The Federal Circuit remains divided over the patent eligibility of computer-related inventions. In CLS Bank Int’l v. Alice Corp., Chief Judge Randall Rader and Judge Alan Lourie set forth disparate tests for subject matter eligibility. Later, in Ultramercial, Inc. v. Hulu, LLC, Federal Circuit judges concurred in upholding Ultramercial’s internet-related patents, but disagreed on the rationale for doing so. And most recently, in Accenture Global Services, GmbH v. Guidewire Software, Inc., they differed on whether a computer insurance application was patentable.
In this 2013 case, Guidewire challenged Accenture’s U.S. Patent No. 7,013,284, which describes “a system for generating tasks to be performed in an insurance organization,” including an “insurance transaction database” and a “task library database.”
The District Court for the District of Delaware granted Guidewire’s motion for summary judgment, holding all claims under the patent invalid. The Court ruled that the 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.”
Accenture appealed the ruling only as to claims 1-7 (the system claims) and not claims 8-22 (the method claims). The method claims were therefore conclusively invalid.
Judge Lourie and Judge Jimmie Reyna upheld the District Court’s ruling. They consulted the en banc plurality ruling in CLS Bank Int’l v. Alice Corp. to determine that the system claims must be evaluated to discern whether they offer patentable limitations beyond the method claims (which had already been ruled invalid). In the majority’s estimation, they did not, and were therefore patent-ineligible.
Chief Judge Rader dissented. He disagreed with the majority’s use of CLS Bank Int’l, saying that the ruling lacked precedential value. He also took issue with the majority’s decision to rest the fate of the system claims on their difference – or lack thereof – from the method claims. He opined that the act would end up “requiring litigants to appeal the invalidity of every claim or else risk the potential for estoppel or waiver of other claims.”
Update: On December 6, 2013, the Supreme Court announced it will review the Federal Circuit’s decision in CLS Bank International v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013), in its spring 2014 term under Alice Corporation Pty. Ltd. v. CLS Bank International, Docket No. 13-298. By granting Alice’s petition, the Supreme Court appears poised to address the lack of clarity from the Federal Circuit’s recent ruling surrounding patent-eligible subject matter and specifically, as it relates to computer-implemented inventions.
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