Information Week: Software Patents Debated (Again and Again and Again….)

February 20th, 2011

As reported in Information Week on February 18, 2011, the protective value of software patents was weighed against their potential for stifling innovation in code creation in a Wednesday debate that featured the Free Software Foundation versus a patent attorney and a venture capitalist. 

While the debate was reportedly won by patent proponents according to a vote taken of those in attendence, it may have been that the the audience was over-weighted with pro-patent forces, to be fair to the anti-patent side of this long-standing difference of opinion that has gone on unabated for the last thirty years.

Here is a link to the Information Week story:

BPAI Finds Method for Interpreting an MRI Image Statutory Even Though Not Tied to a Machine Implementation

February 20th, 2011

In Ex Parte Jack, (Appeal 2009-015192), handed down February 9, 2011, the Board of Patent Appeals and Interferences (BPAI) found a method for classifying tissue in a magnetic resonance image statutory subject matter under Section 101.  The BPAI reversed the Examiner’s rejection of the claim under Section 101, as well as a rejection of the claims under Section 103.  Quoting from the opinion:

 “Similar to the Research Corporation claims, the instant claims are directed to a method for interpreting a magnetic resonance image by measuring, pixel-by-pixel, the image intensity and statistically analyzing a frequency-versus-intensity histogram. The Examiner has not alleged that the claims are directed to a law of nature or physical phenomenon, and we conclude that the claimed process is not so manifestly abstract as to override the broad statutory categories of eligible subject matter recited in § 101. SeeResearch Corporation, 627 F.3d at 868. The rejection of the claims as directed to nonstatutory subject matter is reversed.”

 The Specification of the Ex Parte Jack application discloses a method for “automatically measuring the volume of tissue in a region of interest by acquiring a magnetic resonance image, constructing a pixel intensity histogram of the image, and segmenting the histogram using a statistical regression analysis” (Spec. 5, qr 18). The “histogram is produced by counting the number of image pixels at each possible image intensity level and plotting the result as a frequency versus intensity graph” (id. at 5, qr 20).

Claims 1 and 4 are representative of the claims found statutory and read as follows:

1. A method of classifying tissue in a magnetic resonance image, the method comprising:

(a) acquiring a magnetic resonance image of a region of interest;

(b) constructing a pixel intensity histogram of the magnetic resonance image; and

(c) applying a statistical regression analysis to the histogram to determine a pixel intensity threshold value for segmenting the histogram into at least two regions, wherein at least one of the regions is representative of a tissue of interest.

4. The method as defined in claim 1, wherein the statistical regression analysis of step (c) comprises:

(i) identifying a consistently identifiable statistical characteristic of the histogram;

(ii) determining a statistical parameter of the consistently identifiable statistical characteristic; and

(iii) applying the statistical parameter as an independent variable in a regression analysis to determine a threshold value to classify pixels based on pixel signal intensity.

            What is interesting about this case and the RCT decision is that the method claims in question are not in any way tied to a computer implementation, although in both cases the claims involve imaging applications so are inherently limited to the interpretation or display of images that are certainly not “manifestly abstract.”  If this line of reasoning holds up, patentees and practicioners may finally be relieved from having to follow formalistic claiming conventions invoking computer implementation of methods in order to avoid abstract idea objections under Section 101.  These formalisms do little if anything to limit the substantive scope of claims but can complicate claim drafting so as to introduce unnecessary limitations that unfairly limit the patentee’s claim scope purely to meet formalistic and anachronistic Section 101 requirements.

Patent Buddy Releases New Patent Analytics iPhone App

February 18th, 2011

Patent Buddy has released a new iPhone app that provides an amazing set of patent analytics.   The app lets you check the current portfolio size and patent filing trends based on last three years of issued patents and publications.  One very handy feature is the ability to check on the current status of a patent to make sure it is not expired for failure to pay the maintenance fee, and the ability to check who the currrent owner(s) are.

