Financial Product Search System Found Patent Ineligible Under Section 101 by Delaware Court
In this recent § 101 decision, The Money Suite Company v. 21st Century Insurance and Financial Services, Inc., et al., C.A. No. 13-984-GMS (D. Del. Jan. 27, 2015), the plaintiff The Money Suite Company (“Money Suite”) initiated patent infringement lawsuits against a host of defendants, namely Century Insurance and Financial Services, Inc., 21st Century Insurance Group, and Farmers Group, Inc., Farmers Group, Inc., Lending Tree LLC, Citigroup Inc. and MetLife, Inc. Money Suite alleged that the Defendants each infringed U.S. Patent No. 6,684,189 (“the ‘189 Patent”)· Defendants filed a Motion to Dismiss arguing that the ‘189 Patent claims patent-ineligible subject matter and is invalid under 35 U.S.C. § 101. For the reasons discussed below, the court granted the Defendants’ motion.
This case is, in my estimation, a reasonable application of the Supreme Court’s Alice decision. While the invention was clearly claimed in a physical, computer-implemented form, the core “innovation” was essentially a non-technical concept that any business major could devise — providing consumers an easy way to get pricing for multiple financial products with a single search. If there was a technical innovation associated with the implementation of this “abstract idea”, the plaintiff failed to convince the court of it. Instead, the court essentially found that only routine and conventional technical skills were employed to implement this abstract idea, and therefore the “significantly more” innovation needed to save the patent from patent ineligibility was absent.
The ‘189 Patent describes a computerized method for generating price quotes for financial products. Claim 1- the only independent claim of the ‘189 Patent’s 887 claims – summarizes the invention:
1. A computer-implemented method using front-end network gateways and search criteria entered at a remote computer terminal to conduct a search of multiple financial products for efficient quoting at a remote location, the method including the steps of:
providing at least one data input screen with signals communicated from a digital computer to the remote terminal connected by a communications system, the at least one data input screen at the terminal soliciting entry of financial product selection criteria;
receiving the selection criteria from the terminal over the communications system at the digital computer; and
using the front-end network gateways, data accessible by the digital computer representing the multiple financial products, and the selection criteria entered at the terminal to provide a quote at the terminal for a financial product identified from the multiple financial products.
The additional dependent claims specify limitations such as defining the type of financial product at issue, identifying the specific search criteria, and adding hyperlink capability and password protection.
The court applied the two-step framework outlined in Alice to the ‘189 Patent. In doing so, the court found that the ‘189 Patent-and all of its 887 claims were invalid under § 101, as they claim the abstract concept of assigning prices to financial products and services without meaningfully narrowing the scope of coverage. The court agreed with the Defendants that the core invention embodied by the ‘189 Patent is a “fundamental economic [or] conventional business practice” and therefore an abstract idea. “There is no dispute that the claims describe a process used to generate price quotes for various types of financial products, based on a given set of criteria.” According to the court, although Money Suite attempted to frame it otherwise, this concept is abstract. The court stated that stripped of its limitations and technical jargon, claim 1 recites a “method . . . to conduct a search of multiple financial products for efficient quoting.” The court found this concept was not dissimilar from those discussed by recent § 101 court cases. See, e.g., Alice, 134 S. Ct. at 2356 (invalidating computer-implemented claims covering intermediated settlement); Bilski v. Kappas, 561 U.S. 593, 609-11 (2010) (invalidating computer-implemented claims covering “the basic concept of hedging, or protecting against risk”).
Although the ‘189 Patent reads on an abstract idea, the court noted that the second step of the Alice test specifies that it will not be found to cover patent ineligible subject matter if there is evidence of an inventive concept or contribution: “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” The court in this case found clear and convincing evidence showed that the ‘189 Patent fails to claim an inventive contribution sufficient to satisfy § 101. While there were many dependent claims adding elements such as the type of financial product at issue, the specific search criteria, hyperlink capabilities, and password protection, Money Suite did not contend that it “invented” any of these limitations, and the court found that none of these features qualify as a contribution sufficient to transform the abstract idea into a patent-eligible invention. Thus, while the ‘189 Patent may recite slightly more than “wholly generic computer implementation” language, the difference is merely one of degree and not one of kind, and this conventional activity must be factored out.
It was also observed by the court that leaving open the possibility of practicing the idea of price quoting financial products manually does not save the ‘189 Patent. This was the very concern underlying the court’s rationale in Alice: monopolizing computerized implementations while allowing the public to practice the idea “by hand” does not comport with § 101, citing Alice, 134 S. Ct. at 2358-59 (“The fact that a computer necessarily exists in the physical, rather than purely conceptual, realm is beside the point. There is no dispute that a computer is a tangible system . . . , or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But 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.”).
Money Suite also argued that the recent DDR Holdings, 773 F.3d 1245, case out of the Court of Appeals for the Federal Circuit supported its position that the ‘189 Patent claims patent-eligible subject matter, but the court noted that in DDR Holdings the claims do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution in DDR is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
For the foregoing reasons, ‘189 Patent was deemed invalid under 35 U.S.C. § 101 because it claims an abstract idea.
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