State Street Bank & Trust Co. v. Signature Financial Group, Inc.

State Street Bank & Trust Co. v. Signature Financial Group, Inc.
149 F.3d 1368 (Fed. Cir. 1998)

Overview: This case involves the patentability of business methods.

Procedural History and Facts:
• On March 9, 1993, Signature Financial Group, Inc. was granted a patent – “Data Processing System for Hub and Spoke Financial Services Configuration.”
• The “spokes” were mutual funds that pool their assets into a central location.
• The invention claimed in the patent constituted protectable subject matter was affirmed by the Federal Circuit in July 1998. However,
For a period of time, this case established the precedent that a claimed invention could be patentable if it “produces a useful, concrete and tangible result.” However, according to a more recent, March 2009 case, In re Bilski, the patentability test (referenced above) is no longer used under any U.S. patent law. So, in effect, the outcome and holding of State Street Bank is invalid (although this case was not explicitly overruled in its entirety).

Reasoning: As the Federal Circuit held in In re Bilski,
• the “useful, concrete and tangible result test is insufficient to determine whether a claim is patent-eligible under § 101,” Bilski, 545 F.3d at 959, and “is inadequate,” id. at 960 (reaffirming that “the machine-or-transformation test outlined by the Supreme Court is the proper test to apply” and that “those portions of our opinions in State Street, relying on a ‘useful, concrete and tangible result’ analysis should no longer be relied on.”

Holding: the “useful, concrete and tangible test” should no longer be used to analyze cases in which individuals wish to patent a business method.

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