In re Lewis Ferguson, Darryl Costin and Scott C. Harris,
Fed. Cir. 2009.

By: Karin C. Khan

Three inventors, Lewis Ferguson, Darryl Costin and Scott Harris, (the “Applicants”) had filed an application for method and paradigm claims relating to bringing products to market, of which all claims were rejected under §§ 102, 103 and/or 112. Upon appeal to the Board of Patent Appeals and Interferences (the “Board”), the Board reversed the examiner’s rejections and issued its own rejection under § 101. Upon the Applicants’ request for rehearing, the Board further explained in detail the basis for its rejection of the claims under § 101.

On appeal, the Court of Appeals agreed with the Board’s decision regarding its rejection of the Applicants’ claims under § 101. In particular, the Court agreed that the Applicants’ method claims nominally fell with the statutory subject matter category of “processes.” Under the two-pronged Bilski test, the claimed process is patent-eligible under § 101 if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

The Applicants’ method claims directed to marketing a product did not meet either prong of Bilski’s test. Specifically, the claim recited a “marketing force” as a key element, which the Court explained is not a machine or apparatus that meets prong one of Bilski. Prong two of Bilski was not met because, as the Court explained, the claim is not transforming a physical object or substance into a different state or thing; instead, the method is directed to organizing business or legal relationships of a marketing company.

The Court also sought to classify the claimed subject matter of the paradigm claims into one of the statutory classes, but found that none applied. In defense, the Applicants had only argued that a “company” is a physical thing and thus, analogous to a machine. However, the Court did not agree and likened the applicants’ claims to an abstract idea (the reasoning of which Judge Newman did not agree with in his concurrence).