In an opinion entered by The Honorable Sue L. Robinson on February 26, 2010 in Accenture Global Services GMBH v. Guidewire Software Inc., Civil Action No. 07-826-SLR, the Court denied without prejudice defendant Guidewire Software Inc.’s motion for partial summary judgment asserting the invalidity of U.S. Patent Nos. 7,013,284 ("the ‘284 patent") and 7,017,111 ("the ‘111 patent") claiming unpatentable subject matter and ordered that it be re-filed after the U.S. Supreme Court issues its ruling in Bilski v. Doll, 129 S. Ct. 2735 (U.S. 2009).
In their complaint, plaintiffs assert that Guidewire infringes the ‘284 patent and ‘111 patent. The patents at issue describe a computer program for developing component-based software capable of performing tasks relating to insurance transactions such as claim processing. Guidewire’s motion for partial summary judgment of the invalidity of the ‘284 and ‘111 patents for claiming unpatentable subject matter is based on the machine-or-transformation test ("MORT test") set forth by the Federal Circuit in In Re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).
The Bilski court explained that "a process is ‘surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." Id. at 954. However, in its opinion, the District of Delaware noted that the "Bilski court did not provide guidance as to the machine prong of the MORT test, stating that it would ‘leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.’"
The District Court also noted that it believes "the claims of plaintiffs’ patents would not meet the ‘transformation’ prong of the MORT test, but raise substantial questions under the ‘machine’ prong." The Court further noted that, while the plaintiffs’ patents recite some machine connection, it is unclear whether the degree of connectivity meaningfully limits the claimed scope. Thus, given the fact that the U.S. Supreme Court may illuminate or alter the framework of the determination under the MORT test, the Court found it prudent to defer the subject matter inquiry under 35 U.S.C. § 101 until a decision is issued in Bilksi v. Doll.