SCotUS hears arguments in Bilski
Yesterday the Supreme Court of the United States heard oral arguments in Bilski v. Kappos (SCotUS case no. 08-964, on appeal from In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)).
The Supreme Court’s website has the oral argument transcript. The Washington Post report shows a recognition of the high stakes and illustrations of skepticism in the justices’ hypotheticals. The New York Times also describes discomfort with the patent at issue and notes the unusual level of attention the case has received, with one GW professor labeling it “the case of the century for patent law.”
Those looking at this from an appellate law perspective may be interested in checking out the merits briefs, available online courtesy of the ABA. The petitioners describe the issues as:
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 “machine-or-transformation” test for patent eligibility adopted by the Federal Circuit, effectively foreclosing meaningful patent protection to a business method involving a series of transactions among a commodity provider, consumers, and market participants, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
The government in response describes the issue as:
Whether a method of hedging financial risk that neither concerns the use of a particular machine or apparatus nor effects a transformation of matter into a different state or thing is eligible for patent protection under 35 U.S.C. 101.
The dozens of amicus briefs show that the Supreme Court is awash in friends – even without any of the justices joining Facebook. The amici include prominent trade groups, a number of academics, and business heavyweights in the fields of finance, insurance, pharmaceuticals, and technology (e.g., Bank of America, the Hartford, Novartis, Microsoft, Yahoo, and Google).
The decision will undoubtedly be a focus of patent practitioners for years to come. Stay tuned.
