Please join me this Friday, March 6 for the Northwestern Journal of Technology & Intellectual Property’s annual symposium. I will be moderating a debate over whether business methods should be patentable in light of the recent Bilski decision. McDonnell Boehnen’s Bob Irvine will argue for business methods and Knobbe Martens’ Lauren Katzenellenbogen will argue against. If that debate is not enough to get you to the Symposium, here is a sampling of the other excellent presentations:
The Northern District’s Chief Judge Holderman will give the not to be missed keynote presentation: “Ten Commandments for Conducting an Intellectual Property Jury Trial.”
Panel on Tafas v. Dudas, Patent Rules Changes, and Patent Reform – a panel discussion on the Tafas case and patent reform bills recently considered by Congress featuring Chris Singer of McDonnell Boehnen Hulbert & Berghoff, and Patent Docs author, will discuss the Tafas v. Dudas decision and the effects the proposed changes would have had on patent practice, and Prof. Sean Seymore of the Washington and Lee University School of Law, and Prof. Matthew Sag of DePaul University College of Law, who will add a viewpoint from outside the practicing legal community.
Discussion of Employer Invention Assignment Agreements after DDB Technologies L.L.C. v. MLB Advanced Media, L.P. – a panel discussion regarding the best ways for protecting a client’s interests (whether the individual or the company) in an invention assignment agreement following DDB Technologies, featuring Mike Baniak of McDonnell Boehnen Hulbert & Berghoff, and Todd Dawson, Vice President of Legal Affairs at Zimmer, Inc.
More information is available at the Symposium’s website. Registration is free, although CLE credit costs $50 per credit hour. To register contact the development editor, Michael Hammer, m-hammer2009@nlaw.northwestern.edu.
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Bilski
Patent News: Bilski Goes to the Supremes
Last fall, the Federal Circuit issued an en banc decision in In re Bilski, holding that the “machine-or-transformation test” was the only test for determining whether a claimed process was eligible for patenting pursuant to § 101. The decision required that a process either: 1) be tied to a particular machine or apparatus; or 2) transform an article into a different state or thing. The Federal Circuit affirmed the PTO’s rejection of Bilski’s claimed method of hedging the risk of bad weather through commodities trading as lacking patentable subject matter. The Federal Circuit held that the method failed the machine-or-transformation test. Click here for the Federal Circuit decision.
Earlier this week, Bilski petitioned the Supreme Court for a writ of certiorari to consider the following two issues:
Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
Click here to read the petition. Pursuant to Supreme Court procedural rules, amici briefs are due at the end of February, although the PTO can seek an extension.
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Chief Judge Michel: The State of Patent Law
Making good on his promise to turn his IP Colloquium into National Public Radio for IP law, Doug Lichtman’s newest offering is an extended interview with Federal Circuit Chief Judge Michel. Click here to listen to Licthman’s interview, you can even apply for New York or California CLE credit after listening. Here are some of Judge Michel’s more interesting observations:
Petitions for rehearing are too often “shallow and weak.”
Votes denying en banc rehearings are often close, making the poor petitions for rehearing especially surprising and disappointing.
Parties interested in supporting cases with amicus briefs should consider filing briefs supporting rehearing petitions. An amicus brief that was both well researched and well written could play an important role in strengthening a case’s en banc potential and tipping close votes for rehearing.
In re Bilski did not answer all of the 101 questions because not all of the questions were raised in the case or ripe for consideration. It will take a series of 101 cases to flesh out the post-Bilski state of the law.
Judge Michel is hopeful that the new patent jury instructions — click here to read the Blog’s post about them — will help bring some clarity and continuity to, among other things, damages and obviousness instructions, although at the time of the interview it appeared that he had not seen the instructions yet.
The Doctrine of Equivalents has almost “dried up.”
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IP-Centric Blawg Review
This week’s Blawg Review #185 is up at Duncan Bucknell’s IP Think Tank — click here to read it. It will be no surprise to Bucknell’s readers (including me) that his theme is global intellectual property. Of course, Bucknell focuses on the Bilski decision — for example, IP Blawg and IP Spotlight. Bucknell also looks at some posts regarding how the changing administration will impact IP law, including two posts from Patent Docs (click here and here) and the IAM Blog.
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More Bilski News
The Bilski analyzers are moving away from the opinion itself, and toward the practical impacts of the decision and the unanswered questions it left, as opinions always do. Here are several of the best:
271 Patent Blog (asking whether a method for swinging on a swing meets the Bilski standard);
FileWrapper;
Maryland IP Law;
Patently-O (and here and here and here and here); and
The Prior Art.
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Bilski: Some Business Method & Software Patents Survive
In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*
Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement. The Federal Circuit overturned State Street’s “useful, concrete, and tangible result” test as insufficient to determine patentability. The Federal Circuit held that the Supreme Court’s “machine-or-transformation” test was the only test for determining patentability:
A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
I found Judge Dyk’s concurrence tracing the history of the “machine-or-transformation” test back to the Patent Act of 1793 especially interesting:
In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).
As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski’s implications. While we argue those cases and await the decisions, there will be plenty of law review and blog analysis. Here are some of the first (I will update with additional posts as they come):**
* 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
* IP ADR Blog;
* Likelihood of Confusion;
* Patent Baristas;
* Patently-O (with Crouch’s usual, in-depth analysis);
* The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
* WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).
* Click here for the opinion.
** I have updated the list of Bilski blog posts with some new ones.
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