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The official decision for [[Bilski v. Kappos (2010, USA)]] is at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf
:Here's the official PDF: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf
 
  
This page is '''publicly editable, contributions welcome!''' (Same goes for all pages on {{SITENAME}})
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At the end of this page you can find a list of '''[[#External_links_.28other_people.27s_analyses.29|links to third-party analyses]]'''.
  
At the end of this page you can find a list of '''[[#External_links_.28other_people.27s_analyses.29|links to third-party analyses]]'''.
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For info about the effects of Bilski, see [[Patentability in the USA after Bilski]].
  
 
==Summary of the decision==
 
==Summary of the decision==
  
The important part to read is pages 5-20 of the PDF.  This is the opinion of the court, written by [[Justice Kennedy]].
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The important part to read is pages 5-20 of the PDF (minus the sections II–B–2 and II–C–2, explained below).  This is the opinion of the court, written by [[Justice Kennedy]].
  
In general, the decision is narrower than most expected.  Bilski's patent has been rejected (no surprise), but the judges used old rulings, so there's no new test, and they didn't even offer much in the way of clarifying those old rulings.  They narrowed patent law in some ways, by saying that the [[machine-or-transformation]] test is not the only test, but they also broadened patent law in other ways, saying that failing the machine-or-transformation doesn't mean an idea is completely unpatentable.
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In general, the decision is narrower than most expected.  Bilski's patent has been rejected (no surprise), but the judges used old rulings ([[Diamond v. Diehr (1981, USA)|Diehr]], [[Gottschalk v. Benson (1972, USA)|Benson]], [[Parker v. Flook (1978, USA)|Flook]]), so there's no new test, and they didn't even offer much in the way of clarifying those old rulings.  They narrowed patent law in some ways, by saying that the [[machine-or-transformation]] test is not the only test, but they also broadened patent law in other ways, saying that failing the machine-or-transformation doesn't mean an idea is completely unpatentable.
  
 
On the positive side, they rejected two of the CAFC's worst rulings:
 
On the positive side, they rejected two of the CAFC's worst rulings:
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==Which pages are the core decision?==
 
==Which pages are the core decision?==
  
The core or "controlling" part is contained in the "opinion of the court", on pages 5-20 of the PDF.  However, the opinion of the court is only supported by five of the nine judges, and [[Justice Alito]] did not support sections II–B–2 and II–C–2.  So the core of this decision is the opinion of the court, minus those two sections.
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This ruling is a little more complicated than usual. The "controlling" part (that is, the part which is backed by at least 5 of the 9 judges) is contained in the "opinion of the court", on pages 5-20 of the PDF.  However, sections II–B–2 and II–C–2 are ''not'' part of the controlling opinion[[Justice Scalia]] did not support these sections, so they do not have majority support.
  
Here's the full description of who supported what:
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Here's the full description of who supported what (from PDF page 4 of the decision):
  
 
<blockquote>
 
<blockquote>
KENNEDY, J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. ROBERTS, C. J., and THOMAS and ALITO, JJ., joined the opinion in full, and SCALIA, J., joined except for Parts II–B–2 and II–C–2. STEVENS, J., filed an opinion concurring in the judgment, in which GINSBURG, BREYER, and SOTOMAYOR, JJ., joined. BREYER, J., filed an opinion concurring in the judgment, in which SCALIA, J., joined as to Part II.
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[[Justice Kennedy|KENNEDY]], J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. [[Justice Roberts|ROBERTS]], C. J., and [[Justice Thomas|THOMAS]] and [[Justice Alito|ALITO]], JJ., joined the opinion in full, and [[Justice Scalia|SCALIA]], J., joined except for Parts II–B–2 and II–C–2. [[Justice Stevens|STEVENS]], J., filed an opinion concurring in the judgment, in which [[Justice Ginsburg|GINSBURG]], [[Justice Breyer|BREYER]], and [[Justice Sotomayor|SOTOMAYOR]], JJ., joined. [[Justice Breyer|BREYER]], J., filed an opinion concurring in the judgment, in which [[Justice Scalia|SCALIA]], J., joined as to Part II.
 
