Bilski v. Kappos Case Brief

Facts of the Case

Petitioners’ patent application seeks protection for a claimed invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The key claims are claim 1, which describes a series of steps instructing how to hedge risk, and claim 4, which places the claim 1 concept into a simple mathematical formula. The remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand. The patent examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical problem. The Board of Patent Appeals and Interferences agreed and affirmed. The United States Court of Appeals for the Federal Circuit affirmed. Under the court of appeals’ formulation, an invention was a “process” only if it was tied to a particular machine or apparatus, or it transformed a particular article into a different state or thing.


Can a prosecutor’s office be held liable for the illegal conduct of one of its prosecutors, on the theory that the office failed to adequately train its employees, when there has been only one violation resulting from that deficient training?


“No. No. The Supreme Court affirmed the Federal Circuit, holding that the applicants’ claimed invention is not patent eligible. With Justice Anthony M. Kennedy writing for the majority, the Court reasoned that the Federal Circuit did not err when it used the “machine-or-transformation test” to determine patentability. However, the Court noted, in contrast to the Federal Circuit, that the machine-or-transformation test is not the sole test for determining patent eligibility.Justice John Paul Stevens, joined by Justices Ruth Bader Ginsburg, Stephen G. Breyer, and Sonia Sotomayor, concurred in the judgment. He disagreed with the majority to the extent it suggested that any series of steps that is not itself an abstract idea or law of nature may constitute a “process” within Section 101. Justice Stephen G. Breyer, joined by Justice Antonin Scalia, also concurred in the judgment. He noted his agreement with Justice Stevens’ concurrence and also highlighted the extent to which the Court agreed on many fundamental issues of patent law raised by this case.”

Case Information

Citation: 561 US 593 (2010)
Granted: Jun 1, 2009
Argued: Nov 9, 2009
Decided: Jun 28, 2010
Case Brief: 2010