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Facts of the Case
Applicants were denied a patent by the Patent and Trademark Office (PTO) for claims pertaining to a process of managing risk in commodities trading. The PTO examiner deemed the invention not to be of patentable subject matter under 35 U.S.C. Section 101. The Board of Patent Appeals and Interferences affirmed the decision.
On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed. The court relied on Supreme Court precedent stating that an invention is patentable if: "1) it is tied to a particular machine or apparatus, or 2) it transforms a particular article into a different state or thing." Reasoning from this, it held that the applicants' invention clearly failed this test (machine-or-transformation test) and therefore did not constitute patentable subject matter.
Read the Briefs for this Case
Brief of Robert R. Sachs And Daniel R. Brownstone as Amici Curiae In Support of Neither Party
Brief of On Time Systems, Inc. as Amicus Curiae In Support of Neither Party
Brief for Prometheus Laboratories Inc . as Amicus Curiae In Support of Neither Party
Brief of Amicus Curiae Raymond C. Meiers In Support of Neither Party
Brief of Amicus Curiae Yahoo! Inc. In Support of Neither Party
Brief of Double Rock Corporation, Island Intellectual Property Llc, Lids Capital Llc, Intrasweep Llc, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems Llc, Rearden Capital Corporation, Craig Mowry And Pct Capital Llc as Amici Cu
Brief of Accenture And Pitney Bowes Inc. as Amici Curiae In Support of Petitioners
Brief of Amicus Curiae Boston Patent Law Association In Support of Petitioners
Brief of Amicus Curiae Caris Diagnostics, Inc. In Support of Petitioners
Brief of Franklin Pierce Law Center as Amicus Curiae In Support of Petitioners
Brief of Amicus Curiae the Houston Intellectual Property Law Association In Support of Petitioners
Brief of Monogram Biosciences, Inc. And Genomic Health, Inc. as Amici Curiae In Support of Neither Party
Brief of Amicus Curiae Timothy F. Mcdonough, Ph.d. In Support of Petitioners
Brief of Amicus Curiae the University of South Florida In Support of Petitioners
Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae In Support of Respondent
Amicus Curiae Brief of Center for Advanced Study And Research In Intellectual Property (casrip) of the University of Washington School of Law, And of Casrip Research Affili- Ate Scholars, In Support of Affirmance of the Judgment In Favor of Respondent
Brief of Dr. Ananda Chakrabarty as Amicus Curiae In Support of Petitioners
Brief of Eleven Law Professors And Aarp as Amici Curiae In Support of Respondent
Brief Amici Curiae of Professors Peter S. Menell And Michael J. Meurer In Support of Respondent
Brief of Amici Curiae Foundation for a Free Information Infrastructure, Ip Justice, And Four Global Software Professionals And Business Leaders In Support of Respondent
Brief of Amici Curiae American Medical Association, the American College of Medical Genetics, the American Society of Human Genetics, the Association of Professors of Human And Medical Genetics, And Mayo Clinic In Support of Respondents
Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company of Canada (u.s.), And Transamerica Life Insurance Company In Support
Brief of Amici Curiae Dolby Laboratories, Inc., Dts, Inc., And Srs Labs, Inc., In Support of Neither Party
Brief of American Bar Association as Amicus Curiae In Support of Respondent
Brief for Amicus Curiae Computer & Communications Industry Association In Support of Respondent
Brief of Entrepreneurial And Consumer Advocates Amici Curiae In Support of Respondent
Brief for Free Software Foundation as Amicus Curiae In Support of Respondent
Amici Curiae Brief of Internet Retailers In Support of Respondent
Brief of Amicus Curiae Knowledge Ecology International In Support of Respondent
Brief of Amicus Curiae Conejo Valley Bar Association In Support of Neither Party
Brief of FÉdÉration Internationale Des Conseils En PropriÉtÉ Industrielle as Amicus Curiae In Support of Neither Party
Brief Amicus Curiae of International Business Machines Corporation In Support of Neither Party
Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party
Brief of Amicus Curiae Intellectual Property Owners Association In Support of Neither Party
Brief of Amicus Curiae Medtronic, Inc. In Support of Neither Party
Question
1) Did the Federal Circuit err by using the machine-or-transformation test in determining patentable subject matter?
2) Does the machine-or-transformation test prevent patent protection for many business methods and thus contradict congressional intent that patents protect "methods of doing or conducting business."
Argument
Bilski v. Kappos - Oral ArgumentFull Transcript Text Download MP3Bilski v. Kappos - Opinion AnnouncementFull Transcript Text Download MP3
Conclusion
Decision: 9 votes for Kappos, 0 vote(s) against
Legal provision: Patent Act
No. No. The Supreme Court affirmed the Federal Circuit, holding that the applicants' claimed invention is not patent eligible. With Justice Anthony M. Kennedy writing for the majority, the Court reasoned that the Federal Circuit did not err when it used the "machine-or-transformation test" to determine patentability. However, the Court noted, in contrast to the Federal Circuit, that the machine-or-transformation test is not the sole test for determining patent eligibility.
Justice John Paul Stevens, joined by Justices Ruth Bader Ginsburg, Stephen G. Breyer, and Sonia Sotomayor, concurred in the judgment. He disagreed with the majority to the extent it suggested that any series of steps that is not itself an abstract idea or law of nature may constitute a "process" within Section 101. Justice Stephen G. Breyer, joined by Justice Antonin Scalia, also concurred in the judgment. He noted his agreement with Justice Stevens' concurrence and also highlighted the extent to which the Court agreed on many fundamental issues of patent law raised by this case. |