Thursday, September 2, 2010

Bilski Renders Claim for Method of "Computing a Price to Sell Fixed Income Assets and Generating a Financial Analysis" Invalid

The magistrate judge recommended granting defendant's motion for summary judgment of invalidity (filed as a motion to dismiss for failure to state a claim) because the asserted patent did not claim patentable subject matter. "[The asserted claim] is not drawn to patentable subject matter because it recites nothing more than an abstract idea on a general purpose computer -- i.e., computing a price for the sale of a fixed income asset and generating a financial analysis output. . . . [A]ttempting to limit the abstract idea of computing a price for the sale of a fixed income asset to a general purpose computer -- i.e., limiting it to a particular technological field -- will not bestow patentability on the claim. While [Bilski v. Kappos, 130 S. Ct. 3218 (2010)] held that the [machine-or-transformation] test is not an exclusive test for determining whether a claim contains patentable subject matter, it 'is a useful and important clue, an investigative tool, for determining whether some claimed inventions are [patentable] processes under § 101.'. . . [The claim in plaintiff's patent] is not tied to 'a particular machine' because the recited machines do not provide 'meaningful limits' on the process. Thus, failure to meet the machine-prong of the MOT test weighs in favor of the undersigned’s conclusion that [the claim] is attempting to patent an abstract idea."

Graff/Ross Holdings LLP v. Federal Home Loan Mortgage Corp., 1-07-cv-00796 (DCD August 27, 2010, Report & Recommendation) (Kay, M.J.)

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