Accenture Global Services v. Guidewire Software, Inc. , 728 F.3d 1336 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
ACCENTURE GLOBAL SERVICES, GMBH AND
ACCENTURE LLP,
Plaintiffs-Appellants,
v.
GUIDEWIRE SOFTWARE, INC.,
Defendant-Appellee.
______________________
2011-1486
______________________
Appeal from the United States District Court for the
District of Delaware in No. 07-CV-0826, Judge Sue L.
Robinson.
______________________
Decided: September 5, 2013
______________________
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 Francis-
co, California, argued for defendant-appellee. With him
on the brief was DARALYN J. DURIE.
______________________
Before RADER, Chief Judge, LOURIE and REYNA, Cir-
cuit Judges.
2 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
Opinion for the court filed by Circuit Judge LOURIE.
Dissenting opinion filed by Chief Judge RADER.
LOURIE, Circuit Judge.
Accenture Global Services, GmbH and Accenture,
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 per-
formed in an insurance organization, but did not appeal
the similar method claims 8–22. As described more fully
below, we affirm the district court’s judgment and hold
that the system claims before us recite patent-ineligible
subject matter.
BACKGROUND
I. The ’284 Patent
The ’284 patent describes “[a] computer program . . .
for handling insurance-related tasks.” ’284 patent col. 3
ll. 23–25. The patent discloses various software compo-
nents of the program, including a “data component 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 compo-
nent 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 program 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 components utilize and how
those components interact. The patent contains two
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 3
independent claims, both of which require generating and
organizing insurance-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 data-
base. Upon the occurrence of an event, the system deter-
mines 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 insurance transaction
database, a task library database, a client component for
accessing the insurance transaction database, and a
server component that interacts with the software compo-
nents 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 com-
prising:
an insurance transaction database for storing in-
formation related to an insurance transaction,
the insurance transaction database compris-
ing a claim folder containing the information
related to the insurance transaction decom-
posed into a plurality of levels from the group
comprising a policy level, a claim level, a par-
ticipant level and a line level, wherein the
plurality of levels reflects a policy, the infor-
mation related to the insurance transaction,
claimants and an insured person in a struc-
tured format;
a task library database for storing rules for de-
termining tasks to be completed upon an oc-
currence of an event;
4 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
a client component in communication with the in-
surance transaction database configured for
providing information relating to the insur-
ance transaction, said client component ena-
bling access by an assigned claim handler to a
plurality of tasks that achieve an insurance
related goal upon completion; and
a server component in communication with the
client component, the transaction database
and the task library database, the server com-
ponent including 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
information, and sends an event trigger to the
task engine; wherein in response to the event
trigger, the task engine identifies rules in the
task library database associated with the
event and applies the information to the iden-
tified rules to determine the tasks to be com-
pleted, and populates on a task assistant the
determined tasks to be completed, wherein the
task assistant transmits the determined tasks
to the client component.
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 authorized 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:
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 5
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
determine a task to be completed, wherein an
event processor interacts with an insurance
transaction database containing information
related to an insurance transaction decom-
posed into a plurality of levels from the group
comprising a policy level, a claim level, a par-
ticipant level and a line level, wherein the
plurality of levels reflects a policy, the infor-
mation related to the insurance transaction,
claimants and an insured person in a struc-
tured format;
transmitting the determined task to a task assis-
tant 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 infor-
mation related to the insurance transaction in
accordance with the determined task;
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 “generat-
ing 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
6 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
claim level, a participant level, and a line level. Further,
both the system and the method claims require a client
component for allowing 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 Software, Inc., 691 F. Supp. 2d
577, 579 (D. Del. 2010). Guidewire asserted multiple
affirmative defenses including that the patent 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 decision
in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)
aff’d on other grounds sub nom. Bilski v. Kappos, 560 U.S.
___, 130 S. Ct. 3218 (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.
Guidewire Software, Inc., No. 07-826-SLR (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 abstract ideas. Accenture, 800 F.
Supp. 2d at 621–22.
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 7
The district court held that the ’284 patent was “di-
rected 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
(1978)). Specifically, the court held that method claim 8 is
patent-ineligible because none of the claim limitations
restrict claim 8 to a concrete application of the abstract
idea, and that the dependent method claims only add
“limitations regarding potential claim information catego-
ries.” 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 Accenture appealed the judgment
as to all system claims 1–7, the briefing and argument
from both parties focused only on system claim 1 and
method claim 8, lending support to the conclusion that the
eligibility of dependent claims 2–7 depends on the eligibil-
ity of claim 1.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Related System and Method Claims
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-
8 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
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 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 issues. Ultramercial, Inc. v.
