The following dialogue occurs at 15:20 of the mp3 file obtainable at: http://www.cafc.uscourts.gov/oralarguments/searchscript.asp [uscourts.gov] (type Bilski for Caption)
Judge 1: The way in which the Board . . . presented Bilski to us was with this prayer for guidance. . . . Our examiners need guidance, we need to know how to deal with this situation . . . . Let me ask you this question, Is the opinion in In Re Comiskey enough? Can your examiners now move forward? Are you satisfied in dealing with business-method patents?
Solicitor: Not quite your honor. I say not quite because what I can foresee [are] future disputes and also potentially years of litigation over trying to find the dividing line between what would be a so-called patent-eligible business method versus a so-called patent-ineligible mental process. It just is going to create litigation issue that we dont think needs to be there.
Judge 2: So to cut to the chase, how would you [the Office] have reformulated the test . . . for purposes of explaining both Comiskey and then extrapolating to this case? Solicitor: I think what was just discussed here page 17 [of Comiskey slip opinion, see http://www.cafc.uscourts.gov/opinions/06-1286.pdf [uscourts.gov] ] is a very fair recitation of what the law is where it says. . . . the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter.
The issues in Bilski are:
(1) Whether claim 1 of the 08/833,892 patent application claims patent-
eligible subject matter under 35 U.S.C. § 101?
(2) What standard should govern in determining whether a process is patent-
eligible subject matter under section 101?
(3) Whether the claimed subject matter is not patent-eligible because it
constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject
(4) Whether a method or process must result in a physical transformation of
an article or be tied to a machine to be patent-eligible subject matter under
(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and
AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir.
1999), in this case and, if so, whether those cases should be overruled in
Oral argument will be held on Thursday,
May 8 at 2:00 p.m. in Courtroom 201.
Wall Street Journal notes Comiskey decision of CAFC