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Paine Webber v. Merrill Lynch (564 F.Supp. 1358, 1983 Jun 21)

Decision Parameters

Decisions It Cites

    Hotel Security Checking Co. v. Lorraine Co. [160 F 467, 1908]
    Gottschalk v. Benson [409 U.S. 63, 1972]

Decisions That Cite It

Rules & Quotes

[ALGORITHM] {1} It therefore concluded that the Supreme Court’s use of the term algorithm in Benson was not limited to those algorithms expressing pure mathematical formula, but rather included expressions in natural language and that the absence of mathematical notation or activity in the claims did not significantly distinguish those claims from the subject matter in Benson.

[ALGORITHM] Accordingly, under Toma, Phillips, and Pardo, the CCPA has held that the Supreme Court in Benson used the term "algorithm" in a specific sense, “a procedure for solving a given type of mathematical problem.” 409 U.S. at 65, 175 USPQ at 674. Using this definition, this Court has carefully examined the claims in this case and is unable to find any direct or indirect recitation of a procedure for solving a mathematical problem. Rather, the patent allegedly claims a methodology to effectuate a highly efficient business system and does not restate a mathematical formula as defined by Benson. Nor are any of the recited steps in the claims mere procedure for solving mathematical problems. Accordingly, the claims do not recite or preempt an algorithm.

[BUSINESS] {3} The product of the claims of the ‘442 patent effectuates a highly useful business method and would be unpatentable if done by hand. The CCPA, however, has made clear that if no Benson algorithm exists, the product of a computer program is irrelevant, and the focus of analysis should be on the operation of the program on the computer. The Court finds that the ‘442 patent claims statutory subject matter because the claims allegedly teach a method of operation on a computer to effectuate a business activity. Accordingly, the ‘442 patent passes the threshold requirement of Section 101.

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