CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
AEON law logo on grey background

Bilski’s “blank slate” is bad news for Every Penny Counts

District court holds that the claimed system is not patentable subject matter

Over at the 271 Patent Blog, Peter Zura summarizes Every Penny Counts, Inc. v. Bank of America Corp., 2-07-cv-00042 (M.D. Fla. May 27, 2009, Order) (Magnuson, J.). In this case, the district court holds that, under Bilski, the claimed system is not patentable subject matter under § 101.

In Every Penny Counts, the district court uses Bilski as Judge Newman predicted in her Bilski dissent: “each trial court… will have a blank slate on which to uphold or invalidate claims based on whether there are sufficient ‘meaningful limits'” imposed on the claim by the use of a particular machine.

In Every Penny Counts, the district court analogizes the claimed system to that of Gottschalk v. Benson, 409 U.S. 63, 64-66 (1972), in which a method of programming a digital computer to convert signals from binary-coded decimal to pure binary form was found to be unpatentable. In Gottschalk, the Supreme Court reasoned that because converting binary-coded decimal to pure binary form had no use outside a computer, allowing the patent to stand would “wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.”

In Every Penny Counts, the district court quotes Gottschalk, stating, in a conclusory manner, that the system at issue “‘has no substantial practical application except in connection with’ computers, cash registers, and networks….”

However, this reasoning misses the mark because unlike Gottschalk‘s binary conversion algorithm, many of the claimed elements could certainly have practical application outside a computer. For example, a computer is not practically required to “determin[e] an excess payment on the basis of the determinant established by the payor,” nor is a computer practically required to “apportion[] at least a part of the excess payment amount said accounts on the basis of the excess determined.”

On this point, at least, Gottschalk seems distinguishable. In Gottschalk, the Supreme Court implicitly recognized that entities other than digital computers by and large have little need to engage in a binary decimal conversion process. For example, few of us humans routinely deal with raw binary representations of numbers or other data. However, human beings do routinely perform such accounting tasks as those performed by the claimed computing means in Every Penny Counts. Thus, unlike the claims at issue in Gottschalk, the claims at issue here would arguably not be in practical effect a patent of the algorithm itself.

Admittedly, in a credit card system as large as Bank of America’s, it may not be cost-effective to have a human perform the claimed elements. Accordingly, the claims at issue may indeed cover most commercially feasible implementations of a process, but that still seems to be a far cry from Gottschalk, in which the claims would have completely preempted a mathematical formula.

In the end, maybe the district court reached the right outcome, and maybe it did not. However, the claims at issue seem distinguishable from those of Gottschalk, and if the district court had not employed this faulty analogy, it is not clear that it could have reached the same outcome.

Related Articles

Tennessee Passes Law Against AI Voice Copies

The state of Tennessee has passed a law against the use of artificial intelligence (AI) to copy a person’s voice. The law, signed on March ...
Read More

Bill Proposes IP Protection for Golf Courses

Congressmen Brian Fitzpatrick (R-PA) and Jimmy Panetta (D-CA) have introduced the Bolstering Intellectual Rights against Digital Infringement Enhancement (a.k.a. the BIRDIE Act), which proposes amending ...
Read More

Patent and Trademark Offices Publish Study on NFT IP Issues

The US Patent and Trademark Office (USPTO) and the Copyright Office have published the results of their joint study on non-fungible tokens (NFTs) and intellectual property (IP). ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.



Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices



Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games



Chemical Compounds

Digital Health

Healthcare Products



Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design