In Re Bilski
United States Court of Appeals, Federal Circuit. In re Bernard L. BILSKI and Rand A. Warsaw.
No. 2007-1130. Oct. 30, 2008.
Background: Patent applicants challenged denial of patent application for method of hedging risk in field of commodities trading based on lack of patent-eligible subject matter. The Patent and Trademark Office, Board of Patent Appeals and Interferences, 2006 WL 5738364, sustained rejection of all claims in application. Applicants appealed.
Holdings: Following sua sponte order of review en banc, the Court of Appeals, Michel, Chief Judge, held that: (1) machine-or-transformation test, rather than test determining whether claim recited algorithm applied in any manner to physical elements or process steps, was applicable test for determining patent-eligibility of process claims, abrogating, In re Freeman, 573 F.2d 1237, In re Walter, 618 F.2d 758, and In re Abele, 684 F.2d 902; (2) machine-or-transformation test, rather than “useful, concrete and tangible result” inquiry, was proper test to apply to determine patent-eligibility of process claims, abrogating In re Alappat, 33 F.3d 1526, State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352; and (3) claim was not drawn to patent-eligible subject matter under transformation branch of machine-or-transformation test.
- Dyk, Circuit Judge, filed opinion concurring, in which Linn, Circuit Judge, joined.
- Newman, Circuit Judge, filed opinion dissenting.
- Mayer, Circuit Judge, filed opinion dissenting.
- Rader, Circuit Judge, filed opinion dissenting
Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.