Sap America, Inc. v. Investpic LLC
890 F.3d 1016
Fed. Cir.2018Background
- InvestPic owned U.S. Patent No. 6,349,291 covering methods/systems that apply resampled statistical methods (e.g., bootstrap) and a bias parameter to investment data and display a distribution (PDF) plot.
- SAP America sued for a declaratory judgment (2016), alleging the claims are patent-ineligible under 35 U.S.C. § 101.
- The district court granted SAP’s motion for judgment on the pleadings, holding all claims directed to abstract ideas (mathematical calculations and data presentation) and lacking an inventive concept.
- InvestPic appealed; the Federal Circuit reviewed de novo under the Alice two-step framework.
- The Federal Circuit assumed the techniques might be innovative but held the claims are directed to abstract ideas (selecting information, mathematical analysis, displaying results) and add no inventive concept in their application.
Issues
| Issue | Plaintiff's Argument (InvestPic) | Defendant's Argument (SAP) | Held |
|---|---|---|---|
| Whether claims are directed to patent-eligible subject matter under § 101 | Claims improve financial-data analysis using specific resampling methods and parameters and thus are a concrete, practical application | Claims merely recite abstract mathematical methods of statistical analysis and presentation | Claims are directed to abstract ideas (selecting info, math analysis, displaying results) and fail Alice step 1 |
| Whether dependent claim limitations (bootstrap, jackknife, cross-validation) render claims patent eligible | Limiting to particular resampling methods supplies specificity and an inventive application | Those are still mathematical operations; narrowing does not remove abstraction | Narrowing to particular statistical methods does not supply an inventive concept |
| Whether recitation of databases, processors, parallel processing, or network use supplies an inventive concept | Inclusion of system elements (databases, parallel processors, network) makes claims a practical technological improvement | These are generic, off-the-shelf computer components used as tools and not alleged to be inventive | Generic computer/network components do not supply the inventive concept required at Alice step 2 |
| Whether claimed improvement to finance (real-world investment data) suffices to avoid abstraction | The claims are limited to investment information and address real-world financial forecasting problems | Limiting to investment content does not make information-processing non-abstract; still an abstract economic/ mathematical idea | Using investment data or solving a financial problem does not remove abstract character or supply inventive concept |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes the two-step test for § 101; abstract ideas not patentable)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (narrow embodiments of ineligible concepts remain ineligible; inventive-concept requirement)
- Ass’n for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013) (groundbreaking discoveries in ineligible subject matter remain unpatentable)
- buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (novelty/obviousness distinct from § 101; claims to abstract ideas remain ineligible)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (claims to collecting, analyzing, and displaying information are directed to abstract ideas)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims improving computer functionality can be patent eligible)
- McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (claims that improve a physical/display process were eligible)
- Diamond v. Diehr, 450 U.S. 175 (1981) (use of mathematics does not automatically render a process ineligible where claim is to a technological process)