On May 15, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) decided SAP America, Inc. v. InvestPic, LLC, holding advancements in abstract ideas, regardless of how innovative, are patent ineligible under 35 U.S.C §101 without plausibly alleged innovation in the non-abstract application realm.
In 2016, SAP America, Inc. (“SAP”) filed a declaratory judgment action against InvestPic, LLC (“InvestPic”) alleging all claims of InvestPic’s U.S. Patent No, 6.349,291 (“`291 patent”) were invalid because the claimed subject matter was ineligible under 35 U.S.C. § 101. The `291 patent recited that it was an improvement of existing practices for forecasting the behavior of the financial markets by utilizing resampled statistical methods for the analysis of financial data. The district court granted SAP’s motion and invalidated InvestPic’s `291 patent.
On appeal, InvestPic argued that the claims in the `291 patent were similar to those the Federal Circuit previously determined to be patent eligible. However, the Federal Circuit disagreed and distinguished the `291 claims from the cited Federal Circuit precedent by stating the `291 patent did not focus on an improvement in computers as tools but focused on an improvement in an abstract idea that used computers as tools. Furthermore, the Federal Circuit concluded the claims in the `291 patent were not directed to improvements in the “physical-realm.”
Additionally, the Federal Circuit analyzed the `291 patent under the two-step Alice framework. Under the first step, the Federal Circuit found the claims of the `291 patent were focused on the abstract concepts of “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis.” The Federal Circuit, citing several precedential cases, stated that merely presenting the results of abstract processes of collecting and analyzing information, even when limited to specific content such as real investment, is abstract; unless, for example, a claim identifies a particular tool for presentation.
In analyzing the second step of the Alice framework, the Federal Circuit concluded that the claims did not sufficiently transform the claimed abstract ideas into an eligible application. Explicitly, the Federal Circuit stated that a claim limited by using a specific mathematical operation does not add a feature outside the abstract realm, and therefore, is still patent ineligible. Secondly, although some claims required various databases and processors, which are in the physical realm, the `291 patent did not claim any such “arguably inventive” computer resource on which the claimed abstract process could run. Because the `291 patent was relying on computers already available, there was no “inventive concept,” under the Alice framework.
Lastly, the Federal Circuit asserted that the implementation of readily available computers, for use in carrying out improved mathematical calculations, amounts to a recitation of what is “well-understood, routine, [and] conventional.” Accordingly, the Federal Circuit found the `291 patent invalid and affirmed the district court decision.