Thursday, August 02, 2018

CAFC in SAP America: We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility.

The beginning of the SAP America decision:

InvestPic, LLC’s U.S. Patent No. 6,349,291 describes
and claims systems and methods for performing certain
statistical analyses of investment information. We addressed
this patent in In re Varma, 816 F.3d 1352 (Fed.
Cir. 2016), where we construed key claim terms and
partly reversed and partly vacated the Patent Trial and
Appeal Board’s cancellations of various claims in two
reexamination proceedings involving issues of anticipation
and obviousness under 35 U.S.C. §§ 102 and 103.
The present appeal involves a declaratory judgment
action filed in 2016 by SAP America, Inc., which alleges,
among other things, that the claims of the ’291 patent are
invalid because their subject matter is ineligible for
patenting under 35 U.S.C. § 101. When SAP moved for a
judgment on the pleadings on that ground, the district
court granted the motion, holding all claims ineligible
under § 101 and hence invalid. SAP Am., Inc. v. InvestPic,
LLC, 260 F. Supp. 3d 705, 718–19 (N.D. Tex.
We affirm. We may assume that the techniques
claimed are “[g]roundbreaking, innovative, or even brilliant,”
but that is not enough for eligibility. Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for
subject-matter eligibility that claimed techniques be novel
and nonobvious in light of prior art, passing muster under
35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is
still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”);
Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness)
(Symantec). The claims here are ineligible because their
innovation is an innovation in ineligible subject matter.
Their subject is nothing but a series of mathematical
calculations based on selected information and the
presentation of the results of those calculations (in the
plot of a probability distribution function). No matter
how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the nonabstract
application realm. An advance of that nature is
ineligible for patenting.


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