Bilski: Eyewitness Report and Expert Analysis

US Supreme Court Building, Washington, DC

US Supreme Court Building, Washington, DC

On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess. I will be joined by John White , the creator of the PLI Patent Bar Review Course and patent attorney with Berenato & White. My intention is to write and post throughout the day on Monday, leading up to the oral arguments and then in the afternoon as soon as I an after oral arguments are completed. John and I will then participate in a PLI Hot Topic Briefing on Wednesday, November 11, 2009 from 1pm to 2pm ET. We will be joined on this briefing by Scott M. Alter of Faegre & Benson LLP and Douglas R. Nemec of Skadden, Arps, Slate, Meagher & Flom LLP, both of whom along with John White are co-chairs of PLI’s 4th Annual Patent Law Institute. The title of the PLI briefing is Bilski Supreme Court Arguments: Eyewitness Report and Expert Analysis, and CLE credit is available. As always, PLI Privileged Members may attend for free, as they may do with virtually all PLI programs. Those who are not Privileged Members can also join in the briefing for a standard fee. PLI has also decided to make this briefing and other pre-recorded Bilski presentations freely available to any members of the media who may be interested in obtaining a deeper understanding of the issues surrounding this extremely important case.

Background Information on Bilski

On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued its much anticipated decision in In re Bilski. A central question presented was whether a purely mental process is patentable subject matter. The Federal Circuit, however, decided to address the issue quite broadly, and in so doing the CAFC ruling ultimately affected the patent-eligibility of numerous software-related inventions. The patent community had been expecting a far reaching decision that dealt a blow to “pure” business method patents, but few really expected just how far reaching the decision would be and that it would call into question thousands of software patents granted over the last 10 to 15 years. In essence, the CAFC Bilski decision brought into question many software patents issued since at least 1998, with many being now containing numerous invalid claims, and some with some of these patents now likely containing only invalid claims.

For additional background on Bilski and software patents in general see:

Bilski at the Supreme Court

On Monday, June 1, 2009, the United States Supreme Court agreed to hear the Bilski case. The questions the Supreme Court announced they would address are:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

This means that the last chapter on business methods and software has not yet been written, but may well be decided by the Supreme Court when it issues its Bilski decision, which will likely be sometime during the Spring of 2010.

PLI Hot Topic Briefing

For an eyewitness account of the Supreme Court oral arguments, commentary, insights and tips for navigating the software and business method space while we await a decision from the Supreme Court please join me, John White, Scott Alter and Douglas Nemec for a PLI Hot Topic Briefing on Wednesday, November 11, 2009.  For those in the media who would like to receive complimentary access to this briefing and several of the other PLI Bilski presentations given over the last 12 months please contact send an e-mail to [email protected]. Your full contact information including mailing address and publication information is needed for approval. Press requests cannot be taken or approved over the telephone. A confirmation email will be sent once your registration has been processed.


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Join the Discussion

6 comments so far.

  • [Avatar for american biologics]
    american biologics
    July 27, 2010 08:29 pm

    the patent community had been expecting a far reaching numerous software related inventions. decision that dealt a blow to pure business method patents

  • [Avatar for curious]
    November 5, 2009 06:36 pm

    How early do you have to get there to get a seat inside?

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    November 5, 2009 10:54 am

    For an alternative solution to Bilski see “A Short History of Private Patent Examination”.

    Instead of rolling the clock back to the 1800’s, let’s roll it back even further to the 1600’s. That’s when world class experts, such as Galileo, were brought into the patent examination process. They had no problem knocking down dubious inventions.

    When you combine the concept of outside experts with the power of internet enabled social networking technology, you get an incredibly powerful patent examination process. One that can stand up to the challenges of software and business methods.

    Dubious inventions won’t stand a chance.

    Valid ones will be respected.

    Everyone will benefit.

  • [Avatar for patent leather]
    patent leather
    November 4, 2009 03:56 pm

    The Supreme Court always seems to mess things up when it comes to patent law, so I fear their upcoming decision. In my opinion, the CAFC is much more experienced in patent matters and I’m not sure what the Supreme Court knows about IP matters that the CAFC doesn’t. Thus, the Supreme Court really should stay out of patent matters.

    If they affirm Bilski it won’t be such a bad thing, since it seems most things are still patentable under Bilski anyway, as long as claimed properly (obviously I am someone who is pro-patent). Bilksi hasn’t changed my practice much. If they revese Bilski and allow Bilski’s patent (extremely unlikely) that would also be a good outcome (for me personally, but I know some people would dread this). But I fear they may institute a brand new 101 test which could throw out even more patents than the CAFC Bilski decision did. They were so clueless in KSR that I am fearing the worst about how they will screw this one up also.

    Any ideas when the decision will actually come out?

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 4, 2009 02:54 pm

    Thanks POP. I am looking forward to it, and for further jousting on the subject. I hope all is well with you.


  • [Avatar for Pissed Off Programmer]
    Pissed Off Programmer
    November 4, 2009 01:39 pm


    Even though we are hoping for different outcomes, I look forward to reading your coverage, and wish you a safe trip.