Bancorp's patents, 5,926,792 and 7,249,037, described a system for administering and
tracking the value of separate-account life insurance policies issued pursuant
to Corporate Owned Life Insurance and Bank Owned Life Insurance plans. In
challenging these patents, Sun Life asserted that under Bilski
v. Kappos, 130 S. Ct. 3218 (U.S. 2010) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], the asserted claims were not drawn to
patent-eligible subject matter under § 101 of the Patent Act but instead, sought patent
protection for an abstract idea.
In Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can., 2011 U.S. Dist. LEXIS 14272 (E.D. Mo. Feb.
14, 2011) [enhanced version], the court initially rejected Bancorp's
argument that Bilski rejected the machine-or-transformation test for
evaluating process claims. The court concluded that the machine-or-transformation
test remained a useful tool in determining whether a claim was drawn to an
abstract idea and thus unpatentable under § 101.
Applying the machine-or-transformation test, the court refused
to tie the patents to a machine, holding that the claims neither referred to a
specific machine by reciting structural limitations that narrowed the computer
implemented method to something more specific than a general purpose computer
nor recited any specific operations performed that would structurally define
the computer. Likewise, the court held that the patents did not affect a transformation.
In so holding, the court noted that the claims did not transform the raw data
into anything other than more data and were not representations of any
physically existing objects.
Next, the court asked if the patents sought to protect an
abstract idea. In answering in the
affirmative, the court held that the asserted claims were more like those in Bilski (a method for hedging risk), Gottschalk v. Benson, 409 U.S. 63 (U.S.
1972) [enhanced version / unenhanced version] (a method for programming a
general-purpose computer to convert binary-coded decimal numerals into pure
binary numerals), and Parker v. Flook,
437 U.S. 584 (U.S. 1978) [enhanced version / unenhanced version], (a method for updating alarm limits
during catalytic conversion) than those in Diamond v. Diehr, 450 U.S. 175 (U.S. 1981) [enhanced version / unenhanced version] (a method for determining cure time in
the process of molding rubber).
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