`(Cite as: 728 F.3d 1336)
`
`
`
`United States Court of Appeals,
`Federal Circuit.
`ACCENTURE GLOBAL SERVICES, GMBH and
`Accenture LLP, Plaintiffs–Appellants,
`v.
`GUIDEWIRE SOFTWARE, INC., Defend-
`ant–Appellee.
`
`No. 2011–1486.
`Sept. 5, 2013.
`Rehearing En Banc Denied Dec. 12, 2013.
`
`
`
`
`
`
`
`
`
`
`Background: Patentee brought action against com-
`petitor, alleging infringement of patent relating to
`handling task during insurance claim processing uti-
`lizing a computer system. The United States District
`Court for the District of Delaware, Sue L. Robinson,
`J., 800 F.Supp.2d 613, granted competitor's motion for
`summary judgment of invalidity. Patentee appealed.
`
`Holding: The Court of Appeals, Lourie, Circuit
`Judge, held that system claims of patent were ineligi-
`ble for patenting.
`
`
`Affirmed.
`
` Rader, Chief Judge, filed a dissenting opinion.
`
`West Headnotes
`
`96(7)
`
`
`[1] Courts 106
`
`106 Courts
` 106II Establishment, Organization, and Procedure
` 106II(G) Rules of Decision
` 106k88 Previous Decisions as Controlling
`
`
`
`Page 1
`
`or as Precedents
` 106k96 Decisions of United States
`Courts as Authority in Other United States Courts
` 106k96(7) k. Particular questions or
`subject matter. Most Cited Cases
`
`
`3604(4)
`
`Federal Circuit Court of Appeals reviews the
`grant or denial of summary judgment in a patent case
`applying the law of the relevant regional circuit.
`
`[2] Federal Courts 170B
`
`170B Federal Courts
` 170BXVII Courts of Appeals
` 170BXVII(K) Scope and Extent of Review
` 170BXVII(K)2 Standard of Review
` 170Bk3576 Procedural Matters
` 170Bk3604 Judgment
` 170Bk3604(4) k. Summary
`judgment. Most Cited Cases
` (Formerly 170Bk766)
`
` Federal Courts 170B
`
`170B Federal Courts
` 170BXVII Courts of Appeals
` 170BXVII(K) Scope and Extent of Review
` 170BXVII(K)3 Presumptions
` 170Bk3675 k. Summary judgment.
`Most Cited Cases
` (Formerly 170Bk802)
`
`
`3675
`
`The Third Circuit employs plenary review of a
`district court's grant of summary judgment, viewing
`the facts in the light most favorable to the non-moving
`party.
`
`[3] Courts 106
`
`
`96(7)
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`1
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`SAMSUNG-1038
`
`
`
`
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`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`106 Courts
` 106II Establishment, Organization, and Procedure
` 106II(G) Rules of Decision
` 106k88 Previous Decisions as Controlling
`or as Precedents
` 106k96 Decisions of United States
`Courts as Authority in Other United States Courts
` 106k96(7) k. Particular questions or
`subject matter. Most Cited Cases
`
`
`324.5
`
`In reviewing the grant or denial of summary
`judgment in a patent case, the Federal Circuit Court of
`Appeals applies its own law with respect to issues of
`substantive patent law.
`
`[4] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`
`5
`
`Patent eligibility presents an issue of law that is
`reviewed de novo. 35 U.S.C.A. § 101.
`
`[5] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k5 k. In general. Most Cited Cases
`
`
`In analyzing patent eligibility, first, a court must
`identify whether the claimed invention fits within one
`of the four statutory classes of patentable inventions;
`second, the court must assess whether any of the ju-
`dicially recognized exceptions to subject-matter eli-
`gibility apply, including whether the claims are to
`patent-ineligible abstract ideas. 35 U.S.C.A. § 101.
`
`
`Page 2
`
`5
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`[6] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k5 k. In general. Most Cited Cases
`
`
`In analyzing patent eligibility in the case of ab-
`stractness, a court must determine whether a claim
`poses any risk of preempting an abstract idea; to do so
`the court must first identify and define whatever fun-
`damental concept appears wrapped up in the claim,
`and, then, proceeding with the preemption analysis,
`the balance of the claim is evaluated to determine
`whether additional substantive limitations narrow,
`confine, or otherwise tie down the claim so that, in
`practical terms, it does not cover the full abstract idea
`itself. 35 U.S.C.A. § 101.
