New Federal Circuit Opinion May Limit Impact of Berkheimer Decision

In BSG Tech LLC v. Buyseasons, Inc., No. 2017-1980, 2018 U.S. App. LEXIS 22704 (Fed. Cir. Aug. 15, 2018), the U.S. Court of Appeals for the Federal Circuit confirmed that claims to indexing a database according to relative historical usage information were not eligible for patent protection. The lower court had granted a motion to dismiss that was subsequently converted into a motion for summary judgment. It had concluded that the claims were directed to a patent-ineligible abstract idea, which it characterized as “considering historical usage information while inputting data.”

The Federal Circuit agreed, stating that the focus of the claims was not rooted in computer technology and did not overcome a technological problem. Rather, the Court found that the claims focused on guiding database users by presenting summary comparison information before receiving input. It characterized the claimed database structure as a generic environment in which the claimed method was performed because database technology was “commonly used” at the time of invention. Using potentially problematic language, the Court stated that a claim’s focus must be on something other than the abstract idea itself for the application thereof to be considered non-abstract.

The Court distinguished its Enfish and Visual Memory decisions, both cases involving database structures that were confirmed patent-eligible. It reasoned that the claims at issue in those cases changed the way information was entered and stored in the database in a way that improved computer functioning. By contrast, the Court concluded that the claims at issue in BSG Tech required that information be entered and stored in the database in the same way as it had previously been entered and stored. Emphasizing this point, the Court said that “an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.”

The Court also concluded that the only purported inventive concept was found in the application of an abstract idea using conventional techniques. Because the alleged unconventional feature was a restatement of the abstract idea, the Court found that a material issue of fact regarding that feature’s unconventionality had not been raised under Berkheimer.

BSG Tech falls in a now-familiar line of cases continuing to intermix the issue of whether a claim’s subject matter is patent-eligible with the issues of whether the differences between the claim and the prior art are significant enough to warrant patent protection. It may also undercut the impact of Berkheimer on the law for subject-matter eligibility by limiting its potential application to those cases where a patentee can allege that a computer’s operation is improved as a result of the claimed innovation.

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