One Year Post-Bilski: How the Decision is Being Interpreted
Michelle K. Holoubek
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Director in the Electronics Group
Posted: June 29, 2011 @ 5:27 pm
This week marks the first anniversary of the Supreme Court issuing its decision in Bilski v. Kappos. The decision held that the machine-or-transformation test is not the exclusive test for patent eligibility, and that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply.
Since that time, 182 decisions involving statutory subject matter eligibility have been issued by the USPTO’s Board of Patent Appeals and Interferences (“the Board”). District Courts issued 6 decisions in the past year that substantively addressed statutory subject matter under § 101, while the Federal Circuit issued 3 decisions on the subject. The day after Bilski issued, the Supreme Court denied cert in In re Ferguson, and just recently picked up Mayo Collaborative Servs. v. Prometheus Labs for review. See Supreme Court Accepts Appeal on Patented Medical Diagnostics.
I recently joined with my colleague Rob Sterne to draft a resource document that summarizes each decision that substantively discusses statutory subject matter under § 101 – from the Board and the Courts. Although the Board decisions are not precedential, they offer insight into what patent practitioners can expect in their own appeals. Similarly, both reported and unreported cases from the District Courts and Federal Circuit are provided to round out the statutory subject matter landscape. Section (I) outlines Board cases where the claims were found to be statutory. Section (II) outlines Board cases where the claims were found to be non-statutory. Section (III) provides a look at activity in the Courts. Download the full document here, and take advantage of its text searching capabilities as well.
Some trends from the Courts worth noting:
(1) The District Courts appear to be very strict when reviewing statutory subject matter – out of the 6 District Court decisions that addressed § 101, only 2 found that the claims at issue were patent-eligible under § 101.
(2) The Federal Circuit has offered some relief for patent owners. Out of the 3 Federal Circuit decisions that addressed § 101, 2 found that the claims at issue were patent eligible.
(3) The Supreme Court is staying close to the patent-eligibility issue, having granted cert in the Prometheus case on appeal from the Federal Circuit.
Some trends from the Board worth noting:
(1) The number of decisions where the claims were held by the Board to be nonstatutory under §101 significantly outweighs the number of decisions where the Board found that the claims satisfied §101. There are about 2.5 non-statutory decisions for every 1 statutory decision.
(2) It is not unusual for the Board to raise a §101 rejection on its own, even if patent eligibility was not a subject on appeal, and was not briefed.
(3) The Board still relies heavily on the machine-or-transformation test, although it does look at other factors as well. For most claims that satisfied the machine-or-transformation test, the Board has found them to be patent-eligible without further analysis.
(4) Although it is not an official test, the “mental steps” doctrine rings true – if the claims can be performed purely in the human mind, then they will be non-statutory.
(5) Even if the specification is silent as to whether a computer readable medium can be read on a signal, the Board will likely read a signal into a claim reciting a computer readable medium, rendering it non-statutory.
(6) The panel of judges assigned to a particular appeal matters. As can be seen from the following, several of the Board judges rarely find a claim patent-eligible, and often raise previously non-existent §101 rejections.
(7) There are no guarantees. Similar claims have been treated differently by different panels, and some BPAI judges appear inconsistent in applying the law to seemingly similar claims.
For more information and a summary of each of the cases decided over the last year please see §101 Case Summaries v. 2.0: June 28, 2010 – June 27, 2011.
EDITOR’S NOTE: This summary of cases prepared by Attorney Holoubek is excellent! It is absolutely must reading for attorneys prosecuting and litigating in this space.
About the Authors
Michelle K. Holoubek (firstname.lastname@example.org) is a director in the Electronics Group of Sterne, Kessler, Goldstein & Fox P.L.L.C. The views expressed herein are those of the author and should not be attributed to former, present or future clients or any employees of Sterne, Kessler, Goldstein & Fox P.L.L.C.