May 8th’s en banc oral arguments in Ex parte Bilski reveal a court clearly grappling with the difficult problem of defining the scope of patentable subject matter in a way that is both administratively workable and supportive of future innovation and technology surges. The Federal Circuit’s leeway is limited by Supreme Court precedent. The en banc panel notably focused on Diamond v. Diehr, 450 U.S. 175 (1981), and the meaning of “transformation.”
Hitting upon an argument found in several amici briefs, the court questioned whether the statutory limits of Section 101 are necessary at all — given the administrability of Sections 102, 103 and 112. No counsel presented clear “harms” of an overbroad interpretation of a statutory “process.” (The potential issues were best described in Prof Sarnoff’s brief.)
- Listen to the oral argument in the en banc hearing of In re Bilski here for Part One and here for Part Two.
Tea leaves (FWIW):
- PTO’s decision will be affirmed by shaping the facts (e.g., by calling the invention an abstract idea).
- State Street will not be overruled.
- The court will not implement a “machine test.”