Background
Berkeley*IEOR owns three patents claiming methods for calculating object-level profitability. It sued Teradata and several Teradata customers in the Northern District of Illinois, alleging direct infringement by the customers and indirect infringement by Teradata. The district court severed and stayed the customer claims under the customer-suit exception and dismissed portions of three counts asserting infringement under 35 U.S.C. § 271(g).
The district court later granted Berkeley summary judgment that the asserted claims were eligible under 35 U.S.C. § 101, reasoning that a limitation in representative claim 1 of U.S. Patent No. 7,596,521 supplied an inventive concept involving parallel computations. But it granted Teradata summary judgment of no indirect infringement, after which the remaining direct-infringement counts were dismissed with prejudice. Berkeley appealed those rulings, and Teradata cross-appealed the patent-eligibility ruling.
The Court’s Holding
The Federal Circuit held that the asserted claims were patent-ineligible. At Alice step one, it agreed with the district court that representative claim 1 was directed to the abstract idea of calculating profitability—collecting and analyzing information through mathematical calculations using a computer. Performing the calculation faster on a computer did not make the idea nonabstract.
At Alice step two, the court held that parallel processing could not supply an inventive concept because the claim did not require calculations to be performed in parallel. A claim that can be practiced without the asserted technological improvement cannot rely on that improvement to establish eligibility. The court also rejected Berkeley’s proposed alternative inventive concept as another formulation of the same unclaimed parallel-processing feature.
The court therefore reversed the summary judgment of patent eligibility and affirmed judgment on all five counts for Teradata and the customer defendants on the alternative ground of patent ineligibility. Because that conclusion disposed of the case, the court did not reach Berkeley’s challenges to the severance, stay, infringement rulings, and dismissals.
Key Takeaways
- An asserted technological improvement cannot provide an inventive concept under Alice step two unless the claim actually requires that improvement.
- Unclaimed parallel processing described or contemplated by the patent could not save claims broad enough to cover sequential processing.
- The Federal Circuit may affirm judgment on patent-ineligibility grounds without deciding separate infringement and procedural issues.
Why It Matters
The nonprecedential decision underscores the importance of drafting claims that expressly incorporate the technical feature said to make a computer-implemented invention inventive. Descriptions in the specification, and benefits that a claim merely permits, do not establish eligibility when the claim can be practiced without them.
The ruling also shows how a successful § 101 cross-appeal can dispose of an entire infringement action, eliminating the need to review disputed rulings on direct infringement, indirect infringement, severance, and stays.