Applying Bilski: Order Requiring Further Briefing Highlights Unresolved Questions

In an order requiring further briefing re motion for summary judgment of invalidity based on lack of patentable subject matter, the court notes:

"The Supreme Court has issued an opinion in Bilski v. Kappos, 561 U.S. __(2010).

The parties are ORDERED to submit supplemental briefing regarding the effect of the Bilski decision on the outstanding Motion for Summary Judgment. The parties shall submit initial briefs of no more than 20 pages by July 12, 2010, and response briefs of no more than 12 pages by July 19, 2010.

The Court wishes for the parties to address the following questions in addition to such other issues as the parties deem relevant to the Court's decision:

(1) Whether Plaintiff's patent claims comprise "abstract ideas" under analogous Supreme Court and Federal Circuit precedent, or whether Plaintiff's patent claims comprise "applications" of abstract ideas. See Bilski, slip. op. at 12-15.

(2) Whether the Federal Circuit's decisions in AT & T Corp. v. Excel Comms., Inc., 172 F.3d 1352 (Fed. Cir. 1999), and State Street Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed Cir. 1998), remain valid precedent, and if so, whether Plaintiff's patent claims are valid in light of the holdings of
those opinions.

(3) What the Supreme Court meant by its concluding statement:
It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.

Bilski, 561 U.S. __, slip op. at 16. The parties are encouraged to identify precedential or persuasive caselaw that identify "other limiting criteria" relevant to the present patent claims."

Big Baboon Corporation v. Dell, Inc., 2-09-cv-01198 (CACD June 28, 2010, Order) (Wilson, J.)