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In Re Bilski Announces the Machine-or-Transformation Test as the § 101 Touchstone for Process Claims

November 03, 2008

By Michael D. Bednarek, George Graff, Ryan Hawkins, Elizabeth Roesel and Amy Simpson

On Thursday, October 30, 2008, an en banc United States Court of Appeals for the Federal Circuit (Federal Circuit) released its much anticipated In re Bilski decision addressing the scope of patent-eligible subject matter under 35 U.S.C. § 101 (§ 101) and deciding what many believed might be the death-knell for business method patents. In a 9-3 majority decision authored by Chief Judge Paul Michel, the Federal Circuit endeavored to realign its § 101 jurisprudence with the Supreme Courts Benson, Flook, and Diehr trilogy. Adopting the positions advocated by the Intellectual Property Organization Association (IPO) in an amicus brief authored by Paul, Hastings, Janofsky & Walker attorneys, the Federal Circuit held that a process claim constitutes patentable subject matter only if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. The court ultimately concluded that Bilskis claimed method for hedging commodity risks failed to satisfy this new subject matter eligibility test and was therefore unpatentable.

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