparently failed.