Beauregard claims won’t save you from post-Bilski invalidity analysis
By Michael A. Koptiw // September 20, 2011
The Federal Circuit struck down a computer readable medium (CRM), or Beauregard, claim under § 101. In Cybersource Corp. v. Retail Decisions, Inc., the court held that the CRM limitation in the claim did not make an otherwise unpatentable method patent-eligible under § 101. In essence, the court failed to treat the CRM claim as a manufacture for purpose of analyzing the claim under § 101, and instead considered whether the underlying method was an unpatentable abstract idea. Cybersource invented a way to detect fraudulent Internet e-commerce transactions. The Cybersource patent claimed the invention with a three-step method claim and a corresponding CRM claim. The Federal circuit dispensed with the method claim finding that the claim was directed to “unpatentable mental processes,” stating that all of claim’s method steps “can be performed in the human mind, or by a human using a pen and paper.”
For the CRM claim, Cybersource argued that the claim was directed to a manufacture and that because a manufacture is something tangible, it could not possibly fall within any of the three patent-eligibility exceptions (i.e., laws of nature, physical phenomena, and abstract ideas).
The Federal Circuit disagreed, stating that ‘[r]egardless of what statutory category … a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.” The court found that the underlying invention was directed to the process of fraud detection, and not a manufacture for storing computer-readable information. Accordingly, the CRM claim was also found invalid under § 101.
Patent professionals should consider this opinion when drafting and reviewing software cases. For example, including narrower computer processing steps, such as retrieving from a storage device, storing information in a datastore, processing instructions at a general processing unit, and the like may help shift the claim language away from an unpatentable mental process while preserving the claim’s useful scope and value.
A copy of the CAFC opinion may be found here.