Patent Law

I just came from attending an excellent Supreme Court Round-Up at Jones Day's Pittsburgh office.  The program titled, "U.S. Supreme Court OT '08 / OT '09 Review / Preview" was presented by Douglas Cole, Chad Readler, Brian Murray and Leon DeJulius (all of Jones Day).  The panel provided a handout that summarized both selected decisions by the Court in its October Term 2008 and highlights of the issues for what promise to be some important cases in the October Term 2009.  Each panel member presented a subset of the cases in the handout and the discussion also addressed the Third Circuit and Pennsylvania Supreme Court.

The following is a brief excerpt from the handout:

OT '08 was a relatively quiet Term, with the Court moving more incrementally than drastically--often reaffirming older precedents and distinguishing them rather than overruling them outright...Business cases continued two more concerning trends.  They continued to decline as an overall percentage of the Court's work.  And they continued to decline as to the percentage of the cases in which business interests prevailed.

From the upcoming term -Bilski v. Doll, No. 08-964, Ruling: 545 F.3d 943 (Fed. Cir. 2008)

Facts:Bilski applied for a patent in a method of hedging risk in the field of commodities trading.  All eleven claims of his patent application were denied, and Bilski appealed.  On appeal, the United States Patent and Trademark Office, Board of Patent Appeals and Interferences ("Board") affirmed, holding that the "transformation of non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants is not patent-eligible subject matter" under 35 U.S.C § 101 and that the claims preempt every way of performing the steps of the process and therefore only claimed an unpatentable abstract idea.  Finally, the process did not create "useful, concrete and tangible results" and was, therefore, not patentable.



Questions Presented: (1) 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."  (2) 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, "methods[s] of doing or conducting business." 35 U.S.C. § 273.