On June 1st, 2009, In Re Bilski became Bilski v. Doll, as the U.S. Supreme Court granted certiorari, the only case granted certiorari during that week, while approximately one hundred and sixty seven other cases were denied review. Bilski v. Doll will have immense implications.
The patent application involved is for a business method patent. The Federal Circuit’s In Re Bilski decision severely limited this class of patents. The Examiner rejected Bilski’s application on the grounds that “the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.” The Examiner invoked a test that has never been approved by an appellate court, the so called technological arts test, to reject the patent application.
The Court of Appeals for the Federal Circuit, en banc, affirmed the Examiner, using an even different test, the test now referred to as the machine or transformation test. The Federal Circuit’s decision was petitioned to the Supreme Court for certiorari, which was granted.
There are two questions for the Supreme Court in answering this appeal: 1. Whether the Federal Circuit erred in holding that a “process” must be tied to a particular machine or must transform something into a different state or thing; and 2. Whether the “machine-or-transformation” test adopted by the Federal Circuit contradicts Congress’s intent to protect “method[s] of doing or conducting business” in 35 U.S.C. 273,
At its core, the appeal raises the question of what is covered under 35 U.S.C. 101. That is, what matter is patentable (i.e., statutory subject matter)? The Federal Circuit, in the majority opinion, drastically limited what is statutory subject matter by using the machine-or-transformation test.
What is patentable has been held by the Supreme Court to be much broader than what qualifies under the test enumerated by the Federal Circuit. As stated by the Supreme Court, “Congress intended statutory subject matter to ‘include anything under the sun that is made by man.’" Diamond v. Chakrrabarty, 447 U. S. 303, 309 (1980). It will therefore be interesting to see if the Supreme Court goes along with this restriction.