On June 1, 2009, the Supreme Court of the United States granted a writ of certiorari in Bilski v. Doll, Case No. 08-964, an important case involving the scope of patent eligible subject matter under 35 U.S.C. § 101. According to Supreme Court scheduling rules, the case will be briefed this summer, and likely argued in the fall term of 2009.
In October 2008, the U.S. Court of Appeals for the Federal Circuit, in an en banc decision, overruled or modified many of its decisions regarding patent eligible subject matter (for more information, visit
The two questions accepted for review by the Supreme Court are as follows:
- 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 despite the Supreme 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”
- 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)
In the past few years, justices of the Supreme Court have been critical of the Federal Circuit’s State Street Bank decision on at least three separate occasions: eBay, Inc. v. MercExchange, (IP Update, Vol. 9, No. 5); LabCorp v. Metabolite, (dissent) (IP Update, Vol. 9, No. 6); and Microsoft v. AT&T (IP Update, Vol. 10, No. 5). In some of these cases, retiring Justice David Souter appeared to be aligned with the anti-State Street faction of the Supreme Court.
During the en banc consideration of the Bilski appeal at the Federal Circuit, dozens of amicus briefs were filed. Similarly, during consideration of Bilski's cert petition, nine amicus filed briefs at the Supreme Court.
Based on the date cert was granted, Bilski has until mid-July 2009 to file his main brief. The respondents’ main brief will be due 30 days thereafter. Amicus briefs are due seven days after the filing of the brief of the party being supported. Thus, the deadline for amicus briefs in support of Bilski (the appellant and patent applicant) will approximately be July 22, 2009.