I.P.

Environmental

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Temple Journal of Science, Technology & Environmental Law

FRIDAY, MARCH 19, 2010Shusterman Hall Conference Center

Temple University Beasley School of Law

A 6 CLE credit (PA) symposium exploring the intersection of intellectual property law and the environment.

Acknowledgements:

The Temple Journal of Science, Technology & Environmental Law would like to especially thank Temple Law Dean Joanne Epps, Assistant Dean Shyam Nair, Dorothy Lee, Dimitri Ferrell,

Colleen Uhniat, Candace Embry, Professor David Post, Professor Amy Sinden, Professor Gregory Mandel, Professor Mark Anderson, and all the wonderful speakers,

panelists and staff who helped put this symposium together.

“Silent gratitude isn’t much use to anyone.” — G.B. Stern

8:30–9:00 a.m. Registration and Breakfast

9:00–9:05 a.m. Dean of the Law School Remarks, Dean JoAnne Epps

9:05–9:15 a.m. Temple Journal of Science, Technology & Environmental Law Remarks (TJSTEL Editor-in-Chief Chris Page and Symposium Editor Felix Yelin)

9:15–11:15 a.m.

Panel 1: IP Rights: Helping or Hurting Green Technology? The Effect of Green Energy Patents on Pollution and Emissions Programs in Developing Countries

A panel discussion examining whether IP rights are necessary to promote innovation in this day and age. How do IP rights impact green innovation and the propogation of green technology in the market? Also, a discussion dealing with the emergence of patented technology in countries like China and Indonesia and the effect on pollution and emissions programs. The panel will examine issues such as whether strong IP rights could inhibit the spread of green energy technologies.

Speakers : • Professor Greg Mandel (Temple Law): Moderator/Presenter • Harold Fullmer (Woodcock Washburn) • Professor Mary Lyndon (St. John’s Law) • Professor Elizabeth Burleson (S.D. Law) • William Tanenbaum (Kaye Scholer)

11:15–12:15 p.m. Presentation, Mr. Robert Bahr, Acting Associate Commissioner for Patent Examination Policy: USPTO Green Technology Pilot Program

12:15–1:00 p.m. Lunch Break

1:00–2:00 p.m.

Panel 2: Subject Matter: Process Patents

This panel will discuss the effects of recent decisions such as In re: Bilski on green patents. Since many potential green and environmental patents are process-based and produce nothing tangible, these subject matter patents have important implications in this field.

Speakers : • Stephen Schott (Volpe & Koenig): Moderator/Presenter • Professor Johanna Dennis (Vermont Law) • Ruffin B. Cordell (Fish & Richardson) • Ahmed J. Davis (Fish & Richardson)

2:00–3:00 p.m. Speech, Professor Jerome Reichman, Duke Law School Discussing Intellectual Property and Alternatives: Strategies for Green Innovation

3:00-4:00 p.m.

Panel 3: Ethical Issues with the Intersection of Environmental and IP Law

This panel will discuss the ethical issues that arise when these two critical fields overlap and what strategies attorneys must utilize in order to overcome any potential ethical problems.

Speakers : • David Bailey (Woodcock Washburn) • Paul Gupta (Orrick) • Professor Mark Anderson (Temple Law): Moderator • Daniel Desmond (Peregrine Technology Partners)

4:00–4:15 p.m. Closing Remarks

schedule of events

In1981-82,agroupofTempleLawstudentswithacommoninterestinenvironmentallawcreatedtheEnvironmentalLawCouncil.ThroughtheCouncil,theyorganizedandproducedapublicationcalledOutlook Environmental Law Journal.Outlookwaspublishedasaspin-offofThe Jurist,andon-again,off-againlawstudentperiodical.Thefollowingyear,withthesupportofitsfacultyadvisors,thestudentsputoutasecondissueofOutlook.Asinthefirstissue,studentsand“outsiders”(practitionersandprofessors)authoredthearticles.

BelievingthatanenvironmentallawjournalshouldbeapermanentfixtureatTempleLawSchool,theOutlookeditorssoughtandobtainedfromthelawschooladministrationtheprestigiousstatusofanofficiallawschoolpublication.ThenamewassubsequentlychangedtoTemple Environmental Law & Technology Journal,tobetterreflectthebeliefthatissuesofscienceandtechnologyarefundamentaltoenvironmentaldisputes.VolumeIII,bearingthenewname,waspublishedinthespringof1984.Inthesummerof1987,VolumeVIoftheJournalprintedinthetraditional“lawreview”publicationformat,whichitretainstothisday.

Inthesummerof2004,theJournalchangeditsnametoitscurrentform,theTemple Journal of Science, Technology and Environmental Law (TJSTEL).Withthischange,theJournalisnolongerconstrainedbyafocusontheintersectionofenvironmentallawandtechnology,butinsteadisopentoabroadanddiverserangeoflegalissuesandchallengesinscience,technology,andenvironmentallaw.OurSpring2005editionwasthefirstissueunderthenewtitle.

Today,aftermorethantwenty-fiveyearsofpublication,wecontinueasthesecondoldeststudent-editedperiodicalattheTempleUniversityJamesE.BeasleySchoolofLaw.TheJournalproducesbiannualissuesinthespringandfallthatreachsubscriberscomprisedprimarilyoflawlibraries,courts,andlawfirms.TheJournalalsohostsandannualsymposium:pasttopicshaveincludedenvironmentaltechnologyandinnovation;suburbansprawl;applyingtheopensourcemodeltothepharmaceuticalindustry;andthetwentiethanniversaryofthelandmarkdecisioninApple v. Franklin.BothWestlawandLexisincludethetextoftheTemple Journal of Science, Technology and Environmental Law (TJSTEL)intheirdatabases.

history of the JournAl

Kimberly Brown Andrew Chou

Kenneth Collins Daniel Desmond Hadley Hamilton

Paul HartRobert Kane

Andrew LessmanMatthew Lewis

Grace LimDiana Lin

Alicia LukeMichael LuongoPhillip Michael

Margaret OnaschJessica Orr

Timothy QuigleyDanielle SapegaDavid Struwe

Frederick VogtLaura Whipple

staff editors:

Christopher Page Editor-in-Chief

Patrick Madden Executive Editor of Publications

Rachel Reibman Executive Notes & Comments Editor

Christopher Curci Notes & Comments

Editor

Ryan Degnan Notes & Comments

Editor

Paul Koob Notes & Comments

Editor

Erik Spurlin Notes & Comments

Editor

Emily Evans Research & Articles

Editor

Jenny Hsu Research & Articles

Editor

Colleen Hughes Research & Articles

Editor

Lauren Moser Research & Articles

Editor

Felix Yelin Articles & Symposium Editor

faculty Advisors:

Professor Mark Anderson

Professor Donald Harris

Professor David Post

Professor Amy Sinden

temPle JournAl of science, technology & environmentAl lAw2009–2010 editoriAl boArd

PAnel 1:

Intellectual Property Rights: Helping or Hurting Green Technology? The Effect of Green Energy Patents on Pollution and

Emissions Programs in the United States and Developing Countries

9:15 Am to 11:15 Am

2 cle credits. A panel discussion examining whether IP rights are necessary to promote innovation in this day and age. How do IP rights impact green innovation and the propogation of green technology in the market? Also, a discussion dealing with the

emergence of patented technology in countries like China and Indonesia and the effect on pollution and emissions programs. The panel will examine issues such as whether

strong IP rights could inhibit the spread of green energy technologies.

Moderator/Panelist: Professor Greg MandelPanelist: Mr. Harold Fullmer

Panelist: Professor Mary LyndonPanelist: Professor Elizabeth Burleson

Panelist: Mr. William Tanenbaum

PANELIST/MODERATOR

Professor Gregory N. MandelTemple University Beasley School of Law

Gregory N. Mandel is Associate Dean for Research and Professor of Law at Temple Law School. He specializes in intellectual property law and the interface among technology, science, and the law, with a particular focus on patent and emerging technology law (including biotechnology, nanotechnology, and synthetic biology). One of Professor Mandel’s articles was selected as a top patent article of 2008 and a second as a top intellectual property article of 2006. His experimental studies have been cited in several briefs filed with the United States Supreme Court. Professor Mandel is on the Executive Committee of the Intellectual Property Section of the American Association of Law Schools, served on an American Bar Association task force to brief the Environmental Protection Agency on arising nanotechnology legal issues, and is the recipient of a Fulbright Senior Specialist grant to teach U.S. intellectual property law to foreign law students. Professor Mandel is a frequent speaker on intellectual property and technology law issues, and has presented his work internationally at over forty law schools, as well as for the United Nations, Second Circuit, Environmental Protection Agency, and American Bar Association. He has consulted with senators and representatives, administrative agencies, and private entities concerning technology legislation and how society should handle new technologies and technological risk. Professor Mandel was Associate Dean for Research & Scholarship and Professor of Law at Albany Law School prior to joining Temple. Before entering academia, he practiced law with Skadden, Arps, Slate, Meagher & Flom LLP, clerked for Judge Jerome Farris, United States Court of Appeals for the Ninth Circuit, and interned with Chief Judge Anthony J. Scirica, United States Court of Appeals for the Third Circuit. Professor Mandel received his J.D. from Stanford Law School, where he was co-Editor-in-Chief of the Stanford Environmental Law Journal. He received his undergraduate degree in physics and astronomy from Wesleyan University, and worked on NASA’s Hubble Space Telescope prior to attending law school. Professor Mandel currently teaches patent law, advanced patent law, and property.

PANELIST

Mr. Harold H. FullmerWoodcock Washburn

Harold Fullmer helps develop, protect, and leverage intellectual property with one aim: advancing a company’s business goals. Hal is the rare lawyer who has engineered products and managed engineering projects in addition to acquiring, enforcing, and licensing patents. As an engineer and project manager for Allis (Chalmers) Company for 10 years, he also worked in research and development, focusing on mathematical modeling and computational fluid dynamics. Hal now uses his knowledge and experience to help clients plan and execute their patent strategies.

“Innovation is the product of research and development, and intellectual property is the product of innovation,” Hal says, “so patents and other intellectual property rights are a means to strengthen a company’s innovation.” Hal believes that clear business goals for a patent portfolio is a prerequisite to forming an IP strategy, “but developing an IP strategy takes collaboration. Sometimes lawyers have to help figure out the right questions to ask.”

Hal works in numerous specialized fields, usually in technologies in “crowded arts” such as packaging and medical equipment, that require a creative and aggressive approach to building and leveraging a patent portfolio. In addition to his busy practice at Woodcock Washburn, Hal is a frequent speaker in IP strategy and packaging technology, and is an adjunct professor at Temple Law School, where he teaches a course in patent prosecution and (formerly) in international intellectual property.

Hal has a B.S. in Mechanical Engineering from the University of Pennsylvania, completed coursework for an M.S. from Bucknell University, and graduated with honors from Temple Law School, where he was Articles & Symposium Editor of the Temple Law Review. He is active in the Penn Grapplers Club, a support organization for the University of Pennsylvania wrestling team of which he was a member during his undergraduate years.

PANELIST

Professor Mary LyndonSt. John’s University School of Law

Professor of Law, J.S.D., Columbia University; J.D., Northeastern University; B.A., Manhattanville College. Professor Lyndon’s areas of interest include science and the law, including the effects of regulation on the availability of health, safety and environmental information, and the law’s effects on technical change and innovation. Professor Lyndon teaches Environmental Law, International Environmental Law, and Torts. She practiced law from 1974 until 1985. Her early focus was on broadcasting and telecommunications law. In 1979 she became an Assistant Attorney General for the State of New York. In that capacity she headed a group of attorneys working on acid rain and other environmental problems. She litigated at all levels of the state and federal courts, and presented testimony before state and federal legislative committees on behalf of New York and the National Association of Attorneys General. In 1985-86 she was the Silver Fellow in Law, Science and Technology at Columbia University. Professor Lyndon’s work has appeared in numerous law journals, including the Michigan Law Review, the University of Colorado Law Review, the Yale Journal on Regulation, the New Mexico Law Review, and the Columbia Journal of Environmental Law. She has contributed to several books and has authored legislative reports. Professor Lyndon is a member of the Center for Progressive Reform. The Center is a network of scholars who are active on issues related to health, safety and the environment. She is a member of the Environmental Law Section of the New York State Bar Association and a member of the Association of the Bar of the City of New York.

PANELIST

Mr. William A. TanenbaumKaye Scholer

William A. Tanenbaum is the international chair of the Technology, Intellectual Property & Outsourcing Practice Group at Kaye Scholer LLP, a leader of the firm’s Green Tech, Energy Efficiency, Carbon Trading and Environmental Sustainability Group, and a partner in the firm’s New York office. He is a “well-respected attorney, with a well-informed approach [who] provides litigation, transaction work and strategic counseling on a range of technology and outsourcing-related issues” and who has “won plaudits” from clients and peers for having built “one of New York City’s most outstanding transactional IT practices” according to legal researcher Chambers in its Guide to America’s Leading Lawyers for Business and Guide to the World’s Leading Lawyers for Business. He is a past president of the International Technology Law Association (formerly known as the Computer Law Association) and a graduate of Brown University (degree with highest honors and Phi Beta Kappa) and Cornell Law School.

