Bernard L. Bilski and Rand A. Warsaw v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office (561 U.S. 593)

U.S. Supreme Court · decided June 28, 2010 · Supreme Court Database (Spaeth)

Citation
561 U.S. 593 · 130 S. Ct. 3218
Decided
June 28, 2010
Term
October Term 2009
Vote
9–0
Majority author
Justice Kennedy
Issue area
Economic Activity
Disposition
Affirmed
Outcome
Petitioning party lost
Ideological direction
Liberal

Opinion excerpt

Justice Kennedy delivered the opinion of the Court, except as to Parts II-B-2 and II-C-2. The question in this case turns on whether a patent can be issued for a claimed invention designed for the business world. The patent application claims a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy. Three arguments are advanced for the proposition that the claimed invention is outside the scope of patent law: (1) It is not tied to a machine and does not transform an article; (2) it involves a method of conducting business; and (3) it is merely an abstract idea. The Court of Appeals ruled that the first mentioned of these, the so-called machine-or-transformation test, was the sole test to be used for determining the patent-ability of a “process” under the Patent Act, 35 U. S. C. § 101. I Petitioners’ application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula. Claim 1 consists of the following steps: “(a) initiating a series of transactions between said commodity provider and consumers…

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