Important Patent Case Law Decisions

Important Patent Case Law Decisions

Executive summary:

BitLaw contains hypertext versions of the most important recent court cases dealing with Patent law. This document contains a brief summary of the recent cases, and links to those cases that have been added to BitLaw.

You may wish to go directly to one of the topical subheadings for this index:
•Patentable Subject Matter
•Provisional Patent Applications

Patentable Subject Matter

Gottschalk v. Benson (S. Ct. 1972)In this case, the Supreme Court struggled with whether an algorithm to convert binary-coded decimal numbers into true binary numbers was considered patentable. The Court felt that a patent on this concept would pre-empt the entire mathematical algorithm. Since mathematics could be considered an abstract idea, and abstract ideas are not patentable, the Supreme Court held that the algorithm in question is not patentable.Parker v. Flook (S. Ct. 1978)Here, the Supreme Court examined whether a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was patentable. The only difference between the prior art and the invention was the algorithm that calculated the new alarm limit. The Court held that this was not patentable even though an additional step was included in the claim beyond merely the calculation step. The Court explicitly rejected the notion that "post-solution activity [alone]... can transform an unpatentable principle into a patentable process." Specifically, the court held that the invention could not be patented "not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."Diamond v. Diehr (S. Ct. 1981)In this 1981 case, the U.S. Supreme Court ordered the P.T.O. to grant a patent on an invention even though computer software was utilized. The invention in this case relates to a method for determining how rubber should be heated in order to be best "cured." The invention utilizes a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer.State Street Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 1998)In this case, the Federal Circuit determined that software programs that transform data are patentable subject matter under Section 101 of the Patent Act even when there is no physical transformation of an article. The court emphasized that software or other processes that yield a useful, concrete and tangible result should be considered patentable. The court also "laid to rest" the business method exception. This means that while prior courts considered business methods inventions to be unpatentable, the State Street court found that these inventions are as patentable as any other inventions.In re Bilski (Fed. Cir. 2008)This case analyzed the patentability of processes where the process steps are not not necessarily performed on a computer. The majority decision has set forth a single test for determining the patentability of processes. This test holds that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This machine-or-transformation test applies to process claims, but it is not clear whether the decision should alter the analysis of apparatus claims (such as computer implemented software claims). For a discussion on the current state of software patents, see Are Software and Business Methods Still Patentable after the Bilski Decision?Bilski v. Kappos (S. Ct. 2010)The Supreme court rejected the Federal Circuit's holding in In re Bilski that the machine-or-transformation test is the sole test to determine whether a particular process constitutes patent-eligible subject mater. Instead the test should be viewed as "a clue" to this analysis. The majority decided that the Bilski invention was not patent-eligible subject matter because it was an attempt to preempt an abstract idea. It is not clear from this decision what test or analysis should be used going forward to analyze whether a particular process is merely an abstract idea or not.
Provisional Patent Applications

New Railhead Manufacturing L.L.C. v. Vemeer Manufacturing Co. (Fed. Cir. 2002) In this case, the plaintiff invented a new drill bit where the bit body is "angled with respect to the sonde housing." While this angle was described in the non-provisional patent application, the angle was not disclosed in the originally filed provisional application. Unfortunately, the plaintiff had offered the drill bit for sale more than one-year before the non-provisional filing date, and therefore the patent would be invalid under the statutory bar section of 35 U.S.C. 102(b) unless the patent was entitled to the filing date of the provisional application. Since the claim limitation of the angled drill bit body was not adequately disclosed in the provisional application, the inventor could not claim the benefit of the provisional application and the patent was declared invalid.