February 15, 2008
On February 15, 2008, the Court of Appeals for the Federal Circuit announced that it would grant, by its own motion, a hearing en banc in Ex parte Bilski, Appeal No. 2007-1130. The case was previously argued before a three-judge panel on October 1, 2007, just ten days after the Court's decision in In re Comiskey called into question the status of business method patents. In re Stephen W. Comiskey, 499 F.3d 1635 (Fed. Cir. 2007).
The Bilski case involved a claim for a method for managing consumption risk costs of a commodity that, by the applicant's admission, required no computer apparatus. In Bilski, the Board of Patent Appeals and Interferences declined to apply the "useful, concrete and tangible result test" set forth in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). 2006 WL 4080055, at *2 (B.P.A.I. 2006). "[W]e interpret the State Street and AT&T test to be a test for when transformation of data by a machine is statutory subject matter." Id., at *10 (emphasis added). The Board upheld the examiner's rejections, finding that the claims "do not recite how the steps are implemented and are broad enough to read on performing the steps without any machine or apparatus…." Id., at *2.
In its order granting a hearing en banc, the Court set forth five issues to be addressed, including:
1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
Obviousness of Biologics Inventions: Strategies for Biologics Claims in the U.S., Europe, and China
May 28,2024
Webinar
Webinar
Building a Strong ADC Patent Portfolio – From Prosecution and Litigation Perspectives
May 15, 2024
Webinar
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.