Patent Law Insights : Software Patent Lawyer & Attorney : Perkins Coie Law Firm : Intellectual Property & Technology Law

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system to perform a function (e.g., view an ad about the latest printer before being able to print a document using an outdated printer or select another song on our handheld music player), some people could benefit from adoption of the technology.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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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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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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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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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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