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In Re Bilski

No. 08-964
________

IN THE
Supreme Court of the United States

_______

BERNARD L. BILSKI AND RAND A. WARSAW,
Petitioners,
v.

DAVID J. KAPPOS, UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT
AND TRADEMARK OFFICE,
Respondent.

Here you will find resources to decisions, filings, amicus briefs, oral argument audio and transcripts, links to pertinent cases, questions presented, and general information explaining the significance of the In re Bilski patent case, formally titled In Re Bernard L. Bilski and Rand A. Warsaw. It involves a business method patent. It began when the USPTO examiner denied the patent application, filed on April 10, 1997, entitled "Energy Risk Management Method." The applicants appealed the final rejection by the US Patent and Trademark Office to the USPTO Board of Appeals and Interferences, which upheld the denial, as did the U.S. Court of Appeals for the Federal Circuit.

The Supreme Court granted certiorari and issued its opinion on June 28, 2010, which refused to deny as possibly patentable business methods as a category, but did not suggest broad patentability of such "inventions". An unusually large number of amicus briefs were filed both at the appellate level and with the Supreme Court, and you can find them or links to them here. We at Groklaw have done a number of the briefs as text, particularly those addressing the question of whether software should be patentable. While we strive for accuracy, only the PDFs are official. However, for those who depend on screen readers and those wishing to search by keyword, the text versions are more useful. Groklaw also has a separate collection of patent law resources.

If you are a lawyer wondering why some argue that software is mathematics, and hence ineligible for patent protection, or are just interested to know why software developers, particularly those who develop Free and Open Source software, almost to a man oppose software patents, you might enjoy reading Groklaw's An Explanation of Computation Theory for Lawyers, and Software Is Mathematics—The Need for Due Diligence, as well as the amicus briefs and articles marked with the discreet red stars [*], below. Donald Knuth, called the "father" of the analysis of algorithms, stated: "Basically I remain convinced that the patent policy most fair and most suitable for the world will regard mathematical ideas (such as algorithms) to be not subject to proprietary patent rights." Also, there is a 30-minute movie, Patent Absurdity: How software patents broke the system, which explains it well.

I am told that the courts are trying to make a distinction between mathematical algorithms and nonmathematical algorithms.
To a computer scientist, this makes no sense, because every algorithm is as mathematical as anything could be.

~ Donald Knuth


Resources

Decisions ]  [  Oral Argument ]  [ Amicus Briefs, Sup. Ct. ]  [ Amicus Briefs, Appeals ] 
Groklaw Articles ]  [ Questions Presented ]  [  Pertinent Cases ] [  Filings  ] [  Miscellaneous  ] [  Post Bilski  ]


Decisions:

  • Opinion by the US Supreme Court [PDF; text; text of Judge Stevens' and Breyers' concurring opinions]
  • Decision by the Court of Appeals for the Federal Circuit [PDF], sua sponte en banc review, decided October 30, 2008 [text]. The court chose the "machine or transformation test" -- it must be "tied to a particular machine or apparatus" or it must "transform a particular article into a different state or thing" -- for determining whether a claimed process qualifies as patentable subject matter under 35 U.S.C. 101, rejecting the standard that anything that produces a "useful, concrete, and tangible result" is potentially patentable. It sustained the rejection of all Bilski's claims. "We affirm the decision of the Board because we conclude that Applicants' claims are not directed to patent-eligible subject matter, and in doing so, we clarify the standards applicable in determining whether a claimed method constitutes a statutory "process" under § 101."
  • Decision by the USPTO's Board of Patents and Interferences [PDF] in Ex parte Bernard L. Bilski and Rand A. Warsaw, Appeal No. 2002-2257, Application 08/833, 892, Heard March 8, 2006, decided October 1, 2007. It sustained the rejection of the claims by the examiner as not directed to patent-eligible subject matter under 35 U.S.C. § 101.

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Filings at the US Supreme Court:

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Oral Argument
(Audio and Transcripts) Lower Court, Court of Appeals for the Federal Circuit, and U.S. Supreme Court:

Back to top ] 

Amicus Briefs, U.S. Supreme Court:
Complete collections:
American Bar Association
Patently-O, also here
[includes brief descriptions of the positions taken]

Back to top ] 

Amicus Briefs, Appeals Court:

Back to top ] 

Groklaw Articles Explaining Bilski, Chronologically Listed:

Back to top ] 

Questions Presented:

U.S. Supreme Court:

The Supreme Court has asked that amicus briefs answer the following two questions:

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 “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Appeals Court:

The appeals court had requested [PDF] the parties and amici to answer five questions:

The court by its own action grants a hearing en banc. The parties are requested to file supplemental briefs that should address the following questions:
(1) Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?

(2) What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

(3) Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?

(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

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Pertinent Cases:

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After the US Supreme Court Opinion:

  • In Re Proudler [PDF], the first decision to reference In Re Bilski after the opinion issued, rejecting software as abstraction and setting a new category of rejection.

Miscellaneous:

Back to top ] 


Last Updated Wednesday, May 09 2012 @ 02:37 PM EDT


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