Hulu, LLC, No. 2010-1544, 2013 WL 3111303, at *3 (Fed.
Cir. June 21, 2013).
We recently evaluated 35 U.S.C. § 101 and its applica-
tion 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, de-
rived from the Supreme Court’s decision in Mayo Collabo-
rative Servs. v. Prometheus Labs., Inc., ___ U.S. ___, 132
S. Ct. 1289 (2012), for analyzing patent eligibility under
§ 101. First, the court must identify “whether the claimed
invention fits within one of the four statutory 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).
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, 2013
WL 3111303, at *18 (Lourie, J., concurring) (same). 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.” 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).
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 9
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 majori-
ty, 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 differ-
ences in terminology . . . the asserted method and system
claims require performance of the same basic process.
Although the system claim associates certain computer
components with some of the method steps, none of the
recited hardware offers a meaningful limitation beyond
generally linking ‘the use of the [method] to a particular
technological environment,’ that is, implementation via
computers.” (quoting Bilski, 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 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 drafts-
man.”). That is the case here.
The district court in this case held that the method
claims of the ’284 patent are invalid under § 101. Accen-
ture, 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. Lock-
former Co., 166 F.3d 1379, 1387 (Fed. Cir. 1999) (“An
issue that falls within the scope of the judgment appealed
from but is not raised by the appellant in its opening brief
on appeal is necessarily waived.”); see also Miss. Chem.
10 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
Corp. v. Swift Agr. Chems., 717 F.2d 1374, 1376–77 (Fed.
Cir. 1983).
We conclude that the district court’s decision on pa-
tent-ineligibility of the system claims must also be af-
firmed, 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. Although
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 sub-
stantive 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 patent-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.’” Id. (quoting Bilski, 130 S. Ct. at 3230).
It is not disputed by the parties that the ’284 patent’s
system claim 1 includes virtually the same limitations
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 insur-
ance 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
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 11
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 imple-
mented on a system for performing the method.
Accenture only points to system claim 1’s inclusion of
an insurance claim folder, a task library database, a
server component, and a task engine in attempting to
show that the system claim is meaningfully 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. Compare id. col.
107 ll. 1–4 with id. col. 108 ll. 17–22. According to the
specification, the task engine “follows a process of evalu-
ating events, determining claim characteristics, and
matching the claim’s characteristics to tasks defined in
the Task Library.” Id. col. 107 ll. 1–4. Method claim 8,
likewise, includes an event processor, “determin[es]
characteristics,” and “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 “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 transac-
tion database. ’284 patent col. 107 ll. 29–31 (“the insur-
ance transaction database comprising a claim folder
containing the information related to the insurance
transaction”). The claim folder “manages claim infor-
12 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
mation . . . 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 claim-
ants, and the claimant’s lines.” Id. col. 83 ll. 117–19, col.
84 ll. 34–36. These levels are already present in the
method claim’s insurance transaction 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 struc-
tured environment 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 (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. However,
in method claim 8, the information relating to the insur-
ance transaction is applied to “rules to determine 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 apparently a database of
the rules described as the Task Library, id. col. 107 ll. 5–
13, so that the only information relating to that compo-
nent is provided by system claim 1 and its related de-
pendent claims. Nevertheless, the task library database
is simply a formalized collection of the rules that are
present and applied to the insurance transaction infor-
mation 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] com-
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 13
puter program . . . for developing component based soft-
ware capable of handling insurance-related tasks.” Id.col. 3 ll. 23–25. The patent then discloses detailed soft-
ware descriptions of the various software components
without differentiating between the system 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, Communica-
tion Adapter, Display Adapter, and a User Interface
Adapter). The patent calls Figure 1 a “representative
hardware environment,” id. col. 1 l. 13, while also ac-
knowledging that the hardware represented in Figure 1
“illustrates a typical hardware configuration of a work-
station,” 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 differenti-
ates it from method claim 8. Indeed, in this case “[t]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 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 meaning-
fully distinguish the abstract idea over the patent ineligi-
ble method claim. While it is not always true that related
system claims are patent-ineligible because similar meth-
od 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
14 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
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
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 Bil-
ski opinion, found that all claims of the ’284 patent were
invalid under 35 U.S.C. § 101. The court determined that
the abstract idea of the patent was drawn to “concepts for
organizing data rather than to specific devices or sys-
tems.” 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 621 (citing Bilski, 130 S. Ct. at 3231; Parker,
437 U.S. at 589–90). In this regard, the district court’s
analysis was similar to the abstractness analysis articu-
lated in the plurality opinion of CLS Bank.
