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Will the Supreme Court grant Bilski cert.?

In my last post on the Bilski case I noted that The Court of Appeals for the Federal Circuit (CAFC) is pretty much the “supreme court” of patents. The reason I wrote “pretty much” is that the Supreme Court is still the Supreme Court, and may overrule the CAFC at its discretion.

In response to the CAFC throwing out Bilski along with all other naked business method patents, Bilski has filed for certiorari, requesting the Supreme Court take a closer look at the CAFC’s watershed decision. The questions presented in the request 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.

The Supreme Court’s decision on these issues, should it decide to grant certiorari, will mean a multi billion dollar swing in the value of “business method” patents that have already issued.

Brett Trout

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