Software Is Not Abstract

Posted on December 9, 2010 by Rajiv Sarathy

Earlier this year, I wrote that the U.S. Supreme Court ruled that Bilski's claims were abstract, and that abstract claims are unpatentable under 35 U.S.C. § 101.  According to the Federal Circuit in Research Corp. Tech. v. Microsoft Corp., software-related claims are not abstract.

In yesterday's decision, the Federal Circuit held that some claims present "functional and palpable applications in the field of computer technology" and so are not excluded under 35 U.S.C. § 101.  Moreover, according to the decision,

inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act. 

The decision also quoted the Supreme Court's reiteration of Diamond v. Diehr:

claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.

(Emphasis added.)  

The court then went on to state that even though claims may be patent-eligible under 35 U.S.C. § 101, they may nevertheless fail under 35 U.S.C. § 112, e.g., if they do “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.”  (Quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.)
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NASA Is Auctioning Off Five Software Patents

Posted on October 26, 2010 by Rajiv Sarathy

NASA Goddard Space Flight Center is putting up for auction five software-related patents on Veteran's Day, November 11, 2010. 

 

7,668,796

"Automata learning algorithms and processes for providing more complete systems requirements specification by scenario generation, CSP-based syntax-oriented model construction, and R2D2C system requirements transformation."

(I like the R2D2 part of this patent's title.)

7,627,538

"Swarm autonomic agents with self-destruct capability."

7,752,608

"Systems, methods and apparatus for verification of knowledge-based systems."

7,739,671

"Systems, methods and apparatus for implementation of formal specifications derived from informal requirements."

7,543,274

"System and method for deriving a process-based specification."

The U.S. Government apparently expects to receive at least $250,000 from the auction of these patents.
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Apple Patent For Censoring Texting

Posted on October 13, 2010 by Rajiv Sarathy

Yesterday, the USPTO issued Apple's U.S. Patent No. 7,814,163 directed to a "Text-based communication control for personal communication device."  The patent has one independent claim and 14 total claims.

Claim 1 recites:

1. A text-based communication device comprising:

input circuitry that provides a user interface to enable a user to perform at least one of inputting and editing a text message;

transmission circuitry for sending the text message; and

processing circuitry for controlling the sending of the text message based on at least a portion of the text message and at least one message control condition, wherein the at least one message control condition comprises a rated message control condition corresponding to the user's designated language skill rating.

According to the Notice of Allowability, the patent office allowed the claims because the references the patent office relied on in its original rejections did not disclose "a rated message control condition corresponding to the user's designated language skill rating."

According to the extensive "Summary of the Invention" section of the patent,

In some embodiments, at least one of the message control conditions includes applying ratings to the message control conditions, at least one of which can correspond to the user's designated language skill rating. The rated message control conditions can be applied to the entire message or a portion of the message according to the user's designated language skill rating. In further embodiments, the designated language may include a required foreign language, vocabulary, spelling, grammar and/or punctuation based on the user's designated skill level.

 
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Software Is Not Necessarily Business Method

Posted on July 8, 2010 by Rajiv Sarathy

Section 101 of the patent statutes (Title 35 of the U.S. Code), broadly outlines the categories of what is patentable subject matter.  These include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."  A business method falls into the "process" category, but claims in patents directed to software can be written as a process, machine, or manufacture.  However, people commonly confuse software patents with business method patents.  These are different things, and although the distinction can be difficult to discern because businesses today rely on software so much, the distinction is likely to become important over time because of the U.S. Supreme Court opinion in Bilski.

Most people understand that a claim directed to software can be written as a process.  They are commonly drafted as "method" claims, which is probably why many people confuse these with "business method" claims.  A business method does not necessarily involve software at all.  For example, a method of hedging energy risks does not necessarily require software.  People were hedging risks relating to commodities over a hundred years ago -- well before electronic trading devices were invented -- by buying and selling commodity futures.

