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Court Decisions

US Supreme Court rules on patentable subject matter case

The US Supreme Court on June 28, 2010, finally decided the Bilski v. Kappos case on the patentable subject matter issue. Bilski’s patent application claims were directed to a method of hedging the prices of commodities against weather-related events. Although the questions presented and argued went only to whether the “pure” business method as claimed comprises patentable subject matter, the Court held the claims were merely to an abstract idea and so were not patentable subject matter. However the Court also commented that the “Machine or Transformation of Matter” test of the Federal Circuit Court was improper to use as the only qualifying requirement for patentable subject matter. The Court also noted that it has never approved the “useful, tangible, and concrete” test of the State Street Bank case of 1998. The Federal Circuit Court of Appeals now will address what is patentable subject matter, likely in one of three pending life sciences cases, two remanded from the Supreme Court and one coming up on appeal from a district court ruling.

Federal Circuit Court of Appleals decision on patent fraud case to come next year

The Federal Circuit Court of Appeals is currently taking briefs on a question of what constitutes inequitable conduct or “fraud on the Patent Office” in a case, Therasense v. Becton, Dickenson. When a patent applicant or his or her counsel has withheld material information from the Patent Office with intent to mislead the examiner into granting a patent that perhaps should not have been granted, the courts may find the resulting patent unenforceable at least until the fraud is purged, if it can be. The appeal seeks to have the Federal Circuit Court, hearing the matter “en banc”, decide on what the test for unenforceability of a patent should be. A decision should come down next year; many amicus briefs are being prepared to the court on this issue.

Book contribution

John R. Crossan has contributed again to the 2010 edition of the West Publishing book, Patent Claim Construction in the Federal Circuit. Claim construction, deciding on the meaning of words in a patent claim, is a crucial part of any infringement and/or validity analysis when a patent is interpreted in any conflict situation. The book is distributed to many federal judges and patent lawyers as a handbook for the latest law of claim construction.

John R. Crossan also has contributed the 7th Circuit chapter of an American Bar Association text being published in August 2010 on the effect of the KSR v. Teleflex decision of the US Supreme Court in 2004 on the recent decisions in the US District Courts. The high Court held in KSR that “common sense” of a person skilled in the relevant art may be used to combine references in the prior art even if there is no express, written teaching in that art to do so. Some believe that this makes it easier to invalidate patent claims as obvious in view of the prior art, but others argue that this simply returns the obviousness test to the foundational three-part test of the Graham v. John Deere case of the Supreme Court in the 1960’s. District Courts in the Seventh Circuit decided since the KSR case mostly take the latter view, John R. Crossan has found in the new text.


John R. Crossan has been appointed for a second term, by a new President of the Intellectual Property Law Association of Chicago, to continue as Chairman of the IPLAC Litigation Committee. This committee is charged with providing seminars on current topics of interest to members in the patent, trademark, copyright, and allied fields of litigation. It also has an Amicus Curiae subcommittee, which last year provided the US Supreme Court a brief in the Bilski case on business method patents and now is preparing one to the Federal Circuit in the Thereasense case on inequitable conduct.

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