Bernard L. Bilski and Rand A. Warsaw v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office
The Court held that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101."
561 U.S. 593 · No. 08-964 · 2009 term · Roberts Court
Decided Jun 28, 2010 · argued Nov 9, 2009
Economic activity · Patents and copyrights: patentability of computer processes
Majority opinion: Anthony Kennedy
The voteMajority
9–09 in the majority, 0 in dissent
No dissent (9–0)
Affirmed. Bernard L. Bilski and Rand A. Warsaw lost.
What this ruling means
Affirmed: the Supreme Court upheld the decision of the U.S. Court of Appeals, Federal Circuit, so it stands (sometimes with changes the Court made to it).
Bernard L. Bilski and Rand A. Warsaw was the petitioner, the side that asked the Supreme Court to review the case. “Lost” means the Court did not give that side the result it asked for.
From the Supreme Court Database. A justice who agreed with the result but not the reasoning counts in the majority.
Summary
The opening of the case’s Wikipedia article: what the case was about and what the Court held.
Bilski v. Kappos, 561 U.S. 593 (2010), was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101." In so doing, the Supreme Court affirmed the rejection of an application for a patent on a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy set forth in the application was not patentable subject matter.
Data notes
The text is Wikipedia’s (CC BY-SA 4.0), matched to the case by its citation, docket number or name and year, and is not checked against the opinion. The site keeps the article’s opening section, ending on its last full sentence. The one-sentence summary under the title is the Decisions list’s: Wikipedia’s own ruling sentence, or, tagged “AI-written”, one Claude wrote from this opening.
How the justices voted
Each justice who took part, placed by their Martin–Quinn ideology score for the 2009 term. Filled: the 9 in the majority. Hollow: the 0 in dissent. Colour is the party of the president who appointed them.
Majority(9)
Anthony KennedyWrote the majority opinion
John StevensWrote a concurrence
Stephen BreyerWrote a concurrence
Ruth GinsburgJoined the majority
Sonia SotomayorJoined the majority
John RobertsJoined the majority
Samuel AlitoJoined the majority
Antonin ScaliaJoined the majority
Clarence ThomasJoined the majority
Dissent(0)
- None.
Data notes
Each justice’s vote and what they wrote are from the justice-centered file of the Supreme Court Database. “Wrote a concurrence” means the justice sided with the majority and wrote separately; a justice who dissented in part is counted on the side they took overall. A justice who wrote nothing is listed as joining their side.
Positions are each justice’s Martin–Quinn score for the case’s term, the same scores as the Ideology page: negative is more liberal, positive more conservative. A score sums up a justice’s votes across the whole term, so it says where they usually sit, not why they voted as they did here. The median line is the Court’s median justice that term.
The parties
Who brought the case to the Court, who answered it, and how it got there.
- Petitioner
- Bernard L. Bilski and Rand A. WarsawInventor, patent assigner, trademark owner or holder
- Respondent
- David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark OfficeDepartment or Secretary of Commerce
- Reached the Court by
- Certiorari (the Court chose to hear it)
Data notes
The names are the two sides of the case’s title. The description under each is the Supreme Court Database’s category for that party, in its own wording. The petitioner is the side that asked the Supreme Court to review the decision below. “Why it was taken” appears only when the majority opinion says lower courts disagreed or were unsure about the question; reasons that would fit any case (“to resolve the question presented”, “an important question”) are left out.
The law at issue
The law the Court was asked to apply, and the kind of power it used to decide.
- Provision
- 35-101
- Kind of law
- Infrequently litigated statutes
- Decided by
- Statutory construction
Data notes
The Supreme Court Database codes the main constitutional provision, statute or court rule each case turned on, and the basis of the decision: judicial review of a federal or state law, interpreting a statute, supervising the lower courts, and so on. A case can rest on more than one. “Overruled” counts only where the majority opinion says so.
Timeline
What happened at the Court and how the case got there, newest first.
- Jun 28, 2010DecidedDecided · Decided 9–0: affirmed. Bernard L. Bilski and Rand A. Warsaw lost.
- Nov 9, 2009ArguedArgued · Oral argument before the Court.
- Not datedTaken upTaken up · The Supreme Court agreed to hear the case (certiorari).
- Not datedCourt belowCourt below · Began in and was decided by the U.S. Court of Appeals, Federal Circuit: affirmed, with a dissent.
Data notes
From the Supreme Court Database: the court the case began in, the court whose decision the Supreme Court reviewed and what that court did, how the case came to the Court, and the dates of argument and decision. The database does not date the steps in the lower courts. Court names are the database’s.
Other decisions on the same issue
10 other argued cases since 1946 on patents and copyrights: patentability of computer processes, newest first.
- Alice Corp. Pty. Ltd. v. CLS Bank Int'lLandmark · Copyright/Patents573 U.S. 208Jun 19, 2014 · 573 U.S. 208Economic activityLandmark · Copyright/Patents9–0Unanimous band
- Microsoft Corporation, Petitioner v. I4i Limited Partnership et al.564 U.S. 91Jun 9, 2011 · 564 U.S. 91Economic activity8–0Unanimous band
- Quanta Computer, Inc., et al. v. LG Electronics, Inc.553 U.S. 617Jun 9, 2008 · 553 U.S. 617Economic activity9–0Unanimous band
- Microsoft Corporation v. AT&T Corp.550 U.S. 437Apr 30, 2007 · 550 U.S. 437Economic activity7–18–1 band
- Ebay Inc., et al. v. Mercexchange, L. L. C.547 U.S. 388May 15, 2006 · 547 U.S. 388Economic activity9–0Unanimous band
- Diamond, Commissioner of Patents and Trademarks v. Bradley et al450 U.S. 381Mar 9, 1981 · 450 U.S. 381Economic activity4–45–4 band
- Diamond, Commissioner of Patents and Trademarks v. Diehr et al.450 U.S. 175Mar 3, 1981 · 450 U.S. 175Economic activity5–45–4 band
- Parker, Acting Commissioner of Patents and Trademarks v. Flook437 U.S. 584Jun 22, 1978 · 437 U.S. 584Economic activity6–36–3 band
- Dann, Commissioner of Patents and Trademarks v. Johnston425 U.S. 219Mar 31, 1976 · 425 U.S. 219Economic activity7–0Unanimous band
- Gottschalk, Acting Commissioner of Patents v. Benson et al.409 U.S. 63Nov 20, 1972 · 409 U.S. 63Economic activity6–0Unanimous band
Data notes
Every other orally argued case with a clear vote, from the 1946 term on, that the Supreme Court Database files under the same issue as this one. The database gives each case one issue from a list of about 270 (abortion, search and seizure of vehicles, the death penalty, and so on), whatever law it turned on.
Official record
Read the full opinion on Justia, the argument audio on Oyez and Wikipedia. Case data from the Supreme Court Database, Version 2026 Release 01, through the 2025 term.