Posts Tagged ‘software patents’

Netflix, Inc. v. Rovi Corporation (NDCA 2015): Five TV guide patents dropped by abstract idea ineligibility

Wednesday, July 29th, 2015

How did we go from the claims in Alice being considered abstract, claims that clearly involved a well-known financial concept (e.g, intermediated settlement) merely implemented on a computer, to admittedly novel (and likely non-obvious) concepts inexorably tied to computing systems being considered abstract?

District courts and the CAFC seem to be quickly expanding the reach of the abstract idea to invalidate software implemented inventions. In Netflix v. Rovi (Netflix, Inc. v. Rovi Corporation, Case No. 11-cv-6591, NDCA 2015), the court uses the Alice/Mayo abstract idea test to invalidate as non-patentable subject matter claims directed to an admittedly unknown concept rooted in computer technology, just because the claims could be articulated as being directed to an abstract idea. This court, and many others, seem to have missed the part of Alice where the Supreme Court cautions that all claims at some level involve an abstract idea.


“Particular Machine” not required: Ex Parte Dietz et al., Appeal 2009-008029, BPAI

Monday, June 27th, 2011

Ex Parte Dietz answers the question, at least as far as this BPAI panel is concerned, as to what structure need be recited in a “software claim” to bring it within the “machine” category of patent eligible subject matter. What is notable perhaps in its absence is any reference to the need to recite any “particular machine,” as opposed to simply just a “server” or the like, in order to bring a claim into the realm of the patent eligibility. Ex Parte Dietz et al In Ex parte Dietz, the following claim 1 was rejected under Section 101 for failure to recite at least one hardware element.

1. In a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the web, a system for controlling access activity from activated hyperlinks and their respective Web document source sites comprising:

means for applying said prioritization in the determination of the order in which the web documents linked to activated embedded hyperlinks in said web document are to be accessed.

means at said source sites for prioritizing said plurality of embedded hyperlinks in a Web document; and


Therasense returns Common Sense to Law of Inequitable Conduct

Thursday, May 26th, 2011

Yesterday, in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (en banc) (a copy is attached at the end of this post), the Federal Circuit handed down an historic and much needed update to the law of inequitable conduct.  The en banc (6-1-4) decision markedly increased the requirement for proof of inequitable conduct:  “This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”  The court rejected the “sliding scale” approach that previously allowed intent to deceive to be inferred from strong materiality.  The new standard makes intent and materiality separate requirements, and forbids a court from inferring intent solely from a strong showing of materiality.   Now, evidence of deceitful intent must be weighed separately from materiality, and proven by clear and convincing evidence.  The clear and convincing standard requires that a finding of deceptive intent must be “single most reasonable inference able to be drawn from the evidence.”

In addition, the court raised the standards for proof of materiality, holding that “as a general matter, the materiality required to establish inequitable conduct is but-for materiality.”  But-for materiality requires that the PTO would not have allowed a claim had it been aware of the undisclosed prior art.

The following passages from majority opinion in Therasense set forth the heart of the decision:


In re Kelkar — Half Right for the Wrong Reason?

Sunday, 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)


Amazon 1-Click Patent Found Statutory In Canada

Monday, 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.). 


BackWeb Technologies Sues IBM and HP on Software Patents For Background Downloads

Monday, October 4th, 2010

The wagon train of software patent lawsuits rolls on.  As recently reported by Gene Quinn in his IP Watchdog blog (, this time it’s IBM and HP that are in the cross-hairs, each being accused by BackWeb Technologies, Inc., of Santa Clara, California (and owned by an Israeli parent company) of infringing three US patents – U.S. 5,913,040, U.S. 6,317,789 and U.S. 6,539,429.  These patents cover systems for transmitting digital information in background mode.   To see an interactive claim chart of these patents claim limitations click here:  BackWeb Claim Chart

The chart shows that almost all of the claims, with a couple of interesting exceptions, require monitoring or determining a line or link utilization rate, and transmitting data based on the rate.  In the chart, the limitations in the left hand column are found in the respective claims (represented by the columns) if there is a blue square in the column.  The “relevance” column can be set equal to 1, 2 or 3.  If set to 3, then the chart assumes the target product has the corresponding limitation.  If set to 1, the limitation is not found, and if set to 2, it is indeterminate or possibly found in the target product.


The Board Takes Bilski for a Test Drive and Runs Over Some Software Claims

Tuesday, September 28th, 2010

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.


