Federal Circuit Set to Consider the Scope of Patentable Subject Matter En Banc

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?