Software Patents

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Software Patents a US perspective

• November 26, 2006

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Agenda

• US Patent Law basics
• Software Specification Drafting
• Statutory Subject Matter
• Types of Claims for Software
• Conclusion

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Agenda

• US Patent Law basics
• Software Specification Drafting
• Statutory Subject Matter
• Types of Claims for Software
• Conclusion

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Sources of U.S. Patent Law

• Authority
• United States Constitution
• Clause 8 of Section 8, Article I
• Statute
• Title 35, United States Code
• Implementation
• Title 37, Code of Federal Regulations
• Interpretation
• United States Court of Appeals for the Federal
  Circuit

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Title 35, U.S.C.

• Whoever invents or discovers any new and useful
  process, machine, manufacture, or composition of
  matter, or any new and useful improvement
  thereof, may obtain a patent therefor, subject to
  the conditions and requirements of this title.
• 101

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U.S. Court of Appeals for the Federal Circuit
(CAFC)

• Created in 1982, by the merging of the U.S. Court
  of Claims and the U.S. Court of Customs and
  Patent Appeals.
• The court hears appeals in cases from the Patent
  and Trademark Office, and cases relating to U.S.
  patent law from federal district courts.

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Software Specification

• Statutory Requirements
• Enablement
• Written Description
• Best Mode

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Enablement

• Legal Standard
• Must enable one skilled in the art to make and
  use the invention
• Practical Consideration
• Software varies considerably
• Simple graphical user interface
• Parallel processing architecture
• Operating Systems and Databases
• Application software for a specific domain

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Enablement

• Practical consideration
• Role of the program
• Interaction with the application carrying out the
  program
• Complexity of the program
• Should target a typical software developer
• Who is a typical software developer
• What level of experimentation required
• Normal Debugging would be considered routine
• Programming details not needed
• Source code not needed
• Function may be sufficient

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Enablement

• A skilled artisan should be able to design the
  code
• Detailed functional Spec is often available
• Could be a good starting point
• Flow charts
• A very good starting point for process claims
• Block diagrams
• A very good starting point for system claims
• Broad flowchart/block diagram for independent
  claims
• Zoom into individual boxes/blocks for possible
  dependent claims

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Statutory Requirements

• Written Description
• Convey to a skilled artisan that the inventor
  possessed the invention
• Best Mode

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Agenda

• US Patent Law basics
• Software Specification Drafting
• Statutory Subject Matter
• Types of Claims for Software
• Conclusion

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Recent cases relating to35 USC 101

• Whoever invents or discovers any new and useful
  process, machine, manufacture, or composition of
  matter, or any new and useful improvement
  thereof, may obtain a patent therefor, subject to
  the conditions and requirements of this title.

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In re Beauregard (1995)
Manufacture

• "Program Product"
• A computer readable medium with instructions for
  causing a particular operation on a computer is a
  statutory article of manufacture.

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Program Product

• Computer readable medium
• Floppy Disk
• Hard Disk (fixed or removable)
• CD
• Chips (ROM-RAM)
• Tape
• Cartridge with Integrated Circuit (IC)
• Internet Download?

• Instructions
• Source code
• Header files
• Object class libraries
• HTML
• Object code
• Executables

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State Street Bank (1998)
Machine

• A computer
• including a mathematical algorithm or embodying a
  method of doing business, and
• directed to a useful application of the algorithm
  / business method,
• is a statutory machine.

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ATT v. Excel (1999)
Process

• A method for use in a telecommunications system
  ... comprising the steps of
• generating a message record..., and
• including, in said message record, a primary
  interexchange carrier (PIC) indicator having a
  value which is a function of ... .

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ATT (continued)

• "the judicially-defined proscription against
  patenting of a 'mathematical algorithm,' to the
  extent such a proscription still exists, is
  narrowly limited to mathematical algorithms in
  the abstract"
• "It is now clear that computer-based
  programming constitutes patentable subject matter
  so long as the basic requirements of 101 are
  met."

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ATT (continued)

• "The focus is understood to be not on whether
  there is a mathematical algorithm at work, but on
  whether the algorithm-containing invention, as a
  whole, produces a tangible, useful, result."

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Review of State Street

• State Street
• "The transformation of data ... by a machine
  through a series of mathematical calculations
  into a final share price, constitutes a practical
  application of a mathematical algorithm, formula,
  or calculation, because it produces 'a useful,
  concrete and tangible result' "
• "We take this opportunity to lay this
  ill-conceived method of doing business
  exception to rest."

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New Section 101 Guidelines

• What qualifies as the statutory subject matter
• Ex parte Lundgren (Appeal No. 2003-2088)
• Section 101 Guidelines issued in 2005
  (Guidelines101_20052026.pdf which can be located
  at www.uspto.gov )

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New Section 101 Guidelines

• Step 1 The Examiner must determine if the
  invention falls in one of the enumerated
  statutory subject matters namely process,
  machine, manufacture, or composition of matter

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New Section 101 Guidelines

• Step 2 Is invention in an exluded subject matter
  namely a law of nature, a natural phenomenon,
  or an abstract idea
• Practical Applications and results tied to real
  world are excluded from step 2

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New Section 101 Guidelines

• Two alternate ways to determine if an invention
  is directed to a practical application.
• First does the invention transforms an article
  to a different state or thing
• Second does it produce a useful, tangible
  and concrete

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New Section 101 Guidelines

• Useful specific, substantial and credible
  result
• Tangible real word result
• Concrete - repeatable

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Agenda

• US Patent Law basics
• Software Specification Drafting
• Statutory Subject Matter
• Types of Claims for Software
• Conclusion

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Potential Infringers/Licensees

• Overall System Developers
• Individual Developers
• CGU
• IGU
• HHU
• DigiPok Character Developers
• Individual Users

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Potential Infringers/Licensees

• Individual Program Developers for New and
  Existing DigiPok Characters
• Software Sellers
• Communication Service Providers
• Hosting Service Providers
• Game Parlors

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Purposes of Claim Drafting

• Maximize the number of potential Direct
  Infringers
• Maximize the number of potential Contributory
  Infringers
• Infringing activity should occur entirely in US
• Avoid having to rely on PPAA
• Personal Jurisdiction in as many states as
  possible

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Weapons in our Arsenal

• System Claims
• A computer system for..
• Covers a special purpose dedicated computer
• Covers a general purpose machine with software
  loaded in RAM
• A special purpose machine according to In re
  Allappat
• Method Claims
• A computer-implemented method of

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Weapons in our Arsenal

• In re Beauregard Claims
• A computer program product for enabling a
  computer to..
• Covers any medium in which software is hard-coded
• System claim covers only the computer with RAM
  loaded and ready to perform a task.
• Data Transmission Medium
• A computer-readable data transmission medium
  containing a data structure
• series of interactions between components of the
  system

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Weapons in our Arsenal

• Data Structures on a disk (In re Lowry claims)
• A computer readable medium containing a data
  structure for...
• Data Transmission Medium
• A computer-readable data transmission medium
  containing a data structure
• series of interactions between components of the
  system

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Weapons in our Arsenal

• Computer with a memory comprising instructions
• User Interface
• A method in a computer system for displaying..
• Methods based on interactions with the computer
• Communication Method
• Sequence of events in a typical session

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Agenda

• US Patent Law basics
• Software Specification Drafting
• Statutory Subject Matter
• Types of Claims for Software
• Conclusion

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THANK YOU

• Chidambaram S. Iyer
• Partner, Sughrue Mion PLLC
• 2100 Pennsylvania Ave
• Washington DC 20037
• ciyer_at_sughrue.com
• 1-202-775-7542