Is Europe Going Soft on Software Patents?

Sunday, May 30th, 2010

In what some are viewing as surprising developments, both the European Board of Patent Appeals and the German Court handed down decisions favoring patent protection for software in Europe.  In the EPO, the European Patent Office’s Enlarged Board of Appeal this month issued a decision that refused a request by EPO President Alison Brimelow to reconsider the law regarding software patents, on the basis that the law is not divergent enough to warrant reconsideration. The EPO’s acceptance of software patents will therefore continue as it currently stands.   

In Germany, in a decision handed down on April 20 (number X ZR 27/07), an appeal court upheld a Microsoft patent on a FAT invention allowing for long name files while preserving backward compatibility with a file system that supported only short file names.  This decision overturned a lower court ruling finding the patent – EP 0618550 (based on US 5,758,352) — invalid.  

My thanks to Dr. John Collins at Marks & Clerk for his help with this posting.

Abstract Ideas Stored as Physical Data: Real or Abstract?

Saturday, May 29th, 2010

Well, since the Supreme Court is making us all wait for its verdict on Bilski, I thought I would explore (but far from resolve) a notion that has always fascinated and puzzled me – the concept of abstract ideas represented by real data. In order to get oriented in reality for this discussion, and avoid being completely lost in metaphysical analysis, let me posit two different types of inventions involving data – one where the data represents a real entity, and one where the data represents an abstract entity.

The first invention is a method of processing an x-ray image by obtaining an x-ray image, converting the image to a machine usable digital representation, and then processing the digital representation to remove noise in the image.  This is generally the subject matter of the invention found patentable on appeal in In re Abele and Marshall (CCPA) 1982, 684 F.2d 902, 214 USPQ 682.  In this first posited example, one can argue the following are true:

 1) the x-ray is real (after all you can kill people with them);

2) the machine usable digital data therefore represents a real entity;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored (as a charge, magnetic orientation, physical material, etc..), moved, processed and even detected with a scientific instrument.

4) the “data,” as disembodied from its physical representation, has an abstract character, in that it only represents a real entity and only has meaning when a human mind correlates the data to the physical entity it represents.

Now, let’s posit another example.  In this example the invention is a process for storing and searching machine usable data representing pure ideas, like the idea of “justice.”  In this example, one can argue the following are true:

1) the ideas are not physically real – they are abstract;

2) the machine usable digital data represents an abstract entity – i.e., the notion of “justice”;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored, moved, processed and even detected with a scientific instrument;

4) the “data,” as disembodied from its physical representation, has an abstract character as well, in that it only represents the abstract entity and only has meaning when a human mind correlates the data to the abstract entity it represents.

If we agree on the above observations, then the following is also true:

1) machine usable digital data representing either real or abstract entities is real and not abstract.  This data simply has to be real in order to be manipulated by a computing system.

2) real data can represent either real or abstract entities.

3) real data can be created, stored, moved and processed by a computer.

4) an invention that processes real data is real and not abstract.

5) an invention that processes real data is not performing “mental steps” as the human brain cannot store or process real data.

Another level of this same inquiry is whether a limitation that specifies the type of type of data is entitled to be recognized for the purpose of distinguishing a claim from the prior art.  As established by In re Abele, if the data represents a real entity (or at least is explicitly obtained from measuring or sensing a real entity) then the limitation is given weight as if the real data was a proxy for a corresponding real (physical) entity.  On the other hand, if the machine usable data represents an abstract entity, and the data is considered a proxy for the abstract entity, then this element of the claim could be considered abstract and therefore not entitled to be recognized as part of the claimed combination for the purpose of distinguishing the claim.  Of course we know that most of the time these limitations are given credit, as thousands or perhaps even tens of thousands of patents now in force claim inventions with these types of limitations. 

So, what are some of the types of abstract entities represented by real data?  Here are a few:

  • language —  language has meaning only in the minds of man, and not according to any law of nature
  • currency systems  — a currency system is an abstraction straight out of the mind of man, rooted in a common agreement to keep financial score using the same medium of exchange
  • man-made laws – laws that exist only by decree of politicians or legislative bodies do not exist in nature
  • contract rights – rights that represent an agreement between parties are also abstract in the sense they do not exist in nature

Let me close this posting with the following question, and possibly the question that  the Supreme Court struggled with in Bilski:  If I represent these abstractions with real data, are these abstractions now real for the purpose of patent protection?  I will do my best to provide some insight to this question in one of my upcoming postings.  No doubt the Supreme Court will soon give us some of their insight on this question as well.

