ARTICLE
23 August 2019

Federal Circuit Voids Check Processing Patent's Eligibility

FH
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Contributor

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
In Solutran, Inc. v. Elavon, Inc., Nos. 2019-1345, -1460 (Fed. Cir. July 30, 2019), the Federal Circuit reversed the district court's patent-eligibility finding and held Solutran's U.S. Patent No. 8,311,945 not patent...
United States Intellectual Property

In Solutran, Inc. v. Elavon, Inc.,  Nos. 2019-1345, -1460 (Fed. Cir. July 30, 2019), the Federal Circuit reversed the district court’s patent-eligibility finding and held Solutran’s U.S. Patent No. 8,311,945 not patent eligible under § 101.

The ’945 patent relates to processing paper checks by receiving electronic data captured by a merchant and crediting the merchant’s account. The district court denied defendant U.S. Bank’s motion for summary judgment of invalidity, finding persuasive a prior PTAB decision denying CBM review based on a determination that the ’945 patent was not directed towards an abstract idea. Alternatively, the district court concluded that the claims recited an inventive concept and passed the machine-or-transformation test. U.S. Bank and Elavon appealed.

On appeal, the Federal Circuit reversed, agreeing with U.S. Bank that the ’945 patent’s claims are not patent eligible under § 101. In Alice step one, the court concluded that “the claims are directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check.” The court compared the claims to similarly ineligible claims in Content Extraction, finding that the use pf physical checks does not preclude a finding of abstractness. In step two, the court found that the claimed steps were conventional and did not pass the machine-or-transformation test, as alleged by Solutran. Therefore, the Federal Court determined that the claims were not directed to patent-eligible subject matter under §101.

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.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More