News Releases

Baker Botts Secures Precedential Win on Patent Eligibility for DISH Network


PALO ALTO, March 9, 2020 – On Friday, the U.S. Court of Appeals for the Federal Circuit ruled in favor of Baker Botts client DISH Network by holding that merely configuring a computer to implement an improvement to an abstract concept is not patent-eligible. In the case, Customedia Technologies v. Dish Network, the court determined that patent owners have been “latching onto” language from the U.S. Supreme Court’s Alice v. CLS Bank decision, which suggests that claims that “purport to improve the functioning of the computer” are eligible.

The Court affirmed the Patent Trial Appeal Board’s decision to strike down claims directed to an improvement to user-targeted advertising in a media network such as a set-top box and content network. The precedential decision provides much-needed guidance to courts and the USPTO when facing the difficult problem of applying the Alice decision to computer-implemented inventions.

DISH’s co-lead counsel, Baker Botts partner, Eliot D. Williams, stated: “The court clarified that although inventions directed to improvements in computer functionality are eligible for patenting, merely configuring a computer to provide functionality that is itself an abstract idea is insufficient to support patent eligibility.”

As Baker Botts argued in its pleadings, patentees, like Customedia, often latch on to language from Alice and contend that their claims “improve the functioning of the computer itself.” Customedia argued that its claims were eligible because they “provide for improvements to the operation and functioning of computer systems.” Baker Botts successfully argued that the claims at issue are directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement in the functioning of a computer.

“This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with our precedent applying this concept,” the court stated in its opinion. The Court also reviewed all significant, prior precedent since Alice in support of the concept that an improvement in the abstract concept itself does not confirm eligibility under Alice.

DISH is represented by Baker Botts partners Eliot Williams, Ali Dhanani, G. Hopkins Guy and Michael Hawes.

Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

Read More

Related Professionals