SCOTUScasticonSCOTUScast is presenting a podcast debate between Professor Michael Risch (WVU) and Professor Joshua Sarnoff (American) on the In re Bilski case.  They each filed competing amicus briefs before the en banc panel last year, and so are ideal opponents.

This 30-minute podcast, part of a podcast series called SCOTUSCast run by the Federalist Society, is a summary of the case and all of the issues that will be raised in argument.  The podcast is available for download at iTunes (via the SCOTUSCast podcast series), or at the Federalist Society’s website.

Bilski v. Doll – Cert Granted SCOTUScast – MP3
Running Time: 00:31:25

In the In re Bilski case, a patent application for a method of hedging risks in commodities trading was rejected by the examiner and review board. The patent examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, and only manipulates an abstract idea which cannot be used in the technological arts. Bilski appealed to the Board of Patent Appeals and Interferences, which also rejected the application, but on the grounds that the applicants’ claims did not involve any patent-eligible transformation because there was no transformation of physical subject matter from one state to another, and non-physical financial risks do not qualify for patent-eligible subject matter.

The U.S. Court of Appeals for the Federal Circuit upheld the rejections of the Board, holding that the issue at hand is whether the method is patentable, and referred to previous Court decisions that determined that patent-eligible processes do not include abstract ideas.  The Supreme Court has taken up the case to determine whether a “process” must be attached to a particular machine or apparatus or transform a particular object into a different state or object to be patentable and if the “machine-or-transformation” test for patent eligibility contradicts Congressional intent that patents protect “method[s] of doing business.”  Joshua Sarnoff and Michael Risch will discuss this case, moderated by Adam Mossoff.


  • Michael Risch, Associate Professor of Law, West Virginia University School of Law
  • Joshua Sarnoff Professor of the Practice of Law, American University’s Washington College of Law
  • Moderator: Adam Mossoff Associate Professor, George Mason University School of Law

Questions Presented:

  1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
  2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.”  35 U.S.C. § 273.

The Supreme Court has not considered what is patentable subject matter since 1981. This case now raises fundamental questions of what can be patented? Are patents only for manufacturing processes that are tied to a particular machine or produce some physical transformation? Or do patents also embrace modern business processes that do not depend on a particular machine or device?  We’ll find out.

Bonus Materials:

Court of Appeals for the Federal Circuit Opinion (PDF)
Questions Presented (PDF)
Petition for Certiorari (PDF)
Amicus Briefs

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