CLS Bank Int'l v. Alice Corp. (D.D.C. 2011)
In an interesting opinion, DC District Court Judge Rosemary Collyer has ruled Alice Corp's four asserted patents invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter. This case can be seen as flowing from the Supreme Court's recent decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010).
Alice is an Australian company owned largely by the huge National Australian Bank. CLS is a UK company that works with banks to settle foreign exchange accounts – and is involved with about 95% of the global foreign exchange trading. The patents are generally directed at methods and systems for creating and settling debts that uses both credit/debit records and shadow credit/debit records. Claim 1 of Alice's Patent No. 7,149,720 might be seen as an example:
|
'720 Patent, Claim 1. A data processing system to enable the exchange of an obligation between parties, the system comprising: a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and a debit record maintained by an exchange institution; and a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution. |
As in Bilski, the district court focused on the question of whether the asserted claims constitute "abstract ideas." In doing so, the court began with an admission that "[t]here is no clear definition of what constitutes an abstract idea." Rather the approach must be by-analogy to Flook, Benson, and Diehr. In the 2010 Federal Circuit case of Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010), the Federal Circuit offered the additional wisdom that to be disqualifying, the abstractness "should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act."
The court agreed with the patentee that the computer system claim (above) was directed toward a "machine" as enumerated within Section 101. However, the common law exceptions to Section 101 are overriding factors that operate regardless of whether a machine or process can be identified within the claimed subject matter. "Alice's system or product claims [cannot] be saved only by the fact they may nominally recite a 'computer' or 'manufacture.'
In its abstract-idea analysis, the court focused on preemption – holding that the claim "would preempt the use of the abstract concept of employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk on any computer which is, as a practical matter, how these processes are likely to be applied." In an apparent effort to bolster its conclusion, the court also suggested that it is likely abstract because it would be infringed by "common and everyday financial transactions."
Notes:
-
CLS filed this declaratory judgment action against Alice after Alice had warned CLS (by letter) that "every transaction involving CLS' settlement of foreign exchange transactions is impacted by [our patent] claims" and that CLS was "willfully infringing Alice's intellectual property."
CLS is represented by Kaye Scholer; Alice is represented by Williams & Connolly.