Accenture Global Services v. Guidewire Software, Inc.
800 F. Supp. 2d 613
D. Del.2011Background
- Accenture sued Guidewire alleging patent infringement of the '284 and later the '111 patents, plus related trade secret and state claims that were partly dismissed earlier.
- The court previously held the patents failed to meet § 101 patent-eligibility and denied full summary judgment on other invalidity grounds, staying some issues pending Bilski v. Doll guidance.
- Claims 1 and 8 of the '284 patent and claims 1, 9, and 13 of the '111 patent define automated task/file-note generation in insurance-processing software, with field-of-use limitations.
- Guidewire sought partial summary judgment invalidity under § 101, arguing the claims cover abstract ideas with no tying to a particular machine or transformation.
- Accenture argued the software-focused claims are non-abstract when viewed as a whole and directed to specific computer-implemented applications.
- The court granted Guidewire’s motion as to invalidity under § 101, and denied or deferred other motions for reconsideration, clarification, and interlocutory appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the '284 and '111 claims invalid under §101 as abstract ideas? | Accenture argues the claims are concrete, computer-implemented applications not abstract. | Guidewire contends the claims recite abstract ideas and fail the machine-or-transformation test. | Yes; claims regarded as abstract and invalid under §101. |
| Should the court grant reargument and/or certification of an interlocutory appeal? | Accenture contends the court should maintain its ruling and allow appeal only after final judgment. | Guidewire seeks relief from previous ruling and potential interlocutory review under 28 U.S.C. §1292(b). | Motion for reargument denied; certification denied. |
| Did the court properly address Guidewire's clarification request regarding claim terms and Markush analysis? | Accenture maintains prior construction is correct and not in conflict with term usage. | Guidewire argued for Markush-group-based indefiniteness concerns and requested clarification. | Clarification denied to alter Markush conclusion; court reaffirmed its construction and rejected Markush-based indefiniteness. |
Key Cases Cited
- Bilski v. Kappos, 130 S. Ct. 3218 (U.S. 2010) (primary framework for abstract-idea analysis and §101 eligibility)
- In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (machine-or-transformation test as clue, not sole test)
- Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010) (limits of abstract-idea analysis in §101 post-Bilski)
- Diamond v. Diehr, 450 U.S. 175 (U.S. 1981) (processes may be patentable when applying laws of nature)
- Gottschalk v. Benson, 409 U.S. 63 (U.S. 1972) (early machine-or-transformational framework for patent eligibility)
- CLS Bank Int'l v. Alice Corp. Pty. Ltd., 768 F. Supp. 2d 221 (D.D.C. 2011) (abstract-idea analysis; caution against preemption)