Erika Arner is the co-author of the Bilski petition for certiorari challenging the Federal Circuit's limits on the patentability of method claims. She handles patent prosecution and litigation at Finnegan Henderson in DC. I asked Ms Arner to write this post.
The Time Has Come - Nearly thirty years have passed since the Supreme Court addressed patentable subject matter. The "BFD" cases─Gottschalk v. Benson (1972), Parker v. Flook (1978), and Diamond v. Diehr (1981)─represent modern doctrine on the scope of patentable processes under 35 U.S.C. § 101. Yet these cases were handed down before the Internet and personal computer fundamentally changed the way Americans live, work, and innovate. In their struggle to apply the BFD cases to cutting-edge inventions, the PTO and courts have whittled away at the scope of section 101. The time has come for the Court to reaffirm that the broad, flexible approach to section 101 set forth in the BFD cases applies with equal force in today's information age.
Third Time's The Charm - The Supreme Court declined its last two opportunities to update its jurisprudence on section 101 and process claims. In 1999, the Court denied cert. in State Street Bank, which applied the "useful, concrete, and tangible result" test to determine when a claim contains a patent-eligible practical application of a fundamental principle. That same year, the Court declined to review AT&T v. Excel, but indicated that the section 101 issue had garnered at least some interest on the Court. Justice Stevens filed a statement on the denial of cert. in AT&T v. Excel, noting that "[t]he importance of the question presented" made it appropriate to reiterate that a denial of cert. is not a ruling on the merits.
Justice Stevens Is Not Alone - In addition to the statement filed in AT&T v. Excel, several justices have found opportunities to express interest in section 101 issues. When the Court dismissed cert. in LabCorp v. Metabolite, Justice Breyer dissented, joined by Justices Stevens and Souter. In the dissenting opinion, Justice Breyer called into question the "useful, concrete, and tangible result" test for patentable processes, arguing that "if taken literally" the test would conflict with Benson and Flook. These three justices were joined by Justice Kennedy in a concurrence filed in eBay v. MercExchange(2006), criticizing the "potential vagueness and suspect validity" of business method patents. Clearly, there is interest among at least some of the justices in the state of section 101.
The PTO Picked Bilski - When the PTO began examining Mr. Bilski's patent application, prosecution progressed as usual. Prior art was searched and applied, claims were amended, new prior art was cited, and several claims were allowed. Then suddenly, the examiner changed position, withdrawing the remaining prior art rejections and the claim allowances and instead rejecting all of the claims under the now-obsolete "technological arts" test for section 101. An expanded panel of the PTO Board affirmed the rejection in a 70-page "informative" opinion setting forth a version of the machine-or-transformation test. The PTO seemingly chose Bilski as the vehicle to reverse its position set forth in the prior year's "precedential" decision in Ex parte Lundgren, which allowed business method claims with no tie to a computer or physical transformation.
The Federal Circuit Picked Bilski - At the Federal Circuit, Mr. Bilski's case progressed normally at first. Briefs were filed; oral arguments were held. But before the panel rendered its decision, the court ordered that the appeal would be heard en banc "in a long-overdue effort to resolve primal questions on the metes and bounds of statutory subject matter" according to Judge Mayer. In its en banc Order, the court invited briefing from the parties and the public on five questions ranging from whether Bilski's claims were patent-eligible under section 101 to what standard should govern the patent-eligibility of a process. The court also took the extraordinary step of inviting two representatives of amicus parties to participate in the en banc oral arguments. Clearly, the court decided that Bilski was the case to resolve the very "primal" question of when a process is patentable under section 101.
The Patent Community Picked Bilski - When invited to file amicus curiae briefs to the en banc Federal Circuit in In re Bilski, the patent community and the public at large responded in force. Thirty-eight briefs were filed representing wildly different points of view on the proper interpretation of section 101. Briefs were filed by large organizations and small, by teams of academics and by individuals, by corporate patent owners and patent practitioners, and by industry groups ranging from software and biotechnology to the ACLU. These assorted parties with their divergent points of view seem to agree on one thing: In re Bilski presents the perfect vehicle to address the proper scope of section 101.
The En Banc Bilski Decision Is the Closest We Get to a Patent Circuit Split - Three dissents and a concurrence accompanied the 9-judge majority opinion. Regarding the majority's machine-or-transformation test, the dissenting opinions varied just as widely as the amicus briefs had. Judge Mayer argued that the court should go farther to restrict section 101 and overrule State Street Bank andAT&T. At the other extreme, Judges Newman and Rader filed separate dissents arguing for a broad, flexible application of section 101 to accommodate the innovations of today's knowledge economy. The divergence of opinions on the en banc court is akin to the "circuit split" that often signals the need for the Supreme Court to step in.
The Issue in Bilski is Fundamental to the Patent System and the U.S. Economy - The proper scope of patentable subject matter under § 101 is not only important to the nation's economy, it is "one of the broadest, most sweeping issues in patent law," according to Judge Moore in her dissent from en banc rehearing in In re Comiskey (2009). The importance of this issue is highlighted by the filing of nine amicus curiae briefs in support of the petition for cert. This level of amicussupport at the cert. stage is the highest in a patent case since Festo, where nine briefs were filed at the cert. stage. For example, only three briefs were filed in support of the petition for cert. in KSR and six were filed at the cert. stage in eBay.
The Machine-or-Transformation Test Conflicts with Supreme Court Precedent - Although the Supreme Court has twice expressly declined to hold that the machine-or-transformation test is the "only test" for patentable processes under § 101, the Bilski court did just that. Indeed, the court acknowledged some doubt about its interpretation of Supreme Court precedent and recognized that the Supreme Court "may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies." In re Bilski.
The Supreme Court Does Not Like Rigid Tests for Patents – When the Supreme Court has set forth a flexible approach to interpreting the Patent Act, they are prone to overruling attempts to define a rigid "bright line" test. Festo and KSR are two examples of the high Court reversing an attempt by the Federal Circuit to establish a bright line test when the flexible approach of earlier Supreme Court cases was difficult to apply. In those cases, the Court instructed the Federal Circuit to return to the flexible, case-by-case analysis required by its precedent. The Federal Circuit's "definitive" machine-or-transformation test should meet the same fate.