Patentability

Whether a patent claim recites patentable subject matter is governed by 35 U.S.C. § 101, which states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The United States Supreme Court has interpreted Section 101 numerous times, recently in Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 (2010), and most recently in Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10–1150 (U.S. S. Ct. March 20, 2012).  Under Bilski, and as reaffirmed in Prometheus, a claim fails to recite statutory subject matter if the claim is drawn to an abstract idea.  As many commentators have noted, this is a vague test.  Under the test, it is difficult to determine when the U.S. Patent and Trademark Office will allow claims to pass to issue, or when it will instead reject them.

If the Patent Office does issue a patent, it is remains difficult to predict whether a court will uphold or invalidate patent claims.  The following is a summary of cases following Bilski.  Most of these involve software patents, although I have cited bio-tech cases for completeness.  This page is updated as new decisions appear (most recently on January 26, 2013).

Supreme Court

CaseDateSummary
WildTangent v. UltramercialMay 20, 2012Vacated and remanded Federal Circuit decision that had declared patent-eligible claims directed to a “method for distribution of products over the Internet via a facilitator.”
Mayo Collaborative Services v. Prometheus Laboratories, Inc.March 20, 2012Claims to a correlation of chemical measurements in blood with recommended drug dosages are not patent-eligible.
Bilski v. KapposJune 28, 2010Claims directed to a method for hedging risk in commodities transactions not patent-eligible.

Federal Circuit

CaseDateSummaryValid Claims?
Bancorp Services, LLC. v. Sun Life Assur. CoJuly 26, 2012Claims directed to valuing insurance policies were declared unpatentable.N
CLS Bank Int’l. v. Alice Corp. (en banc reh'g ordered Oct. 9. 2012).July 9, 2012Claims directed to using an intermediary in financial transactions to eliminate settlement risk held to recite patent-eligible subject matter.Y
Fort Properties v. American Master Lease.February 27, 2012Patent claims directed to “an investment tool designed to enable property owners to buy and sell properties without incurring tax liability” do not recite patentable subject matter under 35 U.S.C. § 101.N
Dealertrack, Inc. v. HuberJanuary 20, 2012Claims directed to a method of managing a credit application were patent-ineligible.N
Fuzzysharp Techs., Inc. v. 3DLabs Inc.November 4, 2011Remanded to Dist. Ct. for determination based on “abstract idea” test rather than the “machine or transformation” test of the Federal Circuit’s en banc decision (and apparently settled after remand).M
Ultramercial, LLC v. Hulu, (reh’g. en banc den., (Fed. Cir., Nov. 18, 2011) (cert. granted, vacated and remanded by the U.S. Supreme Court, May 21, 2012).September 21, 2011Held valid (holding now vacated and reversed by the Supreme Court) patent claims directed to a “method for distribution of products over the Internet via a facilitator.”Y
Classen Immunotherapies, Inc. v. Biogen IdecAugust 31, 2011Method bio-tech claims invalid under Section 101; apparatus claims valid.M
CyberSource Corp. v. Retail Decisions, Inc.August 16, 2011Invalidated claims drawn to a method "of obtaining information about credit card transactions utilizing an Internet address and then using that information in some undefined manner to determine if the credit card transaction is valid."N
Ass’n. for Molecular Pathology v. United States PTOJuly 29, 2011Method bio-tech claims invalid under Section 101; apparatus claims valid.M
Prometheus Labs., Inc. v. Mayo Collaborative Servs., rev’d., Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10–1150 (U.S. S. Ct. March 20, 2012)December 17, 2010Claims to a correlation of chemical measurements in blood with recommended drug dosages held patent-eligible (holding reversed by the Supreme Court).Y
Research Corp. Techs. v. Microsoft Corp.December 8, 2010“[T]he patentees here “do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of” halftoning in computer applications.”Y
Perkinelmer, Inc. v. Intema Ltd.November 20, 2012Patent claims directed to a method for using screening markers to determine the risk of Down’s syndrome are invalid under 35 U.S.C. § 101.N

