by Dennis Crouch
In SAP America v. InvestPic (Fed. Cir. 2018), the court repeated a number of well known maxims regarding patent eligibility:
- Even if the underlying invention is “‘[g]roundbreaking, innovative, or even brilliant,’ . . . that is not enough for eligibility.” Quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
- 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.”)
InvestPic sued SAP for infringing its patented method of analyzing investment information. U.S. Patent No. 6,349,291. Claim 1 reads as follows:
1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample; (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and, (c) generating a plot of the distribution function.
After considering the claims, the district court granted SAP’s motion for judgment on the pleadings — finding that the claimed process of “performing statistical analysis” is an ineligible abstract idea. In particular, the district court saw core of the claim as being directed toward an ineligible mathematical calculation. The field limitation (investment data) and generically claimed usable output (“a plot”) were insufficient to transmute the idea into a golden claim. On appeal, the Federal Circuit has affirmed:
The focus of the claims, as is plain from their terms, quoted above, is on selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis. That is all abstract.
Distinguishing this case from McRO, the court appears to have recast that case as focusing on the “physicality” of lip-syncing:
The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here. And those claims also avoided being “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.
The court goes on:
Here, in contrast, the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.