Software Patents

Software Patents – a US perspective November 26, 2006

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

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

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

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.

Software Specification • Statutory Requirements • Enablement • Written Description • Best Mode

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

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

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

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

ATT v. Excel (1999) State Street Bank (1998) In re Beauregard (1995) 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.

Computer readable medium+ Instructions Program Product 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.

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 Program Product

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.

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 ... .

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" • "[I]t is now clear that computer-based programming constitutes patentable subject matter so long as the basic requirements of §101 are met."

ATT (continued) • "[T]he 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."

Review of State Street • State Street • "[T]he 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."

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 )

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

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

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”

New Section 101 Guidelines • Useful – specific, substantial and credible result • Tangible – real word result • Concrete - repeatable

Individual Game Unit Processing Central Game Unit Server Hand-held Game Unit User Interface Central Data Store Individual Game Unit Processing Hand-held Game Unit Processing User Interface

IGU Pro CGU Hand-held Unit UI Data Store IGU Pro Hand-held Unit Pro UI Potential Infringers/Licensees • Overall System Developers • Individual Developers • CGU • IGU • HHU • DigiPok Character Developers • Individual Users

IGU Pro CGU Hand-held Unit UI Data Store IGU Pro Hand-held Unit Pro UI Potential Infringers/Licensees • Individual Program Developers for New and Existing DigiPok Characters • Software Sellers • Communication Service Providers • Hosting Service Providers • Game Parlors

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

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

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

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

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

THANK YOU Chidambaram S. Iyer Partner, Sughrue Mion PLLC 2100 Pennsylvania Ave Washington DC 20037 ciyer@sughrue.com 1-202-775-7542

Software Patents – a US perspective