Author: Steven Christopher
In 2007, Accenture sued Guideware for infringement of U.S. Patent No. 7,013,284 ("'284 patent"), which relates to a computer program for handling insurance-related tasks. Guideware counterclaimed, alleging that the '284 patent was invalid under 35 U.S.C. § 101, and failed the "machine-or-transformation" test. The district court ruled in favor of Guideware, holding that claims of the '284 patent were ineligible under 35 U.S.C. § 101. The district court reasoned that the '284 patent claims were “directed to concepts for organizing data rather than to specific devices or systems, and limiting the claims to the insurance industry does not specify the claims sufficiently to allow for their survival.”
Accenture appealed to the Federal Circuit with respect to system claims 1-7 and method claim 8 of the '284 patent. Accenture argued its software should be patent-protected as it is quicker, more accurate and uses different methodologies than previous insurance claims processing methods. Guidewire argued that Accenture had just added computer technology to obvious insurance trade practices that should not be eligible for patent exclusivity.
In a 2-1 decision, the Federal Circuit affirmed the decision of the district court. The Majority Opinion was given by Judge Lourie, who stated that the "…method claims define an abstract idea.…the system claims offer no meaningful limitations beyond the method claims that have been held patent-ineligible…" The Dissenting Opinion was given by Judge Rader, who stated that "…[the] claimed systems present patent-eligible subject matter. The claims require a specific combination of computer components…...all inventions at some level embody an abstract idea, and dissecting from a claim all of its concrete limitations is one step closer towards eviscerating patent law."