Chambers awarded Mr. Tanenbaum “Recommended” ratings in both technology law and outsourcing, and identified him as a “notable practitioner” at the National level. Chambers named him as a “leading light” with “household names in his client roster.” Mr. Tanenbaum was named as one of the Top 25 IT Lawyers in the U.S. by the Best of the Best 2009, selected as one of the World’s Leading 250 IP Strategists by Intellectual Asset Management, and is listed in Best Lawyers in America.

Mr. Tanenbaum’s Green Business practice focus on contracts for energy efficiency in IT and data center operations; Green IT and Green outsourcing; CleanTech and renewable energy technologies; carbon trading; corporate environmental sustainability practices and managing corporate carbon footprints; and the IP aspects of Green Technology, including IP litigation, patent and other IP protection, and IP licensing, joint ventures and strategic alliances. He also advises clients on the Stimulus legislation and on investing in Green technology companies. He founded and co-chairs PLI’s annual Green Technology conference, delivers monthly webcasts on GreenTech, and writes a monthly column for Bloomberg’s Energy Sustainability Law Report. His practice also includes privacy and data protection, including the use of data to achieve sustainable results without changing the underlying technology.

PANELIST

Professor Elizabeth BurlesonThe University of South Dakota School of Law

Professor Burleson has an LL.M. in International Law from the London School of Economics (LSE) and a J.D. from the University of Connecticut School of Law. As a Fulbright Specialist she is available to a teach summer course. She began participating in treaty negotiations at the United Nations in 1991 during proceedings for the United Nations Conference on the Environment and Development and helped draft theUnited Nations Framework Convention on Climate Change (UNFCCC),Agenda 21 and Rio Declaration. She has written reports for the United Nations and delivered presentations at United Nations conferences. Focusing on emerging International Law, Professor Burleson has been an advisor to UNICEF’s Senior Advisor for the Environment and the New York Director of the United Nations Environmental Program (UNEP). She has also written reports for the United Nations Educational Scientific and Cultural Organization (UNESCO) and the United Nations Development Program (UNDP). A particular focus was placed on design, development and implementation of human rights and environmental programs. She helped the UNEP Delegation and was a member of the National Wildlife Federation Delegation to the Copenhagen Climate Conference and a member of the UNICEF delegation to the Bali Climate Conference. Professor Burleson has also conducted legal research for Amnesty International’s London based International Secretariat and New York based research division. At the University of South Dakota School of Law, Professor Burleson’s courses include: Public International Law, Energy Law, United Nations Law, International Environmental Law, International Law and China, Property Law, Water Law, and Environmental Law. Her research addresses emerging International Environmental and Human Rights Law.

PresentAtion:

United States Patent and Trademark Office Green Technology Pilot Program

11:15 Am to 12:15 Pm

1 cle credit. A presentation on the recently implemented one-year program designed to speedup the examination of a limited number of green technology patents.

Presenter: Mr. Robert Bahr, Acting Associate Commissioner for Patent Examination Policy:

USPTO Green Technology Pilot Program

PRESENTER

Mr. Robert (Bob) W. BahrUnited States Patent and Trademark Office

Mr. Robert W. (Bob) Bahr is the Senior Patent Counsel in the Office of the Associate Commissioner for Patent Examination Policy. Bob entered the USPTO in 1984 and has served as a primary examiner in what is now Technology Center 3700, primarily in the art areas of physical therapy and exercising equipment. In 1994, he became a Legal Advisor in the Office of Patent Legal Administration. In 2000, Bob became the Senior Patent Counsel to the Associate Commissioner for Patent Examination Policy.

Bob has been involved in virtually every patents-related rule making since 1995, notably the changes to implement the Cooperative Research and Technology Enhancement Act of 2004, the changes to patent fees under the Consolidated Appropriations Act, 2005, eighteen-month publication of patent applications, patent term adjustment under twenty-year patent term, and request for continued examination practice.

Bob was awarded a Bachelor of Science in Mechanical Engineering from the University of Maryland in 1983, and a Juris Doctor with honors from George Washington University in 1993, and is a member of the Virginia Bar. Bob is currently the Acting Associate Commissioner for Patent Examination Policy.

PRESENTATION

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PAnel 2:

Subject Matter: Process Patents

1:00 Pm to 2:00 Pm

1 cle credit. This panel discusses the effects of recent decisions such as In re: Bilski on green patents. Since many potential green and environmental patents are process-based and produce nothing tangible, these subject matter

patents have important implications in this field.

Moderator/Panelist: Mr. Stephen SchottPanelist: Professor Johanna Dennis

Panelist: Mr. Ruffin B. CordellPanelist: Mr. Ahmed J. Davis

This panel is sponsored by:

PANELIST/MODERATOR

Mr. Stephen B. SchottVolpe and Koenig P.C.

Stephen Schott is active in all areas of intellectual property law with a focus on patent prosecution and intellectual property litigation. He has trial level and appellate practice experience and works with businesses that want to create value from their IP portfolios. Steve works on many technologies including wireless communications, electron microscopy, organic LED displays, passive electronic components, wind-powered energy, and automobile transmission systems. Steve has industry experience managing the design and construction of various manufacturing facilities, including a pharmaceutical production plant and a thermal testing laboratory. Steve earned his J.D. from Temple University’s Beasley School of Law. He is admitted to practice before The Supreme Court of Pennsylvania, The U.S. District Court for the Eastern District of Pennsylvania and The U.S, Court of Appeals for the Federal Circuit. He is a registered patent attorney with the United States Patent and Trademark Office. Steve is a member of The American Bar Association, The Federal Circuit Bar Association, The American Intellectual Property Law Association, The Intellectual Property Owners Association, and the Philadelphia Bar Association. He is an adjunct professor at Temple University, where he teaches Law, Technology, and E-Commerce classes and he is a volunteer child advocate for the Support Center for Child Advocates.

PANELIST

Professor Johanna K.P. DennisVermont Law School

Professor Dennis is a member of the Pennsylvania bar and a Registered Patent Attorney with the U.S. Patent and Trademark Office. Prior to joining the faculty at Vermont Law School (VLS), Professor Dennis was a member of the faculty at Touro College, Jacob D. Fuchsberg Law Center and Florida A&M University College of Law, where she taught in the first-year legal writing programs and an upper-level course in Law and Medicine. At Touro, Dennis was a faculty advisor for the International Law Review, and she has served as moot court judge for the American Bar Association, National Appellate Advocacy Competition. Dennis also clerked for the Honorable William P. Gilroy in the Superior Court of New Jersey, Appellate Division, and she worked on civil service employment appeals with the State of New Jersey, Department of Personnel, Division of Merit System Practices and Labor Relations.

In law school, Dennis focused her studies in Intellectual Property Law and Immigration Law, and she received the Distinguished Class Performance notation in Intellectual Property Licensing Law. She also participated in a study abroad program in Toronto, Ontario, where she studied Canadian civil procedure, evidence and international law. She has technical expertise in chemistry, molecular biology, and FDA regulation of clinical trials and product development.

At VLS, Professor Dennis teaches courses in Appellate Advocacy and Legal Writing. Dennis has written, published and presented articles in patent law, multiculturalism, and legal writing skills and pedagogy. Her research interests include Biotechnology and Patent Law, Teaching Methodologies and Pedagogy, Immigration and Nationality Law, and Food and Drug Law.

Please see Professor Dennis’ article at the end of this booklet: Redux on the “Process” of Patenting and the U.S. Supreme Court’s Consideration of Bilski?

PANELIST

Mr. Ruffin B. CordellFish & Richardson P.C.

Ruffin Cordell is a Principal of Fish & Richardson in the firm’s Washington, D.C. office. His practice emphasizes all aspects of intellectual property litigation, including patent, copyright, and trade secret law. He appears regularly as lead counsel before federal district courts in Virginia, Texas, California, and throughout the country, and has extensive experience before the ITC in Section 337 proceedings.

Mr. Cordell has handled patent and trade secret cases involving microprocessors, operating system software, flash memory, product activation software, hybrid vehicles, graphics controllers, imaging sensors, dense wave division multiplexed telecommunications systems, unified messaging systems, Ethernet network systems, multi-protocol routers, DSL devices, digital loop carriers, class IV tandem switches, cellular switches, metro class drop add multiplexers, optical switching platforms, supervisory signaling point equipment, broadband access systems, unified frame buffer structures, three dimensional graphics platforms, digital memory structures, and storage devices. He has also handled cases involving complex ophthalmic devices, optoelectronic devices, pharmaceuticals, and automotive devices.

Prior to joining Fish & Richardson, he was an examiner in computer interface device technology at the United States Patent and Trademark Office. Mr. Cordell was named one of the Legal Times’ “Leading IP Lawyers in D.C.” in October 2003. He was also named to the 2006, 2007, and 2008 editions of The Best Lawyers in America. Most recently, Mr. Cordell was named as one of the “Top 50 Under 45” attorneys in IP Law & Business in May 2008.

Louisiana State University B.S. in Electrical Engineering 1985; Georgetown University Law Center J.D. 1989 magna cum laude, Order of the Coif.

PANELIST

Mr. Ahmed J. DavisFish & Richardson P.C.

Morehouse College B.S. Chemistry 1994 cum laude; Emory University M.S. Chemistry 1996; Georgetown University Law Center J.D. 1999.

Ahmed J. Davis is a Principal in the Washington, D.C. office of Fish & Richardson. His practice focuses on complex patent litigation in a vast range of technical areas, with a particular focus in the areas of chemistry, biotechnology, medical devices, and mechanical and electrical engineering. A trial attorney experienced in all phases of litigation, Mr. Davis has appeared and argued in the Markman and summary judgment contexts in numerous federal district courts, has tried cases in federal district court and before the United States International Trade Commission, and has argued before the United States Court of Appeals for the Federal Circuit.

Mr. Davis is active as a writer and lecturer on issues relevant to the patent bar. He was a contributing author in the West Group’s Intellectual Property Library Patent Law Handbook (2001-2002 Edition, Glenn W. Rhodes, ed.). Recently, Mr. Davis was a faculty member at the February 2008 ALI-ABA Conference, “Trial Of A Patent Case,” in Scottsdale, Arizona, and a faculty member at the May 2008 Minnesota Bar CLE seminar “Patent Enforcement and Defense.”

In July 2009, Mr. Davis was named one of the “40 Under 40: Washington’s Rising Stars” by The National Law Journal, which noted his litigation accomplishments. Also in 2009, he participated in Microsoft’s Advocacy Academy 3.0, which invests in the development of “rising star” trial lawyers among the senior associates and junior partners at Microsoft’s Preferred Provider law firms.

Before joining the firm, Mr. Davis was a law clerk for the Honorable Leonie M. Brinkema in the Alexandria division of the United States District Court for the Eastern District of Virginia (1999-2000). He also was a law clerk for the Honorable Paul R. Michel at the United States Court of Appeals for the Federal Circuit (2001-2002).

SPEECH:

Intellectual Property and Alternatives:Strategies for Green Innovation

Professor Jerome Reichman

2:00 PM to 3:00 PM

1 CLE Credit. This speech is based on Professor Reichman’s paper that discusses how intellectual property rights and alternatives might affect green innovation. Professor Reichman discusses

the economics of green innovation, including the important role that will need to be played by the private sector. Furthermore, the speech focuses on intellectual property issues that may arise if and when greenhouse gas externalities are addressed through appropriate pricing of greenhouse gases. There is also an elaboration on alternatives to traditional patents and

exclusive license, including patent pools, liability rules and prizes.

SPEAKER

Professor Jerome H. ReichmanDuke Law School

Jerome Reichman is the Bunyan S. Womble Professor of Law at Duke University Law School in Durham, North Carolina. He has written and lectured widely on diverse aspects of intellectual property law, including comparative and international intellectual property and the connection between intellectual property and international trade laws. His articles in this area particularly address the problems that developing countries face in implementing the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). He is a consultant to numerous intergovernmental and nongovernmental organizations, a member of the Board of Editors for the Journal of International Economic Law, and of the Scientific Advisory Board of Il Diritto di Autore (Rome).

