Volume 15 / Number 1 / Spring 2011






Joseph Scott Miller

Weeds and Seeds in the Supreme Court’s Business Method
Patents Decision: New Directors for Regulating Patent Scope

Donald S. Chisum 

In the 2010 Bilski decision, the Supreme Court visited the garden of doctrines on patent-eligible subject matter, a garden delineated in statutory terms by Section 101 of the Patent Act. The Court rejected categorical approaches, such as an enshrinement of a machine-or- transformation test as the sole measure for a patentable “process,” or a ban on business-method patents, but it affirmed rejection of the patent claims in question, which concerned commodities trading hedging transactions, as drawn to an abstract idea. Unfortunately, in Bilski, the Court passed on an opportunity to pull some doctrinal weeds that have been proliferating in the garden for years. But the Court also planted seeds for the growth of a more rational approach to regulating patent scope, one that is both consistent with the established doctrinal structure of the patent system and sufficiently limiting of overreaching patent claims to intangible processes, business methods, and natural phenomena.

Critical to development of a better approach to Section 101 patent- eligible subject matter is the need to recognize a distinction between two inquiries: (1) has an inventor made and disclosed a new and useful patentable invention?; and (2) what is the appropriate scope of protection for the patentable invention? Both inquiries can and should be conducted using established and well-understood doctrinal tools, which unlike the Section 101 patent-eligible subject matter tool used by the Court in Bilski, entail full consideration of the facts surrounding an alleged invention. Used with appropriate vigor, this fact-based approach can effectively screen out virtually all claims to putative “inventions” that are, on analysis, only abstract ideas or natural phenomena, and all claims that preempt subject matter that is old, not practically useful or beyond what the patent applicant has actually invented. There rarely would be an occasion to reach a Section 101 abstract-idea challenge, as was pressed upon the Court in Bilski.

Because of the vagueness of the concepts of “an idea” and “abstract,” and the inability to clearly and objectively distinguish between (1) the millions of claims that have been included in presumptively valid, existing patents and (2) the category of an impermissible idea (concept) “preempting” claim, the Section 101 abstract idea preemption inquiry can lead to subjectively-derived, arbitrary, and unpredictable results. This uncertainty does substantial harm to the effective operation of the patent system. That harm would be largely avoided by implementing the suggested “facts-first” approach, which minimizes the need to engage in the difficult legalistic inquiry into the meaning of “abstract idea” and whether a given patent claim “preempts” it. 

Bilski and the Ambiguity of “an Unpatentable Abstract Idea”

Kevin Emerson Collins 

In Bilski v. Kappos, the Supreme Court affirmed the PTO’s rejection of a number of patent claims under the patent-eligibility provision of section 101 of the Patent Act. In doing so, however, the Court shifted the doctrinal ground of the rejection from the ground relied upon below, holding that the claims were not eligible for patent protection because they described abstract ideas. However, the Court provided nothing but conclusory reasoning to support its abstract-ideas holding. Bilski breaks new ground in positioning the abstract-ideas doctrine as the primary gatekeeper of patent eligibility for many types of claims, but it teaches the patent community almost nothing about what constitutes an unpatentable abstract idea or how to identify an unpatentable abstract idea in the future. 

This Article outlines one strategy for doing what the Supreme Court chose not to do, namely giving meaningful content to the exclusion of abstract ideas from patent eligibility. Conventionally, the principal problem with the abstract-ideas doctrine of section 101 is understood to be vagueness: abstraction is a continuous variable, and the dividing line that differentiates unpatentable abstractions from patentable applications is known to be difficult to identify with precision. While vagueness is a real issue, this Article argues that there is a more fundamental problem that must be addressed prior to vagueness. The phrase “an unpatentable abstract idea” is multiply ambiguous, as the phrase invokes entirely different concepts in different situations. Examining Supreme Court and Federal Circuit precedent prior to Bilski, this Article argues that “an unpatentable abstract idea” means four different things in four different contexts, and it thereby identifies four distinct types of unpatentable abstract ideas that may merit different treatment under the doctrine of patent eligibility.

Beyond Invention: Patent as Knowledge Law

Michael J. Madison 

The decision of the Supreme Court of the United States in Bilski v. Kappos, concerning the legal standard for determining patentable subject matter under the American Patent Act, is used in this Essay as a starting point for a brief review of historical, philosophical, and cultural influences on subject matter questions in both patent and copyright law. The Essay suggests that patent and copyright law jurisprudence was constructed initially by the Court with explicit attention to the relationship between these forms of intellectual property law and the roles of knowledge in society. Over time, explicit attention to that relationship has largely disappeared from the Court’s opinions. The Essay suggests that renewing consideration of the idea of a law of knowledge would bring some clarity not only to patentable subject matter questions in particular but also to much of intellectual property law in general. 

“Clues” for Determining Whether Business and Service
Innovations are Unpatentable Abstract Ideas

Pamela Samuelson & Jason Schultz

The Supreme Court’s decision in Bilski v. Kappos made it clear that generalized methods of financial hedging are abstract ideas that are ineligible for patent protection. However, the Court left the framework for determining abstraction versus concreteness in future cases unclear, offering only “clues” for drawing such distinctions.

In this Article, we attempt to provide the beginnings of such a framework. We start by discussing the clues we think are most likely to be useful to the U.S. Patent and Trademark Office and the courts in developing a jurisprudence of abstractness as a disqualification from patent protection. We then discuss why, in light of these clues and in line with sound patent policy, business and service method innovations, while not categorically unpatentable, should still generally be excluded from patent protection as abstract ideas. Finally, we provide further support for this approach by suggesting that taking the clues of unpatentability seriously may facilitate administrative and judicial efficiency in reviewing patent claims when assessing whether they satisfy patent subject matter rules.

