Supreme Court grants certiorari in Bilski
June 01, 2009

In an order today, the Supreme Court agreed to hear an appeal in Bilski v. Doll regarding the patentability of method claims. Back in October, the Federal Circuit decided In re Bilski, adopting the "machine-or-transformation" test as the exclusive test to determine whether a method is drawn to patentable subject matter.

Bilski filed a petition for certiorari in January. Some thought the Court may take the case given its recent interest in the area of patentable subject matter, specifically the Laboratory Corp. v. Metabolite Laboratories, Inc. case where certiorari was dismissed as improvidently granted after oral argument was held. Although the Court did not render a decision in that case, three justices (Breyer, Stevens, and Souter) dissented from the dismissal of certiorari and would have held the claims directed to nonstatutory subject matter. SCOTUS Blog had the case among its petitions to watch for last Friday's conference, which compiles the cases the authors believe have a reasonable chance of being heard by the Court.

When the Laboratory Corp. case was pending, many believed the Court was looking to rein in abstract method claims. The granting of certiorari may be an indication that this is still the case, and the Court was simply waiting for the issue to be better presented. However, at least one of the previous votes to restrict the permissible scope of method claims, Justice Souter, will not be on the Court when the case is considered next term. Whether this will make a difference in the outcome remains to be seen. Of course, until the Court renders a decision in the case (probably not until sometime in 2010), the Federal Circuit's decision remains the law, and the machine-or-transformation test is the sole test for whether a method claim meets the requirements of § 101.

More from SCOTUS Blog here.

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