In re Bilski

• Nov. 9, 2009 Transcript

• amici_briefs

This case is an appeal from a BPAI ruling (see below) finding the claims to be nonstatutory methods under 35 U.S.C. §101. The Examiner rejected the case because the claims were directed “solely to an abstract idea and solve[…] a purely mathematical problem without practical application in the technological arts.” The BPAI disagreed with the Examiner's reasoning but upheld the rejection because at least some of the claims do not require a machine to perform the claimed method and the method recited does not transform an article or matter into another state or thing.

The Fed. Cir. affirmed, stating that the claim fails the “machine-or-transformation test set forth by the Supreme Court and clarified herein.”

On June 1, 2009, the Supreme Court granted Cert.

• discussion, links
• press

On 01/27/09, Bilski filed for writ of certiorari with the following two questions being 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.

• Bilski's Petition (250 pages, 668 KB)
  • Paper-saver copy (125 pages, 984 KB)
• Announcement, associated documents, discussion

This section is a work in progress

On February 15, 2007, the Fed. Cir. ordered sua sponte, an en banc hearing on ex parte Bilski.

• Background and discussion

The Fed. Cir. finally handed down its decision in In re Bilski. Stated the court: “The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.”

The Fed. Cir. ruled that, “[b]ecause the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is AFFIRMED.”

1. “[A] claim is not patent-eligible 'process' if it claims 'laws of nature, natural phenomena, [or] abstract ideas.'” (Quoting the S.Ct. in Diehr ²⁾ )
2. “[W]hile a claim drawn to a fundamental principle is unpatentable, 'an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.'” (Quoting Diehr ³⁾ and also citing Mackay Radio ⁴⁾ with approval.)
3. “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” (Citing Benson ⁵⁾, Diehr ⁶⁾, Flook ⁷⁾, and Cochrane v. Deener ⁸⁾ ).
   • “[T]he Court explicitly stated in Benson that '[t]ransformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines'” (emphasis in original). The Fed. Cir. noted in footnote 11, that “We do not consider the word 'clue' to indicate that the machine-or-implementation test is optional or merely advisory. Rather, the Court described it as the clue, not merely 'a' clue.”
4. “[M]ere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent-eligible.” (Citing Diehr ⁹⁾.)
5. “[T]he Freeman-Walter-Abele test” comprising (1) determining whether the claim recites an “algorithm” within the meaning of Benson, then (2) determining whether that algorithm is “applied in any manner to physical elements or process steps, “is inadequate.” (Citing In re Freeman ¹⁰⁾, In re Walter ¹¹⁾, and In re Abele ¹²⁾ ).
6. ”[T]he 'useful, concrete and tangible result' inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply. (Citing with disapproval State St. Bank & Trust Co. v. Signature Fin. Group ¹³⁾, In re Alappat ¹⁴⁾, and AT&T Corp. v. Excel Commc'ns, Inc. ¹⁵⁾.)
7. There is no technical arts test or mental process test. In re Comiskey does not implicitly apply a new test barring any claim reciting a mental process that lacks significant “mental steps.”
8. Data gathering or insignificant extra-solution activity does not make an algorithm patentable. (Citing In re Grams ¹⁶⁾, In re Meyer ¹⁷⁾, In re Schrader ¹⁸⁾, and Parker v. Flook ¹⁹⁾.)

• Diamond v. Diehr, 450 U.S. 175 (1981) (Diamond_v._Diehr)
• Parker v. Flook, 437 U.S. 584 (1978) (Parker_v._Flook)
• Gottschalk v. Benson, 409 U.S. 63 (1972) (Gottschalk_v._Benson)
• Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86 (1939)
• Cochrane v. Deener 94 U.S. 780 (1876)

• In re Freeman, 573 F.2d 1237 (CCPA 1978)
• In re Walter, 618 F.2d 758 (CCPA 1980)
• In re Abele, 684 F.2d 902 (CCPA 1982)
• State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998)
• In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)
• AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352 (Fed. Cir. 1998)

• In re Comiskey, 499 F.3d 13651 (Fed. Cir. 2007)

• Summary and discussion
• Commentary by Professor Collins: In re Bilski: Tangibility Gone “Meta”
• Brief summary and commentary
• Brief summary
• Summary
• Excerpts
• Summary, commentary

Bilski's impact in various fields:

• Tax strategies
• Software Claims
• Biotech and Life Sciences

On May 8, 2008, the Fed. Cir. heard oral arguments.

• comment, discussion
• First-hand account, discussion