The app is free.  Here is more information on the app:

For US patents the analytics include –
Current Status (issued, expired — for any reason)
Current Owner (from USPTO assignment database)
Inventor Analytics (Patent Counts)
Prior Art Analytics (Most Mentioned Prior Art)
Citation Analytics / Ratings (Rating based on Citation Rankings)
Patent Abstract / Claims (text of both)

For Patent Owners (with 10 or more patents or applications) –
Portfolio Counts and Composition (Number of issued patents in force; number issued  and number published in last three years.)
Technology Analytics / Ratings (Top patent classification for owner and patent counts)
Top Cited Patents
Top Inventors (for owner)

The official page for the app is found on Apples web site at:

President’s Proposed Budget Calls for USPTO Staffing and Fee Increases, Pendency Reduction

February 14th, 2011

From Janal Kalis, Schwegman, Lundberg & Woessner, P.A.:

President Obama released his proposed budget for 2012. The new Budget would allow the USPTO “full access to its fee collections” and for a “temporary” but major fee surcharge. The proposed budget would include a 1.4% increase in fees based on the Consumer Price Index (CPI) increase and a 15% surcharge on patent fees. The projected collections for FY2012 would jump to $2.71 billion ($2,700,000,000.00), a 16% increase of FY2011 and a 34% increase of FY2010 spending.

The 2010-2012 increase works out to a little over $100,000 extra per examiner. Examiners should not, however, expect raises.

The increased budget is intended to help cut “the average overall processing time of a patent application from 35 months to 20 months by 2015” by hiring 1,500 new patent examiners and to implement a “much-needed 21st century information technology (IT) system” for the USPTO.

AIPLA Features Webinar on Using the USPTO’s Bilski/Section 101 Guidelines to Gain Allowance of Software and Business Method Inventions

February 13th, 2011

On February 10,  a panel of private practice and corporate counsel (Ken Nigon, Anthony Castiglione, Bob Bohanek and Ann McCrackin) outlined major features of the USPTO’s Interim Bilski Guidelines for assessing Section 101 eligibility of process claims.  Additionally, the panel addressed the potential impact of Federal Circuit’s December 2010 ruling in Research Corporation Technologies, Inc. v. Microsoft Corporation on the Bilski Guidelines.  The panel offered practical guidance for prosecutors in examples of abstract and non-abstract ideas, and suggestions on leveraging the Bilski Guidelines when working with examiners.  The corporate panelists (Anthony Castiglione and Bob Bohanek from USAA) shared their practical insights from their first-hand experience of working with the PTO on Section 101 issues.  The slides for the webinar will be available on the Computer and Electronic Committee web pages at sometime the week of February 14th.


Centillion Data v Qwest – More guidance from the CAFC on proper claim drafting…

January 25th, 2011

My thanks to Greg Stark at Schwegman, Lundberg & Woessner, P.A., for this guest post:

 The Federal Circuit (CAFC) issued an interesting (precedential) opinion late last week in the Centillion Data System, LLC. V. Qwest Comm. Intl. Corp. case. The Centillion opinion provides interesting insight into the “use” of a system under §271(a) and questions of vicarious liability (joint infringement) of system claims.

 The district court in this matter decided summary judgment in favor of Qwest (defendant) based on an interpretation of “use” type infringement under §271(a). The claims asserted in this matter were all system claims that involved components controlled by a service provider and a user. The district court only considered infringement by “use” under 35 U.S.C. §271(a). The district court held that Qwest could not “use” the system under the CAFC’s NTP definition of use and §271(a) as Qwest did not control the end user’s system.

The CAFC held (reversing summary judgment and revising the district court’s interpretation of use) “that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it. NTP, 418 F.3d at 1317.” Slip Op. 8. The “control” contemplated in NTP is the ability to place the system as a whole into service. Id. “We (CAFC) agree that direct infringement by ‘use’ of a system claim ‘requires a party … to use each and every … element of a claimed [system].’” Id.

Thus, the CAFC held that Qwest’s customers put the claimed system into service (i.e. controls the system and obtains benefit from it), which constitutes a “use” of the system as a matter of law. The Court did not that “although the customers ‘use’ the system as a matter of law, this does not settle the issue of infringement.” Slip Op. 11.

In this case, while Qwest does not place the system as a whole into service, the end user does. Thus, summary judgment was inappropriate in this matter.

Regarding the question of vicarious liability, following recent CAFC cases, the Court held that Qwest is not vicariously liable for the actions of its customers. Slip Op. 13-14. Qwest in no way directs its customers to perform nor do its customers act as its agents. Id.

The CAFC continues to provide cautionary messages to all patent prosecution attorneys to carefully consider who can infringe your claims. Recent decisions, such as Akamai Tech. v. Limelight Networks, made it clear that asserting claims that implicate two parties is going to be a serious uphill battle (requiring an agency relationship or specific contractual obligations to perform the operations). This case highlights potential pitfalls in system claims that include components controlled or provided by multiple parties.

