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Federal Circuit on Software Patents: Show Me the Algorithms

By Gene Quinn on April 9, 2012

 

This article has been updated. For the latest version of the article please see:

 

http://www.ipwatchdog.com/2015/01/01/a-software-patent-history-the-algorithm-cases/id=52935/

 

 

The Author

Gene Quinn

Gene Quinn is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields.

is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. As a patent attorney he is able to represent inventors and businesses seeking patents across the United States.

You can contact Gene via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. guest April 9, 2012 6:27 pm

    i see a potential problem with the definition of algorithm. In software engineering, algorithm for creating a piece of software could be sufficiently disclosed via a collection of related and well documented graphical user interfaces. Therefore, a skilled person does not need to see the actual code or the database schema in order to reverse engineer the software.

    I hope the judges do understand that algorithm does not mean ‘code’ or ‘flow charts’ only.

  2. EG April 10, 2012 1:57 pm

    Gene,

    Like I said Ergo Licensing thread, avoid MFP now whenever possible.

  3. step back April 11, 2012 12:03 am

    Guest, you wrote:

    I hope the judges do understand …

    This case stands out because the judges claim they understand so well that they don’t need no stinkin’ experts in the field testifying to them regarding what an ordinary artisan would or would not understand from the patent disclosure.

    (Double negative is for effect. I do know that two no’s make a yes and two yeses make a no (yeah, right)).

  4. TINLA IANYL April 11, 2012 10:41 am

    Finisar Corp v Direct TV Group Inc , 523 F3d 1323 (Fed Cir 2008)

    The Court set forth 4 examples of sufficient algorithm disclosure.

    1. Mathematical formula
    2. Flow chart
    3. Written description
    4. Pseudo code or computer listing

  5. jon April 12, 2012 5:13 am

    TINLA,

    What is “computer listing”?

  6. Paul Cole April 12, 2012 12:40 pm

    GENE SAYS: “Finally, allow me to point out to the many who invent in the software space who tell me that flowcharts are not necessary. Indeed, believe it or not I am told with more than passing frequency by would-be clients that they have obtained software patents before and flowcharts are just not required. Newsflash — WRONG! Now more than ever flowcharts and detailed discussion about how each and every aspect of the processes are carried out are required.

    Best practices in terms of writing a disclosure will have you write your disclosure to satisfy the disclosure requirements in these algorithm cases even if you don’t employ means-plus-function claiming initially.”

    The me assure him that the message is understood by many (I hope most) of us on this side of the Pond. Fundamentals of Patent Drafting which was published some 6 years ago now contains a lengthy discussion of 35 USC 112(6) and the particular problms of black boxes (also referred to as elephant traps). This is just the latest in a string of Federal Circuit decisions on this point. And Gene’s suggestion that you write the description to disclose supporting structure even if you do not explicitly use means + function or step + function (often forgotten!) language is no more than common sense. What is surprising is that anyone in practice nowadays should think that there is anything new or controversial about this.

  7. Gene Quinn April 12, 2012 1:53 pm

    Paul-

    What is surprising, apart from the fact that your comment for the most part makes no sense, is that you clearly either didn’t read the article or you are just wholly unknowledgeable about what actually goes on in the industry.

    Which part of “now more than ever…” was confusing to you? Please explain in detail how and why you think that suggests that I was saying that prior to this you didn’t have to disclose supporting structure?

    You are just a know it all that wants to try and suggest that I don’t know what I am talking about. Perhaps you should read my articles over the past 4 or 5 years on software and then try and tell folks that I don’t know what I am talking about. See:

    http://www.ipwatchdog.com/software-patents/

    and why don’t you look at these articles that stress the importance of supporting disclosure in particular:

    http://www.ipwatchdog.com/2010/09/09/avoid-writing-bad-software-patents/id=12428/
    http://www.ipwatchdog.com/2008/09/16/defining-computer-related-inventions/id=202/
    http://www.ipwatchdog.com/2008/08/31/writing-software-patent-applications/id=193/
    http://www.ipwatchdog.com/2009/06/29/how-to-patent-software-in-a-post-bilski-era/id=4311/

    So why do you want to pretend that I was saying something that I wasn’t? Are you so desperate to be the only authority on this issue that you need to act like I don’t know what I am saying? These and other articles on the importance of disclosure are to explain to people what is necessary and why.

    You are a charlatan and exactly what brings down Internet dialogue to the least common denominator. You obviously didn’t read the article, and you didn’t even read the quote you pulled from the article. Clearly what this says (to anyone who did read it) is that if there was ever any doubt about the level of information required in a disclosure there shouldn’t be any doubt at all any more because the Federal Circuit has explicitly said that they don’t care what the disclosure teaches someone of skill in the art. They only care what it teaches an ordinary Judge without any specialized training.

    -Gene

  8. Blind Dogma April 12, 2012 6:51 pm

    Gene,

    Simple clue: “of us on this side of the Pond

    Elitism is an ugly thing, espcially when it is worn by those others who do not deserve to wear it.

  9. jon April 16, 2012 3:48 am

    why do we let these corrupt judges decide the fate our intellectual property?