`
`[7] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.14 k. Particular processes or methods
`as constituting invention. Most Cited Cases
`
`
`7.14
`
`System claims of patent relating to handling task
`during insurance claim processing utilizing a com-
`puter system were patent-ineligible, absent any sub-
`stantial limitations separating the system claims from
`the patent's similar, patent-ineligible method claim. 35
`U.S.C.A. § 101.
`
`[8] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.14 k. Particular processes or methods
`as constituting invention. Most Cited Cases
`
`
`7.14
`
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`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`System claims of patent relating to handling task
`during insurance claim processing utilizing a com-
`puter system failed to include limitations setting them
`apart from the abstract idea of handling insur-
`ance-related information, and therefore the claims
`were ineligible for patenting. 35 U.S.C.A. § 101.
`
`[9] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.11 k. Use or operation of machine or
`apparatus as affecting process. Most Cited Cases
`
`
`7.11
`
`Simply implementing an abstract concept on a
`computer, without meaningful limitations to that
`concept, does not transform a patent-ineligible claim
`into a patent-eligible one; further, limiting the appli-
`cation of an abstract idea to one field of use does not
`necessarily guard against preempting all uses of the
`abstract idea. 35 U.S.C.A. § 101.
`
`[10] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.11 k. Use or operation of machine or
`apparatus as affecting process. Most Cited Cases
`
`
`7.11
`
`The complexity of the implementing software or
`the level of detail in the specification does not trans-
`form a claim reciting only an abstract concept into a
`patent-eligible system or method. 35 U.S.C.A. § 101.
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
`
`328(2)
`
`Page 3
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` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited
`Cases
`
`
`7,013,284. Invalid.
`
`
`*1337 J. Michael Jakes, Finnegan, Henderson,
`Farabow, Garrett & Dunner, LLP, of Washington, DC,
`argued for plaintiffs-appellants. With him on the brief
`were Erika H. Arner and Justin R. Lowery.
`
`Mark A. Lemley, Durie Tangri, LLP, of San Fran-
`cisco, CA, argued for defendant-appellee. With him
`on the brief was Daralyn J. Durie.
`
`Before RADER, Chief Judge, LOURIE and REYNA,
`Circuit Judges.
`
`Opinion for the court filed by Circuit Judge LOURIE.
`
`Dissenting opinion filed by Chief Judge RADER.
`
`LOURIE, Circuit Judge.
`Accenture Global Services, GmbH and Accen-
`ture, LLP (“Accenture”) appeal from the grant of
`summary judgment by the United States District Court
`for the District of Delaware holding that all claims of
`U.S. Patent 7,013,284 (the “'284 patent”) are invalid
`under 35 U.S.C. § 101. Accenture Global Servs.,
`GmbH v. Guidewire Software, Inc., 800 F.Supp.2d
`613, 621–22 (D.Del.2011). Accenture appealed that
`determination only as to claims 1–7, directed to a
`system for generating tasks to be performed in an
`insurance organization, but did not appeal the similar
`method *1338 claims 8–22. As described more fully
`below, we affirm the district court's judgment and hold
`that
`the system claims before us
`recite pa-
`tent-ineligible subject matter.
`
`
`BACKGROUND
`I. The '284 Patent
`The '284 patent describes “[a] computer program
`
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`3
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`
`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`... for handling insurance-related tasks.” '284 patent
`col. 3 ll. 23–25. The patent discloses various software
`components of the program, including a “data com-
`ponent that stores, retrieves and manipulates data” and
`a client component that “transmits and receives data
`to/from the data component.” Id. col. 3 ll. 25–29. The
`client component also includes a business component
`that “serves as a data cache and includes logic for
`manipulating the data.” Id. col. 3 ll. 29–31. The pro-
`gram further describes a controller component to
`handle program events and an adapter component to
`interface with a data repository. Id. col. 3 ll. 31–35.
`
`
`The specification contains detailed descriptions
`of the various software components, see id. col.
`8–107, including many of the functions those com-
`ponents utilize and how those components interact.
`The patent contains two independent claims, both of
`which require generating and organizing
`insur-
`ance-related tasks.