Claims directed to software can also be written as a machine or manufacture.  Patent attorneys commonly draft claims directed to computing devices and computer-readable storage media that implement or embody the software.  We do this to provide broad protection to our clients so that someone who makes, sells, or imports infringing software can be liable in addition to a user of the software who only infringes when the software is run and it performs the claimed process.

The media equally confuses software and business method patents.  For example, an article published in the San Jose Mercury News last week equates software with business methods.  It provides examples of patents owned by software companies (one of which was successfully procured and litigated by Perkins Coie) that are drafted to include aspects of computing.  However, these are not pure business method patents:  the claims are drafted in terms of what a computing device does and not what a business does.  Although many business methods today are performed using computing devices, it is likely that those same methods could be performed without the computing devices.  On the other hand, most software inventions would be nearly impossible to implement without computers.

The article goes on to state:

Folks such as the Electronic Frontier Foundation have been railing against the evils of such patents for years. "The patents can be so broad that they cover a lot of activity that people have been doing for a long time," said Michael Barclay, an attorney and EFF Fellow. "The result is a lot of patents that get allowed that shouldn't get allowed."

This statement is a red herring.  Once the United States Patent & Trademark Office (USPTO) determines that an invention falls within one of the eligible categories outlined in Section 101, it has to determine whether the claimed invention is novel (Section 102) and not obvious (Section 103).  However, patent examiners are not perfect and can award patents that should not be awarded because they do not have infinite time to analyze all the prior art even if all of it could be identified.  However, this is a problem in all areas of innovation and not just software (or business methods, for that matter). If a patented claim covers "a lot of activity that people have been doing for a long time" as Mr. Barclay suggests, such a patented claim is invalid under either the novelty or nonobviousness requirements and cannot be successfully enforced.  Just because the USPTO granted a patent because it had inadequate resources to properly and fully examine the underlying patent application, it does not mean that all innovators should be barred from receiving patents on their innovations.

The article states that because the U.S. Supreme Court opinion concluded as it did,

the folks at the patent office were feeling the relief of someone who had just avoided a neutron bomb going off in their house. Rather than descending into chaos that would have come with reviewing thousands of patents, patent officials were thinking about issuing follow-up guidelines at some point.

This reflects another misconception a lot of people not familiar with the patent system have.  The USPTO does not review previously granted patents unless someone requests a reexamination, e.g., because of newly found "prior art."  On the other hand, the law evolves continually and patents that were valid one day may become invalid the next because the law changed.  As far as I know, the USPTO does not have the authority to revoke a patent sua sponte, and a defendant's recourse is to request a court to find that an asserted (or threatened to be asserted) patent is invalid as a matter of the new law.

Luckily for the software patent bar, the Supreme Court Justices wisely recognized that tests to determine whether an innovation was patentable during the Industrial Age are irrelevant during the Information Age.  (U.S. Supreme Court Slip Op. at 8-10.)
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Software and Business Methods Remain Patentable

Posted on June 28, 2010 by Rajiv Sarathy

Software companies that desire patent protection on their innovations or previously spent considerable effort in procuring patents received good news today.  The Supreme Court in its Bilski opinion today held that business methods and software can be patentable, but Bilski's claims are not.

The following are some salient points from the Supreme Court's opinion:

  • the "machine-or-transformation" test the Federal Circuit enunciated in its Bilski holding "may be a useful and important clue or investigative tool, [but] it is not the sole test for deciding whether an invention is a patent-eligible 'process' under §101."
    • this test may have been useful during the Industrial Age, but is inappropriate for inventions during the Information Age.
  • Bilski's claims are unpatentable because they claim an abstract idea.
  • the Court would like to eventually find a balance between inventors' rights to protect their innovations and others' rights to discover the same invention independently using known principles

However, not all software may continue to be patentable.  For example, Judge Steven's concurring opinion called into question the State Street Bank decision that anything with a "useful, tangible or concrete result" is potentially patentable.

