Patent Law Practice Center

Bilski Decision: No Concrete Guidance On Test For Determining Patentability of Processes

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. (more…)

Solo Cup Decision: False Marking Requires Proof Of Intent to Deceive

 

I recently read that more than 100 plaintiffs have filed false marking suits in 2010, on the heels of the Forest Group Inc. v. Bon Tool Co. decision.  In that case, the Federal Circuit interpreted the language in the false marking statute to mean that penalties for false marking must be calculated on the basis of each article marked with an incorrect patent number for the purpose of deceiving the public, rather than on the basis of each decision to mark any number of articles.  In a nutshell, the decision had the potential of a penalty increase from $500 per offense to $500 per article marked.

While the Forest Group case left unresolved issues regarding false marking, the Federal Circuit did answer some of the open questions in last weeks Pequignot v. Solo Cup Co. decision,  No. 2009-1547, slip op. (Fed. Cir. June 10, 2010) .

Jeanne M. Gills (Contributor on the Practice Center) and George C. Best, both partners with Foley & Lardner, LLP, published an article in their firm’s newsletter analyzing the Solo Cup decision.  In the article called “False Marking Liability Requires Proof Of An Intent To Deceive Public” Gills and Best write “While this decision provides additional guidance for companies on how to avoid false marking liability, including what evidence may be sufficient to rebut the presumption of an intent to deceive, it does leave open questions to be resolved by future decisions or legislative action.” (more…)