December 23, 2010
The day before Halloween 2008, the Court of Appeals for the Federal Circuit released a much-anticipated en banc decision in the case of In re Bernard L. Bilski and Rand Warsaw, but it was difficult to tell whether it was a trick or a treat. In that appeal from a final decision of the Board of Patent Appeals and Interferences, the Federal Circuit held that a claimed invention of a method for hedging the “consumption risks” associated with a commodity sold at a fixed price—in short, a method for hedging commodities—was not patent-eligible subject matter under 35 U.S.C. § 101 (“Section 101”). The Federal Circuit therefore sustained the examiner’s rejection of all eleven claims of Bilski’s and Warsaw’s U.S. Patent Application, Serial No. 08/833,892, without ever determining whether the claimed invention was novel, useful, or nonobvious under 35 U.S.C. §§ 102 and 103 (“Sections 102 and 103").