</blockquote>
 
</blockquote>
  
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The purpose of this case is to decide the validity of a [[business method patent]], so the effects on the patentability of ''software'' will be found only indirectly.
 
The purpose of this case is to decide the validity of a [[business method patent]], so the effects on the patentability of ''software'' will be found only indirectly.
  
===Suggesting software ideas are NOT patentable===
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===Passages that might ''narrow'' patent law===
  
 
Closing paragraph (2nd last), distances the court from the CAFC's [[State Street v. Signature Group (1999, USA)]] and [[AT&T Corp. v. Excel Communications Inc. (1999, USA)]] rulings:
 
Closing paragraph (2nd last), distances the court from the CAFC's [[State Street v. Signature Group (1999, USA)]] and [[AT&T Corp. v. Excel Communications Inc. (1999, USA)]] rulings:
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</blockquote>
 
</blockquote>
  
This narrows the scope for patenting if the emphasis is put on "sole", but in context, it can also be read to exclude ''less'' than machine-or-transformation. I.e., if something fails the machine-or-transformation test, it may (in some unspecified but probably rare cases), still be patentable.
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This narrows the scope for patenting if the emphasis is put on "sole", but in context, it can also be read to exclude ''less'' than machine-or-transformation. I.e., if something fails the machine-or-transformation test, it may (in some unspecified but probably rare cases) still be patentable.
  
===Suggesting software ideas ''or'' business methods ARE patentable===
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===Passages that suggest ''broad'' patent law===
  
 
The opinion says that [[Gottschalk v. Benson (1972, USA)]]:
 
The opinion says that [[Gottschalk v. Benson (1972, USA)]]:
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This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
 
This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
 
</blockquote>
 
</blockquote>
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Section VI of the concurring opinion written by Judge Steven (DF p. 58-67) quotes many studies and statements supported by swpats opponents, a must-read!
  
 
==Reaction from the [[USPTO]]==
 
==Reaction from the [[USPTO]]==
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* [[Reading case law]]
 
* [[Reading case law]]
 
* [[Bilski overview]]
 
* [[Bilski overview]]
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* [[US Supreme Court]]
 
* [[USA]]
 
* [[USA]]
  
 
==External links (other people's analyses)==
 
==External links (other people's analyses)==
  
* [[Software Freedom Law Center]]: [http://www.softwarefreedom.org/news/2010/jun/28/sflc-bilski-decision-response/ SFLC Responds to Landmark Supreme Court Patent Decision]
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* [[Software Freedom Law Center]] : [http://www.softwarefreedom.org/news/2010/jun/28/sflc-bilski-decision-response/ SFLC Responds to Landmark Supreme Court Patent Decision]
* [[Groklaw]]: [http://www.groklaw.net/article.php?story=20100628100422167 No Decision on Software Patentability]
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** [[Dan Ravicher]] audio interview : [http://www.softwarefreedom.org/podcast/2010/jun/29/episode-0x2b-bilski-rundown/ Bilski Rundown] (and [http://news.swpat.org/2010/09/dan-ravichers-bilski-rundown/ transcript on news.swpat.org])
* Patently-o: [http://www.patentlyo.com/patent/2010/06/bilski-v-kappos-business-methods-out-software-still-patentable.html Business methods out software still patentable] and a little later [http://www.patentlyo.com/patent/2010/06/bilski-v-kappos-and-the-anti-state-street-majority.html Bilski v. Kappos and the Anti-State-Street-Majority]
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* [[Groklaw]]: [http://www.groklaw.net/article.php?story=20100628100422167 No Decision on Software Patentability] and later [http://www.groklaw.net/article.php?story=20100629014657710 Justice John Paul Stevens on Bilski and Business Methods Patents, as text]
* IPwatchdog: [http://www.ipwatchdog.com/2010/06/28/supreme-court-decides-bilski/ Machine or Transformation Not the Only Test, Bilski Not Patentable]
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* Patently-o : [http://www.patentlyo.com/patent/2010/06/bilski-v-kappos-business-methods-out-software-still-patentable.html Business methods out software still patentable] and a little later [http://www.patentlyo.com/patent/2010/06/bilski-v-kappos-and-the-anti-state-street-majority.html Bilski v. Kappos and the Anti-State-Street-Majority]
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* IPwatchdog : [http://www.ipwatchdog.com/2010/06/28/supreme-court-decides-bilski/ Machine or Transformation Not the Only Test, Bilski Not Patentable]
 
