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June 1, 2009


Byoki is the Japanese word for sick. Bilski is the American word for sick patent method case law. At the time of handing down the CAFC decision, Chief Judge Michel didn't consider Bilski much of a change, even as it immediately roiled understanding of patentability for processes, especially software. Today the Supreme Court decided to blow the haze around Bilski, granting certiorari to the matter.

From the Patent Prospector:

Bernard Bilski and Rand Warsaw filed a patent application claiming managing commodities trading risk. The patent appeals board agreed with examiner rejection that the claimed process wasn't statutory under §101. In a sua sponte en banc hearing, the CAFC affirmed, albeit contentiously. In re Bilski sets the patentable-process test to whether a claimed method is: (1) "tied to a particular machine or apparatus," or (2) transforms the subject matter of the claim.

The questions presented, which are not necessarily the questions that are going to be answered:

Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."

Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

At the time of the CAFC ruling, one curmudgeon righteously rained on the parade:

The court today acts en banc to impose a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system. The court achieves this result by redefining the word "process" in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

The above from CAFC Judge Pauline Newman, in vigorous dissent from the foolery of the majority ruling.

Briefs are due by July 20. Oral arguments in the fall. Whatever the §101 regime will be may be known by the turn to 2010.

Sources: the Supreme Court order (a waste-of-time download); Law360; Wall Street Journal. As always, Professor Crouch does a bang-up job collating the legal documents on Bilski. Gene Quinn at IPWatchdog penned a provocative opinion piece.

For extensive historical coverage, category §101 in the Patent Prospector has practically been the Bilski journal since the initial CAFC ruling.

Posted by Patent Hawk at June 1, 2009 9:14 AM | § 101


Judge Newman is the last voice for rational science in an otherwise medieval court packed with a bunch of Mad Hatters getting drunk on their own, "fundamentally-principled" Kool Aid. We'll see what the strict constructionists at the S.Ct. do with the phrase "any" new and useful process. But as one character said to another in some recent movie, "I've got a bad feeling about this".

Posted by: step back at June 2, 2009 2:17 AM

Yeah, that was Luke Skywalker when approaching the Death Star in the first Star Wars movie ("A New Hope"). I'm sure other places too.

Posted by: Defector at June 2, 2009 8:27 AM

I've got a bad feeling about each and every case this SCOTUS approaches

For me it started in 2005 with Kelo vs. City of New London decision - a non-patent case which showed however that this SCOTUS has zero respect for the property rights of the little guy

After Ebay decision in 2006 I had no doubts about this SCOTUS

US Constitution means nothing to SCOTUS justices - they trash it on a regular basis

Posted by: angry dude at June 3, 2009 5:56 AM

angry dude, you are angry!

Posted by: John Prosecutor at June 3, 2009 5:33 PM

Of course I am angry

You would be angry too if you filed your patent in 2001 (before this madness started) and got it issued in late 2006 (after Ebay and all the crap)

The patent says I have "the right to exclude"

WTF cares ?

Posted by: angry dude at June 3, 2009 8:52 PM