Bilski v. Kappos (2009, USA)

From en.swpat.org

Bilski v. Kappos (previously named Bilski v. Doll) is the name of the 2009/2010 case in the USA where the Supreme Court will review the CAFC's 2008 in re Bilski ruling. Bilski is very important because, for the first time since the 1981 Diamond v. Diehr ruling, the question of the case is about what is patentable subject matter, so it will create consequential case law.

(See: the court hearing transcript and ESP's analysis of the hearing)

The patent being defended by Bilski is on a business method,^[1] but the test created in the in re Bilski ruling - the "particular machine or transformation" test - is broad enough to block the patenting of some software ideas too. The in re Bilski ruling has already been used by the USPTO to reject certain software patent applications,^[2] and a District Court has used it to invalidate a patent.^[3] The Supreme Court is unlikely to have decided to review this case just to confirm it, and they have a free hand to narrow it, overturn it, or broaden it.

To help brainstorm for what arguments can be used in Bilski briefs, see Bilski brainstorming.

Contents 1 Timeline 2 Questions posed to the Supreme Court 3 External Links 3.1 Coverage of initial announcement 3.2 Later analyses 4 References

[edit] Timeline

• 2009-09-25: Deadline for the Respondent (Mr. Bilski et al)^[4] - thus the deadline for third-party briefs should be 7 days later, October 2nd.
• 2009-11-09: Oral argument.^[5]

[edit] Questions posed to the Supreme Court

The Supreme Court has accepted to review this ruling for the purpose of answering two questions:^[6]

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.", and

Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. §273.

[edit] External Links

• ESP's About Bilski page
• Court order granting certiorari for Bilski vs. Doll
• Bilski's patent application, although this copy might be from before there were other clauses added (related Patently-o article)
• http://www.scotuswiki.com/index.php?title=Bilski_v._Kappos
• FFII's Bilski page
• Bradley Kuhn and Aaron Williamson discuss the case and the submitted briefs (SFLC podcast)

[edit] Coverage of initial announcement

• Bloomberg News - The Supreme Court of the USA have decided to review the in re Bilski ruling - June 1, 2009
• SCOTUS Blog - Court to rule on “methods” patents - June 1, 2009
• Prior Art Blog - Handicapping Bilski at the Supreme Court - June 1, 2009
• The Blog of Legal Times - Supreme Court Will Hear Bilski Patent Case - June 1, 2009
• IP Watchdog - US Supreme Court Grants Cert. in Bilski - June 1, 2009
• PatentlyO - Bilski v. Doll: Reconsidering Patentable Subject Matter - June 1, 2009

[edit] Later analyses

• Groklaw's June 3rd 2009 analysis
• August 2009: Patently-o looks at the briefs submitted so far
• October 2009: Patently-o discusses Bilski and the Mayo case, speculates on dates
• AwkakenIP has gathered a long list of links

[edit] References

1. ↑ http://www.patentlyo.com/bilskiapplication.pdf
2. ↑ http://www.patentlyo.com/patent/2008/12/bpai-pto-should.html
3. ↑ http://www.businesswire.com/portal/site/google/?ndmViewId=news_view&newsId=20090708006020&newsLang=en
4. ↑ http://origin.www.supremecourtus.gov/docket/08-964.htm
5. ↑ http://origin.www.supremecourtus.gov/docket/08-964.htm
6. ↑ http://www.martindale.com/information-services/article_Lang-Michener-LLP_761038.htm