Accenture argues that system claim 1 remains patent-
eligible even after our decision in CLS Bank. It contends
that the claim is patent-eligible because the ’284 patent
implements the general idea of generating tasks for
insurance claim processing, but narrows it through its
recitation of a combination of computer components
including an insurance transaction database, a task
library database, a client component, and a server compo-
nent, which includes an event processor, a task engine,
and a task assistant. Accenture further argues that the
complexity and detail of the specification demonstrate
that the patent is an advance in computer software and
not simply a claim to an abstract idea. Additionally,
Accenture points to our recently-issued decision in Ultra-
mercial as support for the patent-eligibility of system
claim 1.
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 15
Guidewire responds that system claim 1 sets forth the
same steps and recites all the same elements as method
claim 8 and requires no specific hardware or any particu-
lar algorithm. With regard to Ultramercial, Guidewire
distinguishes that case based on its procedural posture
and the fact that the district court in Ultramercial did not
have the benefit of claim construction or discovery.
The abstract idea at the heart of system claim 1 of the
’284 patent is “generating tasks [based on] rules . . . to be
completed upon the occurrence of an event.” ’284 patent
col. 107 ll. 25, 38–39. Although not as broad as the dis-
trict court’s abstract idea of organizing data, it is nonethe-
less an abstract concept. Having identified the abstract
idea of the claim, we proceed with a preemption analysis
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.” 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); see also Ultramercial, 2013 WL
3111303, at *8 (“[T]he relevant inquiry is whether a
claim, as a whole, includes meaningful limitations re-
stricting it to an application, rather than merely an
abstract idea.” (citing Prometheus, 132 S. Ct. at 1297)).
Accenture attempts to limit the abstract idea of claim
1 by applying it in a computer environment and within
the insurance industry. However, those types of limita-
tions do not “narrow, confine, or otherwise tie down the
claim.” As we have recently held, 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. See Bancorp,
687 F.3d at 1280. Further, as the Supreme Court stated
in Bilski, limiting the application of an abstract idea to
one field of use does not necessarily guard against
preempting all uses of the abstract idea. Bilski, 130 S. Ct.
at 3231 (finding that limiting abstract concept of hedging
risk to the commodities and energy markets did not make
16 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
claim patent-eligible); see also Diehr, 450 U.S. at 191(stating that the prohibition against patenting an abstract
principle “cannot be circumvented by attempting to limit
the use of the [principle] to a particular technological
environment” (citing Flook, 437 U.S. at 584)). Accenture’s
attempts to limit the abstract concept to a computer
implementation and to a specific industry thus do not
provide additional substantive limitations to avoid
preempting the abstract idea of system claim 1.
Regarding Accenture’s argument concerning the com-
plexity of the specification, including the specification’s
detailed software implementation guidelines, the im-
portant inquiry for a § 101 analysis is to look to the claim.
“When the insignificant computer-based limitations are
set aside from those claims that contain such limitations,
the question under § 101 reduces to an analysis of what
additional features remain in the claims.” Bancorp, 687
F.3d at 1279 (citing Mayo, 132 S. Ct. at 1297). The limi-
tations of claim 1 are essentially a database of tasks, a
means to allow a client to access those tasks, and a set of
rules that are applied to that task on a given event.
Although the specification of the ’284 patent contains very
detailed software implementation guidelines, the system
claims themselves only contain generalized software
components arranged to implement an abstract concept
on a computer. The limitations of the system claims of
the ’284 patent do not provide sufficient additional fea-
tures or limit the abstract concept in a meaningful way.
In other words, the complexity of the implementing soft-
ware or the level of detail in the specification does not
transform a claim reciting only an abstract concept into a
patent-eligible system or method.
Accenture argues that our decision in Ultramercial
compels reversal of the district court’s invalidation of the
system claims. However, as previously discussed, unlike
the patent at issue in Ultramercial, Accenture’s claims do
not contain “significantly more than the underlying
abstract concept.” The claims in Ultramercial contained
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 17
additional limitations from the abstract idea of advertis-
ing as currency, such as limiting the transaction to an
Internet website, offering free access conditioned on
viewing a sponsor message, and only applying to a media
product. See Ultramercial, 2013 WL 3111303, at *15.
The ’284 patent’s system claim 1, however, is similar
to the patent-ineligible system claim from CLS Bank.
