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Decision in Bilski v. Kappos

June 28, 2010 8 comments

The Supreme Court released its decision in Bilski v. Kappos today, a long-awaited case dealing with the scope of patentable subject matter under 35 USC Sec. 101. In short, the Supremes affirmed the Federal Circuit’s judgment that Bilski’s business method was not patent-eligible, but stated that the Federal Circuit’s “machine-or-transformation” test was not the sole test of patentable subject matter.  More will come shortly, but for now, here is a link to the opinion:

Bilski v. Kappos opinion

There is bound to be much erudite commentary on the Bilski decision. Here is a running list of the posts I have found that might be of interest to the casual (or professional) reader. If you have something you want linked, let me know. Note that Gene Quinn at IPWatchdog.com also has what appears to be a memo to Examiners at the U.S. Patent and Trademark Office giving a preliminary assessment of Bilski‘s impact on their operations. [As an aside, so much of the following commentary is really excellent that it gives me pause regarding whether I should even try to contribute my two cents’ worth. Nice work, everyone.]

271 Patent Blog

Article One Partners

AwakenIP

BlawgIT

Blog of Legal Times

Broken Symmetry

Eric Guttag at IPWatchdog

Forbes

Fulbright web seminar (PDF)

Gambling Compliance

Genomics Law Report

Holman’s Biotech IP Blog

Info Law

InformationWeek

Infringement Updates

Intellogist

IP Counsel to the Stars

IP Now: Australia and New Zealand

IPWatchdog No. 1

IPWatchdog Memo to Examiners [PDF]

IPWatchdog No. 2

Joe Mullin at Corporate Counsel

Joe Mullin at The Prior Art [same]

Litigation and Trial

Modern Times Legal

New York Times

NYT Bits Blog

Patent Prospector

patentability

Patently-O No. 1

Patently-O No. 2

Perkins Coie

TechDirt

TechDirt No. 2

Ted Sichelman at Patently-O

Wall Street Journal No. 1

Wall Street Journal No. 2

Washington Post

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Handicapping Bilski v. Kappos

January 19, 2010 Leave a comment

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?

Categories: Bilski, CAFC Tags: , ,
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