System claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together. In order for a system claim to offer a “meaningful limitation” beyond an otherwise abstract method claim that would be sufficient to engender it with patent-eligibility, its components must do more than “generally link[] the use of the method to a particular technological environment.” Given the court’s overarching concern that patent eligibility should not “turn on the ingenuity of the draftsman,” it seems difficult to craft a bright-line rule for avoiding this scenario. One suggestion, however, is to provide more specific functional modules when drafting an application, in contrast to the hardware schematic “merely composed of generic computer components that would be present in any general purpose computer” that was deemed inadequate in this case.
Background / Facts: The patent here relates to methods for automating the handling of insurance-related tasks. The lone independent claim on appeal, claim 1, is directed to a system for generating tasks to be performed in an insurance organization. The system stores information on insurance transactions in a database. Upon the occurrence of an event, the system determines what tasks need to be accomplished for that transaction and assigns those tasks to various authorized individuals to complete them. In order to accomplish this, the claimed system includes an insurance transaction database, a task library database, a client component for accessing the insurance transaction database, and a server component that interacts with the software components and controls an event processor, which watches for events and sends alerts to a task engine that determines the next tasks to be completed.
Issue(s): Whether the system of claim 1 qualifies as patent-eligible subject matter under 35 U.S.C. § 101 even though its corresponding method claim does not.
Holding(s): No. Relying heavily on the framework proposed by the plurality opinion in CLS Bank, the majority concluded that “[b]ecause the system claim and method claim contain only ‘minor differences in terminology [but] require performance of the same basic process,’ … they should rise or fall together.” In considering system claim 1’s inclusion of “an insurance claim folder, a task library database, a server component, and a task engine,” the court found that “these software components are all present in the method claims, albeit without a specific reference to those components by name.” Thus, “in this case ‘[t]he system claims are [akin] to stating the abstract idea [of the method claim] … and adding the words: ‘apply it’ on a computer.’” Further, the court found the specification’s disclosure of the system’s hardware components to be wholly generic: “although the patent’s Figure 1 shows a schematic diagram of the invention, one that includes computer hardware, the schematic’s hardware is merely composed of generic computer components that would be present in any general purpose computer.”