09/05/13

Accenture v. Guidewire: Software System and Method Claims Rise and Fall Together (CLS Bank Precedential)


Category: 101
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleAccenture Global Serv., GMBH v. Guidewire Soft., Inc., No. 2011-1486 (Sept. 5, 2013).
Issue(s)[1] "[Whether] system claim 1’s inclusion of an insurance claim folder, a task library database, a server component, and a task engine in attempting to show that the system claim is meaningfully different from the ’284 patent’s method claims [is enough to avoid having the claims ‘rise and fall together’ ?]" Accenture Global Serv. at *11 (text added).
[2] "[W]hether system claim 1 remains patent-eligible even after our decision in CLS Bank [by implementing] the general idea of generating tasks for insurance claim processing, but narrow[ing] it through […] recitation of a combination of computer components [?]" Accenture Global Serv. at *14 (emphasis added).
Holding(s)“In sum, the system claims of the ’284 patent are patent-ineligible both because [1] Accenture was unable to point to any substantial limitations that separate them from the similar, patent-ineligible method claim [which was found invalid by the district court and NOT appealed] and [2] because, under the two-part test of CLS Bank, the system claim does not, on its own, provide substantial limitations to the claim’s patent-ineligible abstract idea.“ Accenture Global Serv. at *18.
 
Editor's Note
A concurring-in-part/dissenting-in-part opinion in the en banc CLS Bank decision stated that "[n]o portion of any opinion issued today other than our Per Curiam Judgment garners a majority. […] nothing said today beyond our judgment has the weight of precedent." CLS Bank Int’l, Rader/Moore Op. at n1. However, the majority opinion here in Accenture Global Serv. bases its holding on CLS Bank.
 

Procedural History"Accenture Global Services, GmbH and Accenture,LLP (“Accenture”) appeal from the grant of summary judgment by the United States District Court for the District of Delaware holding that all claims of U.S. Patent 7,013,284 (the “’284 patent”) are invalid under 35 U.S.C. § 101. [...] Accenture appealed that determination only as to claims 1–7, directed to a system for generating tasks to be performed in an insurance organization, but did not appeal the similar method claims 8–22." Accenture Global Serv. at *2.
 
