History of Software Patents

HomeHistory of Software Patents
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 1998
By Deepak MalhotraFebruary 20, 2007

This case opened the door for business method patents, at least where the business method was implemented in software in a system that included some hardware, like a processor and storage means.

Signature Financial Group, Inc. appealed from a decision of the United States District Court for the District of Massachusetts granting a motion for summary judgment in favor of State Street Bank & Trust Co., finding U.S. Patent No. 5,193,056 invalid on the ground that the claimed subject matter was not encompassed by 35 U.S.C. Section 101.

Signature was the assignee of the ‘056 patent entitled “Data Processing System for Hub and Spoke Financial Services Configuration.” The ‘056 patent is generally directed to a data processing system (the system) for implementing an investment structure which was developed…

Read More
1996 Examination Guidelines for Computer Related Inventions
By Deepak Malhotra

After In re Beauregard, the U.S. Patent and Trademark Office issued its Examination Guidelines for Computer Related Inventions. This marked a real turning point in that now internal PTO guidelines were published that applicants could use when arguing with Examiners. Examiners were being told that they could actually allow certain software patents. Though many were still reluctant.

The most relevant points (in my opinion) of these guidelines are as follows (keep in mind that this was only the Patent Office’s interpretation):

The utility of an invention must be within the “technological” arts. A computer-related invention is within the technological arts. A practical application of a computer-related invention is statutory subject matter.

1. Non-Statutory Subject Matter
Claims to computer-related inventions that are clearly non-statutory fall into the same general categories as…

Read More
In re Beauregard, 1995
By Deepak Malhotra

Beauregard was a very important case in the History of Software Patents.  In re Beauregard is the case that opened things up completely for software patents. It signaled the end of the U.S. Patent and Trademark Office’s resistance to allow patent applications that contained algorithms.

Beauregard’s invention, described in U.S. Patent Application Serial No. 07/521,858, now U.S. Patent No. 5,710,578 (to IBM), related to graphical raster displays, and to a system and method for filling in the area defined by the boundaries of a polygon that is being displayed on a graphical raster display system. The software patent relates to accurately filling a polygon by including the points in an algorithm, called the Bresenham algorithm, that define the boundaries of a polygon in the resulting filled polygon.

The…

Read More
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…

Read More
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:

Read More
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…

Read More
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…

Read More
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…

Read More
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…

Read More
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…

Read More