Today's Date: December 19, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Posts Tagged ‘ computer software ’

1998: Federal Circuit Says Yes to Business Methods

Posted: Friday, Dec 12, 2014 @ 1:40 pm | Written by Gene Quinn | 2 comments
| Tags: , , , , , , , , , , , , , , ,
Posted in: Authors, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Software, Technology & Innovation

This is part 4 of a multi-part series exploring the history of software patents in America. To start reading from the beginning please see The History of Software Patents in the United States. For all of our articles in this series please visit History of Software Patents

_______________________

Judge Giles Sutherland Rich, circa 1994.

In State Street Bank & Trust v. Signature Financial Group, the patent in question was U.S. Patent No. 5,193,056, which issued to Signature Financial Group on March 9, 1993. The ‘056 patent was generally directed to a data processing system for implementing an investment structure which was developed for use in Signature’s business as an administrator and accounting agent for mutual funds. In essence, the system, identified by the proprietary name Hub and Spoke®, facilitates a structure whereby mutual funds (Spokes) pool their assets in an investment portfolio (Hub) organized as a partnership. State Street was in talks with Signature Financial to acquire a license, and when talks broke down they brought a declaratory judgment action to have the ‘056 patent claims declared invalid.

There were several critical issues in play in State Street. First was the so-called mathematical algorithm exception to patentable subject matter, and the other was the business method exception to patentable subject matter.



I Thought Banks Didn’t Like Financial Software Patents?

Posted: Sunday, Dec 7, 2014 @ 8:00 am | Written by Gene Quinn | 5 comments
| Tags: , , , , , , , , , , , , , , ,
Posted in: Authors, Financial, Financial Services, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Post Grant Procedures, Software, Technology & Innovation

Senator Chuck Schumer (D-NY) has been a vocal critic of financial service software patents.

As part of our ongoing Companies We Follow series, last week we profiled the recently issued patents granted by the United States Patent and Trademark Office to the Bank of America, as well as the recently issued patents granted to JPMorgan Chase. As you might expect, both Bank of America and JPMorgan Chase seek patents on various innovations related to financial transactions, cybersecurity and identity theft technologies, smart card technologies and smartphone applications. Not too shocking really.

What really caught my attention, however, were the patent claims that Bank of America and JPMorgan Chase are both receiving. What is particularly interesting is that these companies are receiving what can only be characterized as software patents, which further explicitly claim computer implemented business methods. It is at least a little surprising that these types of patents are still being issued after the Supreme Court’s decision in Alice v. CLS Bank. This also isn’t the first time that we’ve noticed that big banks are continuing to get software patents issued in what for most others is an extremely hostile environment for computer implemented methods, computer systems and especially for financial service business methods. Perhaps this is the luck of the draw, perhaps applicants who are not big banks are being swept up in the unprecedented scrutiny that the USPTO is secretly placing on numerous applications, or perhaps the big banks just find themselves dealing with patent examiners who unapologetically work for the Patent Granting Authority. Still, one has to wonder.

Truthfully, the fact that big banks are getting software patents on claims written explicitly to cover computer implemented methods is quite ironic. The banks were the ones who pushed for what is known as covered business method patent review (CBM), which is a variety of post grant review (PGR) that came into being in September 2011. Post grant review is only applicable to patents granted on applications examined under the first to file provisions of the America Invents Act (AIA).{1}



Federal Circuit Finds Software Patent Claim Patent Eligible

Posted: Friday, Dec 5, 2014 @ 2:47 pm | Written by Gene Quinn | 28 comments
| Tags: , , , , , , , , , , , ,
Posted in: Authors, Federal Circuit, Gene Quinn, Government, IPWatchdog.com Articles, Patentability, Patents

Judge Ray Chen of the Federal Circuit, speaking at AIPLA on 10/24/2014.

Earlier today the United States Court of Appeals for the Federal Circuit issued a ruling in DDR Holdings, LLC v. Hotels.com, L.P. The appeal was brought by defendants National Leisure Group, Inc. and World Travel Holdings, Inc. (collectively, NLG), who appealed from a final judgment of the United States District Court for the Eastern District of Texas entered in favor of DDR Holdings. Following trial, a jury found that NLG infringed the asserted claims of U.S. Patent Nos. 6,993,572 and 7,818,399. The jury also found the asserted claims of the ’572 and ’399 patents were not invalid and awarded $750,000 in damages.

On appeal to the Federal Circuit, in an opinion written by Judge Chen and joined by Judge Wallach, determined that the asserted claims of the ’572 patent were anticipated under 35 U.S.C. § 102(a) and, therefore, vacated the award of damages and prejudgment interest to DDR, which had been collectively premised on infringement of the ’572 and ’399 patents and without apportionment.

