September 10, 2019

Federal Circuit: Commercial Success is Not Relevant to Alice Analysis

Holland & Knight Section 101 Blog
Anthony J. Fuga

The Patent Trial and Appeal Board (PTAB) rejected all pending claims of Mr. Greenstein’s patent application, which was directed to adjusting the amount a person saves and choosing investments with the goal of saving enough for retirement.

The Federal Circuit found that the representative claim recited (1) receiving investment data, (2) adjusting an individual’s savings, and (3) investing the adjusted savings to achieve a projected retirement income. "This describes no more than the automation of the longstanding fundamental economic concept of personal financial planning," something which the Federal Circuit has routinely held to be an abstract idea.

At Alice step two, the Court found that the claims merely recite the abstract idea with instructions to implement it "using one or more computers with associated software."

Mr. Greenstein contended that the successful commercial launch of the product demonstrated that the patent claims contained an inventive concept. The Federal Circuit disagreed. "Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a commercially successful product, this is insufficient to transform the claims into a patent-eligible application."

As the Court often reminds us, a claim for a new abstract idea is still an abstract idea.

The representative claim reads:

1. One or more computers with associated software programmed to:

receive, at a processor and store using one or more storage devices employing memory, data corresponding to invested amounts and using one or more computers with associated software including algorithms and employing such software and algorithms to:

utilize a projected amount of income at a future date for at least one person;

automatically adjust the amount such person saves incorporating the projected income amount so that achieving such projected income amount is more likely; and invest the saved amounts saved in one or more investment vehicles.

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