Monday, June 28, 2010


The Supreme Court released its much anticipated Bilski decision today. I am still digesting the 71 pages (which includes the main opinion authored by Justice Kennedy, as well Justice Stevens' opinion (joined by Justices Ginsburg, Breyer and Sotomayor) concurring in the judgment, and Justice Breyer's opinion (joined in part by Justice Scalia) concurring in the judgment).

In the interim, my colleague Michael J. Colitz, III, provides the following analysis:

The Supreme Court affirmed the Federal Circuit's rejection of the Bilski claims but not on the basis of the Machine or Transformation Test. The Court noted that the Machine or Transformation Test is not an exclusive test for determining patent eligible subject matter under 35 U.S.C. 101. The Court likewise rejected any categorical rule against business method patents. This apparently breaths new life into the State Street Bank decision. The Court ultimately determined that the Bilski claims represented an improper attempt to claim an abstract idea, which is unpatentable under the existing precedents of Benson, Flook and Diehr.

It kind of reminds me of the KSR decision. The Federal Circuit likes to apply the Patent Act via simple tests (i.e. Machine or Transformation; Teaching Suggestion or Motivation). The Supreme Court seems to be saying that while tests can be helpful they cannot be relied upon as an exclusive means of applying a statute.

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