Handicapping Bilski v. Kappos
Pending before the Supreme Court of the United States is the case of Bilski v. Kappos (formerly captioned In re Bilski [PDF]). Oral arguments were held late last fall, and now the patent world is waiting to hear the fate of the Federal Circuit’s “machine or transformation” test for the scope of patentable subject matter under 35 U.S.C. Sec. 101.
Much ink and many electrons have been spilled analyzing the case law supporting (or not) the Federal Circuit’s test. The consensus seems to be that the Federal Circuit’s stringent test will be discarded by the Supremes and that some factor-based test will arise in its place.
We could dive deeply into the analytical waters, parsing the case law to determine Bilski’s chances at the Supreme Court. But instead, let us stay in the shallow end, where the swimming is easy. What outcome do we predict for Bilski if we look only to the Federal Circuit’s recent track record at the Supreme Court?
Here are the results of the most recent eight cases to reach the Supreme Court from the Federal Circuit:
- KSR International Inc. v. Teleflex Inc.: Reversed 9-0 on how to establish the obviousness of a patent
- eBay Inc. v. MercExchange LLC: Reversed 9-0 after holding that there should normally be a grant of an injunction in patent cases
- Quanta Computer, Inc. v. LG Electronics, Inc.: Reversed 9-0 after holding that patent exhaustion does not apply to method claims
- Microsoft Corp. v. AT&T Corp.: Reversed 7-1 on the application of 35 USC Sec 271(f) to software
- Medlmmune, Inc. v. Genentech, Inc.: Reversed 8-1, Supreme Court says that a licensee in good standing can sue for declaratory judgment
- Illinois Tool Works Inc. v. Independent Ink, Inc.: Vacated 8-0 after holding that a patent is market power per se.
- Unitherm Food Sys. v. Swift-Eckrich: Reversed 7-2 on application of Rule 50(b) in patent cases [perhaps not the Federal Circuit’s fault, since it had to follow Tenth Circuit precedent]
- Merck KGAA v. Integra Lifesciences I, Ltd.: Vacated 9-0 on use of patented compounds in preclinical studies
Based just on these few examples, it looks like the Federal Circuit’s machine-or-transformation test is in trouble at the Supreme Court. On the other hand, rules are made to be broken. Is this the case where the Supreme Court takes a Federal Circuit case to affirm?