University of Pittsburgh
June 30, 2010

Media Advisory: Pitt Law Professor Available to Discuss New U.S. Supreme Court Patent Decision

Decision in Bilski v. Kappos sustained the potential patentability of business methods, says Prof. Janice M. Mueller, author of widely used text on patent law
Contact:  412-624-4147

PITTSBURGH—Although yesterday’s U.S. Supreme Court decision in Bilski v. Kappos “failed to provide much-needed guidance about the boundaries for patenting emerging technologies, it sustained the potential patentability of business methods and therefore reflected a welcome sensitivity to the settled expectations of those who have obtained many business method patents in recent years,” says Janice M. Mueller, University of Pittsburgh professor of law.

“Patent owners achieved a narrow victory in Bilski v. Kappos, but the court’s multiple opinions leave many fundamental questions unanswered,” Mueller added.

“The Supreme Court agreed with the Federal Circuit Court and the U.S. Patent Office that the particular invention in dispute, owned by Pittsburgh-based WeatherWise USA, is not eligible for a patent,” Mueller continued. “Filed in 1997, the Bilski/Warsaw patent application claims a method of fixing annual energy costs for gas or electric utilities. The method utilizes predictive modeling coupled with energy price and weather hedging. The Supreme Court rejected the application’s claims as an attempt to patent merely the ‘abstract idea’ of hedging risk. Justice Stevens, joined by three other Justices, authored a 47-page opinion that strongly opposes the patenting of any business methods. The Supreme Court majority declined to provide any further guidance about the meaning of ‘abstract idea,’ leaving the Federal Circuit Court to re-work the law in this area. Also left unanswered are important questions about the patent-eligibility of Information Age technologies such as software, medical diagnostic techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. The Supreme Court expressly declined to take a position on the difficult balance of securing patent protection for valuable inventions without transgressing the public domain.”

Mueller is a leading national authority on patent law. In her book Patent Law, Third Edition (Aspen Publishers, 2009), she notes that a perceived lack of clarity in Federal Circuit law over where to draw the line between patentable process inventions and unpatentable abstract ideas led the Supreme Court to grant review of these issues in the Bilski case. At issue was whether former Pittsburgher Bernard L. Bilski’s claimed method of hedging risk in the field of commodities trading can be patented.

Mueller teaches and writes in the area of intellectual property law with an emphasis on patent law. A registered U.S. patent attorney and chemical engineer, she began her legal career as a patent agent in Minneapolis, Minn. After clerking at the Court of Appeals for the Federal Court, Mueller litigated patent and copyright infringement cases as an honors program trial attorney in the U.S. Department of Justice. She is a frequent lecturer for the American Bar Association’s Intellectual Property Law Section and the American Intellectual Property Law Association (AIPLA). She has served on the AIPLA’s Amicus Committee and chairs the Expert Advisory Committee on Intellectual Property for the international nonprofit Consultative Group on International Agricultural Research.