The U.S. Federal Circuit issued an opinion yesterday that has
important implications for the patentability of software claims
— particularly software claims drafted in
Beauregard form. Cybersource Corp. v. Retail Decisions,
Inc., No. 2009-1358 (Fed. Cir. Aug. 16, 2011).
Importantly, the court held that the mere recitation of "[a]
computer readable medium containing" software for performing
an otherwise unpatentable sequence of steps is not tied to a
particular machine, and therefore is not patentable under 35 U.S.C
§101.
The claims at issue concern detecting fraud in online credit card
transactions by performing the steps of: "(a) obtaining
information about other transactions" that have used the same
Internet address in the past; "(b) constructing a map of
credit card numbers based upon the other transactions; and (c)
utilizing the map of credit card numbers to determine if the credit
card transaction is valid." Id. at 3-4, n.1. The
Federal Circuit first found that a pure method claim with these
limitations was not patent-eligible because all of its steps
"can be performed entirely in the human mind."
Id. at 14 (emphasis in original). Turning next to the
Beauregard claim, the court held that the mere fact that
the claim recited a computer system executing software stored on a
computer readable medium did not link the claimed process to a
specific machine, so as to render the claim patentable.
Id. at 17-18.
Importantly, the court clarified what is required to link a
process to a specific machine:
Id. at 18-19 (citations omitted). Applying this principle, the Federal Circuit held that "the incidental use of a computer" to perform the fraud detection method at issue here did not impose a "sufficiently meaningful limit on the claim's scope" so as to make it patent-eligible under § 101. The court's analysis distinguished other cases in which a computer was required to perform the claimed method, such as situations where a GPS receiver was needed to perform the steps, or where the method involved manipulating digital images to create a modified digital image.
What This Means for You
Merely reciting the incidental use of a computer to execute a
method that can be performed entirely in the human mind does not
render the underlying method patent-eligible. To avoid this issue,
Beauregard claims should include and establish the
necessity of a specific computer with specific features, or make
clear that the underlying method requires a computer to reach the
desired solution. Alternatively, methods such as the ones recited
in Cybersource's patent may be better protected by copyrighting
the underlying source code or preserving the method as a trade
secret.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
