Next panel  – “What Hath Bilski v. Kappos: Fallout in the Courts and the USPTO”.  The panel includes, Gary Hoffman of Dickstein Shaprio, David M. Rosenblatt of Thomson Reuters and Associate Prof. Michael Risch of Villanova School of Law.

– Gary Hoffman began with a discussion on how the Courts have reacted to Bilski.  The Federal Circuit has cited Bilski 7 times: 2 cases with substantive post-Bilski analysis: Prometheus (Court held MOT test is relevant but not the only test) & Research Corp. Tech (Court focused on whether the subject matter fails s 101’s requirement that it not be “abstract”); 2 references to the recency of the decision, 1 citation to the Supreme Court’s instruction that formulaic rules should be avoided,  1 metnion in dissent (Intervet), 1 case (King Pharma) where s101 analysis was passed over because the Fed Circ had already found the claims anticipated.

-BPAI has looked at Bilski 58 times.   No precedential opinions as of yet, but some decisions with substantive analysis (Ex Parte Ulf & Ex Parte Caccavale).  BPAI appears to be standardizing on first applying the MOT test, then confirming the unpatentability of claims with an abstraction analysis if the claims fail.

 The panelists then participated in a Questions & Answer Session on Bilski: (Moderator – Scott Alter of Faegre & Benson)…..

Q – Since Bilski, what has changed, what has decision done and as a result how patentable is a usiness method?

 Rosenblatt:  More difficult on MPEs.  Bilski case is an aberation because  all thought the Court would hold claims invalid and make it easier to prove invalidity under 101.  They did hold claims invlaid , but didn’t make it easier under 101 to show claims invalid. 

Risch – One problem with decision , didn’t change anything. Business methods patentable, depends on who you get.  No real certainty.  Changes everything, changes nothing.  To define business methods, depends on who you’re asking.

Hoffman – at the end of day, left a lot of confusion.  Patent Office seems to have taken approach, we’ll look at MOT test and then abstract idea.  When thinking about bussiness methods, not exclusive to machines per se.  Need to include biotechnoloy and pharma. 

All three agree, we will have a lot of litigation still to come regarding business methods.

Q -How do you foresee Bilski effecting patent eligibility of software generally and diagnostic methods.

Rosenblatt – Generally, software will be patentable.  Diagnostic patents – difficult. People really divided.  All over the law on this. Maybe depends what is selling.  Not really abstract ideas, stough is happening.  Eg. draw blood, test it, see whats happening, make decsion – not abstract at all.  Generally, think diagnostics will be upheld.

Hoffman- Diagnostic Testing – if move on from MOT test and look to abstract idea, then atleast most of diagnostic testing should easily meet test, clearly relates to something practical in performing medical testing that is needed.  On software, it’s dependent on what claims say and where they stand.  Could still see a lot of problems.

Risch – don’t think software will ever be per se unpatentable, depends how claims drafted. Diagnostics – doing things, transforming things.  Generally, will be upheld but need to be careful on how claiming things. 

Q – Do You believe Justice Stevens Concurrence in Bilski, was almost the opinion of the Court?  How fearful should we be of this concurrence?

Rosenblatt – Don’t believe Stevens Concurrence should be the law.  It seems that his concurrence was very close to being the opinion of the Court.  J. Stevens says that 101 could become almost comical; don’t see that happening.    In some context, need to start putting energy in 102 & 103 analysis, rather than 101.

Risch – think it surely was close to being the opinion.  Clear Stevens was going to be majority, but lost a vote because went to far.  We would be faced with the same Q – what is a bussiness method?  Would be in huge mess if the Stevens oncurrence was the majority.

Q – What are your thoughts on recent RCT v. Microsoft decision?  What if Newman or Reider not on the panel, would it hold up in the Supreme Court?

Rosenblatt – Yes, think it still would’ve been held up.  Think analysis there was a reasonable one in determining whether or not things were abstract. 

Hoffman – if change panel, would not in all likelihood change the opinion.  If Sup Ct applied to that case what it said in Bilski, think they would come out the same way.

Risch- think Bilski did lead to confusion and concerned about the RCT case.  

Q – How has Bilski decision changed your practice or how you think it will change your practice?

Rosenblatt – From prosecution perspective, I would not file anything with soley method claims.  From litigation standpoint, hard to say it changes a lot.  Usually , 101 is not a big issue that you could pitch to a jury or a judge, think it’s hard to do. 

Hoffman – from litigation standpoint I would still try to see if it meets MOT test, easier to tie into something practical. 

Risch – for me it’s just a different argument.

Tags: abstract ideas, Bilski v. Kappos, business methods, Justice Stevens, MOT test, Supreme Court

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