As an aside, the Court also touched on whether Qwest could be liable for “making” the claimed system under § 271(a), despite this issue not having been addressed by the lower court. Slip Op. 15. The Court held that Qwest does not “make” the patented invention under § 271(a) as a matter of law. A curious holding as there appeared to be evidence suggesting that Qwest produced the client side software and Qwest certainly would have had to test the entire system prior to deployment. However, the Court appears to seize on a finding that “[w]ith or without the [client side] software, [Qwest’s users] can still download and view their report [potentially infringing the claims].” Id. Thus, as Qwest does not control whether its users download and view the reports, Qwest cannot be vicariously liable.

iam Magazine reports: Patent Grants Soar

January 15th, 2011

iam Magazine reported this week that patent grants soared in 2010. According to iam Magazine, IBM received more US patents in 2010 than any other applicant, the number of patents they received rising by 20% to reach 5,896.  Samsung and Microsoft were other big gainers over 2009.

Visit the article on iam’s web site for more:


Research Corporation Technologies Inc. v. Microsoft Corp.: Sanity Returns to Section 101 Abstraction Analysis

December 9th, 2010

Since the U.S. Supreme Court’s Bilski v. Kappos decision, there have been a raft of District Court and Board decisions that took the “abstract idea” exclusion for patentable subject matter past the point of absurdity.  Thankfully it did not take long for some sanity to return to the legal precedent on this all-important issue.   On December 8, a three judge panel (Judges Rader, Newman and Plager) of the U.S. Court of Appeals for the Federal Circuit ruled that, to be found unpatentable under the abstract idea exclusion from 35 U.S.C. §101, an invention’s abstractness must “exhibit itself so manifestly as to override the broad statutory categories” of patent eligibility.  Research Corporation Technologies Inc. v. Microsoft Corp., Fed. Cir., No. 2010-1037, 12/8/10.  RCT v. Microsoft Federal Circuit Decision

The patents in question, owned by Research Corporation Technologies Inc. (for a profile of this company’s patent holdings see:, involved digital imaging process claims.  The Federal Circuit found that these claims, which had been found unpatentable under Section 101 by the district court, are patentable subject matter because they claim “functional and palpable applications in the field of computer technology.”

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In re Kelkar — Half Right for the Wrong Reason?

November 28th, 2010

In re Kelkar involves a patent application owned by the IBM Corporation that claims methods and computer program articles for processing gene expression profiles to find clusters of similar profiles.  The Board of Patent Appeals and Interferences found the following claim 1 of the application non-statutory as attempting to claim a prohibited abstract idea under Bilski v. Kappos, 561 U.S. ___ (2010):

 1.  A method for determining similarity between portions of gene expression profiles in a computer comprising the steps of:

processing a number of gene expression profiles with a similar sequences algorithm that is a time and intensity invariant correlation function to obtain a data set of gene expression profile pairs and a match fraction for each gene expression profile pair;

listing gene expression profile pairs in clusters by their match fractions;

removing a first gene expression profile from a cluster when another cluster has another gene expression profile with a higher match fraction with the first gene expression profile, unless the another gene expression profile requires a larger number of subsequences to achieve similarity with the first gene expression profile;

repeating the removing step until all gene expression profiles are listed in only one cluster;

providing output of the listing of clusters of gene expression profiles. (emphasis added)

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Amazon 1-Click Patent Found Statutory In Canada

October 18th, 2010
The Federal Court in Canada has overruled the Commissioner of Patents to find that Amazon’s 1-click patent is patentable subject matter in Canada, and that Canada’s patent act does not have an exclusion for business method patents.  Here is a copy of the decision:  Canadian 1-click decision.  The claims found to be statutory are repeated below.The decision is an interesting read as it discusses jurisprudence from the US and Europe, including the recent Bilski decision, and rejects the “point of novelty” analysis in favor of viewing the claim as a whole to determine if a claim is statutory.
 The Court laid out that there are thus three important elements in the test for statutory subject matter:
i) it must not be a disembodied idea but have a method of practical application;
 ii) it must be a new and inventive method of applying skill and knowledge; and
 iii) it must have a commercially useful result:
Progressive Games, Inc. v. Canada (Commissioner of Patents), 177 F.T.R. 241 (T.D.) at para. 16, aff’d (2000), 9 C.P.R. (4th) 479 (F.C.A.). 

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