Supreme Court Grants Cert in In Re Bilski

June 1, 2009. The Supreme Court granted certiorari in In Re Bilski. See, Orders List [8 pages in PDF] at page 1.

On October 30, 2008, the U.S. Court of Appeals (FedCir) issued its 9-3 en banc opinion [132 pages in PDF] in In re Bernand Bilski and Rand Warsaw, an appeal from the U.S. Patent and Trademark Office's (USPTO) Board of Patent Appeals and Interferences (BPAI), regarding patentable subject matter.

The Court of Appeals affirmed the September 26, 2006, opinion [71 pages in PDF] of the BPAI, which affirmed the rejection of a claim for an invention that discloses a method of doing business -- a method of hedging risk in the field of commodities trading.

The Court of Appeals held that the "claims are not directed to patent-eligible subject matter" under 35 U.S.C. 101.

The Court of Appeals held that the Supreme Court's machine or transformation test is applicable to process patents, and that the Federal Circuit's useful, concrete and tangible result inquiry, discussed in State Street, is no longer to be relied upon.

The Supreme Court's opinion in this case may have far reaching consequences for business method patents, and patentable subject matter generally.

See, 1998 opinion in State Street Bank & Trust v. Signature Financial Group, reported at 149 F.3d 1368, that business methods can be patentable subject matter

See also, story titled "Federal Circuit Curtails Business Method Patents" in TLJ Daily E-Mail Alert No. 1,850, October 30, 2008, and story titled "Federal Circuit Receives Amicus Briefs Re Business Method Patents and Patentable Subject Matter" in TLJ Daily E-Mail Alert No. 1,743, April 8, 2008.

Ed Black, head of the Computer and Communications Industry Association (CCIA), stated in a release that "The lack of limits on patentable subject matter as a result of the State Street decision has created chaos in the marketplace and provided fertile breeding ground for patent trolls. We have commended the federal circuit decision in Bilski as an effort to redraw the limits consistent with Supreme Court precedent."

He added that "We are pleased by the federal circuit decision in Bilski because it cuts back on what has been an extremely problematic area in the patent system that stems from granting patents on abstract subject matter. We hope the Supreme Court will return to the wisdom of its earlier rulings and affirm strong principles about the limits of patentable subject matter."

This case is In Re Bilski and Rand Warsaw, Supreme Court of the U.S., Sup. Ct. No. 08-964, a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit. See also, Supreme Court docket.