Of particular interest, the Federal Circuit found that the ‘399 patent constituted patent eligible subject matter, was not invalid and was infringed. This is big news because in the wake of the Supreme Court’s decision in Alice v. CLS Bank software patents have been falling at alarming rate. Assuming this decision stands any further review we finally have some positive law to draw from that will provide clues into how to tailor patent claims to make them capable of overcoming what has become a significant hurdle to patentability— namely the abstract idea doctrine.



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

Posted: Tuesday, Dec 2, 2014 @ 9:00 am | Written by Gene Quinn | 6 comments
| Tags: , , , , , , , , , , , , , ,
Posted in: Authors, Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents, Software, Technology & Innovation

This is part 2 of a multi-part series exploring the history of software patents in America. To start reading from the beginning please see The History of Software Patents in the United States. For all of our articles in this series please visit History of Software Patents. 

_______________________

The so-called Freeman-Walter-Abele test has been defunct for quite some time, dating back to the Federal Circuit doing away with the test in In re Alappat. Nevertheless, the Freeman-Walter-Abele test is quite an important step in the history of software patents in the United States. The reason to spend a significant amount of time discussing the rise and fall of the Freeman-Walter-Abele test is three-fold.

First, the test was widely criticized (rightfully so) as being so flexible that any District Court Judge or three-Judge panel of the Federal Circuit could apply it to justify any preconceived notions and ideological preferences.  Indeed, the Freeman-Walter-Abele test proved to be anything but objective.  The test was unworkable and did not introduce certainty; it introduced unpredictability, which must be avoided in at all costs in laws relating to property and in laws relating to business.

The second reason to focus on the Freeman-Walter-Abele test is because there is no way to ignore the fact that the more recent tests in the software space are best characterized as versions of the Freeman-Walter-Abele test in disguise.  Under the Freeman-Walter-Abele test there needed to be some physical, tangible link to the process steps, which looks eerily like the machine component of the Bilski machine or transformation test. Furthermore, under the Freeman-Walter-Abele test it is not enough that the patent claim be drafted as a method, but rather the process must be linked to one or more elements of a statutory apparatus claim that itself would meet the requirements of section 101. The similarity with the machine-or-transformation test is again striking.



The History of Software Patents in the United States

Posted: Sunday, Nov 30, 2014 @ 10:30 am | Written by Gene Quinn | 8 comments
| Tags: , , , , , , , , , , , , , ,
Posted in: Evolution of Technology, Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents, Software, Software Patent Basics, Technology & Innovation

Despite what you may have heard to the contrary, software patents have a very long history in the United States. Computer implemented processes, or software, has been patented in the United States since 1968. The first software patent was granted by the United States Patent and Trademark Office (USPTO) on April 23, 1968 on an application filed on April 9, 1965, Martin A. Goetz, a pioneer in the development of the commercial software industry, was the inventor of the first software patent ever granted, U.S. Patent No. 3,380,029. Several years ago PBS Digital Studios profiled Goetz and his pursuit of the first software patent.

To listen to the critics of software patents you would never know that software has been patented in the United States for nearly 50 years. The critics erroneously claim that the Federal Circuit first allowed software patents by effectively overruling the Supreme Court, but the Federal Circuit didn’t come into being until 1982, which is some 14 years after the first software patent issued, and after Supreme Court consideration of both Gottschallk v. Benson and Diamond v. Diehr.

Today software patents are under attack in the Courts.  “[T]he Supreme Court and now this Court of Appeals for the Federal Circuit seem to be not considering the fact that the United States is leading in many of these emerging technologies and specifically thinking about software,” said Bob Stoll, former Commissioner for Patents and current partner at Drinker Biddle, during our recent webinar conversation on patent eligibility. Indeed, software is very important to the U.S. economy. According to the Government Accountability Office software-related innovations are found in 50% of all patented innovations. Without the availability of patent protection individuals, entrepreneurs, small businesses and start-ups will opt to keep their innovations secret rather than lay them open for inspection (and stealing) by much larger, well-funded entities who have long since lost the ability to innovate.



Software Forensics: Qualifying Tools and Experts Who Use Them

Posted: Friday, Oct 31, 2014 @ 10:00 am | Written by Bob Zeidman | 2 comments
| Tags: , , , ,
Posted in: Authors, Bob Zeidman, Guest Contributors, IP News, IPWatchdog.com Articles, Software, Technology & Innovation

In part 1 of this article I discussed software forensics, generally what it is and why it’s needed. One of the big reasons there is such a need for software forensics is to interject objectivity into what is otherwise a battle of experts who are supposed to be unbiased but who may be strongly influenced by, if not outright pressured to support, the positions of their clients. This is just as true of experts in other areas of litigation, but as more complex technologies are at issue in today’s IP cases, lay judges and juries are less capable of weeding through technical intricacies to weigh opposing views of experts. Compounding this reality is the ever increasing popularity of police dramas on television, which elevate the desire for juries to have some kind of objective information they can rely on; something of a smoking gun if you will. Software forensics can often provide that smoking gun and cut through the haze. But the question remains, how do we assure that software forensic tools are reliable and consistent and that the expert witnesses who use them are qualified and honest about their analyses?