`
`
`Claim 1 is a claim to a system for generating tasks
`to be performed in an insurance organization. The
`system stores information on insurance transactions in
`a database. Upon the occurrence of an event, the sys-
`tem determines what tasks need to be accomplished
`for that transaction and assigns those tasks to various
`authorized individuals to complete them. In order to
`accomplish this, the claimed system includes an in-
`surance transaction database, a task library database, a
`client component for accessing the insurance transac-
`tion database, and a server component that interacts
`with the software components and controls an event
`processor, which watches for events and sends alerts
`to a task engine that determines the next tasks to be
`completed.
`
`
`
`
`
`
`Claim 1 is reproduced below:
`
`A system for generating tasks to be performed in an
`insurance organization, the system comprising:
`
`Page 4
`
`an insurance transaction database for storing in-
`formation related to an insurance transaction, the
`insurance transaction database comprising a claim
`folder containing the information related to the in-
`surance transaction decomposed into a plurality of
`levels from the group comprising a policy level, a
`claim level, a participant level and a line level,
`wherein the plurality of levels reflects a policy, the
`information related to the insurance transaction,
`claimants and an insured person in a structured
`format;
`
`a task library database for storing rules for deter-
`mining tasks to be completed upon an occurrence of
`an event;
`
`a client component in communication with the in-
`surance
`transaction database configured
`for
`providing information relating to the insurance
`transaction, said client component enabling access
`by an assigned claim handler to a plurality of tasks
`that achieve an insurance related goal upon com-
`pletion; and
`
`a server component in communication with the
`client component, the transaction database and the
`task library database, the server component in-
`cluding an event processor, a task engine and a task
`assistant;
`
`wherein the event processor is triggered by appli-
`cation events associated with a change in the in-
`formation, and sends an event trigger *1339 to the
`task engine; wherein in response to the event trig-
`ger, the task engine identifies rules in the task li-
`brary database associated with the event and applies
`the information to the identified rules to determine
`the tasks to be completed, and populates on a task
`assistant the determined tasks to be completed,
`wherein the task assistant transmits the determined
`tasks to the client component.
`
`
`
`
`
`
`
`
`
`
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`4
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`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`Id. col. 107 ll. 25–59.
`
`
`
`Claim 8 claims a method for generating tasks to
`be performed in an insurance organization. The
`method takes an insurance transaction and applies
`rules to that transaction to determine tasks to be
`completed. These tasks are made accessible to au-
`thorized individuals who then complete the task.
`
`
`Claim 8 reads as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`An automated method for generating tasks to be
`performed in an insurance organization, the method
`comprising:
`
`transmitting information related to an insurance
`transaction;
`
`determining characteristics of the information re-
`lated to the insurance transaction;
`
`applying the characteristics of the information re-
`lated to the insurance transaction to rules to deter-
`mine a task to be completed, wherein an event
`processor interacts with an insurance transaction
`database containing information related to an in-
`surance transaction decomposed into a plurality of
`levels from the group comprising a policy level, a
`claim level, a participant level and a line level,
`wherein the plurality of levels reflects a policy, the
`information related to the insurance transaction,
`claimants and an insured person in a structured
`format;
`
`transmitting the determined task to a task assistant
`accessible by an assigned claim handler, wherein
`said client component displays the determined task;
`
`allowing an authorized user to edit and perform the
`determined task and to update the information re-
`lated to the insurance transaction in accordance with
`the determined task;
`
`Page 5
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`
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`
`
`storing the updated information related to the in-
`surance transaction; and
`
`generating a historical record of the completed task.
`
`Id. col. 108 ll. 12–41.
`
`Both claim 1 and claim 8 disclose aspects of
`“generating tasks to be performed in an insurance
`organization.” Claim 1 and claim 8 further include
`many of the same software components. They both
`include an insurance transaction database, which
`contains a policy level, a claim level, a participant
`level, and a line level. Further, both the system and the
`method claims require a client component for allow-
`ing an assigned claim handler to access tasks, an event
`processor, and a task assistant for scheduling and
`monitoring those tasks.
`
`
`II. District Court Proceedings
`On December 18, 2007, Accenture filed suit
`against Guidewire alleging infringement of the '284
`patent as well as asserting various state law claims.
`Accenture Global Servs., GmbH v. Guidewire Soft-
`ware, Inc., 691 F.Supp.2d 577, 579 (D.Del.2010).
