Supreme Court Tasks Federal Circuit to Try Again on Patent-Eligible Subject Matter
By Samuel C. Miller and Thomas Froats
Monday, the Supreme Court issued its long-awaited opinion in the Bilski case. The Court unanimously affirmed the Federal Circuit's decision that the invention in question was ineligible for patenting.
In the opinion, a majority of the Court disagreed with the 1998 Federal Circuit decision in State Street that considered anything that "produces a useful, concrete and tangible result" to be patent-eligible. Additionally, a majority of the Court also held that the "machine-or-transformation" test of the Federal Circuit's en banc decision below in Bilski, which required that a process must be tied to a particular machine or transform an article into a different state or thing, is not the sole test to be used for determining patent eligibility.
Essentially, the Court returned to past decisions that considered patent-eligible subject matter to be anything under the sun made by man, except for laws of nature, physical phenomena and abstract ideas. The majority also expressly stated that some business methods were still patentable, provided they did not fall into one of the three aforementioned exceptions. This also leaves the door open for software as patent-eligible, absent exceptions.
The Court refrained from providing any new test or categorical rules in order to determine if a process is patent-eligible or if it is an abstract idea. In response, the Patent Office has communicated to Examiners that rejections under §101 will continue to be issued for failure to comply with the machine-or-transformation test, but now allow for patent applicants to argue that the claims are not directed to an abstract idea.
The day after the Supreme Court decided Bilski, it vacated two decisions of the Federal Circuit involving patents for medical processes and remanded them to the Federal Circuit for reconsideration in light of its Bilski ruling. The cases are Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 581 F.3d 1336 (Fed. Cir. Sept. 16, 2009) vacated and remanded, ___ S.Ct. ___ (June 29, 2010) and Classen Immunotherapies, Inc. v. Biogen IDEC, 2006-1634, -1649 unpub. (Fed. Cir. Dec. 19, 2008) vacated and remanded, ___ S.Ct. ___ (June 29, 2010).
In the first case, a Federal Circuit panel concluded that Prometheus' claim for a medical process satisfied the "transformation" prong of the machine-or-transformation test, and not a patent of a mental process or natural phenomena. In the second case, a different Federal Circuit panel summarily affirmed the ineligibility of a different medical process on the basis that it was not tied to a particular machine nor did it transform a particular article into a different state or thing. Apparently, the Supreme Court believed that the dethroning of the machine-or-transformation test as the sole test of eligibility could result in another test arising and change the result in the Prometheus and/or Classen cases.