A wholly generic computer-implementation that does not “purport to improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field” is insufficient to transform an abstract idea into a patent-eligible invention under 35 U.S.C. § 101. Further, an otherwise parallel system claim is not inherently distinct from its corresponding method claim in this regard, and the two will therefore rise and fall together under 35 U.S.C. § 101 for the same reasons. However, although specifically declining to “labor to delimit the precise contours of the ‘abstract ideas’ category in this case,” it is noted that the Court’s factual findings and precedent review focused heavily on whether the underlying abstract idea was “already ‘well known in the art,’” perhaps leaving the door open for computer-implementations of ideas that are new or differently applied, even if otherwise abstract.
Background / Facts: The patents at issue in this case relate to a computerized scheme for mitigating “settlement risk”—i.e., the risk that only one party to an agreed-upon financial exchange will satisfy its obligation. In particular, the claims are designed to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary. All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties stipulated that the method claims require a computer as well.
Issue(s): Whether the claims here “do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer.”
Holding(s): No. “Viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer,” and therefore “amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. … Under our precedents, that is not ‘enough’ to transform an abstract idea into a patent-eligible invention.” Citing the underlying “preemption concern that undergirds our §101 jurisprudence,” the Court found that “[g]iven the ubiquity of computers, … wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” Although the Court acknowledged that “[t]here is no dispute that a computer is a tangible system (in §101 terms, a ‘machine’), or that many computer-implemented claims are formally addressed to patent-eligible subject matter,” it nevertheless expressed the overriding concern that “if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.” Finally, the Court concluded that system claims are not inherently distinct from corresponding method claims, and otherwise parallel claim structures should rise and fall together: “The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.”