The History of Software Patents

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Intellectual Ventures I LLC v. Symantec Corp., Trend Micro Incorporated, Federal Circuit 2016 (Software Patents)
By Deepak MalhotraOctober 3, 2016

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 decide…

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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)
By Deepak MalhotraSeptember 22, 2016

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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BASCOM Global Internet Services v AT&T Mobility, post-Alice decision finding software invention patentable, Federal Circuit 2016 (Software Patents)
By Deepak MalhotraSeptember 20, 2016

This was an appeal against a district court decision that the claims of U.S. Patent No. 5,987,606 are invalid as a matter of law under 35 U.S.C. § 101.

The patent relates to preventing the problem of employees from accessing non-work related web sites, such as entertainment web sites, at work. The patent describes its invention as combining the advantages of the then-known filtering tools while avoiding the drawbacks. The claimed filtering system avoids being modified or thwarted by a computer literate end-user, and avoids being installed on and dependent on individual end-user hardware and operating systems or tied to a single local area network or a local server platform by installing the filter at the ISP server.

Individuals are able to…

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In re: TLI Communications LLC Patent Litigation, Federal Circuit 2016 (Software Patents)
By Deepak MalhotraMay 27, 2016

TLI Communications hold U.S. Patent No. 6,038,295 relating to a method and system for taking, transmitting, and organizing digital images.

The patent relates generally to an apparatus for recording of a digital image, communicating the digital image from the recording device to a storage device, and to administering the digital image in the storage device. The specification notes that a “wide variety of data types” can be transmitted, including audio and image stills.  Moreover, cellular telephones may be utilized for image transmissions.   When a large number of digital images are recorded and are to be archived in a central computer unit, then the organization of the data base becomes a problem, according to the patent.  In particular, the problems of locating…

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Enfish v Microsoft, Federal Circuit 2016 (Software Patents)
By Deepak MalhotraMay 26, 2016

Enfish sued Microsoft for infringement of U.S. Patent 6,151,604 and U.S. Patent 6,163,775 related to a logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. A logical model generally results in the creation of particular tables of data, but it does not describe how the bits and bytes of those tables are arranged in physical memory devices. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as a “self-referential” property of the database.

This self-referential property can be…

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U.S. Patent and Trademark Office Examples of Abstract Idea Claims (Software Patents)
By Deepak MalhotraFebruary 3, 2015

The U.S. Patent and Trademark Office published examples of claims that are patent eligible and claims that are not patent eligible. The examples show how claims should be analyzed under the 2014 Interim Eligibility Guidance, discussed in a post below. All of the claims are analyzed for eligibility in accordance with their broadest reasonable interpretation.

Patent Eligible Claims

Example 1: Isolating and Removing Malicious Code from Electronic Messages

The invention relates to isolating and removing malicious code from email to prevent a computer from being compromised, for example by being infected with a computer virus. The specification explains the need for computer systems to scan electronic communications for malicious computer code and clean the electronic communication before it may initiate malicious acts. The disclosed invention operates by physically isolating a…

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Post-Alice Software Patent Decision, Content Extraction and Transmission v Wells Fargo, Federal Circuit, Dec. 2014
By Deepak MalhotraFebruary 2, 2015

CET owns patents that generally recite a method of 1) extracting data from hard copy documents using an automated digitizing unit such as a scanner, 2) recognizing specific information from the extracted data, and 3) storing that information in a memory. This method can be performed by software on an automated teller machine (ATM) that recognizes information written on a scanned check, such as the check’s amount, and populates certain data.

One of the claims recites:
A method of processing information from a diversity of types of hard copy documents, said method
comprising the steps of:
(a) receiving output representing a diversity of types of hard copy documents from an automated digitizing unit and storing information from said diversity of types of hard copy documents into a memory, said
information not fixed…

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December 16, 2014 Interim Guidelines on Subject Matter Eligibility of Software Patents
By Deepak MalhotraDecember 16, 2014

The United States Patent and Trademark Office has prepared interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility, called “Interim Eligibility Guidance”) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court (Supreme Court) such as Alice, Myriad, and Mayo.

The guidelines provide the following flowchart:

(Step 1) Is the claim to a process, machine, manufacture or composition of matter?
If so, proceed to Step 2A. If not, the claim is not eligible subject matter under 35 USC 101.

(Step 2A) Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions)?. If so, proceed to Step 2B. If not, the claim qualifies as…

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Post-Alice Decision on 35 U.S.C. 101, Software Patent Held Statutory, DDR Holdings, LLC v. Hotels.com, L.P. , Federal Circuit 2014
By Deepak MalhotraDecember 10, 2014

This is an important recent case in the history of software patents.

Defendants National Leisure Group, Inc. and World Travel Holdings, Inc. (collectively “NLG” hereafter) appealed from a judgment of the U.S. District Court for the Eastern District of Texas in which a judgment was entered in favor of DDR.  A jury found that defendants infringed U.S. Patent Nos. 6,993,572 and 7,818,399, that the claims were valid, and awarded $750,000 in damages.  On appeal to the Federal Circuit, the asserted claims of the ‘572 patent were held to be anticipated and vacated the award of damages and prejudgment interest.

On the other hand, the Federal Circuit found that the ‘399 patent included patent-eligible subject matter under 35 U.S.C. 101, and that the claims were valid and infringed.  The ‘399…

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Post-Alice Decision on Software Patents, Ultramercial Inc. v. Hulu LLC, Federal Circuit 2014
By Deepak MalhotraNovember 28, 2014

Ultramercial sued Hulu, YouTube, and WildTangent in 2009 for infringement of a patent related to distributing copyrighted material over the Internet to a consumer at no cost in exchange for viewing an advertisement, with the advertiser paying for the copyrighted material.

WildTangent filed a motion to dismiss, alleging that the claims were not statutory under 35 U.S.C. § 101.  The district court granted the motion.  The Federal Circuit reversed.  The Supreme Court vacated the decision and
remanded for consideration in view of its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  A unanimous panel of the Federal Circuit again held the claims to be statutory.  WildTangent petitioned for Supreme Court review.  The Supreme Court again vacated the Federal Circuit’s decision and remanded for consideration in view of its…

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