** [http://www.ipwatchdog.com/2010/06/28/uspto-memo-to-examiners/ USPTO Sends Memo to Examiners Regarding Bilski v. Kappos]
 
** [http://www.ipwatchdog.com/2010/06/28/uspto-memo-to-examiners/ USPTO Sends Memo to Examiners Regarding Bilski v. Kappos]
 
* APRIL: {{translate fr|url=http://www.april.org/fr/bilski-les-etats-unis-commencent-le-deminage-des-brevets-logiciels|title=The USA begins disposing of software patents}}
 
* APRIL: {{translate fr|url=http://www.april.org/fr/bilski-les-etats-unis-commencent-le-deminage-des-brevets-logiciels|title=The USA begins disposing of software patents}}
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* The Prior Art : [http://thepriorart.typepad.com/the_prior_art/2010/06/supreme-court-decides-bilski.html Stevens and Allies Try to Ban "Business Method" Patents, but Fail to Get Fifth Vote]
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* Washington Post : [http://www.washingtonpost.com/wp-dyn/content/article/2010/06/28/AR2010062803523.html Supreme Court relaxes limits on innovations that can be patented]
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* Rob Tiller ([[Red Hat]]): [http://opensource.com/law/10/6/initial-thoughts-bilski Initial thoughts on Bilski]
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* [[Florian Mueller]] : [http://fosspatents.blogspot.com/2010/06/bilski-decision-major-disappointment.html Bilski decision a major disappointment : doesn't invalidate even one software patent]
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** and [http://fosspatents.blogspot.com/2010/06/who-lost-bilski-vs-kappos-besides.html Who lost Bilski vs. Kappos besides Bilski & Warsaw? Ten answers]
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* Cyberlaw Cases : [http://cyberlawcases.com/2010/06/30/sifting-through-the-clues-to-patentability-four-take-home-points-from-bilski%E2%80%99s-mixed-bag/ Sifting through the clues to patentability: Four take-home points from Bilski’s mixed bag]
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* [[EFF]] : [http://www.eff.org/deeplinks/2010/06/bilski-v-kappos-supreme-court-declines-prohibit Bilski v. Kappos: The Supreme Court Declines to Prohibit Business Method Patents]
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* 271patent : [http://271patent.blogspot.com/2010/06/scotus-bilski-decision-do-no-harm.html SCOTUS Bilski Decision: "Do No Harm"]
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===Post-Bilski patent policy in the USA===
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* [http://www.patentlyo.com/patent/2010/07/explaining-patentable-subject-matter-the-first-bilski-test-cases.html Explaining Patentable Subject Matter: The First Bilski Test Cases], July 7<sup>th</sup> 2010, Patently-O
  
 
==References==
 
==References==
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{{footer}}
 
{{footer}}
 
[[Category:Bilski]]
 
[[Category:Bilski]]
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[[Category:Court ruling analyses]]
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[[Category: Court rulings by US Supreme Court]]
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[[Category: Court rulings in the USA]]

Latest revision as of 14:28, 18 February 2014

The official decision for Bilski v. Kappos (2010, USA) is at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

At the end of this page you can find a list of links to third-party analyses.

For info about the effects of Bilski, see Patentability in the USA after Bilski.

Summary of the decision

The important part to read is pages 5-20 of the PDF (minus the sections II–B–2 and II–C–2, explained below). This is the opinion of the court, written by Justice Kennedy.

