BREAKING NEWS: SCOTUS Opinion in re Bilsiki is out!

The PDF document as provided by the Court has as structure as follows:

• Syllabus (4 pages)
• Opinion of the Court - [Justice Kennedy delivered the opinion of the Court, except as to Parts II–B–2 and II–C–2.] (16 pages)
• Stevens, J., concurring in judgment (47 pages)
• Breyer, J., concurring in judgment (4 pages)

According to the Court,

"[...] Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas.The Court, therefore, need not define further what constitutes a patentable 'process', beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. And nothing in today’s opinion should be read as endors-ing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Actand are not inconsistent with its text. [...]".

Judge Stevens concurred with the outcome of the decision but would have preferred a much stronger restriction pf patentability:

"[...] These many costs of business method patents not only may stifle innovation, but they are also likely to 'stifle competition', Bonito Boats, 489 U. S., at 146. Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation. That can take a particular toll on small and upstart businesses. Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace. The constitutional standard for patentability is difficult to apply with any precision, and Congress has significant discretion to 'implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim', Graham, 383 U. S., at 6. But Congress has not, either explicitly or implicitly, determined that patents on methods of doing business would effectuate this aim. And as I understand their practical consequences, it is hard to see how they would. [...] The Constitution grants to Congress an important power to promote innovation. In its exercise of that power, Congress has established an intricate system of intellectual property. The scope of patentable subject matter under that system is broad. But it is not endless. In the absence of any clear guidance from Congress, we have only limited textual, historical, and functional clues on which to rely. Those clues all point toward the same conclusion:that petitioners’ claim is not a 'process' within the meaning of §101 because methods of doing business are not, inthemselves, covered by the statute. In my view, acknowledging as much would be a far more sensible and re-strained way to resolve this case. Accordingly, while I concur in the judgment, I strongly disagree with the Court’s disposition of this case."

Judge Breyer noted:

"[...] In sum, it is my view that, in reemphasizing that the 'machine-or-transformation' test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach. [...] With these observations, I concur in the Court’s judgment."

As I am not a U.S. patent attorney I don't feel be called to predict how the USPTO and lower Courts shall interpret this Opinion with less than 16 pages of 'Opinion of the Court' and 47 pages full of explanation on why a single judge is able to join the judgement but would have preferred to see a complete different approach to reach the latter. I'm inclined to say that a deeply split US Supreme Court delivers an Opinion with narrow scope of decision and with unclear consequences for the future patent practice in the U.S. - stones instead of bread with regard to the clarification of law. We now have understood that the machine-or-transformation test is not the universal gauging stick to determine patentability - but what else instead? Time will tell. For now, the disaster of abolishment of entire fields of patentability has been avoided but for future predictability of legal decisions there appears to be gained little or even nothing.

For more coverage, see e.g.

• PatentlyO Bilski v. Kappos | Bilski v. Kappos and the Anti-State-Street-Majority
• IP Watchdog
• BlawgIT
• PatentlawNJ
• LoTempio Law Blog
• 271 Patent Blog

(Photo: (C) Supreme Court of the United States)