Court rules ‘do it with a computer’ doesn't make an idea patentable

Rich Fiscus
18 Aug 2011 14:09

This week seems to be bigger than most for software patent news. Earlier in the week we had Google's announcement they are buying Motorola Mobility to acquire defensive patents. Now we have what could be a landmark ruling against the validity of a software patent on the basis that it describes a mental process.
The decision came from the United States Court of Appeals for the Federal Circuit, which is responsible for hearing appeals in patent infringement cases.
What makes it so important is the nature of many, perhaps most, software patents which are nothing more than a description of some common human activity with legalese added which translates to "do it with a computer." They are exactly the type of patents Microsoft co-founder Paul Allen is suing companies like eBay, Facebook, and Netflix over.
In this case, the patent covered a system for detecting fraud in credit card transactions. The patent holder argued that since it specified using the Internet for looking up information, the necessity to use a computer transformed it into a machine process.
The court disagreed with this assessment:

All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind.

They also shot down an argument that another part of the patent tied it to a machine because it mentioned using a "computer readable medium."

Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope. As such, the “computer readable medium” limitation of claim 2 does not make the otherwise unpatentable method patent eligible

The Supreme Court has long held that mental processes are not patentable so that part isn't new. What's important here is the acknowledgement that translating something which isn't patentable to computer code doesn't magically transform it into something patentable.
You can be sure this case will be appealed to the Supreme Court. However, they only agree to hear a small percentage of cases, meaning this ruling is likely to stand.
Read the entire decision below.