I stumbled upon an interesting article (Can Beauregard Claims Show You The Money?) detailing the rise of the Beauregard claim. From its humble and shaky beginnings in 1995, the Beauregard claim had become a popular and successful style of claim for patent practitioners claiming inventions that involve computer programs. Last year, the claim seemed to have reached its zenith in, Finjan v. Secure Computing, 626 F.3d 1197 (Fed. Cir. 2010) where the Federal Circuit held that not only was it okay for a computer-readable medium with instructions on it to be enforced, but that the code needn’t even be active.
We fast forward to today, where the Federal Circuit decided Cybersource v. Retail Decisions. CyberSource brought suit against Retail Decisions, Inc., alleging infringement of its patent. Retail Decisions thereafter initiated an ex parte reexamination of the patent. The suit then resumed and the district court granted summary judgment for Retail Decisions of non-statutory subject matter. The CAFC affirmed the decision coming to its decision in an unprecedented way–that computer readable media with computer instructions should be treated as a process claim. Here is the analysis on why:
[P]rogramming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.
Anyone else confused by this analysis? Can’t all software be performed in the human mind if you break it down to the code?
I don’t agree with Judge Dyk’s analysis. This section of the opinion was extremely complicated, more complicated than it should have been. Claiming computer programs is not simple. In fact, the Beauregard claim is a very unique claim that doesn’t fit very nicely into a 1952 class of subject matter. Software claims resemble method claims in the sense that a series of methods are performed. But in this case, a computer is performing the methods, not a human. And in the case of a Beauregard claim, even though each task that a computer performs is a process, that’s not what is being claimed. Looking at Cybersource’s claim should put things into perspective.
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 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 that one or more processors to carry out the further steps of;
[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
[b] constructing a map of credit card numbers based upon the other transactions; and
[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.
This claim should not be examined as a method claim because it more closely resembles an article of manufacture. The preamble is man-made–a computer readable medium containing computer instructions. It is also a manufacture. Therefore, the case should be closed. Judge Dyk should have consulted Occam’s Razor that the simplest answer is most likely the correct answer in deciding this case.
I think that the struggle that the Federal Circuit is having is how to reject a patent when the judges don’t think that the complexity or inventiveness exceeds the basic level. However, just because what the machine does is abstract does not mean that a 101 analysis is in order. An article of manufacture was nonetheless created and 101 is thus satisfied. The Patent Act contains many other provisions that can be relied on to kick out the claim. That’s what we have 102, 103 and 112 for.
Today the Beauregard claim has experienced a setback. But after being around for more than 16 years, it seems unlikely that it has met its demise so abruptly.