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Greg Ahrens, Glenn Bellamy, and Bob Chambers in intellectual property litigation

Don Frei, Karen Gaunt (a new addition for 2012), Ken Germain, Kurt Grossman, Lori Krafte (also named as one of the Top 25 Women), Dave Stallard, and Steve Gillen for intellectual property

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Jason D. Sopko has joined Wood Herron & Evans as an associate and is involved in all phases of the firm’s intellectual property practice.  Prior to joining WH&E,  Jason received an Active Duty Commission as an Officer in the United States Air Force.  He served four years as a Judge Advocate General (JAG), at Moody AFB, GA.  In his role as a military attorney, he provided Electrical Engineering based counsel, drafting numerous technically demanding government acquisition contracts. Jason earned his J. D. from the Cleveland Marshall College of Law; Magna Cum Laude in 2006.  He received a Bachelor of Science in Electrical and Computer Engineering from The Ohio State University in 2003.

On June 28, 2010, the United States Supreme Court handed down its long-awaited decision in Bilski v. Kappos, 561 U.S. __, 130 S. Ct. 3218, 177 L. Ed. 2d 792 (2010). The case specifically addressed whether a method for hedging risks in commodities was patentable subject matter under 35 U.S.C. § 101, which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” While the Court affirmed the Federal Circuit’s rejection of the claims-at-issue under § 101, it rejected the appellate court’s ruling that the “machine or transformation” test was the sole test for determining whether method claims were patentable subject matter.

More than the ruling on the particular method claimed in Bilski, the patent community anxiously awaited the Supreme Court’s answer to the question restated in Justice Kennedy’s opening line: “The question in this case turns on whether a patent can be issued for a claimed invention designed for the business world.” Id. at 799. Noting that it was unaware of any argument that the common understanding of “method” excluded business methods, the Court went on to find that the “argument that business methods are categorically outside of § 101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents.” Id. at 804. In endorsing the viability of business method patents, the Court affirmed its own precedent regarding the broad scope of § 101 that furthered Congress’s “permissive approach to patent eligibility to ensure that ‘ingenuity should receive a liberal encouragement.’” Bilski, 177 L. Ed. 2d at 801 (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (quoting 5 Writings of Thomas Jefferson 75-76 (H. Washington ed. 1871)).

Prior to the Supreme Court’s Bilski decision, the Federal Circuit had held that the “machine or transformation test,” which requires that method claims either be tied to a particular machine or transform a particular article into a different state or thing, was the sole test for determining whether a method claim constituted patentable subject matter. The Supreme Court rejected this ruling, noting that the “Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but not the exclusive test. Id. at 803. The Court also reiterated that under its own precedent the only broad exclusions of patentable subject matter are laws of nature, physical phenomena, and abstract ideas. Id. at 803. Moreover, along the same lines as its opinion in KSR Int’l v. Teleflex, 550 U.S. 398 (2007), where the Court rejected a rigid approach to assess obviousness, the Bilski Court rejected a rigid approach to determining patentability, stating: “Section 101 is a ‘dynamic provision designed to encompass new and unforeseen inventions.’” Id. at 803 (quoting J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 135 (2001)).

The key question now is how the United States Patent and Trademark Office and lower federal courts will apply the Supreme Court’s Bilski opinion. For its part, the Federal Circuit has stated: “[w]e therefore understand the Supreme Court to have rejected the exclusive nature of our [“machine or transformation”] test, but not necessarily the wisdom behind it.” King Pharm., Inc. v. Eon Labs., Inc., 2010 U.S. App. Lexis 15947 (Fed. Cir. Aug. 2, 2010). The USPTO has issued new “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.” 75 Fed. Reg. 43922 (July 27, 2010). These guidelines stress that although “no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible … Bilski held open the possibility that some claims that do not meet the test might nevertheless be patent-eligible.” Id. at 43924. With that being said, the USPTO’s Interim Guidance appears to focus on the restriction against patenting abstract ideas by laying out three primary factors to assist examiners, including: 1) whether the method involves or is executed by a particular machine or apparatus, 2) whether performance of claimed method results in or otherwise involves a transformation of a particular article, and 3) whether performance of the claimed method involves an application of a law of nature. Id. at 43925-6.

Based on these statements, it is apparent that the “machine or transformation” test will continue to play a significant role in patentability determinations under § 101. Inventors and patent attorneys alike should continue to keep the principles underlying the “machine or transformation” test foremost in their mind when drafting claims describing their method or process claims. Although the “machine or transformation” test is no longer considered the sole test of patentability under § 101, courts and the USPTO are still likely to rely heavily on it in the foreseeable future.

Our strategy in securing patent protection in this case has been to cover all possible uses, adaptations and forms of the technology by relying on a few basic points of novelty in both the surgical method and devices which lend the technology its significant commercial and practical advantages. By keeping our focus on the essence of the invention in this manner, and aggressively seeking a number of patents with broad and comprehensive protection, we have been able to secure patent protection for the client, which will ensure an exclusive, valuable position in this area of the medical device market. We have worked and continue to work very closely with the client by explaining the patent coverage currently obtained and currently sought, and receiving input from the client on possible new directions for the technology so that the patent protection can also be steered in those same directions. This ensures that the patents that issue are always one step ahead by covering the technology that may still be “on the drawing board.”

By building a broad, strong portfolio of patents for this medical device client, the client is now able to manufacture and sell its product with little concern that larger medical device companies will copy its product line. Thus, the client’s significant investment in this new technology, as well as its future sales, are well protected from those that would otherwise use the technology to their own advantage. In fact, after seeing the strong portfolio of patents and patent applications, those medical device companies that may have copied the product before, are now showing up on the doorstep as potential customers.