Federal Circuit Says Software Is Unpatentable When It Merely Implements Mental Steps
On Tuesday, the Federal Circuit affirmed Judge Patel's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware.
According to the Federal Circuit:
- Steps that can be performed entirely by a human mind are not patentable – even when they are embodied in computer-readable storage media (i.e., "Beauregard" claims) – because the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." (Citing the Federal Circuit's own language in its previous Bilski decision.)
- Adding data-gathering steps does not make an otherwise nonstatutory claim statutory.
- Courts look to the underlying invention even if the preamble is directed to a statutory class other than a method.
- Although adding software to a general-purpose computer makes the computer a special-purpose computer, simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind does not make the algorithm patentable.
- The patent applicant has the burden of demonstrating that claims drawn to a specific apparatus are distinct from other apparatuses capable of performing identical functions.
- The "mere manipulation or reorganization of data" does not satisfy the transformation prong of the "machine-or-transformation" test.
- To satisfy the machine prong of the "machine-or-transformation" test, "the use of the machine 'must impose meaningful limits on the claim's scope.'" (Citing the Federal Circuit's language in Bilski.)
My initial thoughts are:
- Reciting steps to create the database of Internet addresses may have involved sufficient use of computers to overcome the 35 U.S.C. § 101 threshold.
- Reciting steps to sort, weigh, or draw conclusions from Internet transactions may have been useful to make the claims less "abstract," but it's unclear if doing so would have been sufficient to make the claims patentable.
The court also reiterated two of its prior decisions on patentable software that could serve as useful guidance:
- SiRF Tech. v. Int'L Trade Comm'n: a method for calculating an absolute position of a GPS receiver was patentable because the method could not be performed without the GPS receiver.
- Research Corp. Techs. v. Microsoft Corp.: a method for rendering a halftone image of a digital image was patentable because the method (a) manipulated data structures; (b) output a modified data structure; and (c) could not be performed entirely mentally.
