The History of Software Patents

Berkheimer v. HP, Federal Circuit 2018 (Software Patents)

Mr. Berheimer sued HP.  HP moved for summary judgment that claims 1–7 and 9 of U.S. Patent No. 7,447,713 are patent ineligible under 35 U.S.C. § 101, and the district court granted the motion.

The patent relates to digitally processing and archiving files in a digital asset management system.  The system parses files into multiple objects and tags the objects to create relationships between them. These objects are analyzed and compared, either manually or automatically, to archived objects to determine whether variations exist based on predetermined standards and rules. This system eliminates redundant storage of common text and graphical elements, which improves system operating efficiency and reduces storage costs. The relationships between the objects within the archive allow a user to…

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Core Wireless Licensing v. LG Electronics Mobilecomm, Federal Circuit 2018 (Software Patents)

In this case, LG Electronics appealed from a district court decision denying summary judgement that claims 8 and 9 of a software patent, No. 8,713,476 and claims 11 and 13 of another software patent, No. 8,434,020 are directed to patent ineligible subject matter under 35 U.S.C. § 101.

The patents disclose improved display interfaces for electronic devices with small screens like mobile telephones. An application summary window is displayed while a software application is in an unlaunched state.

Claims 8 and 9 of the ’476 software patent depend from claim 1, which recites:
1. A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured…

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Finjan Inc., v. Blue Coat Systems, Inc., Federal Circuit 2018 (Software Patents)

Finjan brought suit against Blue Coat for infringement of software patents directed to identifying and protecting against malware.  One of the software patents is directed to a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a “security profile.”

Claim 1 of the patent reads:

1. A method comprising:

  • receiving by an inspector a Downloadable;
  • generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and
  • linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The parties agreed that “Downloadable” should be construed to mean “an executable…

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Smart Systems Innovations v. Chicago Transit Authority, Federal Circuit 2017 (Software Patents)

The software patents in this case relate to inventions designed to allow riders to access mass transit by using existing bankcards, such as debit and credit cards, without the need for first buying dedicated fare-cards, paper tickets, or tokens.  The District Court had held that the patent claims are directed to an abstract idea and otherwise lack an inventive concept, such that they are patent ineligible under 35 U.S.C. § 101.On appeal, the Federal Circuit noted that they needed to use the framework set forth in the Supreme Court’s decision in Alice Corp. Pty Ltd. v. CLS Bank International. A patent claim falls outside § 101 where (1) it is “directed to” a patent-ineligible concept, i.e., a law of…

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Visual Memory LLC v. NVIDIA Corp., Federal Circuit 2017 (Software Patents)

This case concerned an appeal from a district court case which held that Visual Memory’s U.S. Patent No. 5.953,740 was drawn to patent-ineligible subject matter.

The patent teaches that computer systems frequently use a three-tiered memory hierarchy to enhance performance. The three tiers include: 1) a low-cost, low speed memory, such as a magnetic disk, for bulk storage of data; 2) a medium-speed memory that serves as the main memory; and 3) an expensive, high-speed memory that acts as a processor cache memory. Because the cache memory is the most expensive, it is typically smaller than the main memory and cannot always store all the data required by the processor. The memory hierarchy alleviates the limitations imposed by the cache’s size…

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Thales Visionix Inc. v. United States, Federal Circuit 2017 (Software Patents)

Thales Visionix Inc. appealed from a Claims Court judgment that most claims of its U.S. Patent No. 6,474,159 were directed to patent-ineligible subject matter.

The patent discloses an inertial tracking system for tracking the motion of an object relative to a moving reference frame. Inertial sensors, such as accelerometers and gyroscopes, measure the specific forces associated with changes in a sensor’s position and orientation relative to a known starting position. Such sensors are used in a wide variety of applications, including aircraft navigation and virtual reality simulations. When mounted on a moving object, inertial sensors can calculate the position, orientation, and velocity of the object in 3-dimensional space, based on a specified starting point, without the need for any other…

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Trading Technologies International Inc., v. CQG, Inc., Federal Circuit 2017 (non-precedential) (software patents)

This decision should be very interesting to software developers who want software patents on unique graphical user interfaces. The decision is non-precedential, but can be cited to the U.S. Patent and Trademark Office when the facts in a patent application uniquely match those in this case. Up until this case, and after Alice, the Federal Circuit had consistently found the claims to user interfaces patent-ineligible, reasoning that generically claimed user interfaces that merely present information that had been collected and analyzed are ineligible.

Trading Technologies International, Inc. charged CQG with infringement of U.S. Patent Nos. 6,772,132 and 6,766,304.  CQG appealed the decision of the district court that the patents recite patent-eligible subject matter.

The software patents describe and claim a method and…

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Amdoc (Israel) Ltd. v. Openet Telecom, Inc., Federal Circuit Nov 2016 (Software Patents)

Amdoc sued Openet over four software patents directed to solving accounting and billing problems faced by network service providers. The district court held that the software patents were directed to patent-ineligible abstract ideas.

A split panel of the Federal Circuit reversed the district court.

The written descriptions of the software patents describe the same system, which allows network service providers to account for and bill for internet protocol (“IP”) network communications. The system includes network devices; information source modules (“ISMs”); gatherers; a central event manager (“CEM”); a central database; a user interface server; and terminals or clients. Network devices represent any devices that could be included on a network, including application servers, and also represent the source of information accessed by the…

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Intellectual Ventures I LLC v. Symantec Corp., Trend Micro Incorporated, Federal Circuit 2016 (Software Patents)

It is bad enough that the Supreme Court doesn’t know what it is doing when it comes to software patents. In Alice v CLS, they considered a financial patent that could have easily been invalidated on the grounds of obviousness, and instead invalidated it based on subject matter (35 U.S.C. 101). They didn’t say that financial methods cannot be patented. They did not say that all software patents are invalid. They used a vague framework from a biotech decision. The courts now use an unclear test that involves considering whether the subject matter of the claim is “too abstract” and, if so, whether the claims add “significantly more”.  Neither of these concepts were well defined.   I suppose they were hoping for judicial efficiency in having courts…

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McRo, Inc., dba Planet Blue v. Bandai Namco Games America, post-Alice decision finding software invention patentable, Federal Circuit 2016 (Software Patents)

This was an appeal from a grant of judgment on the pleadings that the asserted claims of two software patents, U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and 6,611,278 (‘‘the ’278 patent’’) were invalid.

The software patents relate to automating part of a preexisting 3-D animation method. A prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. To animate the character as it speaks, the method morphs the character’s expression between the models. The “neutral model” is the 3-D representation of the resting, neutral facial expression of an animated character. The other models of the character’s face are known as “morph targets,” and each one represents that face as it pronounces…

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