 
Legal Reasoning (Lourie, Reyna)
Claims At Issue: Claim 1 (appealed) and Claim 8 (not under appeal)
Claim 1 - System ClaimA system for generating tasks to be performed in an insurance organization, the system comprising: an insurance transaction database for storing information related to an insurance transaction, the insurance transaction database comprising a claim folder containing the information related to the insurance transaction decomposed into a plurality of levels from the group comprising a policy level, a claim level, a participant level and a line level, […]; a task library database for storing rules for determining tasks to be completed upon an occurrence of an event; a client component in communication with the insurance transaction database configured for providing information relating to the insurance transaction […]; and a server component in communication with the client component, the transaction database and the task library database, the server component including an event processor, a task engine and a task assistant; wherein the event processor is triggered by application events associated with a change in the information, and sends an event trigger to the task engine […].
Claim 8 - Method ClaimAn automated method for generating tasks to be performed in an insurance organization, the method comprising: transmitting information related to an insurance transaction; determining characteristics of the information related to the insurance transaction; applying the characteristics of the information related to the insurance transaction to rules to determine a task to be completed […]; transmitting the determined task to a task assistant accessible by an assigned claim handler […]; allowing an authorized user to edit and perform the determined task and to update the information related to the insurance transaction […]; storing the updated information related to the insurance transaction; and generating a historical record of the completed task.
I. Whether System and Method Claims "Rise and Fall Together" if only System Claim Appealed
"Rise and Fall Together" Standard - CLS Bank Foundation“The district court in this case held that the method claims of the ’284 patent are invalid under § 101. […] That judgment was not appealed by Accenture. […] Because the ’284 patent’s method claims have been found to be patent ineligible, we first compare the substantive limitations of the method claim and the system claim to see if the system claim offers a “meaningful limitation” to the abstract method claim, which has already been adjudicated to be patent-ineligible. CLS Bank, 717 F.3d at 1291. Under this analysis, we compare the two claims to determine what limitations overlap, then identify the system claim’s additional limitations.’” Accenture Global Serv. at *9-10.
Overlapping Claim Features“[T]he ’284 patent’s system claim 1 includes virtually the same limitations and many of the same software components as the patent ineligible method claims. Both claims are for “generating tasks to be performed in an insurance organization.” […] Both the claimed system and the claimed method contain an insurance transaction database […] Additionally, claim 1 and claim 8 both contain: a client component, […]; a task assistant […]; and an event processor […]. The system claims are simply the method claims implemented on a system for performing the method.” Accenture Global Serv. at *10-11.
Different Features NOT Meaningful Limitations: 'task engine'; 'claim folder'; 'task library'; and 'server component'
“Although system claim 1 specifically includes a task engine, id. col. 107 l. 49, method claim 8 includes all the components required for a task engine. […]” Accenture Global Serv. at *11.
“For the claim folder, system claim 1 describes the claim folder as a component within the insurance transaction database. […] [M]ethod claim 8’s description of the insurance transaction database is an almost verbatim duplicate of system claim 1’s description, even without an explicit reference to the claim folder.” Accenture Global Serv. at *11-12.
"Regarding the task library database, system claim 1 discloses that the task library database is “for storing rules for determining tasks to be completed upon an occurrence of an event.” […] [T]he task library database is simply a formalized collection of the rules that are present and applied to the insurance transaction information in method claim 8." Accenture Global Serv. at *12.
"[T]he server component of system claim 1 includes “an event processor, a task engine and a task assistant,” id. col. 107 ll. 48–49, all of which are present in the method of claim." Accenture Global Serv. at *11.
Claims "Fall" Together“Because the system claim and method claim contain only “minor differences in terminology [but] require performance of the same basic process,” [...] they should rise or fall together. Accenture only cited four additional limitations in system claim 1, and we have already indicated why those limitations do not meaningfully distinguish the abstract idea over the patent ineligible method claim." Accenture Global Serv. at *11 (emphasis added).
II. Analysis of System Claim under CLS Bank Standard
Legal Standard - Reliance on CLS Bank“We recently evaluated 35 U.S.C. § 101 and its application to computer software in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc). The plurality opinion in CLS Bank identified a two-step process, derived from the Supreme Court’s decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc., ___ U.S. ___, 132 S. Ct. 1289 (2012), for analyzing patent eligibility under § 101. First, the court must identify “whether the claimed invention fits within one of the four statutory classes set out in § 101.” CLS Bank, 717 F.3d at 1282. Second, one must assess whether any of the judicially recognized exceptions to subject-matter eligibility apply, including whether the claims are to patent-ineligible abstract ideas. Id. (citing Mayo, 132 S. Ct. at 1302–03).” Accenture Global Serv. at *8.
Limiting Abstract Idea to Computer and/or Industry Not Enough“Accenture attempts to limit the abstract idea of claim 1 by applying it in a computer environment and within the insurance industry. However, those types of limitations do not “narrow, confine, or otherwise tie down the claim.” As we have recently held, simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent- ineligible claim into a patent-eligible one. See Bancorp, 687 F.3d at 1280. Further, as the Supreme Court stated in Bilski, limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea. […]” Accenture Global Serv. at *15-16.
Additional Features Too Generalized to Limit Abstract Idea“When the insignificant computer-based limitations are set aside from those claims that contain such limitations, the question under § 101 reduces to an analysis of what additional features remain in the claims.” Bancorp, 687 F.3d at 1279 (citing Mayo, 132 S. Ct. at 1297). The limitations of claim 1 are essentially a database of tasks, a means to allow a client to access those tasks, and a set of rules that are applied to that task on a given event. Although the specification of the ’284 patent contains very detailed software implementation guidelines, the system claims themselves only contain generalized software components arranged to implement an abstract concept on a computer." Accenture Global Serv. at *16.
Distinguishing Ultramercurial on Procedural Posture“[W]e agree with Guidewire that the procedural posture of Ultramercial creates a different situation from the case before us. In Ultramercial, we reversed the district court’s grant of a defendant’s preanswer motion to dismiss. Ultramercial, 2013 WL 3111303, at *2. In that case, the court found Ultramercial’s patent ineligible under § 101 without formally construing the claims and with no discovery. […] In this case, the court conducted formal discovery, construed the claims, and ruled on a motion for summary judgment.” Accenture Global Serv. at *17-18.
Conclusion
“[T]he decision of the district court granting summary judgment of invalidity under § 101 is AFFIRMED.” Accenture Global Serv. At *18.
 
 
 
RADER, Chief Judge, dissenting. Accenture Global Serv., Rader, CJ Op. at *1.
Dissenting the Abstractness Inquiry“[A]ny claim can be stripped down, simplified, generalized, or paraphrased to remove all of its concrete limita- tions, until at its core, something that could be characterized as an abstract idea is revealed. A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims.” Ultramercial, Inc. v. Hulu, LLC, 2010-1544, 2013 WL 3111303, at *8 (Fed. Cir. June 21, 2013). In my judgment, the court has done precisely that.” Accenture Global Serv., Rader, CJ Op. at *1.
Dissenting the Reliance on CLS Bank“As an initial matter, the court relies significantly on the framework proposed by the plurality opinion in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc). However, no part of CLS Bank, including the plurality opinion, carries the weight of precedent. The court’s focus should be on Supreme Court precedent and precedent from this court.” Accenture Global Serv., Rader, CJ Op. at *2.
Dissenting the Estoppel Effect of Similar Claims “I also disagree that Accenture’s failure to appeal the invalidation of the method claims estops it from arguing that the elements contained therein (and shared by the systems claims) are directed to patent-eligible subject matter. […] No precedent from the Supreme Court or this court supports this proposition. Moreover, the court creates a very unsound policy by requiring litigants to appeal the invalidity of every claim or else risk the potential for estoppel or waiver of other claims.” Accenture Global Serv., Rader, CJ Op. at *2.
Dissenting the Finding of Ineligibility of Claim 1“On the merits, I would hold that the claimed systems present patent-eligible subject matter. The claims require a specific combination of computer components, including an insurance transaction database, a task library data- base, a client component, and a server component that includes an event processor, task engine, and task assistant. Transaction information is stored in an electronic “claim folder” organized into a plurality of different levels. The event processor is triggered upon the occurrence of certain events, which in turn, triggers the task engine and the task assistant to perform certain functions. The claims also require the server component to be in communication with the client component, the insurance transaction database, and the task library database.” Accenture Global Serv., Rader, CJ Op. at *3.
 
 
 
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