Ten Years Since Bilski: Challenges Remain in Deciding Patent Eligibility of Computer- Implemented Inventions in the Emerging Technologies Space

AuthorC. Brandon Rash, Brooks J. Kenyon
Published in Landslide® magazine, Volume 13, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
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Meeting of the Minds
Ten Years Since Bilski: Challenges Remain in Deciding Patent
Eligibility of Computer-Implemented Inventions in the
Emerging Technologies Space
By C. Brandon Rash and Brooks J. Kenyon
claim further recites an inventive con-
cept that transforms the exception into
eligible subject matter. In implement-
ing these steps, the Federal Circuit has
avoided any bright-line rules. While
such an approach follows the Supreme
Court’s lead, its inherent ambiguity has
challenged practitioners. In 2019, the
USPTO tackled this uncertainty with
guidelines that synthesize the grow-
ing case law into what it believes is a
more consistent and clearer framework.
This article discusses the interaction
between the case law and the USPTO’s
new framework and their application
to computer-implemented inventions in
the emerging technologies space.
Bilski and Its Progeny
at the Supreme Court
and Federal Circuit
Patent eligibility is dened by statute:
35 U.S.C. § 101 provides, “[w]hoever
invents or discovers any new and use-
ful process, machine, manufacture,
or composition of matter, or any new
and useful improvement thereof, may
obtain a patent.” This language is
expansive and supports the notion that
“ingenuity should receive a liberal
encouragement.”1 The Supreme Court,
however, has recognized three implicit
s new technologies have rapidly
advanced in recent decades,
practitioners, courts, and the
U.S. Patent and Trademark Ofce
(USPTO) have struggled to determine
whether these emerging technologies
are patent eligible under U.S. patent
law. The Patent Act denes broad cate-
gories of eligible subject matter, such as
new and useful processes or machines,
but the real challenge in deciding eli-
gibility has focused on the judicial
exceptions to those categories—laws of
nature, natural phenomena, and abstract
ideas. Technologies facing the harshest
scrutiny have included computer-
implemented inventions, like articial
intelligence and big data, and involved
whether they encompass a patent-
ineligible abstract idea.
Ten years ago, in the well-known
Bilski case, the U.S. Supreme Court
rejected the “machine-or-transformation
test” that the Federal Circuit had long
used as the exclusive test for eligibil-
ity of computer-implemented processes.
In its place, the Court imposed a more
exible analysis that has since turned
into a two-step test, known as the Alice/
Mayo framework. Step 1 asks whether
the claim recites a judicial excep-
tion, and if so, step 2 asks whether the
C. Brandon Rash is a partner at Akin Gump in Washington, D.C. He represents high-tech companies in patent infringement litigation in
district courts, infringement investigations at the U.S. International Trade Commission, and post-grant proceedings at the Patent Trial and
Appeal Board. He can be reached at brandon.rash@akingump.com. Brooks J. Kenyon is an associate at Akin Gump in New York. He practices
within the rm’s intellectual property practice, where he focuses primarily on patent disputes. He can be reached at bkenyon@akingump.com.
exceptions to the statutory categories:
laws of nature, natural phenomena,
and abstract ideas. For computer-
implemented inventions, practitioners
and courts struggle in particular with
distinguishing between patent-eligible
inventions and patent-ineligible
abstract ideas.
In deciding whether a claim falls
within an exception, the Supreme Court
has a storied—yet short—history under
the current eligibility regime. Ten years
ago, in Bilski v. Kappos,2 the Supreme
Court rejected the Federal Circuit’s long-
used machine-or-transformation test3 as
the sole test for patent eligibility and,
instead, considered the “guideposts” of
its prior opinions: Gottschalk v. Ben-
son,4 Parker v. Flook,5 and Diamond
v. Diehr.6 Following these guideposts,
the Supreme Court reestablished that: a
claim should be considered as a whole,
without dissecting the claims into old
and new elements and ignoring the pres-
ence of old elements; an application of
an abstract idea to a known structure or
process may well be deserving of pat-
ent protection; and merely attempting
to limit an abstract idea to a particular
technological environment or adding
insignicant extra-solution activity can-
not save a claim.7
Making a Connection between Young IP Attorneys and Those Who Want
to Share Their Experience
“Meeting of the Minds” is a recurring feature of Landslide® magazine. It includes articles authored by young lawyers
in conjunction with experienced attorneys, who participate as mentors in the planning and writing process. Landslide is
proud to provide the opportunity for young lawyers and law students to learn from attorneys in IP practice areas and to get
published in our prominent legal magazine. The end product is a collaboration for which both authors share attribution.

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