Institute Live Blog: Reactions To Bilski

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. (more…)

Bilski v. Kappos: Summary And Implications


Written by Andrea M. Augustine (Partner at Foley & Lardner LLP and faculty member for the upcoming PLI Patent Litigation program) and Kevin J. Malaney (Associate at Foley & Lardner LLP)

On June 28, 2010, the U.S. Supreme Court issued its much anticipated opinion in Bilski v. Kappos.  In Bilski, the Court affirmed the judgment of the Court of Appeals for the Federal Circuit, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), that the claims in question did not qualify for patent protection.  In doing so, the Court unanimously rejected the Federal Circuit’s determination that the “machine-or-transformation” test was the exclusive test for “process” patent eligibility.  But instead of establishing what test should be applied in future cases, the Court left this question open and simply relied on previous Supreme Court case law and the Patent Act to hold Applicants’ claims ineligible for patent protection.  Despite the uncertainty regarding the appropriate test, Bilski does provides some guidance as to what “process” claims are eligible for patent protection.  Because of the open questions that remain, future cases will be closely watched and studied for clarification and application of the Court’s holdings.  In the meantime, observers, advocates, and pundits will review the fine details and history of In re Bilski in search of guidance on the future of business method patents and patent applications. (more…)

Bilski Aftermath: Will Europe’s “Technical Effect” Test Become the Law in the U.S.?

Robert Hulse, of Fenwick & West LLP, Practice Center Contributor and PLI Faculty member, discusses what the future may look like for business method patents:

I think most patent practitioners and applicants who have been following this case believe that we dodged a bullet, as the Court’s decision was about as good as could have been expected.  The Court removed the Federal Circuit’s overly rigid application of the machine-or-transformation (MOT) test as the sole test for patent eligible-subject matter, but it retained the test as a useful indication of whether a claim meets the subject matter requirement.  (In this respect, the Bilski decision is much like the Court’s decision in KSR a few years ago, where the court kept the teaching-suggestion-motivation (TSM) test, but held that it was just one of many useful ways to evaluate a claim for its compliance with the nonobviousness requirement.)  The benefit to applicants is that we can continue to rely on compliance with the MOT test by reciting a machine or transformation, subject to the “post solution activity” and “meaningful limits” considerations, while not being completely constrained by that test.

The Court also declined to exclude business methods from patent-eligible subject matter, although four justices (including Stevens, who is leaving the Court) would have done so.  This means that companies who innovate to create new ways of conducting business can continue to protect their inventions.  Excluding business methods for patent-eligible subject matter would have created more problems than it solved, not the least of which would have been how to define a “business method.” (more…)

Supremes Decide Bilski: Machine or Transformation Not the Only Test, Bilski Not Patentable

Written by Gene Quinn (IPWatchdog and Practice Center Contributor)

Bilski v. Kappos has finally been handed down by the United States Supreme Court, in what has become the most highly anticipated patent decision of all time. The questions presented to the Court for consideration were: (1) whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter; and (2) whether the machine or transformation test contradicts Congressional intent (pursuant to 35 U.S.C. 273) to allow for business methods to be patented.

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy.  There were no dissents, only concurring opinions, which is in and of itself a little surprising, at least at first glance until you realize that the Justices all agreed Bilski’s invention ought not to be patentable, but some, such as Justices Stevens and Breyer would have found all business methods unpatentable.  In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test. (more…)

Bilski v. Kappos: A Recap Before Decision Day


As the entire patent community waits with bated breath for the Bilski decision, it seems like the perfect time to recap the course of events that have brought us here.  Yesterday, IPWatchdog had a guest blogger, Robert M. Suarez, who did just that in his article, “Mr. Bilski Goes to Washington: An Abridged Guide.”  It is an excellent summary of the Bilski case.  

Before he offers his guide to the case, Suarez writes, “For all of the opinions, articles, and conjecture, all one need do is study the law and look at the precedents to know that anticipating how the Supreme Court will rule in a case is akin to trying to gaze into a crystal ball. So, what will be the future of business methods as patent-eligible subject matter? Will the machine-or-transformation test stand? What will be the fate of the Bilski patent? An educated guess is the best that one can hope for in this situation.” 

Well said Suarez!! (more…)