At first glance, the Federal Circuit decision in Cybersource Corp. v. Retail Decisions, Inc. may not be of much interest to those in the pharmaceutical field. The patent at issue relates to a "method and system for detecting fraud in a credit card transaction" and the question before the court was whether various computer-related claim limitations made the claims patent-eligible under 35 USC § 101 under the Supreme Court's Bilksi decision. However, at least one aspect of the court's decision may raise concerns for patent applicants in personalized medicine fields—the court's decision to ignore carefully crafted claim language in order to assess the patent-eligibility of the "underlying" invention.
The Beauregard Claim
The troubling discussion comes in the context of claim 2 of U.S. Patent 6,0129,154:
2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of: a) obtaining credit card information relating to the transactions from the consumer; and b) verifying the credit card information based upon values of a plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the further steps of; obtaining other transactions utilizing an Internet address that is identified with the credit card transaction; constructing a map of credit card numbers based upon the other transactions; and utilizing the map of credit card numbers to determine if the credit card transaction is valid.
As explained by the Federal Circuit, a "Beauregard claim" is a claim that recites "a computer readable medium (e.g., a disk, hard drive, or other data storage device) containing program instructions for a computer to perform a particular process." The USPTO usually accepts such claims as patent-eligible under 35 USC § 101 because the "computer readable medium" is a tangible "manufacture," not an abstract process.
The Underlying Invention
In an opinion authored by Jduge Dyk, the Federal Circuit rejected Cybersource's argument that the recitation of a "computer readable medium" brought the claimed subject matter into the realm of patent-eligibility. In an analysis that I find disturbing, the court stated:
Regardless of what statutory category ("process, machine, manufacture, or composition of matter," 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information.
How can a claimed invention be broader than the claim language that defines it?
After further discussion, the court finds that the claims at issue do not satisfy § 101:
[I]t is clear in the present case that one could mentally perform the fraud detection method that underlies both claims 2 and 3 of the ’154 patent, as the method consists of only the general approach of obtaining information about credit card transactions utilizing an Internet address and then using that information in some undefined manner to determine if the credit card transaction is valid. Because claims 2 and 3 attempt to capture unpatentable mental processes (i.e., abstract ideas), they are invalid under § 101.
How can a claim be invalid because the method could be performed in an unclaimed manner that would not satisfy § 101?
Does The Court Have A Problem With Clever Claim Drafting?
The approach the court takes here—and the commentary about "crafted" claims—reminds me of Judge Rader's "additional views" in the recent Classen decision. Judge Rader wrote a separate opinion in that case where he noted that efforts to restrict patents under § 101 are subject to "evasion" by "a healthy dose of claim-drafting ingenuity" and so do little more than drive up the "cost and complexity of the patent system." (For these and other reasons, Judge Rader does not agree with an expanded use of § 101 to rein in patents.)
Patent-eligibility issues may arise in the pharmaceutical field in the context of diagnostic methods and personalized medicine. Patent applicants in these areas may want to consider describing their inventions in terms that highlight the need for a transformative process (such as a chemical reaction) or the use of a machine (such as a detector) to minimize the risk that the court will find that the underlying invention relates only to an abstract idea or mental process.