SIIA had wanted the court to recognize that the machine-or-transformation test is not the only test for patentability. "Today's decision preserves a delicate but important balance," Bain said. "It keeps the door closed to patenting mere abstract ideas, which many business-method patent applications have been. But just as importantly, it affirms the continued viability of patenting useful software applications, which will allow software companies to continue in their role as a driver of economic growth."
Tough cases will continue to be decided in the Federal Circuit, Bain added. "Bilski was not a tough case," Bain said. "No one thought that should be a patent-eligible invention."
The ruling left software patents alone, but also didn't expressly endorse them, either, said Alex Hadjis, an intellectual property lawyer with the Morrison & Foerster law firm in Washington, D.C. Challenges to software and business-method patents will have to be tried on a case-by-case basis, he said.
"There's life in this one for the software folks that don't appreciate patents coming at them," he said.
The ruling was disappointing, even though Kennedy's opinion referenced past court decisions that limit software patents, said Peter Brown, executive director of the Free Software Foundation. The widespread patenting of software comes out of a series of court rulings, not action by Congress, he said.
"It is therefore all the more disappointing that the Supreme Court failed to use Bilski to clean house and remove software from the scope of patentability," Brown said. "Congressional action that seemed unlikely before will receive new attention. The increasing damage being inflicted by monopolies on essential techniques in computer programming will run its course in the U.S. economy and the number of voices opposing software patents will increase."
Grant Gross covers technology and telecom policy in the U.S. government for The IDG News Service. Follow Grant on Twitter at GrantusG. Grant's email address is email@example.com.