`Guidewire asserted multiple affirmative defenses
`including that the patent *1340 was invalid under 35
`U.S.C. § 101 for claiming non-patent-eligible subject
`matter. Guidewire moved for summary judgment,
`asserting that the patent was invalid because claims 1,
`8, and their related dependent claims did not meet the
`machine-or-transformation test articulated in our de-
`cision in In re Bilski, 545 F.3d 943 (Fed.Cir.2008) (en
`banc) aff'd on other grounds sub nom. Bilski v. Kap-
`pos, 560 U.S. ––––, 130 S.Ct. 3218, 177 L.Ed.2d 792
`(2010). Because the Supreme Court had by then
`granted certiorari in Bilski, but had not yet issued its
`own decision, the district court denied the motion for
`summary
`judgment without prejudice, allowing
`Guidewire to renew the motion after a Supreme Court
`decision issued. Accenture Global Servs., GmbH v.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`5
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`
`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`Guidewire Software, Inc., No. 07–826–SLR, 2010
`WL 723003 (D.Del. Feb. 26, 2010), ECF No. 478.
`
`
`After the Supreme Court issued its decision in
`Bilski, Guidewire renewed its motion for summary
`judgment, arguing that the '284 patent is drawn to
`abstract ideas that fail the machine-or-transformation
`test. On May 31, 2011, after briefing from both sides,
`the district court granted Guidewire's motion for
`summary judgment, finding the claims of the '284
`patent ineligible because the claims are drawn to ab-
`stract ideas. Accenture, 800 F.Supp.2d at 621–22.
`
`
`The district court held that the '284 patent was
`“directed to concepts for organizing data rather than to
`specific devices or systems, and limiting the claims to
`the insurance industry does not specify the claims
`sufficiently to allow for their survival.” Id. at 621
`(citing Bilski, 130 S.Ct. at 3231; Parker v. Flook, 437
`U.S. 584, 589–90, 98 S.Ct. 2522, 57 L.Ed.2d 451
`(1978)). Specifically, the court held that method claim
`8 is patent-ineligible because none of the claim limi-
`tations restrict claim 8 to a concrete application of the
`abstract idea, and that the dependent method claims
`only add “limitations regarding potential claim in-
`formation categories.” Id. at 621. The district court
`found that system claim 1 is patent-ineligible because
`the claim language “mirrors the language of the
`method disclosed in claim 8.” Id. Those conclusions,
`“in conjunction with the court's prior conclusion that
`the ['284 patent fails] the machine or transformation
`test” led the court to grant the motion for summary
`judgment of invalidity under § 101.
`
`
`Accordingly, the district court entered final
`judgment in favor of Guidewire; Accenture timely
`appealed the summary judgment holding only as to
`system claims 1–7, leaving the judgment of invalidity
`as to the method claims not appealed. Although Ac-
`centure appealed the judgment as to all system claims
`1–7, the briefing and argument from both parties fo-
`cused only on system claim 1 and method claim 8,
`lending support to the conclusion that the eligibility of
`
`Page 6
`
`dependent claims 2–7 depends on the eligibility of
`claim 1.
`
`
`jurisdiction under 28 U.S.C. §
`
`We have
`1295(a)(1).
`
`
`DISCUSSION
`I. Related System and Method Claims
`[1][2][3][4] We review the grant or denial of
`summary judgment applying the law of the relevant
`regional circuit. Teva Pharm. Indus. v. AstraZeneca
`Pharm. LP, 661 F.3d 1378, 1381 (Fed.Cir.2011). The
`Third Circuit employs plenary review of a district
`court's grant of summary judgment, viewing the facts
`in the light most favorable to the non-moving party.
`A.W. v. Jersey City Pub. Schs., 486 F.3d 791, 794 (3d
`Cir.2007). We apply our own law, however, with
`respect to issues of substantive patent law. Aero
`Prods. Int'l, Inc. v. Intex Recreation Corp., 466 F.3d
`1000, 1016 (Fed.Cir.2006). Patent eligibility under §
`101 presents an issue of law that we *1341 review de
`novo. Bancorp Servs., LLC v. Sun Life Assurance Co.
