Business Method & Software Patents Survive Biliski v. Kappos

If there is an overriding lesson to take away from Biliski, I believe it is this: bright-line tests in patent litigation no longer exist. Virtually all patent litigation now requires nuanced argument, with expert interpretation, similar to practice in general commercial litigation.

“Obviousness” v. “Anticipation”—Similar but Different Patent Law Defenses

“Anticipation” is a patent defense that must be based on a single prior art reference.

“Obviousness” is a patent defense that may be based on multiple prior art references; but requires the additional element of proof that a “teaching” suggests a “motivation” to combine the elements of the prior art references into a single invention.

The Basics of Patent Claim Construction

To arrive at the “ordinary and customary meaning” of a patent claim term, the court evaluates (a) the words of the claim, (b) the patent specification, (c) the prosecution history, and (d) extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.

The End of Bright-Line Tests in Patent Litigation

In Bilski v. Kappos, the United Supreme Court is deciding whether a patentable “process” must be tied to a particular machine or apparatus or transfer an article into a different state or thing. The Court’s ruling in this case portends possible dramatic changes to the world of software and internet patents, most of which are process-based and operate on general-purpose computing platforms.