In re Bilski

In re Bilski
Court	United States Court of Appeals for the Federal Circuit
Full case name	In re Bernard L. Bilski and Rand A. Warsaw
Argued	May 8 2008
Decided	October 30 2008
Citation(s)	545 F.3d 943, 88 U.S.P.Q.2d 1385
Case history
Prior history	Claims rejected, Ex parte Bilski (BPAI 2006), appealed to CAFC, en banc hearing ordered sua sponte.
Subsequent history	Bilski v. Kappos, 561 U.S. ___(2010) (Aff'd, Machine or Transformation test not the sole test for patent-eligible subject matter)
Holding
The "useful, concrete and tangible result" test of State Street should no longer be relied on. A method claim is surely patentable subject matter if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. BPAI affirmed.
Court membership
Judge(s) sitting	En banc Court: Chief Judge Paul Redmond Michel; Circuit Judges Pauline Newman, Haldane Robert Mayer, Alan David Lourie, Randall Ray Rader, Alvin Anthony Schall, William Curtis Bryson, Arthur J. Gajarsa, Richard Linn, Timothy B. Dyk, Sharon Prost, and Kimberly Ann Moore
Case opinions
Majority	Michel, joined by Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost and Moore
Concurrence	Dyk, joined by Linn
Dissent	Newman
Dissent	Mayer
Dissent	Rader
Laws applied
35 U.S.C. § 101

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008), was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patenting of method claims, particularly business methods. The court affirmed the rejection of the patent claims involving a method of hedging risks in commodities trading, as non-patentable subject matter. Most importantly, the Court concluded, that machine-or-transformation test "was proper test to apply to determine patent-eligibility of process", and that the “useful, concrete and tangible result” of State Street Bank v. Signature Financial Group and AT&T Corp. v. Excel Communications, Inc. should no longer be relied upon.

In In re Ferguson, 558 F.3d 1359, 1364–65 (Fed. Cir. 2009), the Federal Circuit spoke of the Bilski case as setting forth "this court's clear statements that the 'sole,' 'definitive,' 'applicable,' 'governing,' and 'proper' test for a process claim under § 101 is the Supreme Court's machine-or-transformation test."

The decision of the Federal Circuit in In re Bilski was appealed to the Supreme Court of the United States as Bilski v. Kappos.^[1][2][3] Although the SCOTUS affirmed the judgment of the CAFC, it revised many aspects of the CAFC's methodology. More specifically the majority in its decision rejected the machine-or-transformation test as the sole test of process patent eligibility based on an interpretation of the language of § 101.^[4] The majority, however, had high praise for the Federal Circuit opinions, advising that "[s]tudents of patent law would be well advised to study these scholarly opinions."^[5]