Portuguese   Portuguese
English   English

[JUDICIAL ERROR - MENTAL] Cybersource v. Retail Decisions (654 F.3d 1366, 2011)

Decision Parameters

Decisions It Cites

    Gottschalk v. Benson [409 U.S. 63, 1972]
    Parker v. Flook [437 U.S. 584, 1978]
    Diamond v. Chakrabarty [447 U.S. 303, 1980]
    In re Grams [888 F.3d 835, 1989]
    In re Alappat [33 F.3d 1526, 1994]
    Bilski v. Kappos [561 U.S. 593, 2010]
    Research Corp v. Microsoft [627 F.3d 859, 2010]
    In re Comiskey [499 F.3d 1365, 2007]

Decisions That Cite It

Rules & Quotes

{1} The mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test, and the plain language of claim 3 does not require the method to be performed by a particular machine, or even a machine at all. We are not persuaded by the appellant's argument that the claimed method is tied to a particular machine because it "would not be necessary or possible without the Internet." Appellant's Br. 42. Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method. Moreover, while claim 3 describes a method of analyzing data regarding Internet credit card transactions, nothing in claim 3 requires an infringer to use the Internet to obtain that data (as opposed to obtaining the data from a pre-compiled database). The Internet is merely described as the source of the data. We have held that mere "[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory." In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).

[JUDICIAL ERROR - MENTAL] {2} Thus, claim 3's steps can all be performed in the human mind. Such a method that, can be performed by human thought alone is merely an abstract idea and is not patent-eligible under ยง 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing nonmental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the "basic tools of scientific and technological work" that are free to all men and reserved exclusively to none. Benson, 409 U.S. at 67. ... In contrast, it is clear in the present case that one could mentally perform the fraud detection method that underlies both claims 2 and 3 of the '154 patent, as the method consists of only the general approach of obtaining information about credit card transactions utilizing an Internet address and then using that information in some undefined manner to determine if the credit card transaction is valid. Because claims 2 and 3 attempt to capture unpatentable mental processes (i.e., abstract ideas), they are invalid under Section 101.

[JUDICIAL ERROR - MENTAL] {3} But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. ... As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine "must impose meaningful limits on the claim's scope." 545 F.3d at 961. In other words, the machine "must play a significant part in permitting the claimed method to be performed." SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).

[JUDICIAL ERROR - MENTAL] Having rejected the "mental steps" doctrine in 1969 with its In re Prater II decision, 42 years later, the Federal Circuit, with no citation to intervening Supreme Court holdings or Congressional intent, restores the mental steps doctrine. Indeed, the USPTO's MPEP current guidance on mental steps also refers to no specific caselaw establishing such a doctrine (because such does not exist), but rather alludes to the Haliburton to Yuan cases that the Federal Circuit rejected in In re Prater II. Cybersource should not be a precedent for any decision on mental steps.

JSON Specification


return to top