SAP Am., Inc. v. InvestPic, LLC
898 F.3d 1161
| Fed. Cir. | 2018Background
- InvestPic owned U.S. Patent No. 6,349,291 claiming methods and systems for resampled (e.g., bootstrap) statistical analysis of investment data and plotting distribution functions.
- Key independent claims: method claims requiring (1) selecting a sample space, (2) generating a distribution using a resampled statistical method and a bias parameter, and (3) plotting the distribution; a system claim requiring databases and processors to perform resampled analysis and provide reports.
- SAP America filed a 2016 declaratory judgment action asserting the claims are patent-ineligible under 35 U.S.C. § 101; moved for judgment on the pleadings.
- The district court granted the motion, holding the claims directed to abstract ideas (mathematical calculations and data presentation) and lacking an inventive concept beyond generic computer implementation.
- On appeal, the Federal Circuit affirmed: the claims are directed to abstract ideas (selecting data, mathematical analysis, displaying results), and their limitations (specific resampling methods, databases, parallel processors) are either abstract or conventional, so they supply no § 101 inventive concept.
Issues
| Issue | Plaintiff's Argument (InvestPic) | Defendant's Argument (SAP) | Held |
|---|---|---|---|
| Whether the asserted claims are directed to patent-eligible subject matter under § 101 | Claims improve statistical analysis of financial data using specific resampling techniques and thus are patent-eligible; post-reexamination claim details provide specificity and practical application | Claims are directed to abstract ideas (mathematical calculations, data collection, presentation); computer and network elements are generic and not inventive | Held: Claims are directed to abstract ideas and are ineligible under § 101 |
| Whether limitations (bootstrap/jackknife/cross-validation, bias parameter) supply an inventive concept | These limitations narrow claims to particular technical methods and supply inventive application | These are merely particular mathematical techniques—still abstract and not inventive in application | Held: These limitations are abstract and do not provide an inventive concept |
| Whether inclusion of databases, processors, parallel processing makes claims patent-eligible | Claiming system elements and parallel processing ties the abstract idea to concrete computer implementation | The claimed computer components are generic/off-the-shelf and not asserted as improvements to computer technology | Held: Computer and parallel processing recitations are conventional and insufficient to transform the claims |
| Effect of post-reexamination claim amendments on § 101 analysis | Amendments add detail (temporal correlation, data structures) and thus remedy eligibility defects | Amendments only add details to the same abstract ideas and continue to rely on conventional computer components | Held: Amendments do not alter § 101 outcome; remand would be futile |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) (two-step framework: directed to abstract idea and requiring inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (rules out patents claiming only laws of nature or abstract mathematical ideas absent inventive concept)
- Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013) (novelty or brilliance does not render ineligible subject matter patentable)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (claims to collecting, analyzing, and displaying information are abstract)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims directed to improvements in computer functionality can be patent-eligible)
- McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (claims specifying a particular way to achieve improved automated animation were eligible)
- buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (novel abstract ideas remain abstract; computer recitations insufficient absent inventive concept)
- Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (novelty/obviousness distinct from § 101 inventive-concept inquiry)