Until there is more guidance from lower courts, I plan to continue to draft at least dependent claims that tie methods to computer hardware and, where possible, identify some sort of physical transformation.  Once the USPTO outlines what changes it is making to respond to this opinion, I may also attempt to recapture subject matter we previously relinquished to comply with changes the USPTO made to respond to the Federal Circuit's decision in Bliski.

More analysis in this Perkins Coie Update.
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Disruptive Advertising In Our Future?

Posted on November 15, 2009 by Rajiv Sarathy

Apple Computer has filed a patent application directed to disruptive advertising in an operating system that a New York Times article published today refers to as a gimmick. 

The first claim in the published patent application, which names Steve Jobs as the first inventor, recites:

1. A computer-implemented method for operating a device, the method comprising:

  • disabling a function of an operating system in a device;

  • presenting an advertisement in the device while the function is disabled; and

  • enabling the function in response to the advertisement ending.

While most of us probably cringe at the thought of having to view advertisements every time we request an operating system to perform a function (e.g., view an ad about the latest printer before being able to print a document using an outdated printer or select another song on our handheld music player), some people could benefit from adoption of the technology.  For example, many people in emerging markets cannot afford an Apple computer (or any other computer, for that matter) or an iPod.  They may not mind being forced to acknowledge that they have viewed or heard advertisements in exchange for a free or cheap device.

Although its author may not realize it, the New York Times article provides some great examples of advertising-related prior art that Apple may face in obviousness rejections by the U.S. Patent and Trademark Office (USPTO).  Other prior art that the USPTO may apply include Microsoft's technology in the Vista operating system that prevents something from happening without the user's approval.  For example, when one application launches another application, Vista can prevent that operation unless the user first permits it. 

Although the concept of advertising-based subsidies is not new and there is lots of prior art in this space, a clever patent attorney may still be able to obtain a patent for Apple, though with narrower patent claims than the broad claims presently published.  This patent application has not yet been examined by a patent examiner.

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Bilski Oral Arguments

Posted on November 8, 2009 by Rajiv Sarathy

The Supreme Court will hear oral arguments tomorrow (Monday) in the Bilski case.  Many amicus briefs have been filed in the case, including briefs from Accenture, AIPLA, Borland Software, the Free Software Foundation, Intellectual Property Owners Association,  IBM, Microsoft, and Red Hat. 

Although the Bilski case is mostly about business methods (e.g., risk hedging), many have turned the case into a question of whether software is patentable.  I have my doubts that there are sufficient facts on the record in the Bilski case for the Supreme Court to opine on that particular issue (even the Federal Circuit deferred the issue as footnoted in their Bilski decision), but I have been surprised before.

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California Court's Bilski Analysis

Posted on July 9, 2009 by Rajiv Sarathy

When does a general purpose computer become a "particular machine" as required by Bilski? 

Yesterday, I wrote that a California court had invalidated claims of DealerTrack's U.S. Patent No. 7,181,427. According to Judge Guilford's Order, DealerTrack had asserted claims 1, 3, and 4. The defendants moved for summary judgment arguing that the asserted claims are invalid in view of Bilski. DealerTrack implicitly conceded that its claims do not meet the transformation prong of Bilski's machine-or-transformation test by apparently failing to argue that point in its response to the defendants' summary judgment motion. The Order finds that the claims also do not meet the machine prong.  Because the claims meet neither prong, the Order found them to be invalid.

The Order begins its analysis by outlining the current law of the land that a general purpose computer executing a program is patent eligible. Next, the Order indicates that decisions of the Board of Patent Appeals and Interferences (BPAI) and the California decision in Cybersource v. Retail Decisions require more than a general purpose computer, thereby contravening In re Alappat (holding that a general purpose computer becomes a special purpose computer when it executes a program).

According to the Order, "[t]he ‘427 Patent does not specify precisely how the computer hardware and database are 'specially programmed,' and the claimed central processor is nothing more than a general purpose computer that has been programmed in some unspecified manner." (Page 7, lines 1-4.) The Order cites to an earlier Claim Construction Order that indicates that DealerTrack agreed to a broad reading of the relevant devices, clearly now to its detriment.

