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Intellectual Property Law: FileWrapper
Supreme Court: Business method patents survive, but barely; Bilski's claims unpatentable
By McKee, Voorhees & Sease, P.L.C.
Yesterday, the Supreme Court decided Bilski v. Kappos, the most recent case at the Court probing the boundaries of patentable subject matter under § 101. Details of the underlying facts of the Bilski case may be found in our post on the Federal Circuit's en banc decision here.
All nine Justices agreed that Bilski's method claims were not patentable. All nine Justices also agreed the "machine-or-transformation" test, held by the Federal Circuit to be the exclusive test for whether method claims are patentable subject matter, was a useful test, but not the exclusive test for such claims. In this way, the outcome was similar to KSR. There, the Federal Circuit had adopted an exclusive test for the question of obviousness. The Supreme Court then held the test was useful, but not the exclusive test for obviousness. In addition, all members of the Court at least expressed skepticism that the "useful, concrete, tangible result" test from State Street was a viable test, with the majority stating "nothing in today's opinion should be read as endorsing interpretations of § 101 that the Court of Appeals for the Federal Circuit has used in the past," citing State Street, and the Justice Stevens opinion concurring in the judgment stating it would be a "grave mistake" to assume that all claims meeting this test are patentable.
The disagreement among the Justices came when considering the question of whether business methods as a more general category fall within the scope of patentable subject matter defined in § 101. More detail of that disagreement after the jump.
Update: The Court, in its last orders of the Term, has issued a GVR in two § 101 cases, the Prometheus case, relating to methods for measuring the level of certain drug metabolites in the system for the purpose of adjusting the drug administration level, and the Classen case, a nonprecedential opinion relating to a method of selecting a vaccination schedule by comparing alternatives and selecting the alternative with the lower likelihood of autoimmune disorders. The Federal Circuit will therefore have two opportunities to address § 101 in light of the Court's guidance sooner rather than later.
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