Patent Law and Policy

Moderator:
Dr. Roberta Morris, Stanford

Panelists:
Morgan Chu, Irell & Manella
Professor Mark Lemley, Stanford
Professor Peter Menell, U.C. Berkeley
Steven Weiner, SRI International
The first panel, as the name suggests, took a general look at the current state of patent law and its relationship to innovation. In order to understand where we sit today, Peter Menell, Law Professor at U.C. Berkeley, offered an overview of the history of patent law and the differences between a flexible, common-law like approach to its interpretation and a stricter, text-based statutory approach. He argued that the latter approach is an inappropriate one, because Congress cannot possibly maintain those statutes in the face of ever-evolving technology. And Bilski itself represents superficial textualism and a missed opportunity to return patent-law interpretation to its technological moorings.
Stanford Law Professor Mark Lemley then offered a summary of Bilski and its message that the Federal Circuit's bright-line approach was impermissible. The Court failed to offer an adequate alternative, however, indicating that the machine-or-transformation (MOT) test is still a helpful inquiry, but that the key consideration is whether an invention is too abstract to be patented. Since Bilski, lower courts have overwhelmingly continued to use the MOT test as a gateway inquiry. And the Federal Circuit has since weighed in as well, but its two post-Bilski decisions have moved in opposite directions: one indicating that the MOT test is now dead and the other endorsing its continued vitality. Professor Lemley suggested that the "abstractness test" outlined in Bilski is perhaps most helpful in cases involving excessively broad ("abstract") patent claims that might stifle continued innovation in an area.
However, Steven Weiner, Vice President of Intellectual Property and Strategic Planning at SRI International, disagreed with the concern about broad patents stifling innovation—at least in the software realm. IP giants, he said, stay on top because of factors unrelated, or only tangentially related, to patents. He argued that empirics show that broad software patents have not chilled innovation; rather, they are an appropriate means of encouraging and rewarding innovation.
Finally, Morgan Chu, a partner at Irell & Manella, suggested that we consider the broader context in which the "Bilski battle" is taking place. He contended that the United States has become an innovation economy, and that our IP laws were critical to the development of that economy and our continued success on this path. Accordingly, those laws must strike a balance between encouraging innovation and not stifling innovation. So, although many have argued that the Supreme Court "punted" when deciding Bilski, there is another way to look at it: perhaps Bilski is insightful in its modesty. A brightline rule would affect every industry and technology differently, and there are many technologies that have not yet been developed. So here we must tread slowly and carefully, and that is just what Bilski does.
The panel was moderated by Dr. Roberta Morris, a lecturer at Stanford Law School.

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