Statutory Subject Matter in Context: Lessons
in Patent Governance From 
Bilski v. Kappos

John R. Thomas

Bilski v. Kappos  offers more important lessons concerning legal institutions and the law reform process than it does about patentable subject matter. In recent years the judiciary has frequently addressed patent law doctrines about which Congress has expressed concern. Many commentators have supported this atypical relationship, asserting that the judiciary is the superior actor for remedying longstanding concerns about the patent system. But persistent judicial intervention in matters of direct legislative interest has tended to delay congressional consideration of patent reform issues and remove bargaining chips from the political negotiation process. Bilski v. Kappos teaches us that legislative intervention may yet be needed to provide robust solutions to private sector concerns over the patent system.



Bankruptcy Trustee Liability: Is There a Method in the Madness?

Elizabeth H. McCullough

Mosser v. Darrow, decided over 50 years ago, was the Supreme Court’s first and only opinion concerning the personal liability of a bankruptcy trustee. Unfortunately, its mandates in the area of bankruptcy trustee liability are anything but clear, and it has since created uncertainty in the common law about when a bankruptcy trustee should be personally liable or immune from suit. Many courts rely on faulty analysis and a misunderstanding of the doctrines and terminology involved with bankruptcy trustee liability. To help guide courts in making more uniform decisions, that trustees may rely upon to ascertain whether they will be subject to personal liability, this Article creates a comprehensive analytical framework of trustee immunity and liability, which has been woven together using the existing threads of analysis suggested by scholars and applied by courts. The Article discusses the four-step framework in detail, concluding by applying it to a recent case, and arguing that a more reliable result would have been reached by the court had it been equipped with a more uniform framework of analysis. While the use of a structured examination of trustee immunity and liability might not always result in the same conclusions, it will hopefully clarify and unify the analytical process which has been, and continues to be, a contributing factor to the confusion. 

The End of Interrogatories: Why Twombly
and Iqbal Should Finally Stop Rule 33 Abuse

Douglas C. Rennie

Interrogatories are good for only one thing: abuse. Interrogatories are formal, written questions that parties are supposed to use to obtain discoverable information under Rule 33 of the Federal Rules of Civil Procedure. But they rarely provide any useful information. Other discovery devices and motion practice are more effective at narrowing issues for trial and uncovering the true facts of a case. Interrogatories are inherently burdensome and frequently unreasonable, often demanding that a party disclose key aspects of its trial strategy, which a party itself may not know until the eve of trial. Likewise, interrogatory responses are evasive and rife with incoherent legalese. Nonetheless, many consider interrogatories a necessary tool to discover the detail underlying a plaintiff’s complaint under the federal “notice pleading” system. The Supreme Court’s recent decisions in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal, however, heightened the federal pleading standard, raising the bar for plaintiffs to survive a pre-discovery motion to dismiss. Now, plaintiffs must include enough factual detail in their complaints to render their claims “plausible.” There is no longer any need for a discovery tool to obtain that same information. Thus, interrogatories function solely as a tactical weapon to force an opposing party to incur costs, delay litigation, and avoid a just disposition on the merits.

In this Article, I propose a series of reforms that will eliminate Rule 33 from the Federal Rules of Civil Procedure, putting an end to the abusive tactics that come with it. To the extent that other procedures have not completely overtaken the legitimate functions of interrogatory practice, they can be expanded to do so. My proposal will not only help to curb discovery abuse, but also alleviate the increasing burdens on plaintiffs, who are already required to prepare numerous complex submissions before getting to trial.



Manifest Disregard After Hall Street: Back From the Dead—the Surprising Resilience of a Non-Statutory Ground for Vacatur

Leigh F. Gill

This Note intends to survey decisions since Hall Street  and identify the likely consequences for manifest disregard in light of seeming disfavor at the Supreme Court. I conclude that varied interpretation of Hall Street’s impact has not only started a circuit split—with some courts doing away with manifest disregard, others reframing it, and still others affirming it—it has also set the stage for distrust of arbitration as a method of dispute resolution. Ultimately this may be a consequence of the FAA: unchanged for nearly nine decades, it is not robust enough to provide uniformity, and uniformity is critical to the success of arbitration. 

Permissive Joinder Under the Prison Litigation
Reform Act: More Than Just a Procedural Tool

Caitlin Overland

The prison system in the United States has undergone a major transformation in the last century, for better and for worse. Prison litigation during the 1960s and 1970s, often in the form of joined or class-action suits, led to many improvements to conditions of confinement and treatment of inmates. Inmates sought to assert their rights under the Constitution by filing suit, often paralleling similar civil rights movements of that era. In the 1980s and 1990s, rates of incarceration in the United States soared, resulting in some of the highest levels in the world. Accordingly, inmate lawsuits against prison administrators increased as well. Lawsuits filed by inmates were seen as consuming court dockets and wasting judicial resources. In response, and coupled with other “tough on crime” legislation of the era, Congress passed the Prison Litigation Reform Act, limiting the opportunities for inmates to file suit against their captors. Several Circuits have interpreted the Act as prohibiting inmates from utilizing permissive joinder under the Federal Rules of Civil Procedure. This interpretation not only undercuts the aim towards judicial economy that Congress sought to further in passing the PLRA, but also stymies reforms that inmates seek to attain through joined litigation. Correct interpretation of the PLRA serves not only to further congressional intent, but also properly maintains litigation as a viable tool for prison oversight.


H. Tomás Gómez-Arostegui, Lydia Pallas Loren, and Joseph Scott Miller