In general, the decision is narrower than most expected. Bilski's patent has been rejected (no surprise), but the judges used old rulings (Diehr, Benson, Flook), so there's no new test, and they didn't even offer much in the way of clarifying those old rulings. They narrowed patent law in some ways, by saying that the machine-or-transformation test is not the only test, but they also broadened patent law in other ways, saying that failing the machine-or-transformation doesn't mean an idea is completely unpatentable.

On the positive side, they rejected two of the CAFC's worst rulings:

nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp.

End Software Patents' amicus brief argued that these cases were based on mis-application of the Supreme Court's Diehr ruling, so I hope we had something to do with getting these rulings rejected.

Which pages are the core decision?

This ruling is a little more complicated than usual. The "controlling" part (that is, the part which is backed by at least 5 of the 9 judges) is contained in the "opinion of the court", on pages 5-20 of the PDF. However, sections II–B–2 and II–C–2 are not part of the controlling opinion. Justice Scalia did not support these sections, so they do not have majority support.

Here's the full description of who supported what (from PDF page 4 of the decision):

KENNEDY, J., delivered the opinion of the Court, except for Parts II–B–2 and II–C–2. ROBERTS, C. J., and THOMAS and ALITO, JJ., joined the opinion in full, and SCALIA, J., joined except for Parts II–B–2 and II–C–2. STEVENS, J., filed an opinion concurring in the judgment, in which GINSBURG, BREYER, and SOTOMAYOR, JJ., joined. BREYER, J., filed an opinion concurring in the judgment, in which SCALIA, J., joined as to Part II.

Background

This case is about a business method patent. It's been obvious since the start that the Bilski patent would get rejected, but what's really important is the reasoning, and how that reasoning will affect software patents.

Excerpts

The purpose of this case is to decide the validity of a business method patent, so the effects on the patentability of software will be found only indirectly.

Passages that might narrow patent law

Closing paragraph (2nd last), distances the court from the CAFC's State Street v. Signature Group (1999, USA) and AT&T Corp. v. Excel Communications Inc. (1999, USA) rulings:

nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357.

This suggests the Supreme Court wants to exclude more than just what the CAFC's test excludes:

Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles.

This narrows the scope for patenting if the emphasis is put on "sole", but in context, it can also be read to exclude less than machine-or-transformation. I.e., if something fails the machine-or-transformation test, it may (in some unspecified but probably rare cases) still be patentable.

Passages that suggest broad patent law

The opinion says that Gottschalk v. Benson (1972, USA):

explicitly declined to “hold that no process patent could ever qualify if it did not meet [machine or transformation] requirements.”

Does that mean they're weakening the test?

The following text is worrying, but they use Diamond v. Diehr as their example, so they probably mean an innovative device that happens to be controlled by a computer:

But times change. Technology and other innovations progress in unexpected ways. For example, it was once forcefully argued that until recent times, “well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program.” Diehr, 450 U. S., at 195 (STEVENS, J., dissenting). But this fact does not mean that unforeseen innovations such as computer programs are always unpatentable.

(Note that the preceding quote is from part II-B-2, which Scalia did not join, and therefore it is not controlling.)

This text leaves the door open for allowing business method patents, but it might be out of context:

The Court is unaware of any argument that the “ ‘ordinary, contemporary, common meaning,’ ” Diehr, supra, at 182, of “method” excludes business methods

Pages 10,10 (PDF pages 14,15):

The argument that business methods are categorically outside of §101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents. Under 35 U. S. C. §273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use.

Page 12 (PDF page 16):

the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.

Other bits that seem important

"process" cannot be defined by a court, because:

§100(b) already explicitly defines the term “process.”

The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

Page 10 (PDF page 14). Have they decided to leave the software question for another day?:

This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

Section VI of the concurring opinion written by Judge Steven (DF p. 58-67) quotes many studies and statements supported by swpats opponents, a must-read!

Reaction from the USPTO

A USPTO official circulated the following memo a few hours after the Bilski decision.[1]

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
[emphasis added]

Related pages on ESP Wiki

External links (other people's analyses)

Post-Bilski patent policy in the USA

References