That claim contained limitations such as a data storage
unit and a general purpose computer that received trans-
actions, adjusted variables in the data storage unit, and
generated instructions. CLS Bank, 717 F.3d at 1289. The
district court’s finding of patent ineligibility for the as-
serted system claim in CLS Bank was affirmed by an
equally divided court. Id. at 1273. Similarly, in Bancorp,
we found a system claim comprising digital storage, a
policy generator, a debitor, and various calculators pa-
tent-ineligible because the limitations of that claim were
directed to no more than the abstract idea of managing a
stable value protected life insurance policy. Bancorp, 687
F.3d at 1272, 1280–81. Comparing these cases, we find
that the system claim of the ’284 patent is more akin to
the patent-ineligible claims of CLS Bank and Bancorp.
Unlike the claims at issue in Ultramercial, the system
claims in the ’284 patent contain only generalized steps of
generating a task in response to events.
Moreover, we agree with Guidewire that the proce-
dural posture of Ultramercial creates a different situation
from the case before us. In Ultramercial, we reversed the
district court’s grant of a defendant’s preanswer motion to
dismiss. Ultramercial, 2013 WL 3111303, at *2. In that
case, the court found Ultramercial’s patent ineligible
under § 101 without formally construing the claims and
with no discovery. Id. On that posture, we noted that
“the complaint and the patent must by themselves show
clear and convincing evidence that the claim is not di-
rected to an application of an abstract idea, but to a
disembodied abstract idea itself.” Id. at *14. We further
noted that the district court should have either construed
18 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
the claims in the light most favorable to the patentee or
required the defendant to establish subject matter ineligi-
bility by clear and convincing evidence. Id. Accenture
does not point to any error in claim construction or to a
fact issue that requires additional discovery. In this case,
the court conducted formal discovery, construed the
claims, and ruled on a motion for summary judgment.
Although we determined that formal claim construction
was not needed to evaluate the patent in Ultramercial,
the procedural posture before us presents a different
scenario than what we encountered in Ultramercial.
In sum, the system claims of the ’284 patent are pa-
tent-ineligible both because Accenture was unable to
point to any substantial limitations that separate them
from the similar, patent-ineligible method claim and
because, under the two-part test of CLS Bank, the system
claim does not, on its own, provide substantial limitations
to the claim’s patent-ineligible abstract idea. We thus
conclude that claims 1–7 of the ’284 patent are invalid
under 35 U.S.C. § 101. Accordingly, the decision of the
district court granting summary judgment of invalidity
under § 101 is
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
ACCENTURE GLOBAL SERVICES, GMBH AND
ACCENTURE LLP,
Plaintiffs-Appellants,
v.
GUIDEWIRE SOFTWARE, INC.,
Defendant-Appellee.
______________________
2011-1486
______________________
Appeal from the United States District Court for the
District of Delaware in No. 07-CV-0826, Judge Sue L.
Robinson.
______________________
RADER, Chief Judge, dissenting.
“[A]ny claim can be stripped down, simplified, gener-
alized, or paraphrased to remove all of its concrete limita-
tions, until at its core, something that could be
characterized as an abstract idea is revealed. A court
cannot go hunting for abstractions by ignoring the con-
crete, palpable, tangible limitations of the invention the
patentee actually claims.” Ultramercial, Inc. v. Hulu,
LLC, 2010-1544, 2013 WL 3111303, at *8 (Fed. Cir. June
21, 2013). In my judgment, the court has done precisely
that. Therefore, I respectfully dissent.
2 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
I.
As an initial matter, the court relies significantly on
the framework proposed by the plurality opinion in CLS
Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013)
(en banc). However, no part of CLS Bank, including the
plurality opinion, carries the weight of precedent. The
court’s focus should be on Supreme Court precedent and
precedent from this court.
I also disagree that Accenture’s failure to appeal the
invalidation of the method claims estops it from arguing
that the elements contained therein (and shared by the
systems claims) are directed to patent-eligible subject
matter. Majority Op. at 10 (“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 patent-
ineligible.”). No precedent from the Supreme Court or
this court supports this proposition. Moreover, the court
creates a very unsound policy by requiring litigants to
appeal the invalidity of every claim or else risk the poten-
tial for estoppel or waiver of other claims. In simple
words, Accenture’s willingness to narrow issues should
not create an admission that defeats its appealed claims.
The court today sends a signal that cautious litigants
must appeal everything to avoid losing important claims.