In collaboration with Keith Maskus, he published International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime (Cambridge University Press, 2005). Among his most recent publications are The Doha Round’s Public Health Legacy: Strategies for the Production and Diffusion of Patented Medicines Under the Amended TRIPS Provisions, co-authored with Fred Abbott, and published in 10 Journal of International Economic Law 921-987 (2007); Compulsory Licensing of Patented Pharmaceutical Inventions: Evaluating the Options, 37 Journal of Law, Medicine and Ethics 247 (2009); and Rethinking the Role of Clinical Trial Data in International Intellectual Property Law, 13 Marquette Intellectual Property Law Review 1(2009).

PAnel 3:

Ethical Issues with the Intersection of Environmental and Intellectual Property Law

3:00 Pm to 4:00 Pm

1 cle credit (ethics). This panel will discuss the ethical issues that arise when these two critical fields overlap and what strategies attorneys must utilize in order to overcome

any potential ethical problems. The panel is broad in scope and will get to the very heart of why this year’s symposium topic should resonate with the legal community.

Moderator: Professor Mark AndersonPanelist: Mr. David BaileyPanelist: Mr. Paul Gupta

Panelist: Mr. Daniel Desmond

MODERATOR

Professor Mark F. AndersonTemple University Beasley School of Law

Associate Professor Mark Anderson joined the Temple Law faculty in 1989. He teaches Torts, Contracts, Environmental Law, and Health Law and is well known for the sense of humor he brings to the classroom. He earned his B.S. from Colorado College and his J.D from the University of Michigan School of Law and was an editor of the Michigan Law Review. Following graduation, Professor Anderson clerked for Judge Boyce Martin of the Sixth Circuit of the United States Court of Appeals. He then joined the Boston law firm of Palmer & Dodge, where he was an associate for five years specializing in tax-exempt finance. Before law school, Professor Anderson worked for the United States Department of Transportation. He helped design and evaluate programs meant to encourage safer driving behavior (seatbelts, child restraints, sober driving, the 55 mph speed limit).

PANELIST

Mr. David R. BaileyWoodcock Washburn

As a trial lawyer, David Bailey focuses his practice on the litigation of intellectual property disputes including ANDA litigations. His practice is concentrated on patent issues and also includes client counseling, opinion drafting, licensing, acquisition, and portfolio management. Currently, David serves as co-chair for Woodcock’s CleanTech committee concentrating on advising clients in clean/green technologies.

In litigation, David has worked on trial teams representing a number of Fortune 500 companies including Cordis Corporation, Microsoft, Shire LLC, W.R. Grace & Co., and Boston Scientific Corporation. He was a member of the trial team in Microsoft Corp v. AT&T Corp., decided by the Supreme Court in 2007. Dave has participated in several multi-week trials and appeals before the U.S. Court of Appeals for the Federal Circuit. He applies his focused legal knowledge to many technologies, including pharmaceuticals, medical devices, computer software, petrochemical processing, chemical processing, consumer products, and drug delivery compositions.

David is a cum laude graduate of Villanova Law School, where he was a member of the Moot Court board. He is a member of the Intellectual Property Owners Association (e-discovery subcommittee), Licensing Executive Society, American Intellectual Property Law Association, and the Philadelphia Intellectual Property Law Association. He received his undergraduate degree in chemical engineering from Pennsylvania State University, where he graduated from the Honors College. After graduation, he worked as an engineer for the PQ Corporation.

In September of 2007, David co-presented with Andrew Culbert of Microsoft Corporation for an AIPLA webinar “Global Infringement Liability after the Supreme Court Decision in Microsoft v. AT&T.” David has lectured about the proposed patent legislation for a Business Development Academy seminar in 2009 and for an AIPLA meeting in June, 2007.

PANELIST

Mr. Paul R. GuptaOrrick, Herrington & Sutcliffe LLP

Paul Gupta, a litigation partner in the New York office, is a member of Orrick’s Intellectual Property Group. Mr. Gupta’s practice focuses on representing Fortune 500 and other clients in district courts and courts of appeals. He primarily handles intellectual property, IT and antitrust matters in the computer, e-commerce and outsourcing; telecommunications; financial services; scientific; photographic and control equipment; and energy industries.

He is currently lead counsel in patent litigation pending in district courts in California, Michigan, New York and Texas. He is also counseling clients throughout the United States on technology law matters.

Mr. Gupta regularly lectures at PLI and other CLE programs, and he frequently has been quoted in the media about his cases and legal news. According to Chambers USA, Mr. Gupta is “renowned for his work in the technology arena” and is “extraordinarily accessible.” He is also listed as a New York Super Lawyer. He received his B.A. from Yale University and his J.D. from Harvard Law School.

Please see Mr. Gupta’s article at the end of this booklet: Intellectual Property Aspects of Green Technology.

PANELIST

Mr. Daniel J. DesmondPeregrine Technology Partners

Daniel J. Desmond is a founding partner of Peregrine Technology Partners in Lemoyne, PA. The firm, which started business in 2008, specializes in Green Technology development and provides strategic planning advice to companies in this field. Prior to that he served as Deputy Secretary for the Office of Energy and Technology Deployment at the PA Department of Environmental Protection. He also served as Executive Director of the Pennsylvania Energy office and was with that agency from 1983 through 1995 when it merged with DEP. From 1995 to 2003 he was Chair of the Pennsylvania Energy Resources Center, an advocacy and public education project to secure funding for renewable energy in the aftermath of utility deregulation. In addition, he was President of Sustainable Systems Research, a Lancaster-based firm specializing in development and commercialization of environmentally beneficial technology.

Mr. Desmond is a graduate of the University of Toledo. He has been crowned by journalists as Pennsylvania’s Energy Czar and is seen by so many as the Keystone State’s energy guru.

APPendiX

Supporting Materials

TJSTEL Annual Spring Symposium: The Greening of Intellectual Property Ethical Issues with the Intersection of Environment and IP Law

INTELLECTUAL PROPERTY ASPECTS OF GREEN TECHNOLOGY Paul R. Gupta Xiang Wang Igor Margulyan Orrick, Herrington & Sutcliffe, LLP

INTRODUCTION

As global reliance on traditional sources of energy continues to impact our planet,

the ensuing environmental changes have altered the world's political and economic

climate causing it to embrace green technology. Many nations are coming together to

formulate programs and implement legislation aimed at promoting the technological

development of clean energy ("cleantech"). Mindful of the opportunities created by the

surge of these cleantech-friendly policies, investors have been putting significant funds in

businesses focused on renewable energy.1

Among these businesses, the more popular targets for investment in the U.S. have

been companies that develop technologies to reduce energy consumption; evidently,

investors view these companies as offering a "shorter path to profitability."2 Makers of

hybrid vehicles have also attracted major investment dollars as well as substantial

financing from the U.S. government.3 Conversely, the solar sector has witnessed a recent

drop in investments as its profitability had been hurt by an overabundance of solar panels

in the market.4 Likewise, companies producing biofuels have lost some investor interest

due to declining oil and gas prices.5 Nevertheless, venture capitalists continue to regard

cleantech projects across all sectors as some of the biggest economic opportunities of this

century. According to a report by PricewaterhouseCoopers and the National Venture

Capital Association, cleantech has received 19% of total venture capital investment in the

U.S. (second only to biotechnology) in the third quarter or 2009.6

With the clean energy market poised for substantial growth, the role of

intellectual property rights behind cleantech remains a key consideration. The inherent

dichotomy between dissemination of green technology and protection of the inventors'

1 See Appendix A. 2 Russell Gold, Investment Dollars Flow to Green Energy Start-Ups, The Wall Street Journal, Feb. 3, 2010, http://online.wsj.com/article/SB10001424052748703657604575005083160626318.html?KEYWORDS=clean+tech+investment. 3 Id. 4 Id. 5 Id. 6 Id.

rights necessitates a thorough understanding of intellectual property laws, which aim to

strike a balance between encouraging innovation and promoting competition. Among the

arsenal of intellectual property rights, patents are particularly relevant to green

technology because they provide the holders with exclusive rights to make, use and sell

cleantech inventions. Keeping technology a trade secret may be a sensible alternative to

patent filing, especially where the technology sought to be protected cannot be reverse-

engineered or where the risk of unintended disclosure is minimal. Finally, trademark

protection may also be important to businesses that choose to include terms such as

"green" or "clean" in the company name to signal the environmentally-friendly nature of

their products.

1. STRATEGIES FOR CLEANTECH COMPANIES

To take full advantage of the current environmentally-conscious market, inventors

of green technology should maintain strong patent portfolios. Doing so will not only

preserve the opportunity to exploit the final product commercially, but will also allow

cleantech companies to sustain their value while they develop the technology. Since a

patent holder may potentially enjoy a monopoly power in the marketplace, the prospect

of such a favorable business position will work to increase the holder’s valuation.7 In

comparison to other industries, however, innovations in the clean energy sector "often

require a larger amount of capital [investment] and a longer time for development."8 Thus,

while a company remains in the early stages of research, intellectual property will likely

be its most valuable asset.9 Naturally, the value of this asset will depend on whether the

company has sought to protect it legally.

Of course, a robust collection of patents can yield benefits beyond enhancing the

value of the business. First, potent patent protection attracts financing. Venture capitalists

may be reluctant to invest in a cleantech business unless they are certain that "the essence

7 See Mark Sajewycz, Patenting Clean Tech: Trends, Issues And Strategies, LAW360, Feb. 5, 2010, http:// www.law360.com/articles/145940. 8 Rodger A. Sadler, Protecting and Profiting from Intellectual Property in President Obama's Clean Energy Economy, at 4, http://www.orrick.com/fileupload/1813.pdf. 9 Id.

of their investment – the intellectual property of the company – is protected properly."10

Second, patent ownership creates opportunities for cross-licensing deals. Patent portfolios

may be used strategically to assert rights “in retaliation against a patent infringement suit

brought by a competitor," which, in turn, may result in beneficial settlements through

cross-licensing.11 Third, cleantech firms can use their patented technology as a bargaining

chip to negotiate favorable joint venture arrangements with larger entities such as utility

companies. A joint venture can be particularly advantageous to cleantech start-ups since

"partnering with a bigger player can secure critical technology and funding [as well as]

accelerate the research and development process."12 Finally, patenting the inventions can

be instrumental to a company's exit strategy. Whether a business is seeking to go public

or to arrange a favorable acquisition deal, a strong patent portfolio will certainly bring a

company closer to meeting those objectives.

Licensing income is another benefit that green technology firms may derive from

their patents. Large businesses that utilize diversified technologies may strategically

choose to license existing patents rather than invest in internal research. This sort of

arrangement is becoming more common, especially in cases where sizable companies

have a "distribution or sales network to commercialize cleantech inventions but lack[]

research and development capacity."13 Indeed, global revenue from patent licensing deals

is expected to reach $500 billion by 2015, "up dramatically from $110 billion in 2000."14

To participate in this substantial revenue stream, cleantech companies will want to secure

appropriate patent protection to make their inventions more appealing to potential

licensees.

In addition to financial gains, licensing deals may also result in stronger patent

enforcement. Partnering up with larger companies gives those companies a "financial

interest in protecting the invention [as licensees]."15 Therefore, potential infringers may

10 Supra n. 8, at 4. 11 Supra n. 7. 12 Richard Stobbe, Tips and Trends in Cleantech Licensing, The Lawyers Weekly, Nov. 27, 2009, http:// www.ipblog.ca/wp-content/uploads/2009/11/10_v1_law_nov20.pdf. 13 Id. 14 Supra n. 8, at 8. 15 Id.

be deterred by the likelihood that "a patent infringement suit filed by a cleantech owner

could be subsidized by the larger company."16

Licensors of cleantech patents should be aware, however, that in spite of all the

benefits, the decision to license has been complicated by a recent Supreme Court ruling

in MedImmune, Inc. v. Genentech, Inc.17 In that case, a licensee had sought a declaratory

judgment that the licensor's patent was invalid. The Court held that the licensee did not

forfeit its standing to challenge the patent by entering into the licensing agreement.

According to Mark Wine, a partner in the Orange County office of Orrick, Herrington &

Sutcliffe, the MedImmune decision effectively "gave new rights to a licensee to challenge

the validity of a licensor's patent without having to risk losing the license," thereby

weakening the licensor's bargaining power.18

While the outcome of the MedImmune case is likely to add to the number of

willing licensees, obtaining rights to third-party patents has been a sensible tactic for

large organizations even prior to this Supreme Court decision. For instance, as noted

above, certain businesses may want to license existing cleantech patents due to a lack of

"in-house" research and development capabilities.19 In doing so, potential licensees

should always conduct thorough due diligence. Some of the key inquiries to be made are:

1) whether the patents sought to be licensed are actually valid; 2) whether the licensor

actually owns the patents; and 3) whether the patents have been licensed to anyone else.20

Additionally, when making the decision to acquire patent rights to a particular cleantech

invention, licensees may also want to consider negotiating for ownership of any

successor technology that may be developed in the future.

