Dann v. Johnston
| Dann v. Johnston | |||||||
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| Argued December 9, 1975 Decided March 31, 1976 | |||||||
| Full case name | Dann, Commissioner of Patents and Trademarks v. Johnston | ||||||
| Citations |
96 S. Ct. 1393; 47 L. Ed. 2d 692; 1976 U.S. LEXIS 95; 189 U.S.P.Q. (BNA) 257 | ||||||
| Prior history | Cert. to the United States Court of Customs and Patent Appeals | ||||||
| Court membership | |||||||
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| Case opinions | |||||||
| Majority | Marshall, joined by Burger, Brennan, Stewart, White, Powell, Rehnquist | ||||||
| Blackmun and Stevens took no part in the consideration or decision of the case. | |||||||
Dann v. Johnston, 425 U.S. 219 (1976), is a decision of the United States Supreme Court on the patentability of a claim for a business method patent.
Background
The business method at issue in Johnston was claimed as a “machine system for automatic record-keeping of bank checks and deposits." Although the advance was claimed as a system, the invention was a method of creating records of bank checks for expenditures in different categories, such as rent, wages, cost of materials, etc. so that income taxes could more readily be calculated. The system involved such steps as imprinting machine-readable numbers on the individual checks, corresponding to the categories into which the expenditures fell; then the computer would periodically provide a check tabulation, broken down by each category. However, the claims were written in the form of a series of means for performing the steps of the method, so that technically the cleaimed subject matter was a "system," which is considered a type of machine.
Decision of the Court
Johnston is the only business-method patent case that the Supreme Court has so far decided, but the decision turns on obviousness rather than patent-eligibility. Despite the fact that most of the pages of the government’s brief on the merits are devoted to a discussion of why advances of the type claimed are not eligible to be considered for patentability,[1] the Court did not reach that question and instead simply found unanimously that “[t]he gap between the prior art and respondent's system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.”[2]