A recent decision by the US Court of Appeals for the Federal Circuit provides new insight into whether Beauregard patent claims are statutory subject matter under 35 USC § 101. A Beauregard claim is directed to a computer-readable medium (e.g., a disk, hard drive, or other data storage device) containing program instructions for causing a computer to perform a particular process. Until recently, Beauregard claims were generally considered patentable subject matter under 35 USC § 101 because an article of manufacture (e.g., the computer-readable medium) was explicitly recited in the claim.

However, in CyberSource Corp. v. Retail Decisions Inc., No. 2009-1358 (Aug. 16, 2011), the Federal Circuit invalidated a Beauregard claim in a patent owned by CyberSource Corp. for failing to recite-patent-eligible subject matter under 35 USC § 101. Instead of looking at the Beauregard claim as being directed to an article of manufacture (such as a computer-readable medium), the court focused on the underlying invention recited in the Beauregard claim. The court found the underlying invention to be a method for detecting credit card fraud and held that the method was unpatentable subject matter under 35 USC § 101 as being drawn to a mental process that can be performed entirely in the human mind.

The Beauregard claim in CyberSource recited a computer readable medium containing program instructions for detecting fraud in online credit card transactions where execution of the program instructions by one or more processors of a computer system caused the processors to carry out the steps of detecting fraud in online credit card transactions.

The Federal Circuit stated that the machine (in this case, the claimed “one or more processors of a computer system”) “must impose meaningful limits on the claim’s scope,” or otherwise stated, the machine “must play a significant part in permitting the claimed method to be performed.” The court found that the “incidental use of a computer to perform the mental process” of an otherwise unpatentable method “does not impose a sufficiently meaningful limit on the claim’s scope.”

Therefore, in determining whether a Beauregard claim recites patentable subject matter, it appears that the courts are now focusing on the underlying process claimed and on ensuring that the underlying process is patent eligible under 35 USC § 101.

As a result, it may be prudent for companies that have pending and/or issued patents with Beauregard claims to review the claims of their patents to determine whether any further action is warranted to ensure their patents will withstand an eligibility challenge. Arent Fox will continue to monitor this area of law for further developments.