Petitioner’s Brief in Bilski

USSupremeCourtWestFacadeLast week, the petitioner filed its opening brief at the Supreme Court in Bilski v. Doll.  Bilski’s arguments are not surprising given what has transpired in the case.  The following is a summary of the arguments presented in the brief.

Petitioner’s Arguments

First, Bilski argues that the language of § 101 of the Patent Act is very broad, providing for patent eligibility for “any” new and useful process.  There is no statutory basis for the Federal Circuit’s adoption of a special test to determine patent eligibility for processes. 

The Federal Circuit’s test also conflicts with Supreme Court precedent.  The only limitations should be for natural laws and phenomena, because these cannot be invented at all, and abstract ideas, because these are not “useful” and must be put to a practical use before they can be patented.  Indeed, the Supreme Court has twice before rejected the machine-or-transformation test in Gottschalk and Flook.

Second, the Federal Circuit’s machine-or-transformation test conflicts with the congressional recognition of business method patents in the enactment of § 273’s defense to infringement for business methods.  In enacting this defense, Congress embraced State Street Bank‘s “useful, concrete, and tangible result” test.  Bilski’s invention clearly fits within the congressional definition of a business method.

Third, the Federal Circuit’s machine-or-transformation test disrupts settled expectations of thousands of patent owners and inventors.  The court has, in effect, legislated business method patents out of existence.  This is an area where Congress should act, not the Federal Circuit.  In this section of its brief, the petitioner cites extensively to Judge Newman’s dissent.

Other sections of the Patent Act, such as those that proscribe patents that are not novel, are obvious, or are indefinite, should be used the curb business method patents that appear trivial.  Where have I heard that before?  Perhaps here and here.

Fourth, abstract ideas, laws of nature, and natural phenomena are not themselves patentable.  Supreme Court precedent, however, makes it clear that if these have a “practical application”, they are patent eligible.  The machine-or-transformation test is not necessary so long as the methods have a practical application.

Finally, all of the claims of Bilski’s application involve specific series of steps that have a practical application.  The claims do not merely recite abstract ideas.


Bilski’s brief is well written and well argued.  Will it persuade the Supreme Court to reverse the Federal Circuit?  That is difficult to predict.  One the one hand, the Court would not have agreed to hear the case if it didn’t have anything to say about statutory subject matter.  On the other hand, given its typical docket, the Court may view this as an arcane patent law issue that doesn’t warrant a lot of time and consideration.  Also, given that the invention is of suspect novelty and obviousness, it may be hard to get the Court to focus on the patent eligibility question without focusing on whether the invention meets the other statutory requirements for patenting.

Whatever they do, it can hardly be worse than the machine-or-transformation test.

Other Reaction

The American Bar Association has passed a resolution to file an amicus brief supporting the PTO.  The ABA plans to argue that Bilski seeks to patent an abstract idea.

Bett Trout of BlawgIT has posted an analysis of Bilski’s brief that was re-printed on Patently-O.

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2 Responses to “Petitioner’s Brief in Bilski”

  1. Handicapping Bilski « INVENTIVE STEP Says:

    [...] Bilski’s briefs are not overly helpful or persuasive for convincing the Court of Bilski’s position.  The [...]

  2. MACIE Says:

    I have happened to be searching all over for this specific information. Luckily my partner and i noticed this in Yahoo.

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