State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH

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  • On appeal, Court of Appeals is not bound to give deference to the district court's grant of summary judgment, but must make an independent determination that the standards for summary judgment have been met.
  • Court of Appeals reviews patent claim construction de novo including any allegedly fact-based questions relating to claim construction.
  • Court of Appeals reviews statutory construction de novo.
  • “Machine” claims having means-plus-function clauses may only be reasonably viewed as process claims if there is no supporting structure in the written description that corresponds to the claimed “means” elements.
  • Patent claiming data processing system for managing a financial services configuration of a portfolio established as a partnership, which machine was made up of, at the very least, specific structures disclosed in written description and corresponding to means-plus-function elements recited in claim, was directed to machine, not process.
  • It is improper to read limitations into statute generally setting forth patentable subject matter where the legislative history indicates that Congress clearly did not intend such limitations.
  • Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful”; to be patentable an algorithm must be applied in a “useful” way.
  • Transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, for purpose of managing mutual fund investment structure, was practical application of a mathematical algorithm, formula, or calculation, because it produced useful, concrete and tangible result, and claimed machine thus was not unpatentable under mathematical algorithm exception to patentability.
  • Dispositive inquiry in determining patentability of invention notwithstanding its inclusion of mathematical algorithm is whether the claim as a whole is directed to statutory subject matter; it is irrelevant that a claim may contain, as part of the whole, subject matter which would not be patentable by itself, and claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.
  • The question of whether a patent claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to, namely, process, machine, manufacture, or composition of matter, but rather on the essential characteristics of the subject matter, in particular, its practical utility.
  • Business methods are subject to same legal requirements for patentability as applied to any other process or method, and thus there is no “business method” exception to patentability.
  • The appealed decision is reversed and the case is remanded to the district court for further proceedings consistent with this opinion.