In re Bilski
| In re Bilski | |
|---|---|
 |
|
| Court | United States Court of Appeals for the Federal Circuit |
| Full case name | In re Bernard L. Bilski and Rand A. Warsaw |
| Argued | May 8 2008 |
| Decided | October 30 2008 |
| Citation(s) | 545 F.3d 943, 88 U.S.P.Q.2d 1385 |
| Case history | |
| Prior action(s) | Claims rejected, Ex parte Bilski (BPAI 2006), appealed to CAFC, en banc hearing ordered sua sponte. |
| Subsequent action(s) | Bilski v. Kappos, 561 U.S. ___(2010) (Aff'd, Machine or Transformation test not the sole test for patent-eligible subject matter) |
| Holding | |
| The "useful, concrete and tangible result" test of State Street should no longer be relied on. A method claim is surely patentable subject matter if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. BPAI affirmed. | |
| Court membership | |
| Judge(s) sitting | En banc Court: Chief Judge Paul Redmond Michel; Circuit Judges Pauline Newman, Haldane Robert Mayer, Alan David Lourie, Randall Ray Rader, Alvin Anthony Schall, William Curtis Bryson, Arthur J. Gajarsa, Richard Linn, Timothy B. Dyk, Sharon Prost, and Kimberly Ann Moore |
| Case opinions | |
| Majority | Michel, joined by Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost and Moore |
| Concurrence | Dyk, joined by Linn |
| Dissent | Newman |
| Dissent | Mayer |
| Dissent | Rader |
| Laws applied | |
| 35 U.S.C. § 101 | |
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008), was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of hedging risks in commodities trading. The court also reiterated the machine-or-transformation test as the (meaning sole) applicable test for patent-eligible subject matter, and stated that the test in State Street Bank v. Signature Financial Group should no longer be relied upon.
The Supreme Court of the United States issued an opinion on appeal (as Bilski v. Kappos) that affirmed the judgment of the CAFC, but revised many aspects of the CAFC's decision. In its decision, handed down on June 28, 2010, the Supreme Court rejected the machine-or-transformation test as the sole test of process patent eligibility based on an interpretation of the language of § 101. The majority, however, had high praise for the Federal Circuit opinions, advising that "[s]tudents of patent law would be well advised to study these scholarly opinions."
The applicants (Bernard L. Bilski and Rand Warsaw) filed a patent application (on 10 April 1997) for a method of hedging risks in commodities trading via a fixed bill system. Such patent claims are often termed business method claims.
...
Wikipedia