Finally, it may be wise for licensees to obtain insurance that backstops any

representations and warranties made by the licensor regarding the efficacy of the licensed

intellectual property.21 Although the licensor may undertake to indemnify the licensee in

case the latter is exposed to liability from infringing activity, insurance can offer an

16 Id. 17 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). 18 Erin Coe, IP Cases Of The Decade, LAW360, Jan. 13, 2010, http://www.law360.com/articles/141718. 19 See infra n. 13. 20 Supra n. 7. 21 Jesseman Pryor, CEO, Ambridge Partners LLC.

additional layer of protection in excess of the indemnification promised by the licensor.22

Licensees also have the option of insuring a part of or the licensor’s entire

indemnification obligation, in case the licensor is not financially able to fulfill its

indemnity pledge.23 As for the licensors who may be concerned about indemnification

claims by the licensee arising from unknown or unforeseen circumstances, they, too, may

opt for insurance coverage to support some or all of their indemnity obligations.24

2. PATENTING CONSIDERATIONS

The mechanics of patenting green technology deserves special attention. Given

that "alternative energy often incorporates older technologies…meaningful advances

are…more susceptible to being seen as merely 'ordinary invention,'" and, as such,

ineligible for patent protection.25 Yet, Rodger Sadler, a partner in Orrick’s New York

office, cautions cleantech companies not to dismiss all minor improvements as

unpatentable.26 He notes that "[f]ailing to obtain patent protection for merely incremental

improvements is risky, and may result in lost opportunities of tremendous value."27 Still,

to take advantage of these opportunities companies need to recognize the importance of

skillful claim drafting. Patent claims should be drafted very thoughtfully with the aim of

articulating the novelty of technological integration behind the invention while limiting

references to existing technologies that may signal prior art.

Since the creation of clean energy resources often stems from combining several

technologies, businesses may find it necessary to engage in joint development. Under

these circumstances, all parties need to ensure that negotiations are carried out under

proper non-disclosure agreements.28 Furthermore, any third-party information received in

22 Id. 23 Id. 24 Id. 25 Eric Raciti, Patent Standards And Investment In Alternative Energy, LAW360, Feb. 1, 2008, http://www. law360.com/articles/45788. 26 Supra n. 8, at 5, describing wind turbine components such as variable-speed generators and swept blades as examples of incremental improvements that may be patentable. 27 Id. 28 Supra n. 7.

relation to the technology being developed should be filtered to avoid the creation of

unintended co-ownership of the improved technology.29

3. FEDERAL CLEANTECH INITIATIVES

Over the last few years, the U.S. government has taken a number of steps

indicative of its commitment to a clean energy economy. In March of 2009, President

Obama had announced that roughly $59 billion in stimulus funds under the American

Recovery and Reinvestment Act30 would be invested in clean energy projects and

relevant tax incentives.31 This year, $2.3 billion in tax credits have already been awarded

to various cleantech businesses across 43 states.32 The government has also allocated

$400 million to establish the Advanced Research Projects Agency for Energy, which will

support transformational energy research.33 Additionally, the Energy Efficiency and

Renewable Energy Office (under the Department of Energy (DOE)) has received $18.7

billion to promote the "development and deployment of clean energy technologies,"

while the DOE's Office of Science received $6.4 billion for "basic research and world-

leading scientific user facilities to support transformational discoveries and accelerate

[energy] solutions, including the development of clean energy."34 To address tight credit

markets and limited financing options, the federal stimulus package has also provided $6

billion to the DOE for loan guarantees aimed at renewable energy projects.35

29 Id. 30 Pub. L. 111-5 (2009). 31 William Branigin, Obama Lays Out Clean-Energy Plans, The Washington Post, Mar. 24, 2009, http:// www.washingtonpost.com/wp-dyn/content/article/2009/03/23/AR2009032301350.html. 32 Anonymous, Clean Tech Firms Get $2.3B in Tax Credits, Environmental Leader, Jan. 11, 2010, http:// www.environmentalleader.com/2010/01/11/clean-tech-firms-get-2-3b-in-tax-credits/. The tax credit program provides for a 30% tax credit "for investments in manufacturing facilities that produce clean energy products including solar, wind, energy efficiency and energy management technologies. The investment tax credits will also leverage private capital for a total investment of nearly $7.7 billion in high-tech manufacturing in the United States…" Id. 33 Eli Kintisch, $400 Million For Off the Wall Energy Ideas, Science Magazine, Feb. 12, 2009, http://news. sciencemag.org/scienceinsider/2009/02/400-million-for.html. 34 William Pentland, Reclaiming the Mantle: America's Energy Strategy 2.0, FINANCEOID.COM, Feb. 15, 2010, http://www.financeoid.com/read-post/258561/. 35 See PricewaterhouseCoopers Report, Cleantech Nation: Cleantech playing a central role in the national recovery agenda, Feb. 2009, http://www.pwc.com.mu/en_US/us/point-of-view/assets/pwc_pointofview_ cleantech.pdf.

As cleantech companies rally to take advantage of federal funding, they need to

remain vigilant about the status of their rights to the technology at issue. Often companies

that are applying for federal money for the first time fail to realize that they may be

surrendering their intellectual property rights in the process.36 Thus, any company that is

seeking government financing should be aware of the relevant statutes and regulations.

For instance, the Bayh-Dole Act (BDA) 37 permits businesses and non-profit

organizations to retain patents on inventions made under federally-funded programs, as

long as it is clear that the government has funded the research that led to the invention.38

A set of rules known as the Federal Acquisition Regulation (FAR) "implements the BDA

statutory scheme for patents developed under government acquisition contracts."39

Aside from providing the necessary capital inflow, the federal government has

reaffirmed its support for clean energy by introducing the Green Technology Pilot

Program (GTPP) via the U.S. Patent and Trademark Office (USPTO). Designed to

“accelerate the examination of ‘green’ technology patent applications,” the program

became effective on December, 8 2009, and will remain in effect for 12 months.40

Applications accepted into the program are accorded “special status” (i.e. placed on the

examiner's special docket) and are reviewed on an expedited basis, which should reduce

the typical examination time by an average of one year.41

While the intended effect of this initiative is to relax USPTO’s usual requirements

concerning petitions to make special for patent applications, certain eligibility criteria still

have to be met.42 First, the patent office will accept only the first 3,000 petitions based on

previously filed applications; second, the original patent applications that form the basis

for the petition must have been filed by December 8, 2009; third, the applications must

36 Sergio Garcia, Stimulus Act, Cleantech, and IP: Reaping Benefits Without Giving Away the Farm, Cleantech Group, Jul. 31, 2009, http://cleantech.com/news/print/4778. 37 35 U.S.C. § 200 (1980). 38 Supra n. 36. 39 Id. noting that FAR is "a contract clause" that should be included in all contracts between the government and a private party that develops patentable technology for the government. 40 Press Release, U.S. Patent and Trademark Office, The U.S. Commerce Department's Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain green technology patent applications, Dec. 7, 2009, http://www.uspto.gov/news/pr/2009/09_33.jsp. 41 Id. 42 Notice, U.S. Patent and Trademark Office, Pilot Program for Green Technologies Including Greenhouse Gas Reduction, Nov. 30, 2009, http://www.uspto.gov/web/offices/com/sol/og/2009/week52/TOC.htm# ref13.

fall under one of the U.S. patent classifications relating to green technology.43 Moreover,

the program places limits on the amount of independent and total claims that the

application may have.44

The introduction of this program has certainly been welcomed by cleantech

innovators. According to the USPTO's press release, the program is expected to

"accelerate the development and deployment of green technology, create green jobs, and

promote U.S. competitiveness in the [cleantech] sector."45

4. GREEN PATENTS IN FOREIGN JURISDICTIONS

Foreign governments have been pulling their weight in supporting green

technology, indicating that the move toward a clean energy economy is truly a global

trend. One of the collectively-pursued initiatives relates back to the effort of bringing

cleantech to market faster. To that end, several international patent offices have been

receptive to initiatives such as the USPTO's Pilot Program.

For instance, the World Intellectual Property Organization has decided to consider

the creation of an "expedited review" program for international applications at the

upcoming Patent Cooperation Treaty meeting.46 According to Alana Fuierer, the prospect

of obtaining prioritized examination on an international scale "could prove even more

beneficial to U.S. cleantech businesses seeking to expand their market and funding and

could result in an even greater influx of patented, proprietary technology entering the

market in the coming years."47

The UK Intellectual Property Office had launched a patent program of its own

allowing for a faster review of patent applications related to green technologies. Known

as the "Green Channel," this new initiative went into effect on May 12, 2009.48 To

qualify, the applicant has to make merely a "reasonable assertion" that the proposed

43 Id. 44 Id. 45 Supra n. 40. 46 Alana M. Fuierer, IP Frontiers: Cleantech patents can be accelerated, The Daily Record, Feb. 12, 2010, http:// nydailyrecord.com/blog/2010/02/12/ip-frontiers-cleantech-patents-can-be-accelerated/. 47 Id. 48 Id.

invention will benefit the environment.49 Examination time for approved applications

may decrease from a period of several years to as little as nine months.50

China has emerged as a particularly important player in the green technology

arena mainly due to its enormous energy demands and its contribution to climate change.

As one of the world's biggest emitters of greenhouse gases, China has decidedly joined

the clean energy movement as evidenced by its investment and legislative activities.

Based on current estimates, China is expected to spend anywhere between $440 billion

and $660 billion on cleantech investment in the next 10 years.51 On the legislative front,

China has recently amended its 2006 Renewable Energy Law evidencing a stronger

emphasis on exploitation of clean energy. As a result of the amendments, Chinese utility

companies are now required to buy all power produced by alternative energy sources,

while the nation's grid companies are required to make the necessary improvements to

maximize the absorption of clean energy power.52 In July 2009, the Chinese government

has also signed an agreement with the U.S. to cooperate on multiple projects aimed at

developing clean energy and reducing emissions; any patents on the resulting inventions

"are expected to be jointly held."53

In view of its high energy consumption and the government's strong endorsement

of "green" policies, China is quickly turning into one of the top clean energy-consuming

nations. For example, China utilizes more than 60% of the world’s solar-based family

water boilers. China's massive industrial capacity has also enabled the nation to become

one of the principal producers of green technology. Today, China stands as the leading

developer and manufacturer of solar panels and wind turbines.54 In fact, since 2006,

Chinese patent applications for solar panels have been steadily increasing, with 10,000

applications filed in 2008 alone.

49 Id. 50 Id. 51 Selina Harrison, Cleantech Investment in Asia, Financierworldwide.com, Feb. 2010, http://www. financierworldwide.com/article_printable.php?id=5920. 52 Id. 53 Robert Collier, Dispute over clean-tech patent protections, SFGate.com, Jul. 28, 2009, http://articles. sfgate.com/2009-07-28/opinion/17218224_1_patent-ownership-clean-tech-climate-summit. 54 Supra n. 51. Evidently, China is also "making its mark as a leading developer of hybrid and electric vehicles…" Id.

Given China's preeminence in the green technology market, understanding the

nation's intellectual property laws should be a priority for any cleantech business seeking

to expand its operations to Asia. Indeed, there are several points to consider regarding

patent protection in China. To begin with, China issues patents under three categories:

design, invention, and utility. Cleantech patents will likely have to be filed under the

"invention" category, which dictates a stricter, and thus longer, examination process.55

But, as a practical matter, companies may want to file for patent protection

simultaneously under the "invention" and the "utility" categories. The advantage of this

filing strategy is that one can obtain patent protection for some of the claims much earlier

than if the applicant had filed under the "invention" category only.56

Potential applicants should be aware that inventions must be kept secret prior to

filing; any disclosure constitutes an absolute bar to patent protection in China. 57

Moreover, in line with much of the world, China follows the "first-to-file" rather than the

"first-to-invent" approach when determining priority of ownership. Thus, all necessary

filings should be done in a timely manner. In this respect, it is worth noting that it is

generally difficult to prove that the invention had been stolen.58

With respect to patent enforcement, China offers both judicial and administrative

channels for adjudicating infringement claims. Patent holders can bring an action "either

before an administrative authority or in the Intermediate People's Court in the geographic

area where the infringer maintains a business or where the infringement has occurred."59

The statute of limitations on infringement actions is two years from the date of actual or

constructive knowledge of the infringing activity. With a few exceptions, most courts do

not award large monetary damages. In fact, a successful plaintiff will have to choose one

of three available remedies: patent holder's damages, infringer's profits, or a reasonable

55 Amy B. Goldsmith, Patent Protection and Enforcement in China, Cleantech Asia Online, Aug. 1, 2009, http://www.cleantechasiaonline.com/patent-protection-and-enforcement-china. 56 In essence, the "utility" patent, which can be issued within a year, will protect the technology until it obtains protection under the "invention" patent, the issuance of which can take from two to four years. It should be noted that while an "invention" patent covers all claims including apparatus, method, process, composition, etc., a "utility" patent will only cover apparatus claims. Thus, protection under the "utility" patent will be limited. Additionally, once the company receives the "invention" patent, it will have to abandon its "utility" patent. 57 Supra n. 55. 58 Id. 59 Id. The courts, however, cannot determine the validity of a patent because such authority is reserved for the Patent Reexamination Board.

royalty.60 Chinese patent law also recognizes a "prior good faith use" defense to

infringement suits.61

Infringement litigations in China will differ from those in the U.S. because there

is no formal discovery. Nevertheless, a court still has the power to question witnesses,

order document production and initiate inspections; it can also seize any evidence of

infringing activity.62 Typical litigations of this sort may last from two to four years.63

And, although damages are available in infringement actions, China's Patent Law has

recently been amended to include a compulsory licensing provision, which has prompted

concerns that patent rights may be "ignored" in favor of licensing schemes.64 To date,

however, China has not granted a compulsory license.

