The Quick Read on Bilski

[Greg Mitchell]

Patent lawyers can exhale again: Bilski's out.

The quick spin: business as usual. The court upheld the ruling below, which means the business process patent in this particular case is invalid. But commentators who've read the ruling see the 5-4 decision as a punt: the majority says that while this particular business process isn't patentable, there's no bar to patenting business processes generally.

And, commentators seem to agree, the court didn't offer much new guidance for lower courts tasked with deciding whether a particular business process deserves a patent.

A taste of the commentary arriving in the inbox so far:

Finnegan partner J. Michael Jakes, who argued the case before the court: “We are disappointed by today’s decision because we believed the Bilski/Warsaw claims should be patentable under the broad language of the Patent Act.  We are pleased, however, that the Court rejected the Federal Circuit’s very limiting ‘machine-or-transformation’ test and confirmed that business methods are not excluded from patenting.  In reaffirming that section 101 of the Patent Act should be interpreted broadly, the Court’s decision will encourage continued innovation in today’s information economy."

Yar Chaikovsky, who was Yahoo's first head patent counsel and is now with McDermott Will & Emery: "The Supreme Court has ruled narrowly in the Bilski case. ... it held that the Federal Circuit's 'machine-or-transformation' test, which many believed effectively ruled out pure software patents, was only a 'clue' to patentability and not the rule by which to determine whether an invention is patentable." Chaikovsky also noted that Anthony Kennedy wrote for the majority; there'd been speculation it would be John Paul Stevens, who instead wrote a concurring opinion that Chaikovsky says "is a pretty strong rebuke of the reasoning in the majority opinion, even if he agrees with the final outcome. It appears that Stevens does think that business method patents are a problem, but couldn't convince a fifth member of the Court to agree."