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:
- Oral argument before the US Supreme Court [PDF], November 2, 2009, transcript [Groklaw's color coded version, to make it easier to follow the speakers; and Groklaw version without line numbers for those using screen readers.
- US Court of Appeals for the Federal Circuit, May 8, 2008, in two parts.
-
Oral argument, USPTO Board of Patents and Interferences, October 1, 2007. Search by the keyword Bilski, and identify the USPTO argument by date.
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Amicus Briefs, U.S. Supreme Court:
Complete collections: American Bar Association
Patently-O, also
here
[includes brief descriptions of the positions taken]
- ABA [PDF], in support of respondent
- Accenture-Pitney Bowes in support of petitioner
- Bloomberg [PDF], in support of respondent
- Boston Patent Law Association [PDF] in support of petitioner
- Borland Software Corporation [PDF] in support of petitioner
- CCIA [PDF], in support of respondent
- EFF [PDF], in support of respondent
- Eleven Law Professors and AARP [PDF], in support of respondent
- FFII [PDF], in support of respondent
- Franklin Pierce Law Center in support of petitioner
- *Free Software Foundation
[text] in support of respondent*
- Google [PDF], in support of respondent
- IBM [PDF], in support of neither party
- John Sutton, patent attorney in support of petitioner
- Professor Lee Hollaar and IEEE-USA [PDF]
[text], in support of affirmance
- Microsoft, with Symantec and Koninklijke Philips Electronics N.V. [PDF] [text], in support of respondent
- Nevada State Bar [PDF], in support of respondent
- * Red Hat [PDF] [ text], in support of affirmance*
- *Software Freedom Law Center [PDF] [
text] in support of respondent*
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Amicus Briefs, Appeals Court:
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Groklaw Articles Explaining Bilski, Chronologically Listed:
- *April 9, 2008, In re Bilski -- Background - and Red Hat files amicus brief saying software patents are a brake on innovation*
- *April 9, 2008, Red Hat's amicus brief as text*
- May 9, 2008, Bilski Oral Arguments, two Groklaw members report on the en banc review oral argument
- October 30, 2008, Bilski Decision [text]
- *November 3, 2008, Bilski - What It Means, Part 1 - Red Hat on What it Means for FOSS*
- November 5, 2008, Bilski - What It Means, Part 2 - Listening to the Dissenting Opinions [text, Newman and Rader dissents, and then the concurring opinion by Justices Linn and Dyk]
- November 9, 2008, Bilski - What It Means, Part 3 - The Mayer Dissent & Some Intangibility Questions [text]
- November 12, 2008, Bilski - What It Means, Part 4 - The Microsoft Brief [text]
- November 24, 2008, Bilski - What It Means, Part 5 (Conclusion) - What About Microsoft's Patent Threats?
- March 7, 2009, Bilski Is Ruled Dispositive: In Re Ferguson, as text
- July 6, 2009, Bilski redux
- September 22, 2009, Professor Lee Hollaar's Amicus Brief in Bilski [partial text]
- *September 26, 2009, The Arguments For Patents for Business Methods and Software-Implemented Inventions - And Some Against*
- September 29, 2009,
The Government Files its Bilski Brief: Argues For "Particular Machine or Transformation of Matter" Test [text]
- *October 1 2009,
Red Hat Files its Bilski Brief: Asks Supreme Ct. to Exclude Software From Patentability [text] [Red Hat press release; CEO Jim Whitehurst's Blog]*
- *October 2, 2009,
SFLC files Bilski brief: Software should not be patentable and don't forget the 1st Amendment [text]*
- *October 6, 2009, FSF Files Amicus Brief in Bilski - The Country Needs and Relies on FOSS [text]*
- * October 31, 2009, Correcting Microsoft's Bilski Amicus Brief -- How Do Computers Really Work?*
- November 9, 2009, In Re Bilski - Transcript of Today's Oral Argument at the US Supreme Court
- *November 11, 2009,
An Explanation of Computation Theory for Lawyers*
- June 28, 2010, Here's Bilski: It's Affirmed, But . . .No Decision on Software Patentability
- June 29, 2010, Judge John Paul Stevens on Bilski and Business Methods Patents - Judge Stevens' and Breyers' concurring opinions as text
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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:
- *The Case Against Software Patents, Red Hat's EPO-G3/08 Amicus Brief*
- US Patent and Trademark Office
- 271 Patent Blog, some lawyers' reactions to oral argument at the US Supreme Court.
- Media reactions to oral argument at the US Supreme Court
- *Abandoning Software Patents?, by Ciarán O'Riordan, Exective Director of End Software Patents, on Patently-O, November 6, 2009.*
- Three Rulings Based on Bilski
- Patent Case Law in the US, End Software Patents Wiki
- *Patents and the Regress of Useful Arts, by Dr. Andrew W. Torrance & Dr. Bill Tomlinson, [10 Colum. Sci. & Tech. L. Rev. 130 (2009) (Published May 15, 2009)]*
- *Abstract Patents and Software [PDF], a chapter online from the book, Patent Failure - How Judges, Bureaucrats, and Lawyers Put Innovators at Risk.*
- *BU law professor and economist Michael Meurer video, co-author of the book Patent Failure (with Jim Bessen) uses economic analysis to argue that software patents are a drag on innovation.*
- Microsoft - A History of Anticompetitive Behavior and Consumer Harm [PDF] [text], by European Committee for Interoperable Systems (ECIS).
- EFF's Bilski Page
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Last Updated Wednesday, May 09 2012 @ 02:37 PM EDT
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