The prospect of compulsory licensing remains a hot issue for the developing

nations as they insist that patent protection makes green technology prohibitively costly.

Thus, countries such as Brazil and India have been seeking "concessions on clean

technology" that would include either generic production of patented cleantech or a

compulsory licensing system, under which these nations could afford to "go green."65

Last year, however, the U.S. House of Representatives has voted unanimously to oppose

"any weakening of intellectual property rights in the climate treaty [formulated at the

Copenhagen summit]."66 Although such categorical stance may seem problematic, some

studies have suggested that patents do not provide meaningful barriers to developing

nations' implementation of cleantech.67 For instance, in a study performed for the

International Center for Trade and Sustainable Development, an examination of three

cleantech sectors (solar, wind, and biofuels) revealed that all three sectors are

"competitive enough" to allow developing nations to take advantage of the technology

without enormous licensing costs.68 With respect to technologies that are less competitive,

60 Supra n 55. 61 Id. 62 Id. 63 Id. 64 Id. 65 Supra n. 53. 66 Id. 67 Supra n. 55. 68 John H. Barton, Patenting and Access to Clean Energy Technologies in Developing Countries, World Intellectual Property Organization Magazine, Mar. 2009, http://www.wipo.int/wipo_magazine/en/2009/02/ article_0005.html.

some experts have proposed a "protect and share" system that combines a cross-border

expansion of intellectual property rights with "carefully circumscribed and policed

concessions in a limited number of poor nations."69

5. SELECTED RELEVANT U.S. CASE LAW

General Electric Co. v. Mitsubishi Heavy Indus. Ltd.

In September of last year, General Electric filed a suit against Mitsubishi in the

Southern District of Texas alleging infringement of its patents relating to energy

conservation and control technology for wind turbines.70 While this case is currently

awaiting trial, Mitsubishi has already obtained a favorable ruling from the U.S.

International Trade Commission (ITC).71 The ITC concluded that Mitsubishi did not

violate any claims of the GE patents, thereby reversing an administrative law judge's

prior ruling.72 General Electric has recently indicated that it plans to appeal its loss at the

ITC.73

Paice LLC v. Toyota Motor Corp.

In 2007, Paice brought an infringement action against Toyota relating to a patent

for a hybrid electric vehicle drive train.74 After examining the relevant patents, the

Federal Circuit held that there was sufficient evidence to support a finding of

infringement of Paice's two patent claims under the doctrine of equivalents.

Idaho Energy, LP v. Harris Contracting Co.

In 2008, Idaho Energy filed a lawsuit against Harris Contracting seeking, inter

alia, a declaratory judgment of invalidity on Harris’ patent for methods of generating

69 Supra n. 53. 70 General Electric Co. v. Mitsubishi Heavy Indus. Ltd., No. 2:09-cv-00229 (S.D. Tex. filed on Sept. 3, 2009). 71 Anonymous, Mitsubishi Powers Past GE in ITC Wind Turbine Case, Green Patent Blog, Jan. 27, 2010, http://greenpatentblog.com/2010/01/27/mitsubishi-powers-past-ge-in-itc-wind-turbine-case/ 72 Id. 73 Diane Bartz, GE files wind turbine suit vs Mitsubishi Heavy, Reuters, Feb. 11, 2010, http://www.reuters. com/article/idUSTRE61A56D20100211. 74 Paice LLC v. Toyota Motor Corp., 504 F. 3d 1293 (Fed. Cir. 2007).

energy via agricultural biofuel.75 The court held that relevant subject matter jurisdiction

existed in this case because: 1) Harris had threatened Idaho Energy’s customers with

patent infringement lawsuits, and 2) Idaho Energy had taken concrete steps indicative of

its intent to engage in infringing activity. Nevertheless, the court dismissed the case due

to lack of personal jurisdiction.

Deuterium Corp. v. U.S.

In 1990, Deuterium sued the U.S. government for infringing its patent relating to

a process for removing hydrogen sulfide from geothermal steam.76 The court ultimately

held that there was no infringement because several elements “essential and material” to

Deuterium's patented process were absent from the accused process.

75 Idaho Energy, LP v. Harris Contracting Co., 2008 WL 4498809 (D. Idaho 2008). 76 Deuterium Corp. v. U.S., 14 U.S.P.Q.2d 1636 (U.S. Cl. Ct. 1990).

APPENDIX A

Used by permission of Cleantech Group, LLC

Redux on the “Process” of Patenting and the U.S. Supreme Court’s Consideration of Bilski?

Johanna K.P. Dennis Associate Professor of Law Vermont Law School South Royalton, Vermont, USA jdennis@vermontlaw.edu

Abstract In Bilski v. Kappos, the U.S. Supreme Court was called to

define one of the categories of patent eligible subject matter, “process” patents. In 2008, the Court of Appeals for the Federal Circuit held that the category has a narrow meaning, and that to be eligible for a process patent under 35 U.S.C. § 101, the invention must involve a machine or apparatus or involve a transformation to a different state or thing, ultimately rejecting the patent application as unpatentable subject matter. The patent applicants have asked the U.S. Supreme Court to determine two issues: first, the meaning of “process” in 35 U.S.C. § 101 and whether the lower court properly relied on a “machine-or-transformation” test, and second, the test’s potential conflict with 35 U.S.C. § 273, which provides protection for “method[s] of doing or conducting business.” The Court’s decision could change the way that research and business are done, and patent protection for such investments. This article focuses on the “machine-or-transformation” test and the main reasons the test should not be adopted.

Key Words Bilski v. Doll; Bilksi v. Kappos; In re Bilski; 35 U.S.C. § 101; patent; process; patentable subject matter; intellectual property rights; United States. A complete version of this paper was presented at the 4th International Conference on Legal, Security and Privacy Issues in IT held in Sliema, Malta, and was published in Volume 25, Issue No. 6 of the Computer Law and Security Review (Elsevier).1

I. INTRODUCTION

At present, patents are one of the most sought after ways of protecting inventions and obtaining and securing investments in research. As globalization increases and the national lines between inventors and investors are broken, individuals, inventors and industries seek to obtain patents in as many countries as possible, and a patent applicant would be remiss in not filing for a U.S. patent. Yet although patents are hot commodities, it has been over twenty years since the U.S. Supreme Court addressed the scope of patentable subject matter – that is, what is truly patentable and what is not. In the October 2009 term, the Court will decide an appeal regarding the scope of patent protection, stemming from a lower court decision holding that the applicants’ claims were not patentable subject matter because the claimed invention was not a “process” under 35 U.S.C. § 101. The lower court determined that all

“process” patent applications must satisfy a “machine-or-transformation” test. The applicants have asked the U.S. Supreme Court to determine two issues: first, the meaning of “process” in 35 U.S.C. § 101 and whether the lower court properly relied on a “machine-or-transformation” test, and second, the test’s potential conflict with 35 U.S.C. § 273, providing protection for “method[s] of doing or conducting business.” The Court’s decision could change the way that research and business are done, and patent protection for such investments. Focusing on the first issue before the U.S. Supreme Court, this article discusses the basic origins of patent law, the “machine-or-transformation” test adopted by the Court of Appeals for the Federal Circuit (CAFC) in In Re Bilski,2 and the impact of the potential Supreme Court ruling on patentees, industries, and the patent system. Ultimately, the Supreme Court should decline to adopt the “machine-or-transformation” test as a requirement for a successful process patent, and the Court should not impose an additional impediment in the path to obtain a process patent.

A. The outcome in this case is not is dispute; this patent application should not be granted

i. History of Bilski 3

Bilski came to the U.S. Supreme Court by way of a petition for certiorari filed by the patent applicants,4 Bernard L. Bilski and Rand A. Warsaw, as a result of the Court of Appeals for the Federal Circuit’s decision in In Re Bilski. The applicants had filed an application for a U.S. Patent 5 (‘892 application or Bilski’s application) on April 10, 1997, with the U.S. Patent and Trademark Office (PTO). The application titled “Energy Risk Management Method,” contained eleven claims, the most general of which claimed a method of determining and balancing risk, such as weather-related risks, in commodities trading.6 Generally, the patent application was rejected by the patent examiner, the Board of Patent Appeals and Interferences (Board), and ultimately the Court of Appeals for the Federal Circuit, and at all levels it was agreed that the claims fail to be patent eligible subject matter.7

ii. Bilski’s application involves an abstract idea and is

unpatentable on that basis Of among the plethora of reasons for rejecting the

application,8 the author believes that Judge Rader’s concise

dissent puts it best. Bilski’s application is not patent eligible subject matter because the application attempts to patent an abstract idea and nothing more.9 The concept of protecting two parties from a purely financial risk is a fundamental notion in economics.10 In addition, applicants admit that their claims are not tied to any specific machine and could be performed entirely in reliance on mental calculations.11 Similar to the claim for a method for converting binary-coded decimal numerals into pure binary numerals in Benson and the claim for calculating an alarm limit in Flook, which were both deemed unpatentable subject matter,12 Bilski’s application attempts to seek patent protection for a mathematical algorithm, the problem here being the setting of two fixed prices sufficient to insulate the consumer, the market participants and the commodity provider from risks associated with changes in demand and price.13 The ‘892 application was not limited only to actual commodities, though it did describe the concept of risk hedging in those terms. However, even if the concept and formula were novel, Bilski’s application must fail because “the discovery of a novel and useful mathematical formula may not be patented.”14 Furthermore, the application to commodities trading is also akin to the post-solution activity in Flook,15 and is an attempt to create a field-of-use limitation,16 both of which are “insufficient to render an otherwise ineligible process claim patent-eligible.”17 Accordingly, the outcome, that Bilski’s application described unpatentable subject matter, should stand.

What is most in dispute is the ‘process’ by which the court gets to that conclusion.18 In coming to its decision, the court claimed to “clarify the standards applicable in determining whether a claimed method constitutes a statutory ‘process’ under § 101.”19 Arguably, the court muddled more than it clarified. The majority came to the conclusion that the pathway to obtain a process patent must venture through either of the idyllic towns of machine or transformation, and that without one such stop along the way the mission must fail. Thus, the court stated that “the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.”20 According to Bilski, process claims must show either that they are tied to a particular machine or that the method-process claim transforms a particular article. The court did not address whether “under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine.”21 Regarding the transformation prong, Bilski explained that the “transformation of a particular article into a different state or thing ‘must be central to the purpose of the claimed process.’ ”22 Regarding the meaning of ‘article,’ the Bilski court stated that “chemical or physical transformation of physical objects or substances is patent-eligible under § 101” and the “transformation of data is sufficient to render a process patent-eligible if the data represents physical and tangible objects, i.e., transformation of such raw data into a particular visual depiction of a

physical object on a display.”23 Furthermore, “transformation of data is insufficient to render a process patent-eligible if the data does not specify any particular type or nature of data and does not specify how or where the data was obtained or what the data represented.”24

In reaching its holding, the Bilski majority determined that according to prior Supreme Court precedent, the “machine-or-transformation” test is the only applicable test and it must be used for all process claims. The author posits that there is no such requirement to process patentability, and even if there is support for such a test, it is inapplicable for the reasons stated herein.

II. The machine or transformation test as described by the

CAFC is not a requirement for a process patent

A. Looking at the History of Patent Law, What Does ‘Process’ Mean?

The ability to obtain a patent derives from the U.S. Constitution,25 which delegates to Congress the power to promote the progress of the useful arts by securing for inventors for limited times the exclusive right to their discoveries.26 According to the present day version of 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Section 101 derives from the Patent Act of 1793, which addressed “arts” where the term “process” now stands.27 In 1952, Congress amended section 101 to indicate “process” and added a definition for “process” in section 100(b). Such changes notwithstanding, the Supreme Court has indicated that this change did not alter the meaning of the statute, because a process was “considered a form of ‘art’ as that term was used in the 1793 Act.” 28 Furthermore, “[w]hether a claim is drawn to patent-eligible subject matter under § 101 is a threshold inquiry, and any claim of an application failing the requirements of § 101 must be rejected even if it meets all of the other legal requirements of patentability.”29 Thus, any analysis for patent eligibility necessarily starts with the statute.