District Courts

Claims Are Or May Be Patentable

CaseCourtDateSummary
Advanced Software Design Corp. v. Fiserv, Inc.E.D. Mo.May 15, 2012Although a “close call,” summary judgment of invalidity under 35 U.S.C. § 101 was denied because both method and apparatus claims directed to using encrypted codes to prevent check fraud were patent-eligible.
Nazomi Communications, Inc. v. Samsung Telecommunications, Inc.N.D. Cal.March 21, 2012summary judgment of Section 101 invalidity denied for claims to a method by which a Java interpreter could more efficiently access byte codes.
Prompt Medical Systems, L.P. v. AllscriptsMisys Healthcare Solutions, Inc.E.D. Tex.February 13, 2012Denied motion for summary judgment of invalidity based on finding of patentable subject matter in claims directed to determining Current Procedural Technology (“CPT”) codes based on information gathered during a physician-patient encounter.
IconFind, Inc. v. Google, Inc.E.D. Cal.January 18, 2012“Google has not shown under the applicable ‘clearly established’ standard of Rule 12(c) that the concepts embodied in the ’459 Patent are ‘so manifestly abstract as to override the statutory language of Section 101.’ Therefore, Google’s motion for judgment on the pleadings is denied.”
VS Techs., LLC v. Twitter, Inc.E.D. Va.October 5, 2011“Viewing the evidence in the light most favorable to the Plaintiff, a reasonable juror could conclude that the ’309 patent is (1) tied to a machine or apparatus, or (2) transforms a particular article into a different state or thing.”
Acorda Therapeutics Inc. v. Apotex, Inc.D. N.J.September 6, 2011Claims directed "to using a tizanidine multiparticulate with food to reduce peak drug plasma concentration and severity of a side effect" held patent-eligible.
Chamberlain Group, Inc. v. Lear Corp.N.D. Ill.November 24, 2010“Plaintiffs are entitled to summary judgment on account of their asserted claims being directed to a product. Specifically, even reviewing the facts in the light most favorable to Defendant, the asserted claims constitute patentable subject matter because they are directed to a ‘machine.’”

Claims Are Not Patentable

CaseCourtDateSummary
Fed. Home Loan Mortg. Corp. v. Graff/Ross HoldingsD. D.C.September 26, 2012Claims directed to performing financial transactions and financial analysis were invalidated.
Graff/Ross Holdings v. Fed. Home Loan Mortg. Corp.D. D.C.September 24, 2012Claims directed to performing financial transactions and financial analysis were invalidated.
Oip Techs. v. Amazon.com, Inc.N.D. Cal.September 11, 2012Claims directed to “automated testing and selection of prices for goods and services sold online” held invalid.
Accenture Global Servs., GmbH v. Guidewire Software, Inc.D. Del.May 31, 2011Claims drawn to insurance claims processing software held invalid on summary judgment.
Glory Licensing LLC v. Toys “R” Us, Inc.D. N.J.May 16, 2011Invalidated claims drawn to processing a computer template file.
SmartGene, Inc. v. Advanced Biological Laboratories, SAD. D.C.March 30, 2012Invalidated patent claims that recite using a computer to recommend a therapeutic treatment regimen.
CLS Bank Int’l v. Alice Corp. Pty, Ltd., (rev'd., Fed. Cir. July 9, 2012) D. D.C.March 9, 2011Claims directed to using an intermediary in financial transactions to eliminate settlement risk held to recite patent-ineligible subject matter.
Digitech Information Systems, Inc. v. BMW Financial Services NA, LLCM.D. Fla.July 30, 2012Held that a “method for selecting leases to optimize an investment portfolio,” implemented in a computer, did not recite patentable subject matter and was invalid.
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.E.D. Mo.February 14, 2011“The asserted claims are not drawn to patentable subject matter under § 101 because they fail the machine-or-transformation test and because, under Bilski v. Kappos, they seek protection for abstract ideas.”
Graff/Ross Holdings LLP v. Fed. Home Loan Mortg.D. D.C.August 27, 2010Invalidated under Section 101 claims "directed to a process for generating a "purchase price" for at least one component of property using a computer."
Sinclair Allison v. Fifth Ave. Physician Servs.W.D. Okla.December 19, 2012Patent claims drawn to compiling medical credentialing information, and transferring the information to a medical malpractice insurance application are invalid under Section 101.
Cardpool, Inc. v. Plastic JungleN.D. Cal.January 22, 2013Patent claims drawn to “a method of exchanging a gift card” failed to recite patentable subject matter under 35 U.S.C. § 101.

Is Section 101 a Threshold Test?

MySpace, Inc. v. Graphon Corp., No. 2011-1149 (Fed. Cir. March 2, 2012) (Judges Plager and Newman, in majority, thought it proper to invalidate the patent claims as anticipated or obvious based on prior art; Judge Mayer, on the other hand, agreed that the patent claims were invalid, but sharply dissented, castigating the majority for not determining whether the patent claims recited statutory subject matter as a threshold test.)