Docket No. 2017-2081
LOURIE, O’MALLEY, TARANTO
May 15, 2018
Brief summary: DC grant of SJ to SAP finding the asserted claims patent ineligible under § 101 affirmed (e.g., “not a physical-realm improvement but an improvement in wholly abstract ideas”).
Summary: InvestPic appealed DC grant of a DJ to SAP finding US 6,349,291 (reexamination apparently ongoing, see FN1) directed to, e.g., “[a] method for calculating, analyzing and displaying investment data” using “a resampled statistical analysis” and related systems invalid as ineligible under § 101. The FC panel opinion notes that this patent was previously considered in In re Varma (FC 2016). The DC granted SAP’s motion “[b]ecause mathematical calculations and formulas are not patent eligible” and the ‘291 claims “add no inventive concept to the mathematics to which they are directed-merely (a) further-specified mathematical calculations and (b) pre- and post-solution activities like use of the internet or generic computer hardware.” The FC panel reviewed the DC’s decision (under Rule 12(c)) de novo, accepting all well-pleaded facts as true” and “viewing them in the light most favorable to the plaintiff”, “under the substantive standards” of the law of patent eligibility (Two-Way Media, FC 2017). The FC panel explained that “[t]he first stage of the Alice inquiry looks at the ‘focus’ of the claims, their ‘character as a whole’; and the second stage of the inquiry (where reached) looks more precisely at…whether…[the claims] identify an ‘inventive concept’ in the application of the ineligible matter” (Electric Power, FC 2016). The FC panel also explained that even if “the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant”, “that is not enough for eligibility” (Myriad, US 2013; buySAFE, FC 2014). Further, the FC panel explained, it is not “enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art” (Mayo, US 2012; Synopsys, FC 2016 (“[A] claim for a new abstract idea is still an abstract idea.”); Intell. Ventures, FC 2016). The FC panel agreed with the DC that “[t]he claims in this case are directed to abstract ideas” (“collecting information, analyzing it, and displaying certain results” (Electric Power, FC 2016)) and “critically different from those we determined to be patent eligible in McRO” (FC 2016) in which the claims “were directed to the creation of something physical” (“the display of ‘lip synchronization and facial expressions’ of animated characters”)). Further, “[t]he claims in McRO…had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it” (McRO; Finjan, FC 2018; Apple, FC 2016). And unlike Thales Visionix (FC 2017 (“the improvement was in a physical tracking system”), Enfish (FC 2016 (“improvements in the way computers and networks carry out their basic functions”), and Visual Memory (FC 2017), the FC panel explained, “the focus of the claims” here “is not a physical-realm improvement but an improvement in wholly abstract ideas” (“it does not matter…whether the information…is..about real investments” (OIP Techs., FC 2015 (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”); Credit Acceptance, FC 2017). In the second step of the Alice analysis, the FC panel found that the claims’ “invocation of…computers and networks is not enough to establish the required ‘inventive concept’ in application” and therefore ineligible. The FC panel noted that an innovator of technology such as this “must look outside patent law” for protection, “such as in the law of trade secrets”. The DC decision was therefore affirmed.