Many of us are still trying to digest yesterday’s Supreme Court decision on the Bilski v. Kappos case and will most certainly be reading and re-reading the opinion many times before drawing any conclusions. It will be interesting to see how the various players in the patent community interpret the decision and what they believe will be the significance of the ruling. I reached out to several of the Practice Center Contributor’s asking them to weigh in on the decision. Here is what Jeanne M. Gills, Vice Chair, IP Department at Foley and Lardner had to say….
The Supreme Court’s ruling is fairly narrow. The Court merely affirmed the finding of unpatentability because the Bilski invention was viewed as abstract ideas. It was widely viewed that the particular Bilski invention was unpatentable, so that affirmance was not surprising. Also, I believe many believed that the Supreme Court would not find that business methods were categorically unpatentable (since some business methods could be patentable provided they meant certain criteria). (While this was a close and split (5-4) decision, I do think that this was the right result, and the alternative could have put some issued patents in jeopardy.) What the decision fails to do is offer more concrete guidance as to what constitutes an appropriate test for determining patentability of processes. By rejecting the “machine or transformation” test as the sole or exclusive test, this leaves the door ajar for other tests to be fashioned. I do not think it is sufficient to say that any test that is consistent with the patent statutory language offers much guidance. Hence, the Supreme Court gave the lower courts and the Federal Circuit flexibility to devise other tests or criteria for evaluating the patentability of processes in general and business methods in particular.
In short, I believe the Supreme Court was concerned about stifling innovation or adopting a strict test that may not be appropriate for those innovations that have yet to be discovered (or at least those that have not made their way into litigation or PTO proceedings). This will leave some uncertainty in the prosecution arena, especially in fields like diagnostic methods and personalized medicine. In addition, it will raise some interesting litigation issues. In recent times, defendants have filed Bilski-based summary judgment motions and have relied largely on the machine or transformation test as the basis for asserting that a claim fails the requirements of Section 101. While the Supreme Court acknowledges that the machine or transformation is a useful tool or clue, does yesterday’s holding leave room for patentees to argue that a different test should be applied that would demonstrate the patentability of the asserted claim? This could impact the timing and propriety of filing such summary judgment motions. For instance, many Bilski-based summary judgment motions come early in the case and do not require claim construction. Now that there is no bright line or exclusive test, will such a summary judgment motion remain an effective defensive strategy, or will courts think that the jury needs to decide whether a process that fails the machine or transformation test could survive under some other test? Also, will it always be clear whether a process is or isn’t an abstract idea or phenomena of nature. In the Bilski scenario, perhaps it was more clear that hedging risk was abstract, but will the same be true for other series of mental steps that may be claimed as a new invention? The future litigation issues could be numerous.
As an example, today, the Supreme Court granted certiorari, vacated and remanded Mayo Collaborative Servs. v. Prometheus Labs., Inc., and Classen Immunotherapies, Inc. v. Biogen Idec. The Federal Circuit had applied the machine or transformation test in both cases, upholding Prometheus’ claims to methods of optimizing dosage based on metabolite levels for a specific prodrug-metabolite combination, while invalidating Classen’s claims to methods of evaluating and improving the safety of immunization schedules. The Federal Circuit was directed to review these findings in view of Bilski decision. Thus, on remand, the Federal Circuit may formulate a new test for the patent eligibility of diagnostic and personalized method claims.
For more from Jeanne M. Gills and Foley & Lardner read the article they published yesterday in the firm’s Newsletter: “What Now For Patent Eligibility?: In Bilski v. Kappos, The Supreme Court Rejects Machine-Or-Transformation As The Sole Test For Patent Eligibility Of Process“
Tags: Bilski, Bilski decision, Bilski v. Kappos, Business Method Patents, Federal Circuit, Foley & Lardner LLP, Jeanne M. Gills, machine-or-transformation test, Patent eligibility, Supreme Court, USPTO
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