The definition of “process” within the statute is not particularly helpful because it defines the term in a circuitous manner.30 While the ordinary meaning of “process” is broad,31 the Court has held that the meaning of ‘process’ in § 101 is other than its ordinary meaning.32 The definition for patent purposes is not so broad as to encompass laws of nature, natural phenomena, or abstract ideas.33 “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”34 “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” 35 “[A]n algorithm, or mathematical formula, is like a law of nature.”36 Nonetheless, “a process

is not unpatentable simple because it contains a law of nature or a mathematical algorithm.”37 More specifically, “[w]hile a scientific truth, or the mathematical expression of it, is not [a] patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be”38 and “the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application”39 Restated, “ ‘[h]e who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.’ ”40 Thus, abstract ideas alone are not patentable and attempts to patent scientific principles or mathematical algorithms alone have long been unsuccessful.41 To be patent-eligible subject matter, an abstract idea must involve an application to a practical use.42 This is so not because “natural phenomena [cannot be] processes, but rather [because of] the more fundamental understanding that they are not the kind of ‘discoveries’ that the statute was enacted to protect.”43

B. Precedent does not sufficiently support that there is a

“Machine-or-Transformation” prerequisite to process patentability and that such test is the only way to obtain a

process patent In determining the meaning of “process” in section 101,

the majority in Bilski relied heavily on several cases, specifically Benson, Flook, and Diehr.44 Thus, an examination of those cases is instructive.45

First, the Supreme Court grappled with the “process” issue in Gothschalk v. Benson. There, the applicant sought to patent a “method for converting binary-coded decimal[] (BCD) numerals into pure binary numerals.”46 The Court ascertained that the application essentially described an algorithm, which involved the “conver[sion] [of] signals from binary-coded decimal form into pure binary form.”47 However, because the application was “not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use,” the Court sought to determine whether in fact it would be permissible to allow a patent which preempted “any use of the claimed method in a general-purpose digital computer of any type.”48 As part of this inquiry and to compare the scope, limitations and breadth of other patent applications, the Court engaged in a historical discussion of previously allowed and disallowed patent applications.49 None of these cases involved mathematical algorithms. Arguably, the Court’s discussion of the reasons why the various claims in these cases were allowed was not controlling in the contexts of algorithms or new and evolving technologies, because these historic cases involved the origins of process patents which were primarily in the chemical and physical sciences. Thus, as expected, all of the successful historic cases discussed by the Court involved either the use of a machine or apparatus in the process, or the transformation of one thing to another state or thing.

Yet, while the Benson Court rejected the patent application as unpatentable subject matter, it did not do so based on a “machine-or-transformation” test. The Court clearly stated that its basis for rejecting the application was because the application claimed an unpatentable abstract idea, one which would result in a patent on the algorithm itself and a preemption of the formula.50 Its holding on the specific case notwithstanding, the Court then deferred the matter to the legislature as a policy determination on whether mathematical algorithms should be patentable generally or in specific instances.

Despite the fact that the holding in Benson was not grounded in a requirement of “machine-or-transformation,” the Bilski court cited Benson as beginning the thread of the “machine-or-transformation” test. Bilski relied heavily on a statement by the Benson Court suggesting that a “transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines.”51 Bilski read this sentence and “the clue” as stating that in the absence of a machine or apparatus, a process patent must show a transformation.52 But, the majority in Bilski read the statement in Benson without full regard for the Court’s true meaning. Benson later made the point clear that there was no such requirement and the Court explicitly rejected the argument that there must be a machine or transformation for a process patent application to be patent eligible subject matter, stating “[w]e do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.”53 Thus, while Benson discussed process patent cases that had involved a machine or a transformation, it did not do so with the modus of creating a requirement that either of the two be present for a process patent to be granted.

Thereafter, in Parker v. Flook, the applicant sought to patent a “method for updating alarm limits.”54 The novel component of the method rested in “an intermediate step which use[d] an algorithm to calculate an updated alarm-limit value.”55 “Using the formula, an operator can calculate an updated alarm limit once he knows the original alarm base, the appropriate margin of safety, the time interval that should elapse between each updating, the current temperature (or other process variable), and the appropriate weighting factor to be used to average the original alarm base and the current temperature.”56 “Although the computations can be made by pencil and paper calculations, the abstract of disclosure makes it clear that the formula is primarily useful for computerized calculations producing automatic adjustments in alarm settings.”57 However, the application did not “explain how to select the appropriate margin of safety, the weighting factor, or any of the other variables.”58 Nor did it “contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system.”59 Significantly, “[a]ll that [the application] provide[d] [was] a formula for

computing an updated alarm limit.”60 As far as attempts to pre-empt uses of the formula, while the applicant did not “cover every conceivable application of the formula,” it “cover[ed] any use of [the] formula for updating the value of an alarm limit on any process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons.”61

Ultimately determining that the claimed invention was unpatentable subject matter, the Court responded to the applicant’s assertion that the term “process” in section 101 was broad and the claimed process fit within the ordinary meaning of “process,” by pointing out that “process” is not so broad as to be all encompassing62 and at the other extreme “an argument can be made . . . that this Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a ‘different state or thing.’ ”63

The Bilski court relied on this assertion by the Flook Court as suggesting that there was an inclination towards a requirement that a process claim either has a particular machine or apparatus or transforms materials to a different state or thing. However, this was not what the Flook Court intended for the statement to mean. The Court’s true intention rests in the next sentence, which indicated that “[a]s in Benson, we assume that a valid process patent may issue even if it does not meet one of these qualifications of our earlier precedents.”64 Thus, Flook explicitly recognized that there could and would be processes that were patent eligible subject matter, but yet did not include either a machine or a transformation.

Setting the stage for the Court’s venture back to the “process” issue three years later was Diamond v. Chakrabarty, wherein the Court reiterated that “courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed,” 65 and that section 101 patentable subject matter includes “anything under the sun that is made by man.”66

Then, in Diamond v. Diehr, the Court was asked to determine whether the applicants presented a successful process patent in the application based on a physical and chemical process for molding synthetic rubber products, starting with “raw, uncured synthetic rubber” and ending with “the opening of the press at the conclusion of the cure” to observe consistently cured rubber.67 The patent application essentially involved a means for curing rubber which overcame the common problem in the art of “overcuring” or “undercuring,” and by use of a mathematical equation and a computer, the application “significantly lessen[ed]” the possibility of unsatisfactory curing.68 The claimed process used a mathematical equation, but did “not seek to pre-empt the use of that equation. Rather, [the application] [sought] only to foreclose from others the use of that equation in conjunction with all of the other steps in the[] claimed process,” the other steps involving the chemical and physical components of the cure process.69 Likening the claimed process to the

industrial processes of the historic process patent cases,70 the Court explained that the process at bar was no less patentable simply because it involved “a mathematical equation and a programmed digital computer.”71 Unlike the unsuccessful patents to mathematical algorithms in Benson and Flook, the applicants in Diehr “d[id] not seek to patent a mathematical formula,” but instead sought patent protection for the chemical and physical curing of synthetic rubber.

Diehr did not enunciate a “machine-or-transformation” test based on Benson and Flook. The Diehr Court specifically acknowledged that “[o]ur recent holdings in [Benson] and [Flook], both of which are computer-related, stand for no more than these long-established principles,” ‘these principles’ being that the common law exclusions from the statutory language, “laws of nature, natural phenomena, and abstract ideas,” cannot be patented.72 This pronouncement by the Court was nothing more than a clarification that “all of the transformation and machine linkage explanations simply restated the abstractness rule.”73 The Court contrasted the Diehr application with those in Benson and Flook, noting that the former application sought “patent protection for a process of curing synthetic rubber,” whereas the latter applications sought “to patent a mathematical formula.”74 The most significant factor in Diehr was that the claimed process was so much like the historically patentable chemical innovations that there was no need to create a new test narrowing the field of patent eligible processes in order for the Diehr process to be patentable. In addition, the Court made it significantly clear that it distinguished the application in Diehr from those in the unpatentable subject matter prior cases because Diehr did not involve the pre-emption of a mathematical formula or a law of nature.75 The process in Diehr involved “ ‘a novel and useful structure created with the aid of knowledge of scientific truth,’ ” not simply the truth itself,76 and the true essence of the Court’s holding is that “Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by § 101.”77

After discussing at length its primary reasons for its holding that the claimed process was eligible subject matter, and specifically after reinforcing the already existing limitations to patentability (laws of nature and mathematical equations, field-of-use limitations, and post-solution activity), the Diehr Court stated:

“To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”78

Bilski relied on this statement by the Diehr Court as supporting the “transformation” component of the “machine-or-transformation” test, claiming that by including the concept of a transformation parenthetically, the Court intended that only “machine-or-transformation” processes should be patentable. However, the Court’s statement falls short of supporting that point. The parenthetical notation introduced by “e.g.” was simply an example of one kind of patentable process, one which includes a transformation. Further, the Court’s holding rests on its determination that the claimed process in the case was not merely to a mathematical equation, and this statement at the end of the Court’s opinion is nothing more than a summary of the law and dicta at best. The Diehr process was patentable because it involved more than a mere mathematical equation, not because it satisfied a “machine-or-transformation” test.79 Had Diehr intended to establish a “machine-or-transformation” test limiting the scope of patent eligible subject matter beyond that enunciated by the legislature, there would have been no need for the Bilski court to draw weak inferences from what the Court meant or read in between the lines of the decision.

Looking at Benson, Flook and Diehr as a whole, without a preconceived agenda, it is clear that there is no “machine-or-transformation” test that came from those three cases. Thus, Bilski’s assertion that the Court set out a “machine-or-transformation” test for process patents in Benson, Flook, and Diehr is without merit. There is no such limitation on process patent eligibility.

III. THE “MACHINE-OR-TRANSFORMATION” TEST SHOULD NOT BE APPLIED BECAUSE IT CREATES UNCERTAINTY, CONFUSION AND INVALIDITY ISSUES, AND IS NOT AN EFFECTIVE MEANS OF DETERMINING PATENTABILITY FOR DEVELOPING TECHNOLOGIES

The court’s reliance on a “machine-or-transformation”

test as the only way to obtain a process patent was not welcomed with open arms by industries, potential inventors and the primary parties to the case. In fact, there were thirty-eight amici curiae80 who expressed views and arguments before the Federal Circuit, and ten amici81 supporting the Supreme Court’s consideration of the petition for certiorari.82 The common thread in the arguments made by these parties who represent patentees, potential inventors, investors, and industries is that the Bilski test will wreak havoc with the future of innovation.

First, the test creates uncertainty and the court admits that “future developments in technology and the sciences may present difficult challenges” if this test is used as the sole path to process patentability.83 Among the questions that the Bilski court left unanswered are:

“What form or amount of ‘transformation’ suffices? When is a ‘representative’ of a physical object sufficiently linked to that object to satisfy the transformation test? . . . What link to a machine is

sufficient to invoke the ‘or machine’ prong? Are the ‘specific’ machines of Benson required, or can a general purpose computer qualify? What constitutes ‘extra-solution activity?’ If a process may meet eligibility muster as a ‘machine,’ why does the Act ‘require’ a machine link for a ‘process’ to show eligibility?”84

The Bilski court leaves it to future cases, and indeed the Supreme Court, to clarify and refine the meaning of the test and to answer the questions left unanswered.85 This manner of dealing with the law does not permit predictability, as the patent examination process has not simply taken a hiatus while awaiting answers. The examination process continues, and every day examiners need to have sufficient information to make decisions on patentability that have a modicum of certainty and do not subject the patentee to invalidity issues the next day. Just as the patent process has not halted, the Board has continued to issue decisions on matters impacting process patents and interpreting the meaning of the “machine-or-transformation” test.86 Bilski, which imposes a new and restrictive view of § 101 patentability, has changed “the settled expectations of those who relied on the law as it existed,” and creates uncertainty in patent prosecution.87 Further, while the court in Bilski focused primarily on the transformation prong of the test, as there was admittedly no machine in Bilski’s application, many so-called business method patents likely will not satisfy the transformation prong. These inventions will need to look to the machine prong of the test, and on this matter other than indicating that involvement of machine must not merely be insignificant extra-solution activity, and that “use of a specific machine must impose meaningful limits on the claim’s scope,” there was little guidance provided by Bilski.88 Thus, the future of process patent prosecution is unclear.89

