Patent Law

By Charles R. Macedo and David Boag*

The U.S. Court of Appeals for the Federal Circuit yesterday issued its much awaited decision in In re Bilski, No. 2007-1130 (Fed. Cir. Oct. 30, 2008) (en banc).  The majority opinion, authored by Chief Judge Michel and joined in by seven of the judges on the Court, seeks to return patent-eligible subject matter jurisprudence to the fundamental principles enunciated by the Supreme Court in its prior decisions.

The majority opinion relies upon the so-called ?machine-or-transformation test? set forth by the Supreme Court in its Benson, Flook and Diehr decisions as the ?governing? test in this area.   Under the majority's test, a patent-eligible process must either be tied to a particular machine, or transforms an article.

The majority rejected existing alternative tests as short cuts to a full analysis under the machine-or-transformation test, including the previously-rejected ?Freeman-Walter-Abele? and ?technological arts? tests, and the previously relied upon ?useful, concrete and tangible results? test.

The majority took this opportunity to reformulate its prior jurisprudence in this subject area to bring it into what it viewed was in conformity with its current reading of the binding Supreme Court precedent.

For an overview of the "machine-or-transformation test" as adopted by the majority opinion and a brief summary of the analyses presented in the dissenting and concurring opinions, please see our Guest Column in IP Law 360, which will be available shortly at our firm website. See Charles R. Macedo and David Boag, The 'Machine-Or-Transformation Test' For Processes, IP Law 360, Portfolio Media, New York (October 30, 2008) (soon to be available here).

* Charles R. Macedo is a partner and David Boag is an associate at Amster, Rothstein & Ebenstein LLP. The firm?s practice focuses exclusively on all facets of intellectual property law. The authors can be contacted at cmacedo@arelaw.com and dboag@arelaw.com.

The views expressed in this article are not necessarily the views of the firm or its clients.

Charles Macedo was principal attorney, along with Anthony Lo Cicero and Jung S. Hahm, on the amici curiae brief submitted on behalf of Reserve Management Corp., PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group in In re Bilski.