This case is the latest case in the debate regarding if software related patents are eligible subject matter under the Federal Circuit.
In this case, Accenture is the holder of U.S. patent number 7,013,284, which is directed towards systems that generate and organize insurance-related tasks. The claims in the ‘284 patent include claims with various software components that store, retrieve, manipulate data, transmits data. Further, the claims include a business component with a cache and logic for manipulating data. A representative claim of the claims at issue is reproduced below.
1. 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 format;
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.
Accenture initially filed suit against Guidewire alleging infringement of the ‘284 patent. In response, Guidewire asserted multiple affirmative defenses, including that the ‘284 patent was invalid for lack of eligible patent subject matter, because the independent claims did not meet the machine or transformation test held in Bilski. The district court held that the ‘284 patent did not include eligible subject matter because independent claim 1 does not meet the machine or transformation test and independent claim 1 mirrors the method claim 8, which does not include a concrete application of an abstract idea, and that the dependent method claims only add limitations regarding potential claim information categories.
On appeal, the Accenture appealed the eligibility of the 284 patent’s system claim, independent claim 1 and not the method claim of independent claim 8. The federal circuit stated that system claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together.
The federal circuit reasoned that because the ‘284 patent’s method claims have been found to be ineligible, it must be determined if there is a meaningful limitation included in the system claim that was not included in the method claims. The court held because the system claims and method claims only include minor differences in the performance of the same basic process that they should rise or fall together. Therefore, the systems claims of the ‘284 patent are invalid, like the method claims of the ‘284 patent.
PATENT ATTORNEY TAKE-A-WAYS
- I always try to include “hardware processor” limitations in my software claims, for both method and system claims. For example, in a system claim if a processor is performing transmitting data, I might draft the claim to recite: “a hardware processing device configured to transmit data….”, and for a method claim I would recite “transmitting data, by a hardware processing device, … .” I try to include these limitations after Bilski just to include the language of “hardware” and “device.” It would be hard for a judge to argue that a hardware device is not a machine.
- This is another case that shows the Federal Circuit is not sure where they will land dealing with software. Therefore, it is still necessary to include detailed descriptions of how system components are connected, such as over a network, in the claim language, as well as hardware processing devices that are completing different tasks.
- During litigation, it is important to remember that decisions or holdings that are not appealed cannot be litigated again. In this case, by admitting that method claim 8 did not include eligible subject matter, Accenture was not able to re-litigate this issue. Therefore, the Federal Circuit could make the arguments that independent claim 1 does not include any material differences from a claim that includes ineligible subject matter.