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Federal Circuit Interprets Bilski and Gives Teeth to 35 U.S.C. § 101 in Challenging the Patentability of Software Claims
Practices
August 22, 2011
The United States Court of Appeals for the Federal Circuit issued a significant decision last week regarding the patentabilty of software under 35 U.S.C. § 101. Specifically, in Cybersource Corporation v. Retail Decisions, Inc., No. 2009-1358 (Fed. Cir. Aug. 16, 2011), the court held that the method claims at issue were unpatentable because all the steps could be performed in the human mind, or by a human using pen and paper. The Federal Circuit also held that the so-called Beauregard claims at issue (that is, claims drawn to a "computer readable medium") were unpatentable because they merely claimed a software implementation of a purely mental process that could otherwise be performed without the use of a computer. The Federal Circuit's opinion may be of interest to companies that make or use software and companies that own software patents because the decision leaves a large number of existing software patents potentially vulnerable to challenge, especially those that employ the Beauregard claim format, a popular way of writing software claims since the 1990s.