By Jason Rantanen
Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed. Cir. 2013) Download Accenture v. Guidewire
Panel: Rader (dissenting), Lourie (author), Reyna
It is difficult to think of an issue that has more deeply divided the Federal Circuit over the past few years than subject matter eligibility. Accenture is the latest barrage and counter-barrage in this seemingly endless war. Unlike Ultramercial v. Hulu, though, in which Judge Rader wrote the majority opinion and Judge Lourie concurred in the result, the forces arguing against subject matter eligibility of computer programs won today's battle.
At issue in the case were claims 1-7 and 8-22 of Patent No. 7,013,284. Claim 1 read:
A system for generating tasks to be performed in an insurance organization, the system comprising:
an insurance transaction database for storing information related to an insurance transaction, the insurance transaction database comprising a claim folder containing the information related to the insurance transaction decomposed into a plurality of levels from the group comprising a policy level, a claim level, a participant level and a line level, wherein the plurality of levels reflects a policy, the information related to the insurance transaction, claimants and an insured person in a structured
a task library database for storing rules for determining tasks to be completed upon an occurrence of an event;
a client component in communication with the insurance transaction database configured for providing information relating to the insurance transaction, said client component enabling access by an assigned claim handler to a plurality of tasks that achieve an insurance related goal upon completion; and
a server component in communication with the client component, the transaction database and the task library database, the server component including an event processor, a task engine and a task assistant;
wherein the event processor is triggered by application events associated with a change in the information, and sends an event trigger to the task engine; wherein in response to the event trigger, the task engine identifies rules in the task library database associated with the event and applies the information to the identified rules to determine the tasks to be completed, and populates on a task assistant the determined tasks to be completed, wherein the task assistant transmits the determined tasks to the client component.
The district court (Judge Robinson, one of the ) held claims 1-7 (system claims) and claims 8-22 (method claims) invalid under 35 U.S.C. § 101. Accenture appealed only claims 1-7.
System Claims Ineligible Subject Matter: In an opinion authored by Judge Lourie, the majority agreed with the district court that the claims were patent ineligible subject matter. The majority provided two bases for its conclusion. First, "because the system claims offer no meaningful limitations beyond the method claims that have been held patent-ineligible" and second, "because, when considered on their own, under Mayo and our plurality opinion in CLS Bank, they fail to pass muster." Slip Op. at 10.
The majority first compared the system claims to the method claims that were conclusively invalid because Accenture failed to appeal them. Relying on the plurality opinion in CLS Bank v. Alice, the majority concluded that the proper approach is to "compare the substantive limitations of the method claim and the system claim to see if the system claim offers a “meaningful limitation” to the abstract method claim, which has already been adjudicated to be patent-ineligible." Id. Because the court found no additional "meaningful limitation" in the system claims, they were as patent ineligible as the method claims.
The majority also concluded that the method claims were invalid under Section 101 even standing on their own. Applying a preemption analysis to the abstract idea at the heart of the system claims, the majority concluded that the additional imitations did not "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself." Slip Op. at 15. Furthermore, "simply implementing an abstract concept on a computer, without meaningful limtiations to that concept, does not transform a patent ineligible claim into a patent-eligible one." Id.
Judge Rader's Dissent: Unsurprisingly, Judge Rader disagreed with the majority. Central to his disagreement was the belief that the plurality framework relied upon by the majority in this case lacks precedential value. "[N]o part of CLS Bank, including the plurality opinion, carries the weight of precedent. The court's focus should be on Supreme Court precedent and precedent from this court." Slip Op. at 20. He also disagreed with the basic idea of the comparing the system claims to the invalid method claims, characterizing it as estoppel that will have the effect of "requiring litigants to appeal the invalidity of every claim or else risk the potential for estoppel or waiver of other claims." Id. And Judge Rader would have concluded that, even on the merits, the claimed systems present patent-eligible subject matter. "The claims offer “significantly more” than the purported abstract idea, …, and meaningfully limit the claims’ scope." Id. at 4, quoting Mayo v. Prometheus, 132 S.Ct. 1289, 1293 (2012).
Judge Rader also once again proclaims his view that the courts' approach to patent law's subject matter eligibility requirement is pure folly:
In conclusion, I note that prior to granting en banc review in CLS Bank, this court commented: “no one understands what makes an idea abstract.” CLS Bank Int’l v. Alice Corp., 685 F.3d 1341, 1349 (Fed. Cir. 2012), opinion vacated, 484 F. App’x 559 (Fed. Cir. 2012) (internal quotations marks omitted). After CLS Bank, nothing has changed. “Our opinions spend page after page revisiting our cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter.” MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012); see generally CLS Bank. Indeed, deciding what makes an idea “abstract” is “reminiscent of the oenologists trying to describe a new wine.” MySpace, 672 F.3d at 1259.
I take this opportunity to reiterate my view that “the remedy is the same: consult the statute!” CLS Bank, 717 F.3d at 1335 (additional reflections of Rader, C.J.). The statute offers broad categories of patent-eligible subject matter. The “ineligible” subject matter in these system claims is a further testament to the perversity of a standard without rules—the result of abandoning the statute.
Slip Op. at 23. That said, Judge Rader's thoughts about indeterminacy should perhaps be taken with a grain of salt: his opinions indicate, after all, that he has very strong views that one side of the subject matter eligibility battle is right and the other wrong.
One other thing of note about this case: Mark Lemley – who has written a great deal about patenting of computer-implemented inventions, including a recent post on PatentlyO – was the lead attorney for the defendant.