Bilski-Hitler Satirical Video.

JW Note:  Hat-tips to Zura’s 271 Blog and IPBIZ.  Hilarious spoof on Youtube related to the ongoing Bilski v. Kappos case being considered at the SCOTUS.  Apparently some patent attorney has had way too much time on his hands.  Enjoy! 

 

 

“Patentable Subject Matter After the Bilski Oral Argument” Webcast – November 19, 2009.

The American University, Washington College of Law (WCL) is cosponsoring a program on November 19, 2009, titled “Patentable Subject Matter After the Bilski Oral Argument”.  Per the WCL website:

A Telecast by the Program on Information Justice and Intellectual Property, Washington College of Law, American University and the Federal Circuit Bar Association

November 19, 2009, 4:30-6:30 pm
Washington College of Law, Room 603

In Bilski v. Kappos, the U.S. Supreme Court will address limitations on patentable subject matter in the context of a business method invention, analyzing a body of case law in such a way that some say could wrongly call into question the validity of many other patents and types of claims, while others argue it is not restrictive enough. The oral argument – and the subsequent decision – will be studied by a broad range of members of the patent community who are seeking to determine its effects on innovation, prosecution, licensing, and litigation. PIJIP and the FCBA will host a panel of experts to discuss the case shortly after the Court hears the oral argument.
 
The panelists for this program include: Raymond T. Chen, Solicitor, U.S. Patent and Trademark Office, Counsel for Respondent, J. Michael Jakes, Finnegan Henderson, Counsel of Record for Petitioners, Nancy Linck, Rothwell, Figg, Counsel for Amicus Curiae BIO, and Randolph Moss, WilmerHale, Counsel for Amici Curiae Bank of America et al. A period for questions will follow. Thomas C. Goldstein, Akin, Gump, Counsel for Amicus Curiae American Bar Association and Professor Joshua Sarnoff, Washington College of Law, American University, Counsel for Amici Eleven Law Professors and the AARP will moderate.
 
In addition to on-site attendance, the FCBA will also broadcast the program live via the web on November 19, 2009 as a part of its regular Horizons series.    

This likely will be an excellent panel discussion of the recent oral arguments in Bilski v. Kappos.  More information on the program, and details how to participate, may be found here.

Bilski v. Kappos: Notable Quotes from the Oral Arguments.

The link to the transcript for the November 9th oral arguments before the SCOTUS in Bilski v. Kappos can be found here.

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, below are some quotes that we found of particular interest:

Scheduled SCOTUS Oral Arguments in Bilski v. Kappos – November 9, 2009.

Oral arguments in Bilski v. Kappos are scheduled for today, November 9, 2009.  Previous AT! coverage of Bilski here, here, here, and here.

In short, the CAFC in Bilski has held that business methods are not patentable unless they satisfy the machine-or-transformation test.  In other words, patentable business methods must either: 1) transform matter into a different state or thing, or 2) be tied to particular machine.  The Bilski decision expressly held inadequate the 1998 ruling in State Street Bank, which had established that business methods were patentable if they produced a “useful, concrete, and tangible result”. 

The questions presented in the petition for U.S. Supreme Court review were:

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.

Further details on Bilski v. Kappos may be found via the SCOTUS  Wiki here.  A transcript of the oral arguments will follow, as soon as available.

SCOTUS Grants Cert in Bilski.

The United States Supreme Court granted certiorari today (courtesy of SCOTUS Blog) in the case Bilski v. Doll. See previous AT! coverage of Bilski here, here, and here.

In short, the CAFC in Bilski has held that business methods are not patentable unless they satisfy the machine-or-transformation test.  In other words, patentable business methods must either: 1) transform matter into a different state or thing, or 2) be tied to particular machine.  The Bilski decision expressly held inadequate the 1998 ruling in State Street Bank, which had established that business methods were patentable if they produced a “useful, concrete, and tangible result”. 

The questions presented in the petition for U.S. Supreme Court review were:

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.

Now the the SCOTUS has granted cert in Bilski, will business methods as patentable subject matter survive?  Any thoughts from our readers?

Intellectual Property Colloquium – In re Bilski Podcast.

 

Professor Rob Merges (Berkeley), Professor John Duffy (George Washington), and Professor Doug Lichtman (UCLA), recently recorded a one-hour audio podcast about the In re Bilski decision.  The participants are prominent patent academics and have interesting perspectives on the case.  Indeed, Professor Duffy was one of the four lawyers invited to present oral argument in Bilski.  The podcast is freely available on the Internet here.

The podcast is available at a new website called the Intellectual Property Colloquium, and is part of an on-going series of intellectual property podcasts that Professor Lichtman will be creating with senior academic and industry guests.  At the website is an archive and a list of future programs.  Of particular interest to our attorney readers, the podcasts appear to be eligible for CLE credit (watch out for those verification words!) in New York and California — and Professor Lichtman expects the podcasts to be able to be eligible for CLE in Ohio, Illinois, Texas, Delaware, and Washington in the near future.

In Re Bilski.

The applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test.

(Fed. Cir. 2008, 07-11130, en banc)

Bernard L. Bilski and Rand A. Warsaw (collectively, “Applicants”) appealed from the final decision of the BPAI sustaining the rejection of all eleven claims of their U.S. Patent Application Serial No. 08/833,892 ( the “′892 application”).  Specifically, Applicants argued that the examiner erroneously rejected the claims as not directed to patent-eligible subject matter under 35 U.S.C. § 101, and that the Board erred in upholding that rejection. The appeal was originally argued before a panel of the court on October 1, 2007. Prior to disposition by the panel, however, the CAFC sua sponte ordered en banc review. Oral argument before the en banc court was held on May 8, 2008. The CAFC affirmed the decision of the BPAI, concluding that Applicants’ claims are not directed to patent-eligible subject matter, and in doing so, clarified the standards applicable in determining whether a claimed method constitutes a statutory “process” under § 101.

CONCLUSION

Because 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.

JW Note:  Further analysis to follow.  See background from AT! here.

JW Update 11/12/08:  Analysis with varying opinions on the impact of the decision is available from other patent law blogs here, here, and here.  Enjoy.

In Re Bilski En Banc Oral Arguments.

Oral arguments were heard today at the CAFC for In re Bilski.  The CAFC had earlier ordered an en banc hearing of Bilksi to address the following questions:

(1)  Whether claim 1 of the [Bilski] 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?

Gene Quinn at PLI attended the oral arguments, and has a great post on the conduct of the judges, the opposing parties, and the amici present for the arguments here.

Professor Crouch at Patently-O reads his tea leaves here.

Listen to the oral arguments here.

See our previous AT! post providing background on the case here.