Our weekly SoCal IP Institute meeting on Monday, September 23, 2013 will be a discussion of two recent subject matter jurisdiction cases. The first case is from the Federal Circuit, the second case is from the High Court of Justice, Chancery Division, Patents Court in the United Kingdom. Brief synopses of the cases appear below.
Accenture Global Services, GMBH et al. v. Guidewire Software, Inc., Case No. 2011-1486 (Fed. Cir. September 5, 2013) (available here). Accenture filed suit against Guidewire alleging infringement of the ’284 patent as well as asserting various state law claims. Guidewire asserted multiple affirmative defenses including that the patent was invalid under 35 U.S.C. § 101 for claiming non-patent-eligible subject matter. Guidewire moved for summary judgment, asserting that the patent was invalid because claims 1, 8, and their related dependent claims did not meet the machine-or-transformation test. Because the Supreme Court had by then granted certiorari in Bilski, but had not yet issued its own decision, the district court denied the motion for summary judgment without prejudice, allowing Guidewire to renew the motion after a Supreme Court decision issued.
The district court held that the ’284 patent was “directed to concepts for organizing data rather than to specific devices or systems, and limiting the claims to the insurance industry does not specify the claims sufficiently to allow for their survival.” Specifically, the court held that method claim 8 was patent-ineligible because none of the claim limitations restrict claim 8 to a concrete application of the abstract idea, and that the dependent method claims only add “limitations regarding potential claim information categories.” Id. at 621. The district court found that system claim 1 is patent-ineligible because the claim language “mirrors the language of the method disclosed in claim 8.” Id. Those conclusions, “in conjunction with the court’s prior conclusion that the [’284 patent fails] the machine or transformation test” led the court to grant the motion for summary judgment of invalidity under § 101.
The district court entered final judgment in favor of Guidewire. After the Supreme Court issued its decision in Bilski, Guidewire renewed its motion for summary judgment, arguing that the ’284 patent is drawn to abstract ideas that fail the machine-or-transformation test. On May 31, 2011, after briefing from both sides, the district court again granted Guidewire’s motion for summary judgment, finding the claims of the ’284 patent ineligible because the claims are drawn to abstract ideas.
The judgment regarding the method claims was not appealed and is therefore affirmed. The district court’s decision on patent-ineligibility of the system claims was also be affirmed, both because the system claims offer no meaningful limitations beyond the method claims that have been held patent-ineligible and because, when considered on their own, under Mayo and our plurality opinion in CLS Bank, they fail to pass muster.
Judge Rader disagrees finding that the court intentionally avoided consideration of non-abstract limitations in the claims in order to find the system claims patent-ineligible.
In the Matter of UK Patent application GB 1014714.8 in the name of Lantana LTD, CH/2013/0131 (September 4, 2013) (available here). The applicant here filed an appeal regarding a decision that the the application was not patentable subject matter. The essence of the claim can be shortly stated. The claim envisages two computers connected via the internet. The user of the local computer wants to retrieve data from the remote computer. When required, the local computer creates an email message containing machine-readable retrieval criteria and sends it to the remote computer. The remote computer receives the email, works out if the email contains any machine readable instruction and, if so, executes that instruction, retrieves the data and sends back an e-mail containing the requested data.
Article 52 of the EPC which (as amended) reads:
(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
The recently-re-considered approach in the U.K is as follows
- properly construe the claim;
- identify the actual contribution;
- ask whether it falls solely within the excluded subject matter;
- check whether the actual or alleged contribution is actually technical in nature.
The signposts to a relevant technical effect (as modified in HTC v Apple) are:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- whether the claimed technical effect operates at the level of the architecture of the computer, that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
- whether the claimed technical effect results in the computer being made to operate in a new way;
- whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
- whether the perceived problem is overcome by the invention as opposed to merely being circumvented.
The court held, among other things, that the fact that in an IBM case the method of communication between programs and files held at different processors within a known network was held to be patentable in 1988 does not mean that any method of communicating between programs and files on different computers over a network necessarily involves a technical contribution today. Also, being novel and inventive, the rough equivalent of novelty and non-obviousness in the U.S., is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution “technical”.
The court goes on to refute each of the proffered grounds for a technical finding and to find that each of the guideposts point to the contribution of the claims being non-technical. Of interest, the “technical” contribution apparently is a moving target, dependent upon the current status of the art.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 23, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.