[SUMMARY] | [ISSUE & DISPOSITION] | [AUTHORITIES CITED] | [COMMENTARY]
Signature is the assignee of U.S. Patent No. 5,193,056 (the '056 patent), entitled "Data Processing System for Hub and Spoke Financial Services Configuration." The '056 patent is generally directed to a data processing system for implementing an investment structure which was developed for use in Signature's business as an administrator and accounting agent for mutual funds. The data processing system facilitates a structure wherein mutual funds pool their assets into an investment portfolio organized as a partnership, providing the administrator of the mutual fund with the combination of economies of scale in administering investments and the tax advantages of a partnership.
The '056 patent application initially contained six machine claims and six method claims. During prosecution the examiner contemplated a § 101 rejection for failure to claim statutory subject matter. However, upon cancellation of the six method claims, the examiner allowed the remaining six machine claims.
State Street brought a declaratory judgment action asserting invalidity, unenforceability, and noninfringement, and then filed a motion for partial summary judgment of patent invalidity for failure to claim subject matter encompassed by § 101. The motion was granted because the district court concluded that the claimed subject matter fell into one of two alternative judicially-created exceptions to statutory subject matter, the "mathematical algorithm" exception or the "business method" exception.
1. Whether the district court erred in holding that the transformation of data, representing discrete dollar amounts, through a series of mathematical calculations, by a machine, into a final share price, does not constitute a practical application of a mathematical algorithm, formula or calculation.
2. Whether the district court erred in holding that this transformation should be excluded from eligible subject matter because it falls under the business method exception to statutory subject matter.
1. Yes. This transformation constitutes a practical application of a mathematical algorithm, formula, or calculation because it produces a useful, concrete, and tangible result. Hence, the transformation is eligible subject matter because it passes the test for utility.
2. Yes. Judge Rich for the Federal Circuit laid the "ill-conceived" business methods exception to rest.
Cases Cited by the Court
The statutory limit on patentable inventions is defined by 35 U.S.C. § 101 (1994) which recites "any process, machine, manufacture or composition of matter" as patentable subject matter. Unpatentable subject matters identified by the Supreme Court include "laws of nature, natural phenomena and abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981). The Court has generally construed mathematical algorithms as abstract ideas, and thus as unpatentable subject matter under § 101. See Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978). In Diamond v. Diehr, the Court relaxed this algorithm unpatentability doctrine by concluding that the incorporation of a computer algorithm to improve an industrial process did not automatically make the process unpatentable subject matter. The Court did not overrule the Benson-Flook algorithm unpatentability doctrine ("A mathematical formula as such is not accorded the protection of our patent laws." Id. at 191), but nevertheless stated that "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id. at 187.
Through three cases involving mathematical algorithms, the Court of Customs and Patent Appeals (the predecessor to the present Court of Appeals for the Federal Circuit) articulated a test to determine patentability intended accommodate the implication of the Supreme Court rulings regarding the algorithm unpatentability doctrine. See In re Freeman, 573 F.2d 1237 (C.C.P.A. 1978); In re Walter, 618 F.2d 758 (C.C.P.A. 1980); In re Abele, 684 F.2d 902 (C.C.P.A. 1982). According to the Freeman-Walter-Abele test: "It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps." Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 1058 (Fed. Cir. 1992) (emphasis added). The Court of Appeals for the Federal Circuit in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) substantially relaxed the physicality requirement of the Freeman-Walter-Abele test to include a programmed general-purpose computer as a patentable subject matter. "This is not a disembodied mathematical concept which may be characterized as an 'abstract idea,' but rather a specific machine to produce a useful, concrete, and tangible result." Id. at 1544 (emphasis added). On the other hand, the court in In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994) was stricter and required claims involving computer data manipulation and data structure to be "more than the manipulation of abstract ideas," id. at 1360, in order to be patentable under § 101.
The earliest known case on the unpatentability of business methods, often cited as establishing the so-called "business method exception" doctrine, is Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908). There, the court held that systems of transacting business, such as a bookkeeping system to prevent embezzlement by waiters, were unpatentable. While many subsequent cases decided by the Federal Circuit have made references to the business method exceptions, they were all ultimately decided on other grounds. See, e.g., In re Howards, 394 F.2d 869, 872 (C.C.P.A. 1968) ("Our affirmance of this ground of rejection [based on lack of novelty] makes it unnecessary to consider the issue of whether a method of doing business is inherently unpatentable"); In re Schrader, 22 F.3d 290, 296 & n.14, 297-98 (Fed. Cir. 1994) (rejecting patentability on the basis of the mathematical algorithm exception, while making reference to the business method exception).
State Street has a significant effect on the law of eligible subject matter. First, State Street makes the utility requirement more lenient. Second, State Street puts an end to the business method exception.
The utility requirement maintains that certain types of mathematical subject matter or algorithms, standing alone, represent nothing more than abstract ideas. Once this subject matter is reduced to some type of practical application, it becomes patentable.
The standard for this practical application has been, and remains, the production of "a useful, concrete and tangible result." Alappat, 33 F.3d at 1544. The Federal Circuit in State Street holds that the production of "a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades, " State Street, 149 F.3d at 1373, is indeed the production of a useful, concrete and tangible result.
The Federal Circuit held that once an invention passes the utility requirement, that invention becomes eligible under § 101. However, "Section 101 specifies that statutory subject matter must also satisfy the other 'conditions and requirements' of Title 35, including novelty, nonobviousness, and adequacy of disclosure and notice." Id. at 1372. In relying on utility, the Federal Circuit redefined the scope of eligible subject matter and hence broadened the meaning of the terms specified in § 101.
The Federal Circuit also held that business methods are no longer an exception to statutory subject matter. Instead, business methods are subject to the same legal requirements for patentability as applied to any other process or method.
Will it be necessary for future inventors to recite and claim the business method in terms explicitly including a computer system or computer component?
Will a United States patent inventor holding a patent to a method of doing business be able to prevent a foreign business from making that method available in United States absent a license?
How difficult will it be to satisfy the other patentability requirements (§§ 102, 103, and 112)?
Would the six method claims in the '056 patent, withdrawn during the prosecution of the application, have passed the test for eligible subject matter?