Welcome to Patents4Software

Monday, May 24th, 2010

Welcome to my new blog on software patents.  It has been a long time since I started in the patent profession – I got my USPTO registration number in 1982 – and since then the debate and confusion over software patent protection, or at least the boundaries of that protection, has continued on.  It’s been a meandering journey through the 70’s, 80’s, 90’s and 00’s, featuring several early and by some accounts inconsistent Supreme Court decisions — Benson (1972), Flook (1978) and Diehr (1981), the copyright vs. patent wars (80’s), the flip-flopping of USPTO policy from anti-software, to pro-software and a little bit back again, and the largely progressive Federal Circuit jurisprudence notwithstanding the arguably backtracking “machine or transformation” test.  And let’s not forget the endless never-say-die opposition to software patents by the League for Programming Freedom and its European counterparts.  Yes, it has been over fifty years of a zig-zagging, one-step-forward, two-steps backward but ultimately forward-moving path to establishing patent protection for software, and it’s not over yet!  Of course none of the League’s predictions that the software industry would be destroyed by patents have come true.  Far from being destroyed by patents the industry has flourished into one of the US’s most important and innovate industrial sectors.  And it’s still as innovative as ever as cloud computing and mobile applications and myriad other new developments place unfathomable computing power literally in the hands of billions of people throughout the world. 

 So let’s get back to the future – where do we find ourselves now in this long, arduous legal journey?  Well, of course we are on the brink of what will no doubt be another seminal pronouncement by the Supreme Court in the Bilski case.  This time it will be a pronouncement on the patentability of business methods, and the odds are against business methods.  Many believe, and I can’t say I feel strongly the other way, that patent protection was conceived to protect the technological arts, not the business or finance arts, and any such expansion of statutory subject matter should be fully debated in the halls of Congress before it is imposed on the entire machinery of American business.

While it is a little late to predict what the Supreme Court will hold in Bilski since the decision is only hours or days away, I want to go on record, in my first blog posting, with my prediction.  So here is what I think the Supreme Court will hold:

  1. Congress intended that Title 35 protect the technological arts, not the business/financial arts, that the invention in question is not technological in nature, and are therefore non-statutory subject matter.
  2. To determine whether an invention is technological in nature, one must look at the nature of the innovation, not the form of the claim, much the same way patent exhaustion under Quanta Computer focuses on the “essential features” or “material parts” of a claimed invention to determine if the sale of an item exhausts the claims at issue.  As such, if the novelty of the invention lies not in its technological character, but rather its business/financial nature, then the invention is non-statutory even if claimed in terms of a computer system or computer process.  Accordingly, one cannot dress up a wolf in sheep’s clothing and side-step the ban on business method patents.
  3. On the other hand, technological innovations used to support business methods will remain patentable, so long as the nature of the innovation is technological.
  4. What exactly is “technological” and what is not will be defined in some manner but the exact contours of this definition will remain to be decided in future cases.
  5. Finally, the Federal Circuit’s “machine or transformation test” must include a technological arts requirement, and even then it not the only way to differentiate statutory from nonstatutory subject matter.

To find that methods of doing business are not patentable, the Court may in addition or the alternative invoke the well established prohibition on the patenting of abstract ideas or mental steps.  I hope, however, that it base its decision on these principles for at least two reasons.  First, a computer-implemented business process is no more abstract than many other technological software or data processing innovations that do merit patent protection.  For example, many data processing innovations meriting patent protection involve improvements in organizing, storing or processing various types of information that can all be said to involve some degree of abstraction at least in the sense that the data itself only describes or models a thing or concept that exists in the “real world.”  Secondly, for similar reasons I think the “mental step” analysis is also unproductive, since a computer can perform logic that is often identical to the mental steps that humans use to solve problems.  So to say that a computer software invention is nonstatutory because it replicates mental steps can, if taken to its logical conclusion, requires the outcome that many if not most computer software inventions are non-statutory.  Certainly, if one were to invent a computer system that could perfectly replicate the thought processes of a human it would be a phenomenal technological achievement, not nonstatutory subject matter!   So, the mental steps doctrine is problematic at best when used as a test for statutory subject matter in the realm of computer-implemented inventions.

 So, the next time you will hear from me is when Bilski is handed down, and that may be later today.