Today, June 28, 2010, the U.S. Supreme Court published its opinion in the patent-related Bilski v. Kappos case (08-964 Bilski v. Kappos (06/28/2010)). (For more background on the case, see my previous news posts regarding Bilski v. Doll and Bilski v. Kappos Transcript.) Here is a link to the Bilski v. Kappos slip opinion as provided by the Supreme Court on their website (click here for the source page). While the Supreme Court held that Bilski’s patent application was indeed unpatentable, they also held that:
Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article. (pp.6-7)
The Court further held:
This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.” (p.8)
The Court left the door open for the Federal Circuit Court of Appeals to create a limitation consistent with §101:
Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. See ibid. But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101. (p.12)
It is clear from a reading of the opinion that all of the members of the court agreed on two points: (1) Bilski’s patent application was unpatentable because it claimed an abstract idea; and (2) the Federal Circuit Court of Appeals exclusive reliance on the machine-or-transformation test in determining patent eligibility was incorrect.
The Court recognized that unlike the opinion delivered by the Federal Circuit Court of Appeals, judicial restraint was the best path to avoid a broad impact of unforeseen consequences:
Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea. (p.13)
The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. (p.16)
Based on my reading of the oral arguments from last November, the opinion delivered by the Court today is not a surprise. It is, however, a welcome correction of the Federal Circuit Court of Appeals error in this case.
Tags: federal circuit court of appeals, patent eligibility, patent law, supreme court
