返回概览 US Supreme Court finally decided Bilski v. Kappos

On June 28, 2010, the U.S. Supreme Court rendered a long-awaited decision in Bilski et al. v. Kappos. The decision concerned a patent application of Bernard L. Bilski and Rand Warsaw filed on April 10, 1997. Only 4 justices agreed on the full majority opinion. Justice Scalia joined the majority opinion in part. 4 justices filed a concurring minority opinion. Justice Breyer concurred with the minority and also filed another concurring opinion.

In general, the claims of the patent application describe a series of steps instructing how to hedge risk in commodities trading. More specifically, the application includes a means of enabling energy suppliers and consumers to minimize the risks resulting from fluctuations in demand during a specified time.

In an en banc decision handed down on October 30, 2008, the Court of Appeals for the Federal Circuit (CAFC) ruled that “a claimed process is patent eligible if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing”. The CAFC concluded that this "machine-or-transformation test” is “the sole test for determining patent eligibility of a ‘process’ under §101” United States Code (U.S.C). In a dissent from the en banc opinion, Judge Rader argued that the CAFC should have rejected Bilski's application with a single sentence: "Because Bilski claims merely an abstract idea, this court affirms the board's rejection".

The majority opinion of the Supreme Court noted that in “the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain”. Agreeing with “numerous” amicus briefs, the Court argued that “the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals”. Accordingly, the Supreme Court held that while the machine-or-transformation test “may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent eligible process under §101”.

Moreover, the opinion indicated that “federal law explicitly contemplates the existence of at least some business method patents”. Specifically, under 35 U.S.C §273, if a patent holder claims infringement based on a method of doing or conducting business, the alleged infringer can assert a defense of prior use. By allowing this defense, the statute itself acknowledges that there may be business method patents. Thus, the Court decided that “a business method is simply one kind of method that is, at least in some circumstances, eligible for patenting under §101”. However, this endorsement of business method patents was qualified with the caveat that §273 “does not suggest broad patentability” for business methods.

Rather than adopting categorical rules such as the machine-or-transformation test, the Court resolved the case narrowly on the basis of prior decisions. Analogous to a principle of the case law of the Technical Boards of Appeal of the European Patent Office, the Supreme Court emphasized the need to consider the invention as a whole, rather than dissecting the claims into old and new elements and then ignoring the presence of the old elements in the analysis.

In an echo of Judge Rader's dissent, the Supreme Court ruled that the claims of Bilski's application “are not patentable processes because they are attempts to patent abstract ideas”. Indeed, all nine justices agreed that “the patent application at issue falls outside of §101 because it claims an abstract idea”. In particular, allowing “petitioners to patent risk hedging would preempt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”. Even “limiting an abstract idea to one field of use or adding token post solution components did not make the concept patentable”.

Finally, the Supreme Court opinion explicitly refrained from endorsing interpretations of §101 that the CAFC has used in the past, such as State Street, 149 F. 3d, at 1373 and AT&T Corp., 172 F. 3d, at 1357. The Court also appeared to encourage the CAFC to develop limiting criteria for restricting business method patents less extreme than the exclusive use of the machine-or-transformation test.

For the full text of the Supreme Court's opinion, please refer to www.supremecourt.gov/opinions/09pdf/08-964.pdf

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