On Monday, the Supreme Court heard oral argument in Bilski v. Kappos in an effort to determine the proper test to be applied to determine whether a claim is patentable subject matter under § 101. The oral argument transcript is available from the Court's website here.
Click below for our thoughts on the arguments and some of the more interesting quotes from the Justices' questioning.
This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski.
The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis. Click below to review the materials in more detail.
In an order today, the Supreme Court agreed to hear an appeal in Bilski v. Doll regarding the patentability of method claims. Back in October, the Federal Circuit decided In re Bilski, adopting the "machine-or-transformation" test as the exclusive test to determine whether a method is drawn to patentable subject matter.
Bilski filed a petition for certiorari in January. Some thought the Court may take the case given its recent interest in the area of patentable subject matter, specifically the Laboratory Corp. v. Metabolite Laboratories, Inc. case where certiorari was dismissed as improvidently granted after oral argument was held. Although the Court did not render a decision in that case, three justices (Breyer, Stevens, and Souter) dissented from the dismissal of certiorari and would have held the claims directed to nonstatutory subject matter. SCOTUS Blog had the case among its petitions to watch for last Friday's conference, which compiles the cases the authors believe have a reasonable chance of being heard by the Court.
When the Laboratory Corp. case was pending, many believed the Court was looking to rein in abstract method claims. The granting of certiorari may be an indication that this is still the case, and the Court was simply waiting for the issue to be better presented. However, at least one of the previous votes to restrict the permissible scope of method claims, Justice Souter, will not be on the Court when the case is considered next term. Whether this will make a difference in the outcome remains to be seen. Of course, until the Court renders a decision in the case (probably not until sometime in 2010), the Federal Circuit's decision remains the law, and the machine-or-transformation test is the sole test for whether a method claim meets the requirements of § 101.
More from SCOTUS Blog here.
In a recent decision, the Federal Circuit applied the machine-or-transformation test from Bilski to affirm the rejection of all pending claims in a patent application by the Board of Patent Appeals and Interferences. The claims at issue related to methods of marketing products and "paradigms" for marketing software. The Board held all claims were not directed to patentable subject matter because they were directed to an "abstract idea."
The Federal Circuit, armed with the machine-or-transformation test, had little trouble affirming the Board. The court observed Bilski was dispositive on the method claims, as there was no "particular machine or apparatus," nor did the methods "transform any article into a different state or thing."
Similarly, the paradigm claims failed to recite statutory subject matter. The applicants argued the "company" recited in the claims was analogous to a "machine," and therefore statutory. The court disagreed, citing In re Nuijten, noting the claims recite no "concrete thing, consisting of parts, or of certain devices and combination of devices."
Of note, the court confirmed its rejection of the "useful, concrete, and tangible result" test from State Street. The parties had focused on that test in their briefing (which was complete before Bilski was decided).
More detail of In re Freguson after the jump.
As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter. Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101.
The court, after examining the relevant Supreme Court cases on the subject (such as Diehr, Benson, and Flook), the court adopted the "machine-or-transformation" test as the applicable test for patent-eligible methods. In so doing, the court rejected the Freeman-Walter-Abele test (regarding algorithms), the "useful, concrete, and tangible result" test articulated in State Street, and the "technological arts" test described in, for example, Ex parte Lundgren.
As stated by the court:
The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.
The machine or transformation must also "impose meaningful limits on the claim's scope" and "must not merely be insignificant extra-solution activity."
The final vote was 9-3, with Judge Dyk writing a concurrence joined by Judge Linn, and Judges Newman, Mayer, and Rader authoring separate dissents.
More detail of In re Bilski and links to coverage from the media and blogs after the jump.
The decision is available here. It adopts the "machine-or-transformation" test for patentable subject matter. As stated by the majority:
The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.
Click below for some quotes from the majority opinion. We'll have a more complete analysis soon.
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.
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.
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.
