IP Law Daily, PATENT—N.D. Ill.: Patents directed to mathematical profitability calculations were not invalid, (Mar 8, 2024)

By Kevin M. Finson

Claims related to mathematical calculations of profitability by computer were not unpatentable for being directed at an abstract idea because they claimed a specific technological improvement over the existing art.

An owner of three patents related to calculating profitability by individual customer interactions was entitled to summary judgment in its favor on the issue of whether the patents were directed to unpatentable abstract ideas, the U.S. District Court in Chicago has held. The claims were directed to specific technological improvements in the computers used to perform the calculations. However, the patent owner’s claim for induced infringement against defendant Terada based on its customers’ alleged direct infringement was dismissed (Berkeley*IEOR v. Teradata Operations, Inc., March 7, 2024, Kocoras, C.).

Berkeley*IEOR (Berkeley) was the owner of U.S. Patents Nos. 7,596,521 (the ’521 patent), 7,882,137 (the ’137 patent), and 8,612,316 (the ’316 patent), each of which claimed a method of accurately measuring profits at the level of individual customer interactions using a computer. Berkeley brought suit for infringement against Teradata Operations, Inc. (Teradata) and several of Teradata’s customers, alleging that the customers had infringed by using the Teradata Value Analyzer product and Teradata had induced infringement by selling the product. The court severed and stayed the counts against the customers while the trial against Teradata proceeded. Berkeley moved for summary judgment that the asserted claims were directed to patent-eligible subject matter under 35 U.S.C. §101. Teradata moved for summary judgment that the asserted claims were invalid for being directed to patent-ineligible subject matter, and also moved for judgment in its favor on indirect infringement.

Unpatentable subject matter. The court noted that it had previously held, in a ruling on a motion to dismiss, that the asserted patents were directed to the abstract idea of preparing, organizing, and applying mathematical calculations to existing information. At the summary judgment stage, no new information was presented to change that analysis. Rather, the parties disputed whether an inventive concept existed under the second step of the Alice test.

The court found that Berkeley had, with uncontroverted expert testimony, shown that there was no genuine dispute of material fact that the asserted claims improved on existing technological systems by placing conventional pieces in an unconventional order, allowing calculations to be performed in parallel instead of sequentially. This specifically claimed technological improvement constituted an inventive concept which saved the patentability of the asserted claims.

Induced infringement. Teradata argued that Berkeley had presented no evidence to support the direct infringement by its customers or that it possessed the requisite knowledge of the direct infringement claims as required to establish a claim for induced infringement. The court agreed. Berkeley did not bring forward any evidence to create a dispute of fact as to whether Teradata had knowledge that its customers directly infringed or that Teradata had knowledge that the uses by its customers were infringing.

The court granted summary judgment in favor of Berkeley on the validity issue and in favor of Teradata on the indirect infringement issue.

The Case is No. 1:17-cv-07472.

Attorneys: Kenneth R. Adamo (Law Office of KRAdamo) for Berkeley*IEOR d/b/a B*IEOR. Kalpesh K. Shah (Benesch, Friedlander, Coplan & Aronoff LLP) for W.W. Grainger Inc., Teradata Operations, Inc., DHL Express [USA], Danzas Corp. d/b/a DHL Global Forwarding, and Air Express International USA, Inc. d/b/a DHL Global Forwarding.

Companies: Berkeley*IEOR d/b/a B*IEOR; W.W. Grainger Inc.; DHL Express [USA]; Danzas Corp. d/b/a DHL Global Forwarding; Air Express International USA, Inc. d/b/a DHL Global Forwarding

Cases: Patent TechnologyInternet IllinoisNews