Patentable Subject Matter After the Bilski Oral Argument

Michael Carroll
November 20, 2009

On Thursday, November, 19, 2009, PIJIP and the Federal Circuit Bar Association co-hosted "Patentable Subject Matter After the Bilski Oral Argument." Focusing on the recent oral argument in In re Bilski in the United States Supreme Court, the event featured counsel for the parties -- J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, who argued for petitioner, and Raymond T. Chen,  Solicitor and Deputy General Counsel for respondent, the United States Patent and Trademark Office -- along with Dr. Nancy Linck, Rothwell, Figg, Ernst & Manbeck. and Randolph Ross, WilmerHale, each counsel for groups of industry amici. The co-moderators were Professor Joshua Sarnoff, counsel for amici curiae Law Professors & AARP, and Thomas C. Goldstein (WCL '95), counsel for amicus the American Bar Association.

The case has drawn a great deal of interest because it addresses the question: What is the proper legal standard for determining whether a kind of process is capable of receiving patent protection?  In the decision under review, the Federal Circuit, sitting en banc, held that to be patentable under Section 101 of the Patent Act of 1952, as amended, a process must involve use of a machine or a transformation of matter from one thing or state to another.

The audience included viewers of the live webcast from 15 different time zones.

The participants addressed a range of interesting questions.  For example, why did the Court take this case now without awaiting further developments under the Federal Circuit's new standard?  Michael Jakes believed the breadth of the holding and the procedure below attracted the Court's attention.  Randolph Moss suggested that not only had the issue of patentable processes been thoroughly vetted in the record below, but also, the issue falls within the Court's "interesting question" jurisdiction.

Counsel for amici articulated the main points they hoped the Court took away from their briefs and addressed the question of what the range of likely holdings from the Court might be.  Participants generally agreed that the Court might choose to rule narrowly, affirming the rejection of the patent in suit, but only on the ground that it attempted to claim an abstract idea.  On the other hand, the Court might articulate a standard even more searching than the machine-or-transformation test, one that could call into question the patentability of some software. Participants agreed that many of the Justices appear to be quite concerned about the rapid rise in patenting of business method patents.

To hear the details, and to listen to the lively question and answer session - including a question from AIPLA President and former Commissioner of the USPTO, Q. Todd Dickinson - click here


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