`of Can., 687 F.3d 1266, 1273 (Fed.Cir.2012). This
`legal conclusion may contain underlying factual is-
`sues. Ultramercial, Inc. v. Hulu, LLC, No. 2010–1544,
`2013 WL 3111303, at *3 (Fed.Cir. June 21, 2013).
`
`
`[5] We recently evaluated 35 U.S.C. § 101 and its
`application to computer software in CLS Bank Int'l v.
`Alice Corp., 717 F.3d 1269 (Fed.Cir.2013) (en banc).
`The plurality opinion in CLS Bank identified a
`two-step process, derived from the Supreme Court's
`decision in Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., ––– U.S. ––––, 132 S.Ct. 1289, 182
`L.Ed.2d 321 (2012), for analyzing patent eligibility
`under § 101. First, the court must identify “whether
`the claimed invention fits within one of the four stat-
`utory classes set out in § 101.” CLS Bank, 717 F.3d at
`1282. Second, one must assess whether any of the
`judicially recognized exceptions to subject-matter
`eligibility apply, including whether the claims are to
`patent-ineligible abstract ideas. Id. (citing Mayo, 132
`S.Ct. at 1302–03).
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`
`
`[6] In the case of abstractness, the court must
`determine whether the claim poses “any risk of
`preempting an abstract idea.” Id. To do so the court
`must first “identify and define whatever fundamental
`concept appears wrapped up in the claim.” Id.; see
`also Ultramercial, 722 F.3d at 1354–45 (Lourie, J.,
`concurring) (same). Then, proceeding with
`the
`preemption analysis, the balance of the claim is
`evaluated to determine whether “additional substan-
`tive limitations ... narrow, confine, or otherwise tie
`down the claim so that, in practical terms, it does not
`cover the full abstract idea itself.” CLS Bank, 717 F.3d
`at 1282 (citing Mayo, 132 S.Ct. at 1300; Bilski, 130
`S.Ct. at 3231; Diamond v. Diehr, 450 U.S. at 187, 101
`S.Ct. 1048).
`
`
`Although CLS Bank issued as a plurality opinion,
`in that case a majority of the court held that system
`claims that closely track method claims and are
`grounded by the same meaningful limitations will
`generally rise and fall together. Id. at 1274 n. 1
`(Lourie, Dyk, Prost, Reyna, & Wallach, JJ., plurality
`opinion) (“[E]ight judges, a majority, have concluded
`that the particular method, medium, and system claims
`at issue in this case should rise or fall together in the §
`101 analysis.”). Those judges came to that conclusion
`because the method and system claims were so closely
`related that the system claim essentially implemented
`the process of the method claim on a general purpose
`computer. See id. at 1291 (“Despite minor differences
`in terminology ... the asserted method and system
`claims require performance of the same basic process.
`Although the system claim associates certain com-
`puter components with some of the method steps,
`none of the recited hardware offers a meaningful lim-
`itation beyond generally linking ‘the use of the
`[method] to a particular technological environment,’
`that is, implementation via computers.” (quoting Bil-
`ski, 130 S.Ct. at 3230)); id. at 1322 (Newman, J.,
`concurring in part and dissenting in part) (“[P]atent
`eligibility does not depend on the form of the claim,
`whether computer-implemented
`innovations are
`
`Page 7
`
`claimed as a method or a system or a storage medium,
`whether implemented in hardware or software. Patent
`eligibility does not turn on the ingenuity of the
`draftsman.”). That is the case here.
`
`
`The district court in this case held that the method
`claims of the ' 284 patent are invalid under § 101.
`Accenture, 800 F.Supp.2d at 621–22. That judgment
`was not appealed by Accenture. Appellant Br. 10 n. 3.
`Because the judgment as to the method claims was not
`appealed, it is final and conclusive. See Engel Indus.,
`Inc. v. Lockformer Co., 166 F.3d 1379, 1387
`(Fed.Cir.1999) (“An issue that falls within the scope
`of the judgment appealed from but *1342 is not raised
`by the appellant in its opening brief on appeal is nec-
`essarily waived.”); see also Miss. Chem. Corp. v. Swift
`Agr. Chems., 717 F.2d 1374, 1376–77 (Fed.Cir.1983).
