An abstract idea cannot be rendered patentable by the mere addition of a computer-aided or field-of-use limitation. Claim construction is not a necessary prerequisite to an assessment of validity under § 101, but the Federal Circuit may choose to construe claims in the first instance where a district court has declined to do so.
The patentee alleged infringement of two patents disclosing systems and methods for administering and managing stable value protected life insurance policies. The alleged infringer moved for summary judgment of invalidity under 35 U.S.C. § 101 for failure to claim patent-eligible subject matter, arguing that the invention effectively was just a series of mathematical formulae. Without resolving the parties’ numerous disputes over claim construction, the district court found the patents invalid under the machine-or-transformation test and granted summary judgment in favor of the alleged infringer.
The Federal Circuit affirmed. Though it is typically preferable and often necessary for a district court to construe claims before undertaking a § 101 analysis, the district court did not err by failing to do so because claim construction is not an inviolate prerequisite to determining validity. The Federal Circuit construed the claims before undertaking its own § 101 analysis, however, determining that a computer was required for the patents’ “system” claims but not their “method” claims. Notwithstanding this differential construction, the court determined that the district court properly deemed the claims indistinguishable for patent eligibility purposes because both were equivalent to the same abstract mental process and differed only in their form.
The court rejected the patentee’s contention that its claims were valid because they were limited to being performed on a computer. Because a computer did not facilitate the processes described in the patent in a way that a person making calculations or computations could not, it was not integral to the claimed invention; adding a computer-aided limitation to an ineligible mental process, without more, was insufficient to render the abstract concept patent eligible. Likewise, the patentee’s restriction of the claims to a single field of use (insurance) could not make patentable the underlying abstract concept.
A copy of the opinion can be found here.