June 2010

Spotlight Info

On June 28, 2010, the Supreme Court issued its long-awaited decision in Bilski v. Kappos, 561 U.S. ___, No. 08−964, affirming the Federal Circuit’s judgment that the patent application at issue was not patentable subject matter under 35 U.S.C. § 101.  Significantly, the Supreme Court held that the machine-or-transformation (“MOT”) test was not the sole test for determining patent eligibility, and that there was no categorical exclusion of business method patents under § 101.  See the full summary in this month’s Bilski Special Edition of the newsletter.

 On June 24, 2010, the Federal Circuit granted a petition for a writ of mandamus in In re Zimmer Holdings, Inc., No. 10−M938, and ordered the district court in the Eastern District of Texas to transfer the case to the Northern District of Indiana.  The Federal Circuit noted that the patent owner-plaintiff transported copies of its patent prosecution files to its Texas office space, which it shared with another of its trial counsel’s clients.  The Court thus found that the patentee’s “presence in Texas appears to be recent, ephemeral, and an artifact of litigation.”  Slip op. at 6.

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