Second, in using a strict “machine-or-transformation” test, “the Federal Circuit has essentially confined all process patents to manufacturing methods, using a test that may have been appropriate during the Industrial Age but no longer fits our modern information-based economy.”90 Some have responded to the test claiming that it will impede innovation, and that “[r]equiring processes to be tied to a machine or transform articles limits the patent incentives available to breakthroughs at the forefront of technology in fields known ( e.g., internet commerce, information technology, industrial engineering, bioinformatics) and unknown.” 91 Also, arguments have been advanced that this new “test calls into question countless process patents issued before the PTO and Federal Circuit began applying this more restrictive test” and further, the U.S. Supreme “Court has more than once admonished that ‘courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.’ ”92

In addition, Bilski unsteadies business methods patents that had previously relied on State Street and AT&T, on the basis that such methods of doing business were patentable

so long as there was a “useful, concrete, and tangible result.”93 Bilski overruled this test and in doing so opened up all patents granted under the State Street and AT&T standard to uncertainty.94 Some financial service innovations fall within the business method category, including credit card rewards programs, electronic banking, and trading systems.95 Beyond process patents in the business arena, this test impacts both software and biotechnology processes. “Software patents that were examined and issued under a different standard for eligibility under § 101 are left vulnerable to attack,”96 and one of the software industry’s primary concerns is ensuring adequate intellectual property protection.97 In addition, Bilski creates the potential for invalidation of many business method patents.98

In the biotechnology and life sciences sectors, process patents are common. These include inventions for diagnostics, methods of treatment, methods of using devices, methods of extracting cells and the like. Scientists may encounter real difficulties in trying to tie their claims to a “substantial physical transformation or particular machine.”99 For example, the ‘OncoMouse’ process patents (‘571 patent and ‘803 patent)100 would arguably have not been patentable under the “machine-or-transformation test.” The ‘571 patent which claims:

“[a] method of providing a cell culture comprising (1) providing a transgenic non-human mammal, all of whose germ cells and somatic cells contain a recombinant activated oncogene sequence introduced into said mammal, or an ancestor of said mammal, at an embryonic stage; and (2) culturing one or more of said somatic cells,”101

does not involve a machine, nor does it involve a “chemical or physical transformation of physical objects or substances” or a “transformation of data” as now required by Bilski.102 Similarly, the ‘803 patent contains neither a machine nor a transformation.103 These are but two instances of how the “machine-or-transformation” test excises from patentability defensible life science innovations that have the potential to benefit society, and how the test threatens innovations in biology, immunology, biomedical technologies and pharmaceuticals.104

Further supporting the claims to confusion created by Bilski, patent practitioners are now being encouraged to use multiple claim formats to structure patent applications and not to rely on “process” claims as the avenue to intellectual property protection.105 Practitioners are being advised that broad process claims will fail under Bilski as preempting the principle, very narrow claims will likewise fail as attempts to create field-of-use limitations, and that the only way to satisfy Bilski is become an expert claim draftsman and somehow include the application of computer technology.106 Further, while Beauregard 107 claims (claims covering a computer-readable storage device which contains instructions causing a computer to perform a process) were previously characterized as articles of manufacture, just

prior to Bilski, the Board took position that Beauregard claims should not be treated differently than process claims, and that the alleged “machine-or-transformation” test applied equally.108 Thus, there is also a concern in the patent arena that Bilski will be applied outside business method claims109 and potentially beyond all presently known process innovations.

Overall, even if the Court determines that there is some support for Bilski’s “machine-or-transformation” test, the test should not be applied as the sole pathway to process patent eligibility because of patent prosecution uncertainty, patent invalidity, and the fact that the test confines that which is patent eligible subject matter to technologies of the past.

IV. THE COURT SHOULD NOT USE THIS CASE TO CREATE

ADDITIONAL LIMITATIONS TO PATENTABILITY

As stated above and in Chakrabarty, the legislature has already expressed what limitations should exist in the patent laws by means of sections 101, 102, 103 and 112, and the courts should not endeavor to read into the laws unspoken “limitations and conditions.” 110 This much has been reaffirmed by the Court time and time again, and Bilski directly contravenes that fact.

Section 101 of the Patent Act deals only with patent eligible subject matter and the language therein “is a general statement” of what kinds of subject matter are patent eligible.111

In a complete examination of a patent application,112 the patent examiner looks not just at section 101, but the Patent Act and its requirements in their entirety. This includes an examination for novelty under section 102, non-obviousness under section 103, and specification requirements under section 112. Thus, the patent process should prevent the issuance of vague, obvious, non-novel and insufficiently described claims and inventions, in addition to ensuring that the claimed subject matter is one for which protection was intended by Congress.

While Section 101 creates the threshold evaluation, the statute requires that other sections of the Act be taken into consideration by its language “subject to the conditions and requirements of this title.” Also, there is no explicit requirement that an examiner reject an application that is not 101 subject matter on that basis if there are other bases for rejection.113 Put another way, though rationally first, a section 101 evaluation is not necessarily the first one. Such fact notwithstanding, it is noted that “[o]nly if the requirements of § 101 are satisfied is the inventor ‘allowed to pass through to’ the other requirements for patentability, such as novelty under § 102, . . . and non-obviousness under § 103,”114 and “ ‘[t]he first door which must be opened on the difficult path to patentability is § 101.’ ”115

Further, while making a determination for patentability under section 101, “the claims must be considered as a whole,”116 especially in evaluating process claims “because

a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” 117 As novelty is a separate consideration in the Act, “[t]he ‘novelty’ of any element or steps in a process, or even the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of patentable subject matter.”118

As the additional requirements of novelty, non-obviousness and detailed specification are already written into the Patent Act, and operate to narrow the broader intention of section 101, there is no need to read additional limitations into section 101. Section 101 does not operate alone in patent examination and the checks and balances in other sections of the Patent Act already operate as limits to patentability, thus, the Court need not create a “machine-or-transformation” test to further restrict process patents.

V. CONCLUSION

The U.S. Supreme Court has before it a case in which

the Court is called to clarify the means by which a patent applicant may obtain a process patent. Oral Argument was held on November 9, 2009, and a decision is impending. The Court needs not only to enunciate a clear, bright line rule reaffirming that the Patent Act sufficiently dictates patent eligible subject matter, to ensure predictability, but to set aside the Federal Circuit’s “machine-or-transformation” test. In doing so, the Court should affirm that the Bilski application is nonetheless unpatentable subject matter. Only by cleansing the now muddied patent process waters, can the Court protect the future of patents and innovation for as yet undiscovered advanced technologies. 1 Dennis, J.K.P., ‘The ‘Process’ of Patenting: Why Should We Care About a Potential U.S. Supreme Court Decision in Bilski v. Doll?’ COMPUTER L. & SEC. REV., Vol. 25, No. 6, pp. 543-553, 2009. 2 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (hereinafter Bilski). 3 Herein “Bilski v. Doll” refers to the case pending before the U.S. Supreme Court (presently known as Bilski v. Kappos) and “Bilski” refers to the CAFC decision. This article retains the “Bilski v. Doll” convention, as it was written prior to the appointment of David Kappos as the Director of the USPTO. 4 Bilski v. Doll, 129 S. Ct. 2735 (2009). 5 U.S. Patent App. Serial No. 08/833,892 (Apr. 10, 1997). 6 See Bilski, 545 F.3d at 949. 7 Bilski, 545 F.3d at 950 (quoting Ex parte Bilski, 2006 WL 5738364 (B.P.A.I. Sept. 26, 2006), slip op. at 3-4, 42, 43, 46-47, 49-50 (Board Decision)); State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998); Ex parte Lundgren, 76 U.S.P.Q.2d 1385, 2004 WL 3561262 (B.P.A.I. Apr. 20, 2004); In re Bilski, 264 F. App’x 896 (Fed. Cir. 2008). In coming to its decision, the Federal Circuit overruled State St. Bank and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), to the extent that they had relied on a “useful, concrete, and tangible result” test as the requirement for patent

eligibility under 35 U.S.C. § 101. A more complete discussion of the Bilski application and its claims is available in the Author’s article, at supra note 1. 8 The concurring and dissenting judges, with the exception of Judge Newman, advocate different means to the same end in this specific case. See Bilski, 545 F.3d at 997 (Newman, C.J., dissenting). See also 35 U.S.C. § 102 (addressing novelty); 35 U.S.C. § 103 (addressing non-obviousness); and 35 U.S.C. § 112 (addressing sufficiency of the specification). 9 See Bilski, 545 F.3d at 1011 (Rader, C.J., dissenting). See infra at Section 3.1 for a more thorough discussion of the reasons why an abstract idea is not patent eligible subject matter. 10 The concept of hedging financial risks is arguably obvious to anyone in the economic art, not novel, and too vague. 11 Bilski, 545 F.3d at 962. 12 See Gothschalk v. Benson, 409 U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978), both discussed infra. 13 An algorithm as used in this sense is a “procedure for solving a given type of mathematical problem.” Flook, 437 U.S. at 585 n. 1 (citing Benson, 409 U.S. at 65). 14 Flook, 437 U.S.at 585 (citing Benson, 409 U.S. at 63).

15 In Flook, the applicant’s claimed post-solution activity was “the adjustment of the alarm limit to the figure computed according to the formula.” Flook, 437 U.S. at 590. The Court rejected the applicant’s attempt to “attach” post-solution activity to an unpatentable principle. 16 See Diamond v. Diehr, 450 U.S. 175, 191 (1981) (citing Flook) (the principle that mathematical formulas cannot be patented “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”). 17 Bilski, 545 F.3d at 957 (citing Diehr, 450 U.S. at 191-92 (Section 101 “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”). 18 See e.g., Steven B. Roosa, “The Next Generation of Artificial Intelligence in Light of In re Bilski,” 21 Intell. Prop. & Tech. L.J. 6, 6 (2009) (Bilski started as a dispute about the patentability of a hedging method and “ended up being a wholesale reevaluation of the criteria that must be met . . . for a process to qualify as patentable under 35 U.S.C. § 101.”). 19 Bilski, 545 F.3d at 949. 20 Id. at 956. 21 Ex parte Halligan, 2009 WL 963939 (B.P.A.I. Apr. 8, 2009), slip op. at 11 (citing Bilski, 545 F.3d at 962). 22 Id. (citing Bilski, 545 F.3d at 962). 23 Id. (citing Bilski, 545 F.3d at 962-63). 24 Id. (citing Bilski, 545 F.3d at 962). 25 For a background on the pre-Constitution origins of patents see Dennis, J.K.P., ‘Divergence in patent systems: a discussion of biotechnology transgenic animal patentability and US patent system reform’, INT. J. PRIVATE LAW, Vol. 1, Nos. 3/4, pp.268–303, at 269-70, 2008. 26 U.S. Const. art. I, § 8, cl. 8. 27 1 Stat. 318, 319 § 1 (1793). 28 Diehr, 450 U.S. at 182. 29 Bilski, 545 F.3d at 950 (citing In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007)). See also Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”).

30 “The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). 31 The ordinary meaning of “process” at the time the word was added to Section 101, was “ ‘[a] procedure . . . [a] series of actions, motions, or operations definitely conducing to an end, whether voluntary or involuntary.’ ” Bilski, 545 F.3d at 952 (citing Webster's New International Dictionary of the English Language 1972 (2d ed. 1952)). 32 Flook, 437 U.S. at 588-89 (“The holding [in Benson] forecloses a purely literal reading of § 101.”) (alteration in original). 33 See Diehr, 450 U.S. at 185. 34 Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852). See also Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). 35 Bilski, 545 F.3d at 952 (citing Benson, 409 U.S. at 67). See also In re Comiskey, 554 F.3d 967, 981-82 (Fed. Cir. 2009) (a test which is a series of mental steps (such as a mediation/arbitration method) is not patentable. Arbitration steps there were not done in any media (no machine), however, the specific claims in Comiskey that used a database on a computer were patentable). 36 Flook, 437 U.S. at 589 (citing Benson). 37 Id. at 590. 38 Id. at 592 (quoting Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939)). 39 Id. at 594. 40 Id. at 591 (quoting Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948)). 41 Compare O'Reilly v. Morse, 15 How. 62, 112-21 (1854) (rejecting claim covering any use of electromagnetism to produce an effect, including printing intelligible signs, characters, or letters at a distance, distinct from the process or machinery necessary to produce such effect) with Neilson v. Harford, Web. Pat. Cases 295, 371 (1844) (allowing patent to machine embodying a principle based on the circulation of heated air in a furnace system to increase its efficiency); Tilghman v. Proctor, 102 U.S. 707, 729 (1881) (allowing claim to invention of a particular mode of bringing about the desired chemical union between fatty elements and water in the manufacturing of fat acids and glycerine from fatty bodies); and Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) (allowing patent to machine that made use of the law of gravity to enhance the flow of the product). 42 Bilski, 545 F.3d at 1013 (Rader, C.J., dissenting). 43 Flook, 437 U.S. at 593. It is noted that the unpatentability of natural phenomena supports Dennis’ theory that foundational technologies in the life sciences (e.g., genes) should not be patentable. See Dennis, J.K.P. (2008), supra note 25, at 286-88. Mathematical algorithms are like genes; neither exists because of mankind, though he may have first revealed them to our eyes. 44 It is worth mentioning that all three of these cases originated in the CAFC’s predecessor court, the Court of Customs and Patent Appeals. 45 It is noted that the majority opinion discussed other cases as well, including the so-called business method cases, such as State St. Bank and AT&T. However, as the majority claimed that the “machine-or-transformation” test derives from Benson, Flook and Diehr, the author believes that a close reading of these cases is most instructive to determining whether such a test in fact exists, and its applicability, if supported by precedent. 46 Benson, 409 U.S. at 64. 47 Id. at 65.

