July and August have been busy months for the Board of Patent Appeals and Interferences. Not including the Ex Parte Proudler and Ex Parte Birger cases I previously reported on, the BPAI has issued at least ten opinions in which software-related claims were rejected under Section 101 in view of Bilski. These opinions, excerpts of which are provided below, present both understandable and puzzling Section 101 rejections. A number of the rejections are understandable due to a lack of computer structure or electronic functionality in the claim to tie the software elements to a machine implementation. Of particular note, it appears that machine limitations in method claims are not enough per se to bring the claim into the machine sphere of the machine or transformation test, according to these Board decisions, despite the PTO’s Interim Guidance, which seems to indicate otherwise.
Archive for September, 2010
The anti-software patent rhetoric has really ramped up ever since Apple sued HTC, Oracle sued Google and Paul Allen’s Interval Licensing sued Apple, Google and others. Just about every day there is another diatribe about the insanity of software patents. The problem with these commentaries is that they are premised on so many mistaken assumptions it’s difficult to believe that the authors have put even an ounce of critical thought or research into their opinions.
To begin with, technically and substantively, software per se is not patentable in the US or any other country that I am aware of. Patents only cover the electronic functionality that is produced or enabled by a programmed machine. Even so-called Beauregard claims, which cover computer instructions encoded on computer media, are predicated strictly on the electronic functionality carried out by a machine executing the instructions — i.e., the patentability of such claims is predicated on the electronic functionality, not words or symbols in a list of instructions.
Most everyone in software circles has heard by now that Paul Allen’s IP company, Interval Licensing, LLC, has sued AOL, INC.; APPLE, INC.; eBAY, INC.; FACEBOOK, INC.; GOOGLE INC.; NETFLIX, INC.; OFFICE DEPOT, INC.; OFFICEMAX INC.; STAPLES, INC.; YAHOO! INC.; AND YOUTUBE, LLC, for infringing the following US Patents:
United States Patent No. 6,263,507 (“the ’507 patent”) for “Browser for Use in Navigating a Body of Information, With Particular Application to Browsing Information Represented By Audiovisual Data.”
United States Patent No. 6,034,652 (“the ’652 patent”) for “Attention Manager for Occupying the Peripheral Attention of a Person in the Vicinity of a Display Device.”
United States Patent No. 6,788,314 (“the ’314 patent”) is a division of the ’652 patent and claims related subject matter.
United States Patent No. 6,757,682 (“the ’682 patent”) for “Alerting Users to Items of Current Interest.” The abstract for this patent states:
“Disseminating to a participant an indication that an item accessible by the participant via a network is of current interest is disclosed. An indication that the item is of current interest is received in real time. The indication is processed. The participant is informed that the item is of current interest. “