Bilski v. Kappos Legal Analysis – IP Law Brief

We’ve seen a good amount of key analysis published on JD Supra after the recent U.S. Supreme Court decision in Bilski v. Kappos. For your reference, here’s a look at some of it:

In re Bilski: A JD Supra IP Law

Case Summary

Patents back in business, at least in the
The US Supreme Court has issued its long awaited decision on the patentability of business methods. The Supreme Court decided that while the particular invention in question was not eligible for patent protection (it covered an abstract idea or scheme), business methods in general were not excluded from patentability. Further, business method inventions were distinguished from computer-implemented or software inventions. The Supreme Court considered computer-implemented inventions were more eligible for patent protection since they inherently include or relate to a computer and are therefore likely to at least have some technical considerations.

Practical Implications:

Supreme Court Rejects Bilski Claims,
Overturns “Machine-or-Transformation” Requirement for Patent Eligibility
of Processes
[Sheppard Mullin Richter & Hampton LLP]
…the Court’s careful grounding of its “abstract ideas” analysis in well-established precedent suggests that this case likely does not portend a “sea change” in the law of business method patents or software patents as many hoped or feared. Patent applicants are no longer required to meet the “machine-or-transformation” test, but the Supreme Court made clear that pure business methods will be scrutinized to ensure that abstract ideas are not patented.
Supreme Court Unanimously Rejects Bilski
Patent Application but Narrowly Upholds Business Method Patents
[Fenwick & West LLP]
Businesses should continue to seek to protect innovations that are core to operations. In particular,business method patents should be described in a way that focuses on particular improvements and efficiencies in the performance of a business
field, with specific connection to the “means” for implementing the business method, such as particular systems…

Business Method Patents Survive Bilski [Morrison & Foerster LLP]
While it remains to be seen precisely how Bilski will be implemented at the Patent Office, the decision will likely benefit patent applicants because it does not categorically preclude the patenting of business methods. Further, applicants will no longer be limited to showing that their method claims are tied to a particular machine or transformative of a particular article. By leaving open for future development the standards by which an invention may qualify as a patentable “process,” the Court has made it more difficult for the Patent Office to rely on bright-line rules for rejecting claims on Section 101 grounds.

Bilski’s Lesson: Avoid Abstraction [IMS ExpertServices]
Going forward, the burden on patent prosecutors, patent litigators and expert witnesses will be to address that issue squarely. Those advocating in favor of the patent will have to do whatever they can to give the application firm and tangible grounding. Those opposing it will have to send it soaring into the intellectual stratosphere. This much is certain: Bilski opens the floodgates to new torrents of litigation over how abstract is too abstract. For all those who hoped the Supreme Court would use this case tooffer clarity, well, there’s always next time.

Bilski v. Kappos:
Machine-or-Transformation Test Provides Only a Clue to the Eligibility
of a Process as Patentable Subject Matter
[Armstrong Teasdale LLP]
By clarifying use of the strict machine-or-transformation test as only a non-exclusive factor in determining whether subject matter is patent-eligible, the Court in Bilski was clearly protecting the potential patentability of new technologies including those related to “software, advanced diagnostic medicine techniques, and inventions based on linear programming, data
compression, and the manipulation of digital signals.”

Cases to Watch:

U.S. Supreme Court Decides Fate
of Three Key § 101 Cases
…the Supreme Court granted certiorari and then vacated and remanded Classen and Prometheus for further consideration by the Federal Circuit in light of the decision in Bilski v. Kappos. Both Classen and Prometheus have been closely watched in the biological and pharmaceutical fields, and the Federal Circuit’s opinions on remand may shed new light on the scope of § 101 and how the Supreme Court’s Bilski v. Kappos holding will apply to other important cases in the future.

Related Bilski docs:

Bilski v. Kappos:
Bilski Oral Argument Before the U.S.
Supreme Court – Official Transcript

In Re Bernard L. Bilski and Rand A. Warsaw
Decision of the United States Court of
Appeals for the Federal Circuit

Follow JD Supra’s Bilski feed for future updates.


On JD Supra: Intellectual Property Law Center
– On Facebook: Intellectual Property l Tech Law
– On
Twitter: Intellectual Property l Science l Technology

join your colleagues on JD Supra. Showcase your expertise: upload
your articles, alerts, commentary, and legal analysis today.