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22 Fed. Cir. B.J. 521 (2012-2013)
Patent Eligibility after Mayo: How Did We Get Here and Where Do We Go?

handle is hein.journals/fedcb22 and id is 545 raw text is: Patent Eligibility After Mayo: How Did We Get Here and Where Do We Go? Joshua A. Kresh* Introduction To obtain a patent, an invention must be patent eligible under 35 U.S.C. § 101 and patentable under 35 U.S.C. %§ 102, 103, 112. Over the years, the Federal Circuit and the Supreme Court have struggled to determine the line between patent eligibility and patentability. While some current Federal Circuit judges believe that certain areas of technology should not be patent eligible, both Chief Judge Rader and USPTO Director David Kappos have said that eligibility should be a coarse filter.' Recently, in CyberSource Corp. v. Retail Decisions, Inc.,2 the Federal Circuit held a software method patent invalid as abstract, while also discussing the validity of Beauregard claims.3 In Ultramercial, LLC v. Hulu, LLC, Chief Judge Rader differentiated the method claims from those in CyberSource due to their computational complexity and held they were not so abstract as to be ineligible for patent protection.' Then in Fuzzysharp Technologies Inc. v. 3DLabsInc. 6the Federal Circuit remanded for additional claim construction in light of Bilski,' presenting a holding that seemed closer to the logic from * Joshua A. Kresh is a J.D. candidate, May 2013, at The George Washington University Law School. He would like to thank Professor Kelly, George Washington University Law School, and Danielle Ryan, George Washington University Law School, for their editorial guidance. ' Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010); Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922, 43,926 (July 27, 2010), available at http://edocket. access.gpo.gov/2010/pdf/2010-18424.pdf. 2 654 E3d 1366 (Fed. Cir. 2011). Id. at 1367-78, 1376-77; see also In re Beauregard, 53 E3d 1583 (Fed. Cir. 1995). The Federal Circuit has held software contained in computer-readable media to be a patentable article of manufacture. See In re Beauregard, 53 E3d at 1584. 657 F.3d 1323 (Fed. Cir. 2011). Id. at 1329-30. 447 E App'x 182 (Fed. Cit. 2011). Id. at 186. (Because the Supreme Court in Bilksi held that failing to satisfy the machine-or-transformation test does not necessarily render claims unpatentable, the basis for the district court's decision is no longer sound.).

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