The court weakly reasons that “[a]lthough 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 limita-
tions will generally rise and fall together.” Majority Op.
at 9. However, five of the judges who held that the meth-
od claims and system claims rise or fall together stated:
To be clear, the fact that one or more related
method claims has failed under § 101, as here,
does not dictate that all associated system claims
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 3
or even all associated method claims must suffer
the same fate. . . . [A] system claim that builds on
the same abstract idea as a patent-ineligible
method may well incorporate sufficient additional
limitations, computer-based or otherwise, to
transform that idea into a patent-eligible applica-
tion.”
CLS Bank, 717 F.3d at 1291 n. 4 (opinion of Lourie, J.).
Two other judges held that the claims in CLS Bank rise or
fall together simply due to the record to which the court
was bound, “not because, as [the plurality] opinion con-
cludes, they are all tainted by reference to the same
abstract concept.” Id. at 1327 (opinion of Linn, J.). And
four judges specifically held that “[d]ifferent claims will
have different limitations; each must be considered as
actually written.” Id. at 1298 (opinion of Rader, C.J.).
This latter view was recently affirmed by the court: “the
question of eligible subject matter must be determined on
a claim-by-claim basis.” Ultramercial, 2013 WL 3111303,
at *4. In sum, the court actually follows a procedure
rejected almost unanimously by this court.
II.
On the merits, I would hold that the claimed systems
present patent-eligible subject matter. The claims require
a specific combination of computer components, including
an insurance transaction database, a task library data-
base, a client component, and a server component that
includes an event processor, task engine, and task assis-
tant. Transaction information is stored in an electronic
“claim folder” organized into a plurality of different levels.
The event processor is triggered upon the occurrence of
certain events, which in turn, triggers the task engine and
the task assistant to perform certain functions. The
claims also require the server component to be in commu-
nication with the client component, the insurance trans-
action database, and the task library database.
4 ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC.
The court strips away these limitations and concludes
that “the abstract idea at the heart of system claim 1 is
generating tasks based on rules to be completed upon the
occurrence of an event.” Majority Op. at 15. “[A]ll inven-
tions at some level embody . . . [an] abstract idea,” and
dissecting from a claim all of its concrete limitations is
one step closer towards “eviscerat[ing] patent law.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1293 (2012). The claims offer “significantly more”
than the purported abstract idea, id. at 1298, and mean-
ingfully limit the claims’ scope.
Indeed, someone can “generate tasks based on rules to
be completed upon the occurrence of an event” in a num-
ber of ways without infringing the claims. See CLS Bank,
717 F.3d at 1277 (opinion of Lourie, J.) (“[T]he Supreme
Court’s foundational § 101 jurisprudence . . . turns pri-
marily on the practical likelihood of a claim preempting a
fundamental concept.”); id. at 1300 (opinion of Rader,
C.J.) (“Pre-emption is only a subject matter eligibility
problem when a claim preempts all practical uses of an
abstract idea.”). For example, one could use a single
database rather than the recited multiple databases; one
could utilize an electronic claim folder decomposed into a
different plurality of levels or into non-insurance related
levels (i.e., levels other than a policy level, claim level,
participant level, and line level); and one could use some-
thing other than a client-server architecture. Moreover,
because the claims require specific computer components,
a human performing the claimed steps through a combi-
nation of physical or mental steps likewise does not
infringe. In sum, this system does not preempt anything
beyond the specific claims, let alone a broad and unde-
fined concept.
III.
In conclusion, I note that prior to granting en banc re-
view in CLS Bank, this court commented: “no one under-
stands what makes an idea abstract.” CLS Bank Int’l v.
Alice Corp., 685 F.3d 1341, 1349 (Fed. Cir. 2012), opinion
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. 5
vacated, 484 F. App’x 559 (Fed. Cir. 2012) (internal quota-
tions marks omitted). After CLS Bank, nothing has
changed. “Our opinions spend page after page revisiting
our cases and those of the Supreme Court, and still we
continue to disagree vigorously over what is or is not
patentable subject matter.” MySpace, Inc. v. GraphOn
Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012); see generally
CLS Bank. Indeed, deciding what makes an idea “ab-
stract” is “reminiscent of the oenologists trying to describe
a new wine.” MySpace, 672 F.3d at 1259.
I take this opportunity to reiterate my view that “the
remedy is the same: consult the statute!” CLS Bank, 717
F.3d at 1335 (additional reflections of Rader, C.J.). The
statute offers broad categories of patent-eligible subject
matter. The “ineligible” subject matter in these system
claims is a further testament to the perversity of a stand-
ard without rules—the result of abandoning the statute.
I respectfully dissent.