Posts Tagged: "history of software patents"

A Software Patent Setback: Alice v. CLS Bank

Truthfully, the Supreme Court decision in Alice can only be described as an intellectually bankrupt. The Supreme Court never once used the word “software” in its decision. The failure to mention software a single time is breathtaking given that the Supreme Court decision in Alice will render many hundreds of thousands of software patents completely useless. Ironically, at the end of the day, software patent claims written in typical, industry standard format will result in patent ineligible claims. Yet, at the same time, business methods are patentable. To call this bizarre and inconsistent doesn’t begin to scratch the surface.

A Software Patent History: The Algorithm Cases

These cases are very important though because they give us the best glimpse yet into understanding the disclosure requirements for software patents that utilize means-plus-function claim language. Understanding this particular aspect of patent drafting may be crucial moving forward given that some believe that means-plus-function claiming may be one way to get at least some patent claim coverage in the wake of Alice. Therefore, given that the extraordinarily strict disclosure requirements mandated by employing means-plus-function claiming, this technique may well be the future for software patents. Certainly adhering to the extreme disclosure requirements in the Algorithm cases will be a best practice moving forward even if you do not employ means-plus-function claiming, and it will likely remain a best practice until some statutory or common law relief from Alice is achieved.

A Software Patent History: SCOTUS Decides Bilski

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter… As we leave Bilski we knew, or thought we knew, that 8 out of 9 Justices of the United States Supreme Court had agreed that at least some software is patentable.

1998: Federal Circuit Says Yes to Business Methods

It is really incorrect to say that the Federal Circuit eliminated the business method exception in State Street Bank, although the same net effect admittedly occurred regardless of how you characterize the ruling. It is better to say that the Federal Circuit went out of its way to explain that the business method exception had really never existed in the first place. The court explained that neither it nor its predecessor court, the CCPA, had ever applied the business method exception to a single case. Furthermore, Judge Rich explained that the cases relied upon to support the existence of the business method exception were In re Maucorps and In re Meyer were both rendered prior to the Supreme Court’s decision in Diehr, and prior to the Federal Circuit’s abandonment of the Freeman-Walter-Abele test. Furthermore, the Maucorps and Meyer cases were decided not on the business method exception, but on the mathematical algorithm exception.

Software Patent History III: The Federal Circuit Decides Arrhythmia Research & Alappat

Given that the Supreme Court almost never overrules its own prior decisions, then Justice Rehnquist tried to explain in Diehr that both Gottschalk v. Benson and Parker v. Flook remained good law, despite the fact that the holding in Diehr clearly set patent eligibility for software on a new path different and distinct from the path chosen by the Court in Benson and Flook… In historical terms, the next factual inquiry that presented itself was whether a computer implemented method that transformed data into a readable waveform that could be quickly interpreted was patent eligible. Ultimately, it was wrestling with this scenario that led to the end of the Freeman-Walter-Abele test.

Freeman-Walter-Abele: A Tortured History of Software Eligibility

The influence of the thinking behind Freeman-Walter-Abele can also be seen in the Supreme Court’s decision in Alice. Thanks to Alice the focus is now on whether the claims cover an abstract idea or concept, and in order to make the determination we are not supposed to look at the language of the claims, but rather to look through the claims. This causes the apparatus claims to rise and fall with the method claims despite the fact that machines are clearly patent eligible according to the terms of the statute. Further, as the law associated with software developed the industry, with good reason, thought that it would be enough to say that the process steps had to be carried out on a machine (i.e., a computer). That clearly isn’t enough after Alice. While the Supreme Court hasn’t adopted the Freeman-Walter-Abele test, and the current articulation of the test is couched as whether the claims cover only an abstract idea, it does seem that if patent claims could be written to satisfy the moving target of the FWA test then the patent claims should work to satisfy the Alice test that adopts the Mayo framework.

The History of Software Patents in the United States

Software patents have a long history in the United States. Computer implemented processes, or software, has been patented in the United States since 1968… Originally in Benson, the Supreme Court decided that software was not patentable, but then later retracted the blanket prohibition against patenting software in Diehr. The Federal Circuit then spent the better part of two decades trying to figure out under what circumstances software (or computer related processes) should be patented. This seemed to culminate in the 1998 ruling of the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group, Inc. Unfortunately, the waters were once again made murky as a result of the 2008 ruling by the Federal Circuit in In re Bilski. Some questions were answered when the Supreme Court issued its ruling in Bikski v. Kappos in 2010, notably saying that business methods are patent eligible, but the Supreme Court did not definitively say that software is patent eligible. Then in June 2014, the Supreme Court issued a decision in Alice Corporation v. CLS Bank, which has for the time being slammed the door shut for many, if not most, software patents.

The History of Software Patents IV: State Street Bank

As a result of the useful, concrete and tangible result test and in conjunction with the disposition of the business method exception that never existed in the first place, software could come out of the closet and out into polite patent society. Gone were the days that patent attorneys would protect software by pretending that it was the hardware that presented the magic. So rather than claim a machine that accomplished a certain task patent attorneys could acknowledge that the machine is not the piece that makes things unique, but rather the software that drives the machine is the patentable innovation, of course presuming that it is new and nonobvious.

History of Software Patents III: In re Alappat

Several years after Arrhythmia, the Federal Circuit seemingly abandoned the Freeman-Walter-Abele test. Sitting en banc in Alappat the Federal Circuit did not apply the Freeman- Walter-Abele test, rather opting for the mathematical subject matter exception.

History of Software Patents II: Arrhythmia Research

In the Arrhythmia case the invention in question was directed to the analysis of electrocardiographic signals in order to determine certain characteristics of heart function. In essence, the invention was a monitoring device. It had been discovered that 15% to 25% of heart attack victims are at high risk for ventricular tachycardia, which can be treated by the administration of drugs. Unfortunately, the drugs used have undesirable and dangerous side effects, which led the inventor to come up with a monitoring device capable of determining which heart attack victims were at the highest risk for ventricular tachycardia.

The History of Software Patents

Since the United States Supreme Court first addressed the patentability of computer software in Gottschalk v. Benson the law surrounding the patentability of software has changed considerably, leaving many to wonder whether software is patentable at all. Originally in Benson, the Supreme Court decided that software was not patentable, but then later retracted the blanket prohibition against patenting software.

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