This Thursday, the Federal Circuit will hear oral arguments en banc in In re Bilski (No. 2007-1130), a case that will help define the scope of patentable subject matter.  Numerous amicus briefs have been filed in the case, and perhaps most interestingly, two of the amici, Bank of America and Regulatory DataCorp, have been granted permission to participate in the oral arguments.

More information about the case and its possible implications after the jump.

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The Federal Circuit has, on its own motion, decided to hear a case en banc regarding the scope of patentable subject matter under § 101.  The case, In re Bilski (No. 2007-1130), was argued before a panel of the court on October 1, 2007, and deals with the patentability of methods that involve only mental steps.   Most interestingly, however, is that in the court's decision to hear the case en banc, the court asked the parties to brief the question:

Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect? 

Given that the court may reconsider State Street, this case could potentially result in a major shift in the scope of patentable subject matter.  This decision comes on the heels of the court's decision earlier this week not to rehear In re Nuijten en banc, another case involving the scope of patentable subject matter.  The petition to rehear that case en banc was supported by several amici.

To read the full order, click here.  Patently-O has a good description of the BPAI's "informative" decision that is on appeal here.  Click below for the full list of questions presented for en banc review.

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In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten.  In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101.  Judge Linn dissented from that decision, applying the § 101 framework from Diamond v. Chakrabarty, and would have held the claims to be drawn to statutory subject matter.  You can read our full post about the panel's decision here.

Today Judge Linn authored the dissent again, this time joined by Judges Newman and Rader.  As in his previous dissent, Judge Linn referred to Diamond v. Chakrabarty.  He argued that under Chakrabarty, the signals claimed here were patentable subject matter. Not only does the decision conflict with Chakrabarty, he also asserted that a CCPA case, In re Breslow, also conflicted with the panel's decision.  There, the court held that claims directed toward chemical compounds that were known to exist but could not be isolated because they were too unstable were considered "article[s] of manufacture" as defined by § 101.  As stated by the CCPA:

It appears to us that the PTO would read into § 101 a requirement that compositions of matter must be stable—which is a relative term to say the least. We see no good reason to do so. It would appear that many compounds may find their greatest or even their sole utility in the fact that they are not stable. Certainly, in the invention at bar there is no reason to have the claimed compounds in a stable form so they can be bottled or tanked or otherwise stored. The preferred manner of using them is to produce them in situ, whereupon they exhibit their cross-linking activity, their only disclosed utility.

Here, the signals were "fleeting" or "transient," but Judge Linn argued that under Breslow, this did not matter for purposes of § 101. 

Further, he argued the distinction between claims that were found to be drawn to patentable subject matter, namely claims to storage medium containing the signals at issue, and claims to the signals themselves, was "artificial at best."

It appears likely that a petition for certiorari to the Supreme Court will be filed in this case.  This is further supported by the fact that in its last case dealing with § 101, Laboratory Corp. v. Metabolite Laboratories, Inc., the Court dismissed the petition for certiorari as improvidently granted, a decision that sparked three justices to dissent, showing that the Court may be looking for a case that presents a vehicle to rein in the scope of § 101.

To read the order in In re Nuijten, click here.

In the second of two decisions regarding the scope of patentable subject matter on Thursday, the Federal Circuit found claims in a patent application directed toward a "method for mandatory arbitration resolution" as not directed toward statutory subject matter under § 101.  The USPTO had not addressed the statutory subject matter issue, rather the Federal Circuit had requested supplemental briefing on the issue after the applicant appealed the BPAI's affirmance of the examiner's obviousness rejections.

Similar claims, however, that included reference to some sort of machine (such as a computer), were held to be statutory.

More detail of In re Comiskey after the jump.

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