By Jason Rantanen
Solutran, Inc. v. Evalon, Inc., U.S. Bancorp (Fed. Cir. 2019) 19-1345.Opinion.7-30-2019
Panel: Chen (author), Hughes and Stoll
This opinion involves review of a district court opinion denying summary judgment that claims 1-5 of U.S. Patent NO. 8,311,945 are invalid for failure to recite patent-eligible subject matter. (The district court also granted summary judgment that the claims were infringed.)
Claim 1 is below. Without knowing more, can you predict how the court resolved the appeal?
1. A method for processing paper checks, comprising:
a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction as-sociated with MICR information for each paper check, and said data file not including images of said checks;
b) after step a), crediting an account for the mer-chant;
c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information; and
d) comparing by a computer said digital images, with said data in the data file to find matches.
The answer is after the jump.
The Federal Circuit reversed the district court, holding that the claims failed to recite patent-eligible subject matter. The CAFC first held that the claims “are directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check,” Slip Op. at 7, a conclusion that followed from Ultramercial v. Hulu, 772 F.3d 709 (Fed. Cir. 2014) and Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 2014), and was not at odds with Enfish, LLC v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016). The court then concluded that the claims did not “contain a sufficiently transformative inventive concept so as to be patent eligible” by, for example, “‘purport to improve the functioning of the computer itself’ or ‘effect an improvement in any other technology or technical field.'” Id. at 12. A key issue was that, even by the terms of the patent itself, the only potentially inventive concept was the abstract idea itself:
As we noted above, the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.
Conclusion: claims invalid for failure to recite patent-eligible subject matter.