Representative Cases

Decision clarifies scope of patent-eligible subject matter

On June 28, 2010, the Supreme Court of the United States issued its decision on patent-eligible subject matter under 35 U.S.C. § 101. This is the first section 101 decision in 29 years, since Diamond v. Diehr in 1981. Although the Bilski Court split 5-4 in upholding the patentability of business method patents, the Court unanimously disagreed with the Federal Circuit that the "machine-or-transformation test" is the "sole test" for determining whether a method claim satisfies section 101. Writing for the Court, Justice Kennedy acknowledged that the machine-or-transformation test provides an important clue or investigative tool, but the Court recognized that it is not the sole test for determining patent eligibility for method patents. Additionally, the Court recognized that section 101 precludes an interpretation of the term "process" that categorically excludes business methods. With Bilski, the Court reaffirmed the vitality of its previous decisions in Diehr, Benson, and Flook, and confirmed that section 101 should not be narrowed based on the type of science or technology.