The Federal Circuit Court of Appeals affirmed a district court’s decision that claims for a software system managing pre-employment background investigations were not eligible for a patent. Miller Mendel, Inc. owns the patent in question and sued the City of Anna, Texas for infringement. The district court ruled in favor of the City, stating that certain claims of the patent were not eligible under Section 101. Mendel appealed the decision, arguing that the court erred in considering outside materials in its analysis. However, the CAFC found that any errors made were harmless and upheld the decision.
The CAFC determined that the invention in question was directed towards the abstract idea of performing a background check. Despite arguments from Mendel that certain limitations in the claims could not be done without a computer, the court found that the use of a computer alone did not make the invention patentable. Additionally, the court found that there was no inventive concept shown in the claims, as the tasks described were routine prior to the invention.
In a cross-appeal, the CAFC confirmed that the district court only had jurisdiction over the specific claims that Mendel had narrowed down in its response. The court also rejected the City’s argument that the case should be considered exceptional and that attorneys’ fees should be granted. The CAFC found that the district court acted within its discretion in its decision.
Overall, the CAFC’s decision affirms that the claims for the software system managing pre-employment background investigations are not eligible for a patent. The court found that the invention was directed towards an abstract idea and did not show an inventive concept. The decision highlights the importance of ensuring that patent claims are not routine tasks and demonstrate a specific improvement to computer functionality to be considered eligible for a patent.
