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Business Method Patents To Face Scrutiny By En Banc Federal Circuit

By Troll Tracker

Dennis Crouch has an excellent summary of the Federal Circuit's en banc order today, revisiting whether business method claims are patentable and whether State Street Bank should be overruled. Dennis lists the en banc questions and claim 1 of the Bilski patent here.

In addition to Dennis's excellent summary and questions to ponder, I also invite potential amici to recall the Supreme Court's handling of Laboratory Corp. of America v. Metabolite Labs (2006). On that appeal from the Federal Circuit, the Supreme Court first granted certiorari, on the following question:

Is it permissible to patent a correlational relationship in a medical test result, such that a doctor necessarily infringes on the patent simply by thinking about the relationship after looking at the test result?

However, before a decision could be issued, the Court DIG'd the case (dismissed it as improvidently granted). There was surmise, at the time, that the Court felt comfortable raising the 35 USC 101 issue when the Federal Circuit had not even considered the issue in its opinion. It was the wrong vehicle.

Justices Stevens, Breyer and Souter dissented from the decision to DIG the case. In their opinion, written by Justice Breyer, the 3 justices queried whether claim 13 of that patent could really be patentable. Claim 13 was:

A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:
assaying a body fluid for an elevated level of total homocysteine; and
correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

On page 13 of the dissent, the 3 justices pointed out that State Street Bank might be inconsistent with prior cases of the Supreme Court, citing the 1854 Supreme Court decision in O'Reilly v. Morse. The 3 justices concluded that the correlation of claim 13 was an "unpatentable natural phenomenon."

Now, we really will have the Federal Circuit focusing on business method patents, fair and square. And you can be certain that this patent-happy Supreme Court, fresh off of decisions in eBay, Medimmune and KSR, will itself be taking up 35 USC 101 in the 2008-2009 term.

Party briefs are due March 6. Amicus briefs (for whatever position) are due 30 days later. Oral arguments to take place May 8, 2008 in Washington, D.C. Expect a Federal Circuit en banc opinion sometime in the late Summer or Fall.

Note: any bets on the first blogger to declare that this en banc order is yet another reason for Congress to stop considering patent reform? My money is on Gary Odom.

Full post as published by Patent Troll Tracker on February 15, 2008 (boomark / email).