State Street Bank v. Signature Financial Group
| State Street Bank & Trust Co. v. Signature Financial Group, Inc. | |
|---|---|
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| Court | United States Court of Appeals for the Federal Circuit |
| Full case name | STATE STREET BANK & TRUST CO., Plaintiff-Appellee, v. SIGNATURE FINANCIAL GROUP, INC., Defendant-Appellant |
| Decided | July 23 1998 |
| Citation(s) | 149 F.3d 1368 |
| Case history | |
| Prior action(s) | Finding for plaintiff, 927 F. Supp. 502, 38 USPQ2d 1530 (D. Mass. 1996) (finding U.S. Patent No. 5,193,056 invalid for lack of statutory subject matter) |
| Holding | |
| A claim is eligible for protection by a patent in the United States if it involved some practical application and it produces a useful, concrete and tangible result. | |
| Court membership | |
| Judge(s) sitting | Circuit Judges Rich, Plager and Bryson |
| Case opinions | |
| Majority | Rich |
| Laws applied | |
| 35 U.S.C. § 101 | |
State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), also referred to as State Street or State Street Bank, was a 1998 decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. State Street for a time established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some practical application and, in the words of the State Street opinion, "it produces a useful, concrete and tangible result."
With the 2008 Federal Circuit decision In re Bilski, however, the useful-concrete-tangible test was jettisoned. According to the Federal Circuit's Bilski opinion, the "'useful, concrete and tangible result inquiry' is inadequate," and the portions of the State Street decision relying on this inquiry are no longer of any effect under US patent law. The Supreme Court affirmed the judgment of the Federal Circuit in Bilski v. Kappos.
On March 9, 1993, Signature Financial Group, Inc. was granted U.S. Patent 5,193,056 entitled "Data Processing System for Hub and Spoke Financial Services Configuration". The "spokes" were mutual funds that pool their assets in a central "hub". When this is done in connection with certain daily accounting procedures in accordance with Internal Revenue Service (IRS) regulations, the profits are passed through to the shareholders for tax purposes, without being first subject to corporate income tax, as they otherwise would be. The procedures are so complex that they could not be performed, in the time interval IRS regulations allow, without using a programmed digital computer.
It has been pointed out that the patent claim comprises means for performing steps that are the requirements specified in an Internal Revenue Service regulation for avoiding taxes on a partnership. This chart illustrates how the wording of the patent claim corresponds to the US tax statute and regulations. The patent is thus, in effect, one on compliance with US tax law.
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