Business Method Patents To Be Reviewed En Banc

The Federal Circuit decided to review the patentability of business methods en banc in the case In re Bilski. The en banc order presents the following 5 questions:

1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?

2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?

5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

For more coverage of this developing story, see Dennis Crouch's Patently-O post here, and Peter Zura's 271 blog post here.

I've also posted on the topic of patentable subject matter here, and was counsel of record for the Federal Circuit Bar Association in that group's amicus brief to the U.S. Supreme Court in Labcorp v. Metabolite Labs. We argued for the petition for certiorari to be dismissed as improvidently granted, and that is what eventually happened in that case. (See this link for some good coverage of the Labcorp case from UW Law School's CASRIP ("Center for Advanced Study and Research on Intellectual Property") Newletter.)

I think this decision by the Federal Circuit, i.e. to take up the issue of patentable subject matter en banc, could potentially eliminate (or delay), any grant of certiorari by the Supreme Court on this topic. Some speculate that the Supreme Court will grant certiorari in In re Nuijten, another section 101 case where the CAFC--over the dissents of Judges Linn, Newman, and Rader--declined to consider patentable subject matter en banc. The CAFC's timing here may fortuitously avoid the Supreme Court stepping in to re-write the law of patentable subject matter in connection with In re Nuijten. Based on the comments of Justices Breyer and Stevens at the February 2007 oral argument in the ATT v. Microsoft case, at least these Justices seem ready and willing to take a hard new look at the scope of patentable subject matter under section 101. The questions raised by the CAFC's order in In re Bilski could have easily come from Justices Stevens or Breyer, so it will be interesting to see how this issue develops and whether the CAFC can assuage concerns voiced by Justices Breyer and Stevens.