The History of Software Patents

USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

USC brought suit for infringement against Facebook, Inc. (now Meta Platforms, Inc.), asserting that its “News Feed” feature infringes claims 1–17 of U.S. Patent No. 8,645,300.  The software patent relates to a search engine software method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s “intent.”  The software patent states that website navigation can be enhanced “by recording a visitor’s intent and recording page rankings that indicate how well the pages of a website match the visitor’s intent.” The software patent further explains that visitor intent can be inferred from historical intent data, the Uniform Resource Locator, the user’s visits, and optional user intent confirmation.  The lower court, the Western District…

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TRINITY INFO MEDIA, LLC V. COVALENT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

Trinity Info Media, LLC sued Covalent, Inc. for infringement of U.S. Patent Nos. 9,087,321 and 10,936,685 relating to methods and systems for connecting users based on their answers to polling questions. U.S. Patent No. 9,087,321 teaches that its claimed invention is “directed to a poll-based networking system that connects users based on similarities as determined through poll answering and provides real-time results to the users. The claimed invention of the ’685 patent is “directed to a poll-based networking and ecommerce system that connects users to other users, or products, goods and/or services based on similarities as determined through poll answering and provides real-time results to the users.

Claim 1 of U.S. Patent No. 9,087,321 is representative and recites:

1. A poll-based…

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HANTZ SOFTWARE, LLC, V SAGE INTACCT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

Any ineligibility judgment should apply to only claims asserted in a complaint if held patent-ineligible after a motion to dismiss for failure to state a claim.

Hantz sued Sage alleging that Sage infringed U.S. Patent Nos. 8,055,559 and 8,055,560. Sage moved to dismiss the complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), arguing that the complaint asserted patent-ineligible claims under 35 U.S.C. § 101. The district court concluded that the asserted patents are ineligible under § 101.

Hantz maintained that the district court’s ineligibility judgment extended to all claims of the asserted patents, not just claims 1 and 31–33. According to Hantz, any ineligibility judgment should apply to only claims 1 and 31–33 of the asserted…

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HAWK TECHNOLOGY SYSTEMS, LLC, V CASTLE RETAIL, LLC, FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)

A multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images, which is capable of conserving bandwidth while preserving data is not patent-eligible.

Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee for patent infringement based on Castle Retail’s use of security surveillance video operations in its grocery stores. Castle Retail moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim.

Hawk is the owner of U.S. Patent No. 10,499,091 titled “High-Quality, Reduced Data Rate Streaming Video Product and Monitoring System.”  The patent relates to a method of viewing multiple simultaneously displayed and…

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IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)

The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible.

The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights.  US Synthetic Corporation filed an ITC complaint alleging violations based upon the importation into the United States of certain polycrystalline diamond compacts and articles infringing U.S. Patent Nos. 10,507,565, 10,508,502, and 8,616,306; and U.S. Patent Nos. 9,932,274 and 9,315,881.  An Administrative Law Judge found at least one accused product infringes all asserted claims of the Asserted Patents, but that those claims are patent ineligible under 35…

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WEISNER V GOOGLE LLC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Though creating digital location histories is not patent eligible, a method of enhancing digital search results may be patent eligible.

Mr. Sholem Weisner, an inventor of U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911 (along with Shmuel Nemanov)—sued Google LLC for patent infringement.

The four patents are related and share a common specification. The specification describes ways to digitally record a person’s physical activities and ways to use this information. Individuals and businesses can sign up for a system so that they can exchange information, for instance a URL or an electronic business card. Then, as individuals go about their day, they may encounter people or businesses that they want recorded in their “leg history,” which records the URLs…

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INTERNATIONAL BUSINESS MACHINES CORPORATION V ZILLOW GROUP INC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Functionally recited claims to organizing and displaying visual information are not patent-eligible.

IBM owns U.S. Patent No. 9,158,789 on a software method for coordinated geospatial, list-based and filter-based selection. A user draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map. It synchronizes which elements are shown as “selected” on the map and its associated list.

Claim 8 is representative and recites:

8. A method for coordinated geospatial and list-based mapping, the
operations comprising:

  • presenting a map display on a display device, wherein the map display comprises elements within a viewing area of the map display,…
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COOPERATIVE ENTERTAINMENT, INC v KOLLECTIVE TECHNOLOGY, INC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

At the pleadings stage, all that is required to survive a motion to dismiss based on Alice are plausible allegations in a complaint that the claims are patent-eligible.

The District Court for the Northern District of California’s dismissed Cooperative’s complaint for failure to state a claim as it found all claims of U.S. Patent No. 9,432,452 patent ineligible under 35 U.S.C. § 101

U.S. Patent No. 9,432,452 is a software patent that relates to structuring a peer-to-peer dynamic network for distributing large files, such as videos and video games. In prior art systems, video streaming was controlled by content distribution networks (CDNs), where content was “distributed directly from the CDN server originating the content.” The patent,…

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IN RE JASON SMITH, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

Mr. Smith’s argued that the first step in analyzing a claim must be to determine whether the claim is useful.  And if it is useful, it is by law patent-eligible.  The Federal Circuit disagreed.

The U.S. Patent and Trademark Office rejected claims of Jason Smith’s patent application as patent ineligible under 35 U.S.C. § 101. The Patent Trial and Appeal Board affirmed the rejection. Mr. Smith appealed to the Federal Circuit.

Mr. Smith’s patent application Serial No. 14/786,244 (Publication No. 2016/0063403) relates to software for asset acquisition and management.

Claim  is representative and recites:

  • A method for facilitating asset acquisition, asset management and asset maintenance whereby customers can purchase from multiple vendors comprising:
  • providing…
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IN RE JEFFREY A KILLIAN, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)

A system and method for determining eligibility for Social Security Disability Insurance benefits by computer is directed to steps that can be performed in the human mind, or by a human using a pen and paper and is therefore a patent-ineligible abstract idea.

Killian appealed from a decision of the Patent Trial and Appeal Board (Board) affirming the examiner’s rejection of all pending claims of U.S. Patent Application No. 14/450,042 under 35 U.S.C. § 101.

The application relates to a system and method for determining eligibility for Social Security Disability
Insurance benefits through a computer network. This process entails looking up information
from two sources: (1) a Federal Social Security database; and (2) a State database containing records for patients…

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