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

• Author: C. Brandon Rash, Brooks J. Kenyon
• Pages: 52-56

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

A

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.