The Court’s decision, when it makes it, could affect the patentability of software and business method patents.
The much anticipated Bilski decision was published on October 30. While the full panel of the Federal Circuit reaffirmed that business methods are patentable, it rejected its previous "useful, concrete and tangible result" test, saying the "machine-or-transformation" test set out by the Supreme Court is the proper test to apply.
The Bilski petition – filed by J Michael Jakes of Finnegan in January – asks the Court to consider two questions: 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 to be patent-eligible under US law; and 2) Whether the Federal Circuit’s machine-or transformation test “contradicts the clear Congressional intent that patents protect ‘method[s] of doing or conducting business’”.
The Supreme Court granted certiorari today, to the surprise of many in the patent community. At the time of the Federal Circuit’s decision in October, Brad Wright of Banner & Witcoff told Managing IP that, since the opinion so closely followed Supreme Court precedent, he would be “very surprised if the Supreme Court agreed to take this case".
Wright reiterated that sentiment today, saying: “I’m quite surprised, and to be fair, I’m not the only one. But it’s been 30 years since the Supreme Court last looked at this issue and it seems like they may want to weigh in on it again, although that doesn’t mean that they’re necessarily going to reverse it.”
Wright said that the petitioners’ lawyer – Jakes of Finnegan – “did a good job of portraying this as another case in which the Federal Circuit is applying rigid rules in patent cases” and guessed that the Court might choose to affirm the decision, but provide more elaboration of its prior opinions in this area. He also said that Jakes was successful in arguing that the decision might negatively impact the US economy, since so many modern inventions are tied to computers.
Randy Lipsitz of Kramer Levin Naftalis & Frankel said that he was not surprised at all by the Court’s decision to hear the case. “The issues were just too important, the dollars at risk were just too large, and the change of mind by the Federal Circuit was just too obvious, for the Supreme Court to pass over this case,” said Lipsitz.
He added: “Chief Justice Roberts has a special interest in IP cases, and with the expected elevation of Judge Sotomayor to the Supreme Court ... we expect that there will much exposure of this case in the press, and an important decision from the Court.”
US president Barack Obama last week announced Sonia Sotomayor as his nominee to replace Justice David Souter on the US Supreme Court. Sotomayor focused partly on intellectual property law in her early career at Pavia & Harcourt and has ruled on several major IP cases.
“By accepting the case, we hope the Court is signalling its desire to reaffirm that patent protection is available to a broad range of inventive processes that drive today’s information economy,” said Jakes in a statement.
The case will likely be argued in November this year, with a decision to be issued in early 2010.
