Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) (RADER, Newman & Plager) ResearchCorp12082010
In an early response to Bilski v. Kappos, 130 S. Ct. 3218, CPLRG 0015 (2010), the Federal Circuit, in an opinion by Chief Judge Rader, rebuffed a Section 101 challenge to claims in two patents to methods of “digital image halftoning.” The court indicated a reluctance to find the kind of abstractness that the Supreme Court relied upon in Bilski to reject claims as ineligible subject matter under Section 101. The court suggested that it would be more fruitful to apply specific standards of patentability, such as indefiniteness and lack of written description under 35 U.S.C. Section 112.
The struggle to make sense out of Bilski continued in subsequent Federal Circuit decisions. See, e.g., Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, CPLRG 0071 (Fed. Cir. 2010), on remand from 130 S. Ct. 3543 (2010), cert. granted, 180 L. Ed. 2d 844 (June 20, 2011); Ass’n for Molecular Pathology v. United States Patent and Trademark Office, CPLRG 0073 (Fed. Cir. July 29, 2011); Cybersource Corp. v. Retailed Decisions, Inc., CPLRG 0074 (Fed. Cir. Aug. 16, 2011). Read CPLRG™ 0072
Essay on Bilski: Patent Claim Scope
October 22nd, 2010
What does Bilski portend for the future of patent law? What was the real concern of the Justices in Bilski? Was it with the undue breadth of the claims in question, claims that the Justices intuitively felt went beyond a “new and useful” contribution? Does the majority holding Bilski suggest a shift away from the formalistic Section 101 categories of patent eligible subject matter, such as the definition of “process” and the judicial exceptions for “abstract ideas,” and toward the traditional fact-based regulators of patent claim scope, such as enablement, novelty and unobviousness?
Chisum explores these questions in a work in progress: “Weeds and Seeds in the Supreme Court’s Business Method Patents Decision: New Directions for Regulating Patent Scope.” Essay on Bilski
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