The History of Software Patents

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In re Trovato, 1994
By Deepak MalhotraFebruary 19, 2007

Just when it seemed like at least the Federal Circuit supported patents for software related inventions came the troubling case of In re Trovato.

The problem of finding the shortest distance between two points is a recurring one, and is of particular interest to students of the computer science field known as graph theory. Trovato’s inventions work within this area, attempting to solve the “shortest path problem” by finding the optimal path between two locations, whether in terms of distance, cost, capacity, time or other criteria. The inventions model possible object movements in the real world–the “physical task space”–by a graph called a “configuration space.” Each node of the graph represents a discrete state, or set of conditions, such as location or orientation. Edges connect the…

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In re Lowry, 1994
By Deepak MalhotraFebruary 18, 2007

Lowry’s patent application, titled “Data Processing System Having a Data Structure with a Single, Simple Primitive,” related to the storage, use, and management of information residing in a memory. The invention provided an efficient, flexible method of organizing stored data in a computer memory. A memory stores data according to a particular order or arrangement. Application programs use stored data to perform specified functions. A data model provides the framework for organizing and representing information used by an application program. Data models define permissible data structures – organizational structures imposed upon the data used by the application program – compatible with particular data processing systems.

Claims 1 through 5 claimed a memory containing a stored data structure. Claim 1 was representative:

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In re Warmerdam, 1994
By Deepak Malhotra

Warmerdam’s patent application was directed to a method and apparatus for controlling the motion robotic machines to avoid collisions.

The technique required determining the shape and position of the edges of the objects to be avoided. The prior art taught that collision avoidance operations could be simplified by assuming that the objects were larger and more regularly shaped than they actually were. This could be done by treating the object as if it were a circle or sphere (called a “bubble”) of sufficient size to enclose the object, and by assuming that any motion that impinged upon the circle would have produced a collision. Appellants’ invention claimed a further refinement of prior art bubble systems. The positions of objects were determined by measuring…

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In re Alappat, 1994
By Deepak Malhotra

This case went a long way towards making it possible to obtain patents on software-related inventions, at least for apparatus claims drafted in means-plus-function format, and if digital hardware equivalents were disclosed in the specification. Specific hardware structures were disclosed in the specification, but the Federal Circuit held that the claim could also read on a general purpose computer programmed to carry out the invention, without a 35 U.S.C. 101 problem.

Alappat’s invention related generally to a means for creating a smooth waveform display in a digital oscilloscope. The screen of an oscilloscope was the front of a cathode-ray tube (CRT), whose screen presented an array (or raster) of pixels arranged at intersections of vertical columns and horizontal rows. Each column in the array represented…

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In re Schrader, 1994
By Deepak Malhotra

Schrader’s application was directed to a method for competitively bidding on a plurality of related items, such as contiguous tracts of land or the like. After the items have been offered to bidders, bids on one, some, or all of the items are received and entered into a “record.” Then, the combination of winning bids is determined by assembling a “completion” from all the entered bids. A completion is the particular combination of bids which “would complete a sale of all of the items being offered at the highest offered total price.” The items are then sold in accordance with the “completion.”

For example, in an auction involving two contiguous tracts of land, tracts 1 and 2, the following bids might be received and recorded: Bid…

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Arrhythmia Research Technology Inc. v. Corazonix Corp., 1992
By Deepak Malhotra

The invention was directed to the analysis of electrocardiographic signals in order to determine certain characteristics of the heart function. Dr. Simson, a cardiologist, had sought a solution to the problem of determining which heart attack victims are at high risk for ventricular tachycardia, so that these persons can be carefully monitored and appropriately treated.

Certain steps of the invention were described as being conducted with the aid of a digital computer, and the patent specification set forth the mathematical formulae that were used to configure (program) the computer. The specification stated that dedicated, specific purpose equipment or hard wired logic circuitry can also be used.

The district court held that the method and apparatus claims of the Simpson patent are directed to a mathematical…

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Patent Office Solicitor’s Legal Analysis, 1989
By Deepak MalhotraFebruary 16, 2007

In 1989, Associate Solicitor Lee E. Barrett, an attorney in the Office of the Solicitor of the Patent and Trademark Office, performed a legal analysis on the subject of the patentability of mathematical algorithms and computer programs. The analysis was stated to have been published for the benefit of the public. Patent Examiners at the time were still anti-software patent.

August 9, 1989. FRED E. McKELVEY, Solicitor

Table of Contents

I. STATUTORY SUBJECT MATTER: 35 U.S.C. $ 101

II. MATHEMATICAL ALGORITHMS

A. Mathematical algorithms per se are not a statutory “process”
under $ 101

B. Evolution of the two-part test for mathematical
algorithm-statutory subject matter

C. Application of the…

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In re Iwahashi, 1989
By Deepak Malhotra

This case marked quite a change from earlier positions. In this case, the Federal Circuit held that a general purpose computer, running an new algorithm for pattern recognition, could be patentable subject matter.

Iwahashi’s invention related to an auto-correlation unit for use in a pattern recognition to obtain auto-correlation coefficients as for stored signal samples. One particular embodiment related to using pattern recognition in voice recognition.

The claim on appeal was:
An auto-correlation unit for providing auto-correlation coefficients for use as feature parameters in pattern recognition for N pieces of sampled input values Xn(n = 0 to N – 1), said unit comprising:

means for extracting N pieces of sample input values Xn from a series of sample values in an input pattern expressed with an accuracy of optional…

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In re Grams, 1989
By Deepak Malhotra

The invention in this case related to a method of testing a complex system to determine whether the system condition is normal or abnormal and, if it is abnormal, to determine the cause of the abnormality. As disclosed in the specification, the invention is applicable to any complex system, whether it be electrical, mechanical, chemical, biological, or combinations thereof.

The Federal Circuit stated that, intuitively, one might conclude that § 101’s “any…process” would include the diagnostic method claimed by the applicants. Indeed, even without physical step present in the claims, application of the algorithm in other steps of the claim seemed to be a type of “process” that the Supreme Court recognized as much in Flook.

The Federal Circuit stated that Flook made clear, however,…

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In re Meyer, 1982
By Deepak Malhotra

Meyer’s invention related to a system for aiding a neurologist in diagnosing patients. Meyer’s claims were directed to a method of storing and correlating test responses on a complex system.

The CCPA upheld the Board of Patent Appeals and Interferences’ affirmance of an Examiner’s rejection of Meyer’s claims as being unstatutory under 35 USC § 101.

The court applied the first part of the two-part Freeman-Walter test to the Meyer claims, relying on the applicants’ specification and arguments, and found that the invention was concerned with partly replacing the thinking processes of a neurologist with a computer. The court then concluded that a mathematical algorithm was involved in the claims.

With respect to the second part of the Freeman-Walter test, the…

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