In his most recent “top-ten” paper — Hal Wegner identifies four pending appeals that challenge the court’s current broad patentable subject jurisprudence:
- In re Nuijten (SN 09/211,928);
- In re Comiskey (SN 09/461,742);
- In re Bilski (SN 08/833,892);
- In re Ferguson (SN 09/387,823)
It is quite possible that something from this set of cases will eventually produce a Supreme Court decision. In 2006, the Supreme Court initially granted certiorari on the issue of subject matter patentability in Metabolite v. LabCorp. That case was later dismissed without decision (as improvidently granted). However, a block of justices appear ready to apply new subject matter limits once the right case comes along.
In Nuijten, the PTO refused to issue a patent on a novel type of signal unless the patentee included a limitation directed to a specific mode of transmission (e.g., smoke signal, electromagnetic, etc.). Nuijten argues that bares signals should be patentable subject matter under Section 101. That case was argued in February 2007, and a decision is expected soon. IPO’s brief supports Nuijten and broad application of patentable subject matter.
In Comiskey, the CAFC requested supplemental briefing on patentable subject matter issues. The claims involve a method of handling arbitration (that does not require any machine assistance). Section 101 was not raised by the Examiner, Board, or PTO Solicitor, but was raised sua sponte by the CAFC. During the appeal, the PTO representative indicated that Comiskey was successful in the current appeal (on obviousness) that the PTO would likely raise 101 issues on remand.
Bilski similarly involves claims to a method of managing risk, but is not tied to any particular form of technology – such as an electronic computer. AIPLA’s amicus brief supports Bilski and a broad interpretation of patentable subject matter. Briefing is now complete, but arguments have not been scheduled.
Ferguson is still in the briefing stage. (Ferguson’s opening brief, filed last week, was rejected as non-compliant). Although not yet public, Ferguson’s claims apparently claims a method “of marketing a product.” Fish & Richardson is handling the appeal.
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