UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
2007-1130
(Serial No. 08/833,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
MAYER, Circuit Judge, dissenting.
The en banc order in this case asked: “Whether it is appropriate to reconsider
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed.
Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir.
1999), in this case and, if so, whether those cases should be overruled in any respect?”
I would answer that question with an emphatic “yes.” The patent system is intended to
protect and promote advances in science and technology, not ideas about how to
structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and
Rand A. Warsaw (“Bilski”) is not eligible for patent protection because it is directed to a
method of conducting business. Affording patent protection to business methods lacks
constitutional and statutory support, serves to hinder rather than promote innovation
and usurps that which rightfully belongs in the public domain. State Street and AT&T
should be overruled.