Patentable Subject Matter: The Controversy Continues

The patentability of business methods continues to be a hotly debated topic. Unfortunately, the release of each new court opinion only seems to further cloud the issue and add layers of confusion. In fact, many courts, including the Court of Appeals for the Federal Circuit, seem reluctant to discuss 35 U.S.C. ' 101, which governs patentable subject matter. This certainly seems to be the case with the Federal Circuit's recent decision in MySpace, Inc. v. GraphOn Corp., No. 2011-1149, 2012 WL 716435 (Fed. Cir. Mar. 2, 2012), which gives a good indication of how that court prefers to handle the issue, especially in light of the Supreme Court ruling in Bilski v. Kappos, 130 S. Ct. 3218 (2010). And, since the Supreme Court has gone on to mirror the MySpace decision in its own recent Prometheus decision, this case becomes even more significant in terms of divining which way the judicial winds are blowing on this issue. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). Only by first understanding the current state of the judiciary can in-house counsel then develop practical plans and strategies.