`
`
`[7] We conclude that the district court's decision
`on patent-ineligibility of the system claims must also
`be affirmed, both because the system claims offer no
`meaningful limitations beyond the method claims that
`have been held patent-ineligible and because, when
`considered on their own, under Mayo and our plurality
`opinion in CLS Bank, they fail to pass muster. Alt-
`hough the issue of the patent eligibility of the method
`claims is not before us, as it has not been appealed, it is
`plain to us that, as the district court held, those claims
`are ineligible for patent.
`
`
`Because the '284 patent's method claims have
`been found to be patent ineligible, we first compare
`the substantive limitations of the method claim and the
`system claim to see if the system claim offers a
`“meaningful limitation” to the abstract method claim,
`which has already been adjudicated to be pa-
`tent-ineligible. CLS Bank, 717 F.3d at 1291. Under
`this analysis, we compare the two claims to determine
`what limitations overlap, then identify the system
`claim's additional limitations. Essentially, we must
`determine whether the system claim offers meaningful
`limitations “beyond generally linking ‘the use of the
`[method] to a particular technological environment.’ ”
`
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`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`Id. (quoting Bilski, 130 S.Ct. at 3230).
`
`
`It is not disputed by the parties that the '284 pa-
`tent's system claim 1 includes virtually the same lim-
`itations and many of the same software components as
`the patent-ineligible method claims. Both claims are
`for “generating tasks to be performed in an insurance
`organization.” '284 patent col. 107 ll. 25–26, col. 108
`ll. 11–12. Both the claimed system and the claimed
`method contain an insurance transaction database
`containing
`information relating
`to an
`insurance
`transaction “decomposed into a plurality of levels
`from the group comprising a policy level, a claim
`level, a participant level and a line level, wherein the
`plurality of levels reflects a policy, the information
`related to the insurance transaction, claimants and an
`insured person in a structured format.” Id. col. 107 ll.
`28–36, col. 108 ll. 20–30. Additionally, claim 1 and
`claim 8 both contain: a client component, id. col. 107
`l. 40, col. 108 ll. 34–39; a task assistant, id. col. 107 l.
`49, col. 108 l. 31; and an event processor, id. col. 107 l.
`49, col. 108 l. 21. The system claims are simply the
`method claims implemented on a system for per-
`forming the method.
`
`
`Accenture only points to system claim 1's inclu-
`sion of an insurance claim folder, a task library data-
`base, a server component, and a task engine in at-
`tempting to show that the system claim is meaning-
`fully different from the ' 284 patent's method claims.
`However, these software components are all present in
`the method claims, albeit without a specific reference
`to those components by name.
`
`
`Although system claim 1 specifically includes a
`task engine, id. col. 107 l. 49, method claim 8 includes
`all the components required for a task engine. Com-
`pare id. col. 107 ll. 1–4 with id. col. 108 ll. 17–22.
`According to the specification, the task engine “fol-
`lows a process of evaluating events, determining claim
`characteristics, and matching the claim's characteris-
`tics to tasks defined in the Task Library.” Id. col. 107
`ll. 1–4. Method claim 8, likewise, includes an event
`
`Page 8
`
`and
`characteristics,”
`“determin[es]
`processor,
`“appl[ies] the characteristics ... to determine a task to
`be completed.” Id. col. 108 ll. 17–22. Method claim 8
`thus includes the limitations of the task engine, albeit
`without calling it a task engine. Likewise, the server
`component of system claim 1 includes*1343 “an event
`processor, a task engine and a task assistant,” id. col.
`107 ll. 48–49, all of which are present in the method of
`claim 8, id. col. 108 ll. 17–34.
`
`
`For the claim folder, system claim 1 describes the
`claim folder as a component within the insurance
`transaction database. '284 patent col. 107 ll. 29–31
`(“the insurance transaction database comprising a
`claim folder containing the information related to the
`insurance transaction”). The claim folder “manages
`claim information ... by providing a structured and
`easy to use interface.... [It] decomposes a claim into
`different levels that reflect the policy, the insured, the
`claim, the claimants, and the claimant's lines.” Id. col.
`83 ll. 117–19, col. 84 ll. 34–36. These levels are al-
`ready present in the method claim's insurance trans-
`action database. In fact, method claim 8's description
`of the insurance transaction database is an almost
`verbatim duplicate of system claim 1's description,
`even without an explicit reference to the claim folder.