The Order states that "[t]he Court finds that none of these devices constitutes a 'particular machine' within the meaning of Bilski." (Order, page 6, line 28-page 7, line 1.) However, the Order does not cite to anywhere in Bilski as specifying what the "particular machine" ought to be. It goes on to state:

Under Bilski and the recent decisions interpreting it, the central processor in this case cannot constitute a "particular machine." Further, this Court’s claim construction order defined both the "remote application entry and data device" and "remote funding source terminal device" to include "any device," such as a personal computer or dumb terminal, and these devices clearly cannot constitute particular machines.

(Order, page 7, lines 4-9.) 

When does a general purpose computer become a "particular machine" as required by Bilski?  Can it become one?  No one seems to know yet.

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Eviscerating Patent Value

Posted on July 8, 2009 by Rajiv Sarathy

One way to eviscerate the value of a patent or portfolio of patents is to assert them unsuccessfully.

DealerTrack is a "provider of on-demand software and data solutions for the automotive
retail industry" and has a portfolio of four U.S. patents and at least five patent applications. As reported in the Wall Street Journal, the company announced today that a judge in the U.S. District Court of the Central District of California had declared a patent it was enforcing invalid in view of Bilski.  The company is planning to appeal.

I have not yet seen the judge's ruling, but the only two independent claims in the relevant patent are:

1. A computer aided method of managing a credit application, the method comprising the steps of:

  • receiving credit application data from a remote application entry and display device;
  • selectively forwarding the credit application data to remote funding source terminal devices;
  • forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device;
  • wherein the selectively forwarding the credit application data step further comprises:
    • sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time;
    • sending at least a portion of a credit application to more than one of said remote funding sources sequentially until a finding source returns a positive funding decision;
    • sending at least a portion of a credit application to a first one of said remote funding sources, and then, after a predetermined time, sending to at least one other remote funding source, until one of the finding sources returns a positive funding decision or until all funding sources have been exhausted; or;
    • sending the credit application from a first remote funding source to a second remote finding source if the first funding source declines to approve the credit application.

(Sic.)

5. A computer aided method of managing a credit application, the method comprising the steps of:

  • receiving credit application data from a remote application entry and display device;
  • selectively forwarding the credit application data to a first remote funding source terminal device;
  • wherein the selectively forwarding the credit application data step further comprises:
    • facilitating the first remote finding source terminal device to selectively forward the credit application to a second remote funding source terminal device if the funding source associated with the first remote finding source terminal declines to approve the credit application; and;
    • forwarding funding decision data from at least one of the first and second remote funding source terminal devices to the remote application entry and display device.

I do not yet know which claim(s) were asserted and/or invalidated. 

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What's In A Name?

Posted on July 2, 2009 by Rajiv Sarathy

In Shakespeare's Romeo & Juliet, Juliet says to Romeo:

What's in a name?  That which we call a rose
By any other name would smell as sweet.

(Act II, scene ii.)  

GoDaddy doesn't agree with Juliet.  The company is no stranger to filing patent applications and owns scores of published applications and issued patents.  Some of these patent applications are directed to a market for domain names.  As Domain Name Wire reports, two such applications published today:

  • Patent Publication No. 20090171823  claims " A method comprising the step of underwriting a sale of shares of equity in a Domain Name." 
  • Patent Publication No. 20090171678 claims "A method comprising the step of protecting a Domain Name from an undesired transfer of ownership during a sale of shares of equity in the Domain Name."

If you know anything about patents or have read my prior blog entry on breadth, you know that these are quite broad claims.  A strategy commonly employed by savvy patent applicants is to initially file broad claims and then narrow them during prosecution of the patent application in view of prior art the patent examiner or the applicant identify.  Doing so can result in broader coverage than starting with narrow claims and then attempting to broaden them during prosecution.

The names Capulet and Montague may have smelled similarly sweetly to Juliet, but to the owners of some desirable domain names that can fetch a princely sum, some domain names smell more sweetly than others.

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