Supreme Court of the United States, 28 June 2010, Opinion No. 08-964 in Bernard L. Bilski and Rand A. Warsaw, Petitioners v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit, summary and comments by Stefan Steinbrener, Bardehle & Pagenberg
1. The question in this case turned on whether a patent could be issued for a procedure of instructing buyers and sellers of commodities in the energy market how to protect, or hedge, against the risk of price fluctuations. Three arguments were advanced for the proposition that the claimed invention was outside the scope of patent law:
(1) it was not tied to a machine and did not transform an article;
(2) it involved a method of conducting business; and
(3) it was merely an abstract idea.
2. In an en banc decision of 30 October 2008 (In re Bilski), the Court of Appeals had concluded that the machine-or-transformation test was the sole test for determining patent eligibility of a process under the Patent Act, 35 U.S.C.§101, and on this basis had affirmed the rejection of the petitioners' application. The case had produced five (concurring or dissenting) opinions among the CAFC judges.