Posts Tagged: "algorithms"

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.

On May 6, 2013, I sat down with Steve Kunin and we discussed a wide range of patent issues. In Part 1 of the interview we discussed the new post grant procedures for challenging issued patents, and started discussing the estoppel provisions. In Part 2 we conclude our discussion of estoppel and move into discussing secret prior art, the Economic Espionage Act, the algorithm line of cases from the Federal Circuit and the erosion of patent rights that started with eBay v. MercExchange.

When an element is claimed using language falling under the scope of §112, ¶6, the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in means-plus-function element in the claim. As emphasized by the Federal Circuit, “the ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six…, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson, 16 F.3d 1189, 1194 (Fed. Cir. 1994)(en banc); see also, MPEP 2182, 8th Ed. (August 2012). But here, the Federal Circuit held that there was no error in the Board’s reliance on the broadest reasonable interpretation for language appearing in a seemingly means-plus-function claim element.

Recently, patent scholar Mark Lemley has renewed attention to software claims under 35 U.S.C. 112, sixth paragraph. Lemley encourages strict application of the algorithm requirement to police software patents and resolve these concerns. Unlike Lemley, I am convinced that the algorithm requirement makes no sense. The problem is not that the concern about broad software claims is unjustified. The problem is that, even if the concern is justified, the algorithm requirement does not solve it. At least, the requirement does not solve the problem in an appropriate way.

The disclosure requirements for these types of patent applications has been a moving target for years, which means that whatever the most stringent disclosure requirements are should become the target regardless of the types of claims you file. To ensure your software patent application has appropriate disclosure of the invention you should accept — even embrace — the requirements for having an appropriate means-plus-function disclosure. By meeting the strict standards set forth in the mean-plus-function algorithm cases you will file more detailed applications that have better disclosure and which will undoubtedly support more claims, thus making the resulting patent or patents more valuable.

The basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill in the art cannot save the disclosure by understanding. Thus, means-plus-function claims are largely valid at the mercy of a federal judge who in all certainty is not one of skill in the art and who likely has an aversion to such claiming techniques because they prefer dealing with tangible structure.

Earlier today the United States Court of Appeals for the Federal Circuit issued a decision in Noah Systems, Inc. v. Intuit, Inc. According to the Federal Circuit the specification of the ’435 patent must contain an algorithm that performs the function associated with the “access means” limitation, otherwise the limitation is indefinite and the claim invalid. Ultimately, the Federal Circuit would determine that the algorithm disclosed was incomplete. This lead the Court to explain that when the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the specification is treated as if it disclosed no algorithm. An incomplete algorithm means no algorithm as all, which means that what one of ordinary skill in the art would understand from the disclosure is no longer relevant. This is where I would depart from the Federal Circuit and think that the law as it relates to means-plus-function claiming of computer software is all wrong. Means-plus-function claims has always been about what someone of ordinary skill in the art would appreciate (see, for example, USPTO 112 guidelines, 76 Fed. Reg. 7162 (9 February, 2011) so why is that not the case with respect to computer software?

Software is now and will remain patentable in the United States. Software patents have been vilified by many, but they have been granted by the United States Patent and Trademark Office and upheld in federal courts across the United States. The much anticipated Bilski v. Kappos decision at the Supreme Court did nothing to slow down the patentability of software, and in fact even the original Federal Circuit decision wound up, as applied by the USPTO, to make it more likely that adequately written software patent applications would be granted and transformed into issued patents. What has changed over the last several years, however, is the amount of detail that must go into a software patent application in order to satisfy the adequate description requirements under US patent law. So don’t listen to anyone who tells you software cannot be patents in the United States; it certainly can, but it isn’t quite as easy as it used to be.