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The Bilski Decision – The Score Card

by Orlando Lopez

As the Supreme Court’s Bilski decision starts to be applied, it is important to look at the decision and identify which areas are a majority opinion and which areas are statements by a plurality of the Court.  The Bilski decision is similar to a mid-season Red Sox game, you cannot tell the players without a scorecard.  The majority opinion was written by Justice Kennedy with Justices Scalia, Roberts, Thomas and Alito concurring; however, in the midst of the majority opinion there are two sections in which Justice Scalia did not join.  Those two sections are statements by a plurality of the Court.

First, the majority opinion holds that the machine or transformation test is not the sole test for determining whether an invention recited in a method claim is patent eligible; however, the majority does find the results of the machine or transformation test a useful clue to patentability.  Second, the majority rejects the “useful, concrete and tangible result” patentability test of State Street.  Third, the majority holds that business methods are not categorically excluded from patentability.  Finally, the majority finds that Bilski’s claims are not patentable since the claims attempt to patent an abstract idea.  Abstract ideas are one of the three exceptions that the Court had previously recognized, the other two being laws of nature and physical phenomena; however, the majority does not define “abstract idea,” thereby providing fertile ground for further argumentation.

As previously mentioned, Justice Scalia parts company from the other four  Justices in the majority opinion on two points;whether the machine and transformation test would work for the industrial age, but not for new technology, and whether some business method patents raise special problems.

The “concurring” minority opinion, written by Justice Stevens with Justices Sotomayor, Breyer and Ginsburg joining in, opposes the patentability of business methods and sounds more like a dissenting opinion.  The second concurring opinion, written by Justice Breyer with Justice Scalia joining in, restates the areas where the entire Court was in agreement; which is the majority opinion, except for whether business methods are patentable and for the approach to take in order to declare the Bilski claims not patentable.  With this map, or scorecard in hand, the application of the Bilski decision can be clearer.


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