History of Software Patents

HomeHistory of Software Patents
WEISNER V GOOGLE LLC, FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)
By Deepak MalhotraMarch 19, 2023

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)
By Deepak MalhotraMarch 14, 2023

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)
By Deepak MalhotraMarch 13, 2023

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)
By Deepak MalhotraMarch 11, 2023

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)
By Deepak MalhotraMarch 8, 2023

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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CAREDX, INC. V. NATERA, INC., FEDERAL CIRCUIT 2022 (SOFTWARE PATENTS)
By Deepak MalhotraMarch 6, 2023

The Federal Circuit stated in this decision that CareDx’s patents apply conventional measurement techniques to detect a natural phenomenon—the level of donor cfDNA and the likelihood of organ transplant rejection.

CareDx and Stanford appealed a decision holding that Stanford’s Patents 8,703,652, 9,845,497, and 10,329,607 are ineligible for patent under 35 U.S.C. § 101.  The three patents share the same specification and are entitled “Non-Invasive Diagnosis of Graft Rejection in Organ Transplant Patients.” These patents discuss diagnosing or predicting organ transplant status by using methods to detect a donor’s cell-free DNA (“cfDNA”). When an organ
transplant is rejected, the recipient’s body, through its natural immune response, destroys the donor cells, thus releasing cfDNA from the donated organ’s dying cells…

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Cosmokey Solutions GMBH & Co. v. Duo Security LLC, Federal Circuit 2021 (Software Patents)
By Deepak MalhotraOctober 23, 2022

Reducing complexity, in an authentication method, provides a technical improvement over conventional authentication methods. Applicant’s specification emphasizes the inventive nature of these steps and describes how authentication complexity is reduced.

CosmoKey’s U.S. Patent No. 9,246,903 was found to be ineligible under 35 U.S.C. 101 by a District Court.

The patent is titled “Authentication Method” and discloses an authentication method that is both low in complexity and high in security.

The patent specification indicates that when a user communicates with a remote transaction partner (e.g., a bank, a store, or a secured database) via the Internet, “it is important to assure that an individual that identifies itself as an authorized user is actually the person it alleges to be.”  The specification also describes several conventional authentication methods involving a user’s mobile…

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Mentone Solutions LLC v Digi International, Federal Circuit 2021 (Software Patents)
By Deepak MalhotraSeptember 3, 2022

Characterization of an invention must reflect the claimed invention at an appropriate level of abstraction, for an Alice analysis.

U.S. Patent No. 6, 952,413 relates to resource allocation in general packet radio systems.  In those systems, a number of mobile stations communicate with a single network through physical links called Packet Data Channels. When the mobile stations receive information from the network, they are engaging in downlink (DL) communication, and when
the mobile stations are transmitting information to the network, they are engaging in uplink (UL) communication. These mobile stations communicate within time frames, each divided into eight timeslots. To control access to the Packet Data Channels, which are shared among mobile stations, the network uses an uplink status flag (USF)….

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In Re Elbaum, Federal Circuit 2021 (Software Patents)
By Deepak MalhotraAugust 30, 2022

Enabling an internet seller to pay a finder’s fee to a retail store when a customer finds the internet seller’s product through advertising in the retail store is not patent-eligible.

Mr. Elbaum’s patent application number 15/948,447 relates to selling products or services on the internet using physical retail locations. The specification describes the disclosed method as “enabling the sale of products or services which are available on the internet. The disclosed method allows an internet seller to provide a retail store with information about products or services available on the internet. The information includes a website address and a code, wherein the code is associated with that particular retail location. A customer entering the retail store who obtains this information can then use the code to make a…

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YU V. APPLE INC., FEDERAL CIRCUIT 2021 (SOFTWARE PATENTS)
By Deepak MalhotraAugust 23, 2021

Two image sensors, two lenses, analog-to-digital converting circuitry, an image memory, and a digital image processor were not enough hardware. The claims were still found to be too abstract here.

There has been a lot of uncertainty in the field of Software Patents since the Supreme Court’s decision in Alice v. CLS.  The Supreme Court struck down a software patent covering a financial method involving hedging.  Roughly speaking, the Supreme Court invalidated a software patent in which conventional steps were computerized as being “not statutory;” i.e., not meeting the requirements of patent statute 35 U.S.C. 101.  The Federal Circuit and other courts have struggled to interpret this decision and apply it to software patents and business method patents.

In this decision, that uncertainty has been extended dramatically to…

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