Software Patent Law | Patents4Software.com

The most recent 101 PTAB road kill is an Intellectual Ventures, LLC, patent on electronic content distribution –  U.S. Patent No. 6,658,464 — in a CBM review of challenged claims 1, 8, 16, and 17 (reproduced below) brought by Motorola Mobility, LLC.  As enumerated in greater detail below, the PTAB found the claims patent-ineligible under Section 101 as lacking in technological innovation and furthermore that the claimed subject matter does not “improve the functioning of the computer itself,” or “effect an improvement in any other technology or technical field,” as there is no recitation in the claims of improved computer technology or advanced programming techniques.  (see PTAB decision, bottom of pgs. 43-44).   In short, the PTAB found that “the steps of the challenged claims are well-known, conventional, and routine and do not transform a general purpose computer (user station comprised of a processor and storage device) into a specific machine. Rather, the claimed instructions are the normal basic functions of a computer.”

Q: What can we learn from this case?  A: What we already knew — Section 101 eligibility analysis for software is so far off the rails and it no longer

The challenged claims are set forth below:

1. A software product for use at a user station, the user station including a processor and a storage device, the software product comprising computer executable instructions that, when executed by the processor:

enable a user at the user station to select content from each of a plurality of independent publishers;

effect transport of the selected content from each of the plurality of publishers to the user station over a communications network and, without user intervention, effect storage of the transported content to the storage device such that the content is retained on the storage device upon shutting down of the user station and/or deactivation of the software product; and

effect presentation of the stored content to the user at the user station with a user interface that is customized to the respective publishers.

8. The software product as set forth in claim 1, wherein the transport of the selected content to the user station is effected without user intervention.

16. The software product as set forth in claim 1, wherein the transport of the selected content to the user station is effected using a non-proprietary data transfer protocol.

17. The software product as set forth in claim 1, wherein the communications network is the Internet.

According to the PTAB, none of claims 1, 8, 16 or 17 constitute a “technical invention”:

“Claim 1 is directed to a software product that comprises instructions that select, transport, store, and display content.  As is discussed in greater detail in the next section, the steps of claim 1 provide a very general description of how components carry out instructions. For example, the instructions are “executed” by the processor.

The method of claim 1 is analogous to claim 17 of Versata in that claim 1 is directed to a business process of distribution of electronic information products that includes minimal computer-related limitations. Likewise, the fact that the steps are accomplished via a general purpose computer (a user station, communication network, and user interface) does not change the character of the invention. Just as the patent at issue in Versata sought to reduce the need for large data tables, so too the patent at issue here sought to solve problems related to OSPs and M2M transfers. This did not transform claim 17 in Versata Development into a technological invention, nor does it do so for claim 1 here.

Accordingly, the ’464 patent does not solve a technical problem using a technical solution.”

The CAFC just issued a brief, but potentially far reaching, opinion in In re Ray Smith; available here – http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1664.Opinion.3-8-2016.1.PDF

In seven short pages the CAFC appear to have invalidated all patents directed to the gaming arts that do not utilize some form of new material objects (e.g., new type of cards or new physical playing board).  The panel, Moore, Hughes & Stoll, found claims, which were directed to a variation of Blackjack, to be directed to the abstract idea of a “method of conducting a wagering game.”  While this abstract idea essentially ignores all of the actual recitations in the claims, it is probably a reasonable finding.  Next, the court continued by purporting to evaluate the claims under the second prong, and found that the claims here require shuffling and dealing, which are conventional activities that cannot impart an inventive concept.  Here the court seems to completely ignore the aspects of the claims that would make them patentable under any section of 35 U.S.C..

Nothing in the written opinion suggests that the court evaluated (or that Applicants argued) that the “process” (e.g, the rules of the game) were the inventive concept.  Why can’t the game rules be the inventive concept, other than under this new application of 101 game rules would seem to easily satisfy all other tests for patentability.  Until this decision, it was my understanding that game rules, such as embodied in these claims, were patent eligible subject matter and it was the “process” or rules that were evaluated to determine patentability.

The Court did leave open a crack for some limited future innovation in this area:

That is not to say that all inventions in the gaming

arts would be foreclosed from patent protection under

§ 101. We could envisage, for example, claims directed to

conducting a game using a new or original deck of cards

potentially surviving step two of Alice.

The brief opinion, with potentially wide reaching effects, is troubling, especially when one considers how limited the remaining options for intellectual property protections appear to be for novel gaming variations based on old, well-known physical elements.  Gaming rules, as such, are not protectable under copyright, since they would likely be considered functional.  Rules are not protectable as trade secrets, since they have to be published to be useful to anyone.  Trade dress and design patents would only be useful for protecting particular decorative aspects, but not the rules themselves.

Where does the CAFC come up with support for removing this formerly patentable area of innovation from the realm of patent eligible subject matter?  Is this opinion limited by the face that these claims are directed to a wagering game, providing a link to a “fundamental economic practice”?  I wouldn’t bet on future courts or litigants narrowly construing this decision. 

The game rules laid out by the example claim provided in the opinion are a very specific implementation of the abstract idea of conducting a wagering game.  These claims do not even remotely threaten all applications or future innovations around the idea of conducting a wagering game.  At least based on the information contained within the courts opinion, this case bears very little relationship to Alice, or even the type of patents Alice represented (e.g., well known business processes performed by a computer).

Apparently the pendulum is still moving in the wrong direction!

Thanks to Greg Stark, Principal, Schwegman, Lundberg & Woessner, P.A., for this post.