`The insurance transaction database of method claim 8
`also stores insurance claims in a structured environ-
`ment and decomposes them into different levels. Thus,
`the claim folder only provides insignificant activity
`that does not meaningfully differentiate the system
`claim from the method claim. Cf. Diamond v. Diehr,
`450 U.S. 175, 191–92, 101 S.Ct. 1048, 67 L.Ed.2d 155
`(1981) (“[I]nsignificant post-solution activity will not
`transform an unpatentable principle into a patentable
`process.”).
`
`
`Regarding the task library database, system claim
`1 discloses that the task library database is “for storing
`rules for determining tasks to be completed upon an
`occurrence of an event.” Id. col. 107 ll. 38–39. How-
`ever, in method claim 8, the information relating to the
`insurance transaction is applied to “rules to determine
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`8
`
`
`
`
`
`728 F.3d 1336, 108 U.S.P.Q.2d 1173
`(Cite as: 728 F.3d 1336)
`a task to be completed, wherein an event processor
`interacts with an insurance transaction database....” Id.
`col. 108 ll. 19–22. The task library database is not
`mentioned in the specification, although it is appar-
`ently a database of the rules described as the Task
`Library, id. col. 107 ll. 5–13, so that the only infor-
`mation relating to that component is provided by
`system claim 1 and its related dependent claims.
`Nevertheless, the task library database is simply a
`formalized collection of the rules that are present and
`applied to the insurance transaction information in
`method claim 8.
`
`
`Indeed, even the specification of the '284 patent
`makes little distinction between the system and
`method claims. The patent describes the invention as
`“[a] computer program ... for developing component
`based software capable of handling insurance-related
`tasks.” Id. col. 3 ll. 23–25. The patent then discloses
`detailed software descriptions of the various software
`components without differentiating between the sys-
`tem or method claims. Further, although the patent's
`Figure 1 shows a schematic diagram of the invention,
`one that includes computer hardware, the schematic's
`hardware is merely composed of generic computer
`components that would be present in any general
`purpose computer. See id. fig. 1 (disclosing a CPU,
`ROM, RAM, I/O Adapter, Communication Adapter,
`Display Adapter, and a User Interface Adapter). The
`patent calls Figure 1 a “representative hardware en-
`vironment,” id. col. 1 l. 13, while also acknowledging
`that the hardware represented in Figure 1 “illustrates a
`typical hardware configuration of a workstation,” id.
`col. 1 ll. 12–15. The patent thus discloses that the
`representative hardware for the '284 patent is a generic
`computer. In fact, other than the preamble to claim 1
`stating that it is a system claim, the limitations of
`system claim 1 recite no specific hardware that dif-
`ferentiates it from method claim 8. Indeed, in this case
`“[t] *1344 he system claims are [akin] to stating the
`abstract idea [of the method claim] ... and adding the
`words: ‘apply it’ on a computer.” CLS Bank, 717 F.3d
`at 1291 (plurality opinion) (citing Mayo, 132 S.Ct. at
`
`Page 9
`
`1294).
`
`
`Because the system claim and method claim
`contain only “minor differences in terminology [but]
`require performance of the same basic process,” id. at
`1291, they should rise or fall together. Accenture only
`cited four additional limitations in system claim 1, and
`we have already indicated why those limitations do
`not meaningfully distinguish the abstract idea over the
`patent ineligible method claim. While it is not always
`true that related system claims are patent-ineligible
`because similar method claims are, when they exist in
`the same patent and are shown to contain insignificant
`meaningful limitations, the conclusion of ineligibility
`is inescapable. Thus, like the unappealed method
`claims, the system claims of the '284 patent are invalid
`under 35 U.S.C. § 101.
`
`
`II. The System Claims on their Own
`[8] As indicated earlier, the system claims are
`ineligible for patenting, aside from the status of the
`method claims, because they fail to include limitations
`that set them apart from the abstract idea of handling
`insurance-related information.
`
`
`The district court, relying on the Supreme Court's
`Bilski opinion, found that all claims of the '284 patent
`were invalid under 35 U.S.C. § 101. The court deter-
`mined that the abstract idea of the patent was drawn to
`“concepts for organizing data rather than to specific
`devices or systems.” Accenture, 800 F.Supp.2d at 621.
`The court further held that the limitations present in
`the claims did not significantly distinguish the claims
`from that abstract idea. Id. at 6