Federal Circuit Summary

Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of Texas.

Summary: Where remand of post-reexamination claims that issued during the pendency of an appeal would be futile, the Federal Circuit may address the claims as they emerge from reexamination.

SAP America, Inc. filed a declaratory judgment action and moved for judgment on the pleadings seeking to invalidate the claims of InvestPic’s patent under 35 U.S.C. § 101. The district court granted the motion and InvestPic appealed. The Federal Circuit affirmed the district court’s decision, finding that the claims directed toward “statistical analyses of investment information” are patent ineligible subject matter. InvestPic filed a petition for rehearing based on the post-reexamination issuance of new and amended claims while the appeal was pending.

The Federal Circuit found that the validity issues relating to the original claims were not moot because some claims remained unchanged in scope and because pre-change damages may be available. Concluding that any remand for further consideration of the post-reexamination claims would be futile, the Federal Circuit reissued and modified its opinion to address the post-reexamination claims. The Federal Circuit found that the post-reexamination claims did not change the finding of invalidity because they merely added details to the abstract ideas in the claims while adding nothing to the non-abstract elements of the claims (conventional computer and display devices). Accordingly, the Federal Circuit maintained its affirmance of the district court’s judgment.

This case is: SAP AMERICA, INC. v. INVESTPIC, LLC

Editor: Paul Stewart

Written by: Lindsay Laddaran and Karen M. Cassidy