48 Id. at 64. 49 The Benson Court discussed several process patent cases, including a few which were discussed in Bilski. Relied on in Benson were: Cochrane v. Deener, 94 U.S. 780 (1877) (a process for manufacturing flour); Tighman (manufacturing of fat acids and glycerine from fatty bodies by action of water at high temperature and pressure); Expanded Metal Co. v. Bradford, 214 U.S. 366 (process of expanding metal involving mechanical operations); Smith v. Snow, 294 U.S. 1 (process for setting eggs in staged incubation); and Waxham v. Smith, 294 U.S. 20 (same). 50 See Benson, 409 U.S. at 71-72, where the Court stated: “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” 51 Id. at 70 (emphasis added). 52 Bilski, 545 F.3d 955-56. 53 Benson, 409 U.S. at 71 (The full context is: “It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing.’ We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.”). 54 An alarm limit is a number which when exceeded in a catalytic conversion process based on certain process variables (such as temperature, flow rate, etc.), an alarm is signaled indicating “the presence of an abnormal condition . . . inefficiency or perhaps danger.” Flook, 437 U.S. at 585. 55 Id. 56 Id. at 586. 57 Id. 58 Id. 59 Id. 60 Id. 61 Id. 62 See supra notes 32-33. 63 Flook, 437 U.S. at 589 (citing Cochrane, 94 U.S. at 787-88). 64 Id. (citing Benson, 409 U.S. at 71). 65 Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933)). 66 Id. at 309. See also S. Rep. No. 82-1979, at 5 (1952); H.R. Rep. No. 82-1923, at 6 (1952). Although not addressing process patents specifically, Chakrabarty’s statement set the stage by indicating that section 101 was intended to be broad, with limitations being those within the Act itself. 67 Diehr, 450 U.S. at 184. 68 Id. at 187. 69 Id. 70 See supra notes 41 and 49 for a list of some of the historically patentable industrial process innovations. 71 Diehr, 450 U.S. at 185. 72 Id. at 185-86; see also Bilski, 545 F.3d at 1013 (Rader, C.J., dissenting). 73 Bilski, 545 F.3d at 1013 (Rader, C.J., dissenting). 74 Diehr, 450 U.S. at 187. 75 Id. at 185-88.

76 Id. at 188 (quoting Mackay Radio & Telegraph Co., 306 U.S. at 94). 77 Id. See also id. at 191 (“A mathematical formula as such is not accorded the protection of our patent laws.”) 78 Id. at 192. 79 This is supported by the statement in Diehr immediately following that on which Bilski relied. “Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.” Id. at 192-93. 80 Amici curiae In re Bilski were, in no particular order: Regulatory Datacorp, Inc.; Financial Services Industry, Bank of America, et al.; Accenture; American Civil Liberties Union Foundation; American Express Company; American Institute of Certified Public Accountants; American Intellectual Property Law Association; Association of American Medical Colleges; Biotechnology Industry Organization; Boston Patent Law Association; The Business Software Alliance; Center for Advanced Study and Research on Intellectual Property of the University of Washington School of Law; CFPH, LLC; Computer & Communications Industry Association; Consumers Union, et al; Dell Inc., et al; Eli Lilly and Company; End Software Patents; Federal Circuit Bar Association; Fédération Internationale Des Conseils En Propriété Industrielle; Professor Lee A. Hollaar; Houston Intellectual Property Law Association; Intellectual Property Owners Association; International Business Machines Corporation; Koninklijke Philips Electronics N.V.; Law Professors John R. Allison, et al.; Law Professors Ralph D. Clifford, et al.; Jason V. Morgan; Pacific Life Insurance Company, et al.; Red Hat, Inc.; Reserve Management Corporation, et al.; SAP America, Inc.; Software & Information Industry Association; Washington State Patent Law Association; William Mitchell College of Law Intellectual Property Institute; Yahoo! Inc., et al.; Gregory Aharonian; Kevin Emerson Collins; and Roberta J. Morris. 81 Amici curiae in Bilski v. Doll are, in no particular order: Accenture; Pitney Bowes Inc.; Koninklijke Philips Electronics N.V.; Borland Software Corporation; Medistem Inc.; American Intellectual Property Law Association; Boston Patent Law Association; Franklin Pierce Law Center; Anne E. Barschall; and John P. Sutton. 82 As of October 6, 2009, in addition to the briefs of the parties, 40 amici briefs have been filed with the Supreme Court. 83 Bilski, 545 F.3d at 956. 84 Id. at 1015 (Rader, C.J., dissenting). 85 Id. at 962 (“We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.”). 86 As of October 6, 2009, less than one year after Bilksi, there have been 83 Board decisions citing Bilksi. 87 Bilski, 545 F.3d at 977 (Newman, C.J., dissenting). 88 Id. at 961-62; American Law Institute-American Bar Association, “Transformers Wanted: In Re Bilski Cuts Back on Business Methods,” Dec. 2, 2008, Telephone Seminar/Audio Webcast. 89 It is noted that the Board has begun to un-muddle some of the confusion. See Halligan, 2009 WL 963939, slip op. at 11, where the Board determined what was insufficient use of a computer under the “machine-or-transformation test.” (“Process claim 96

recites ‘a programmed computer method’ in which each of the process steps is performed by the programmed computer. The issue presented by this claim is whether recitation of a programmed computer suffices to tie the process claims to a particular machine. . . .This recitation fails to impose any meaningful limits on the claim's scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.”). However, prospective patentees and industries should not have to wait until the law is resettled before they are able to develop strategies to protect their intellectual property. 90 Petition for Writ of Certiorari at 4, Bilski v. Doll, No. 08-964 (2009), 2009 WL 226501. 91 Id. at 25-27, Bilski v. Doll, No. 08-964 (2009), 2009 WL 226501. 92 Id. at 29, Bilski v. Doll, No. 08-964 (2009), 2009 WL 226501 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 739 (2002)). 93 Supra note 7; See CyberSource Corp. v. Retail Decisions, Inc., 2009 WL 815448, at *9 (N.D. Cal. Mar. 27, 2009) (“Bilski’s holding suggests a perilous future for most business method patents.”); American Law Institute-American Bar Association, supra note 88. 94 See Brief for Boston Patent Law Ass’n as Amicus Curiae Supporting Petitioners at 24, n.11, Bilski v. Doll, No. 08-964 (2009), 2009 WL 559339 (In the business methods arena, “there are 18,000 issued patents and at least 48,000 pending applications” affected by Bilski.). 95 American Law Institute-American Bar Association, supra note 88. 96 Petition for Writ of Certiorari at 30, Bilski v. Doll, No. 08-964 (2009), 2009 WL 226501. See also Petitioner’s Reply Brief at 8, Bilski v. Doll, No. 08-964 (2009), 2009 WL 1317892 (citing Robert R. Sachs & Robert A. Hulse, “On Shaky Ground: The (Near) Future of Patents After Bilski”, 11 No. 2 E-Commerce L. Rep. 8, *3 (2009) (noting that the first casualties of In re Bilski will likely involve “software patents, particularly those issued after Alappat and State Street, [that] were written without paying homage to the court's talismanic ‘machine-or-transformation’ test”); Hannibal Travis, Essay, “The Future According to Google: Technology Policy From the Standpoint of America's Fastest-Growing Technology Company,” 11 Yale J.L. & Tech. 209, 221-22 (2009) (predicting that Bilski may have “profound implications” for Google's patents and its search engine and other services)). 97 Petition for Writ of Certiorari at 31, Bilski v. Doll, No. 08-964 (2009), 2009 WL 226501 (citing John Gantz, “Enabling Tomorrow's Innovation: An IDC White Paper and BSA CEO Opinion Poll,” Oct. 2003 (claiming that “[i]f commercial software companies can't protect their work, investors won't invest, innovators won't invent and the IT sector won't be able to achieve its full economic potential.”)). 98 See e.g., DealerTrack, Inc. v. Huber, No. CV 06-2335 AG (FMOx), 2009 WL 2020761 (C.D. Cal. July 7, 2009) (granting motion for summary judgment of invalidity of patent to an automated credit application system). 99 American Law Institute-American Bar Association, supra note 88. 100 See Dennis, J.K.P. supra note 25, at note 48 (US Patent No. 5,087,571 (filed Mar. 22, 1988) (issued Feb. 11, 1992) Method for Providing Cell Culture from Transgenic Non-human Mammal (divisional application of ‘866 Patent), available at

http://www.uspto.gov (hereinafter ‘571 Patent) (expired Feb. 11, 2009, based on 17 year term); US Patent No. 5,925,803 (filed Sept. 19, 1991) (issued July 20, 1999) Testing Method Using Transgenic Mice Expressing an Oncogene (continuation application of ‘571 Patent), available at http://www.uspto.gov (hereinafter ‘803 Patent) (expires July 20, 2016, based on 17 year term). 101 ‘571 Patent, at claim 1. 102 Bilski, 545 F.3d at 962-63. 103 Claim 2 of the ‘803 Patent covers: “A method of testing a material suspected of conferring protection against the development of neoplasms, said method comprising (1) providing a first and a second transgenic mouse, the germ cells and somatic cells of which contain an activated oncogene sequence introduced into said mice, or an ancestor of said mice, at an embryonic stage, (2) treating said first mouse with said material, and (3) detecting, as an indication of said protection, a reduced incidence of development of neoplasms in said first mouse, compared to the incidence in said second mouse, which is not so treated.” 104 See also Classen Immunotherapies, Inc. v. Biogen IDEC, 304 F. App’x 866 (Fed. Cir. 2009) (applying Bilski to invalidate diagnostic method claims in a three-sentence, four-line decision: “In light of our decision in In re Bilski, 545 F.3d 943 (Fed.Cir.2008) (en banc), we affirm the district court's grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen's claims are neither ‘tied to a particular machine or apparatus’ nor do they ‘transform[ ] a particular article into a different state or thing.’ . . . Therefore we affirm.” (citation omitted) (alteration in original)). See also Brief of Boston Patent Law Ass’n as Amicus Curiae Supporting Petitioners at 18, Bilski v. Doll, No. 08-964 (2009), 2009 WL 559339; Brief of Medistem, Inc. as Amicus Curiae Supporting Petitioners at 11, Bilski v. Doll, No. 08-964 (2009), 2009 WL 564646; William J. Simmons, “Bilski blundering biotech,” 27 Nature Biotechnology 245, 247 (Mar. 2009) (“The potentially devastating extension of Bilski from business methods to biotech” has already begun to play out in patent infringement cases). 105 American Law Institute-American Bar Association, supra note 88. 106 Id. See Halligan, 2009 WL 963939, wherein the Board determined what was an insufficient use of a computer, but much regarding the use of a computer is still unclear. 107 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). 108 Ex parte Langemyr, 2008 WL 5206740 (B.P.A.I. May 28, 2008). 109 See Brief of Boston Patent Law Ass’n as Amicus Curiae Supporting Petitioners at 24, n.11, Bilski v. Doll, No. 08-964 (2009), 2009 WL 559339 (“[A]lso affected by the machine-or-transformation test, there are over 130,000 issued patents and at least 120,000 applications pending.”). See also Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae Supporting Petitioners at 11, n.6, Bilski v. Doll, No. 08-964 (2009), 2009 WL 559338 (about 46% of utility patents granted over the past seventeen years were process patents). 110 Chakrabarty, 447 U.S. at 308 (quoting Dubilier Condenser Corp., 289 U.S. at 199). 111 Diehr, 450 U.S. at 189. 112 See Dennis, J.K.P. supra note 25, generally, for a discussion of an ideal thorough patent examination process. 113 Bilski, 545 F.3d at 951 n.1. 114 Comiskey, 554 F.3d at 973 (quoting State St. Bank, 149 F.3d at 1372 n.2).

115 Id. (quoting State St. Bank, 149 F.3d at 1372 n. 2). 116 Diehr, 450 U.S. at 188. 117 Id. 118 Id. at 188-89. See also id. at 190 (quoting In re Bergy, 596 F. 2d 952 (CCPA 1979)).

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