Below are a few ideas about this, though each one carries with it potential problems. Perhaps not all of these ideas can definitely be implemented, but if we could insert some or all of them into the current legal system, we might have just results a higher percentage of the time. And applying these ideas to criminal cases might be a particularly good idea, where an expert’s opinion can be the difference between life and death for a person accused of a crime.



Software Forensics: Objectively Proving Infringement or Misappropriation

Posted: Monday, Oct 27, 2014 @ 4:21 pm | Written by Bob Zeidman | No Comments »
| Tags: , , , , , ,
Posted in: Authors, Bob Zeidman, Guest Contributors, IP News, IPWatchdog.com Articles, Software, Technology & Innovation

The word “forensic” comes from the Latin word “forensis” meaning “of or before the forum.” In ancient Rome, an accused criminal and the accusing victim would present their cases before a group in a public forum. In this very general sense it wasn’t unlike the modern U.S. legal system where plaintiffs and defendants present their cases in a public forum. Of course the rules and procedures of the presentation differ from those days. Also, parties are typically represented by lawyers trained in the intricacies of all of these rules and procedures.

After deliberation, one party would be declared a winner. The party with the best presentation skills, regardless of innocence or guilt, would often prevail. The modern system relies on attorneys representing the parties to make the arguments rather than the parties themselves, under the assumption that lawyers, trained in law and skilled at presenting complex information, will each present their client’s case in the best possible manner and that ultimately a just outcome will occur. I don’t want to say that the truth will prevail, not only because that’s a cliché, but because there’s often some amount of truth in the arguments of both parties. Rather, more often than not, justice will be served.

I believe that this model works very well. Not perfectly, but very well. With regard to highly technical cases, however, the percentages for justice being served go down because the issues become difficult for a judge or jury to grasp. Technical experts can throw around technical jargon, sometimes without realizing it and other times to purposely cause confusion. This is the reason that I believed, when I started out examining code for intellectual property litigation, that two things were required to improve the analysis of software for the legal system.



The Patent Drafting Disclosure Revolution: Don’t Ask Alice

Posted: Tuesday, Sep 30, 2014 @ 8:00 am | Written by Joseph Root | 4 comments
| Tags: , , , , , , , , , , , ,
Posted in: Authors, Guest Contributors, IP News, IPWatchdog.com Articles, Joseph Root, Patent Drafting, Patents

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the seventh installment of this series. To read other installments please see Joseph Root on Patent Claim Drafting.

—————————–

No question exists that patent eligibility under Section 101 has been, and remains, the most active question in patent law. Watching the rapid flow of cases back and forth between the Federal Circuit and the Supreme Court exceeds the excitement generated by most TV shows in sheer entertainment value. The only question open for discussion is whether we are watching “Game of Thrones,” “Survivor”, or “Modern Family.” Actually, the best choice may be “Lost”.

To understand the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, a page of history provides more illumination than a book of Lewis Carroll references. Here we need to pick up at the point when everyone thought the computer patentability wars were over.

By the late 1990’s, the last frontier was business methods. We had absorbed Diamond v. Diehr and moved on to Beauregard claims and propagated signals. Everyone was making, or wanted to be making, tons of money in the Dot.Con era, and little patience remained for outdated rules.



Patents are Important: Bursting the Twitter Patent Mythology

Posted: Monday, Sep 29, 2014 @ 9:00 am | Written by Gene Quinn | 28 comments
| Tags: , , , , , , ,
Posted in: Anti-patent Nonsense, Companies We Follow, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Business & Deals, Patents, Twitter

One of the frequent claims made by those in the anti-software patent community relates to Twitter and the clearly erroneous belief that patents are not important to the company. Indeed, recently when I wrote Fairy Tales and Other Irrational Beliefs About Patents the claim arose in the comments suggesting that Twitter is proof that patents are unnecessary to succeed. Quite to the contrary. If you actually concern yourself with facts, Twitter is a perfect case study to demonstrate just how important patents, particularly software patents, are to a start-up company that has aspirations of going public.

Doubt me? Perhaps you will believe Twitter themselves. In repeated filings with the Securities and Exchange Commission since October 2013, Twitter has explained over and over again just how important their patented technology is to the company. They have also repeatedly explained that unlike other companies and competitors, even with nearly 1,000 patents, their own patent portfolio is extremely small by comparison. This poses real concerns for Twitter, which is why they warn the SEC and investors of the ramifications of such a small patent portfolio with every new filing.

Let’s begin our tale about Twitter at the start. Twitter, founded on March 21, 2006, was initially believed to be of the opinion that patents didn’t matter. Behind the scenes and unknown to many, Twitter was actively filing patents very early on in the development of the company. This is hardly shocking news given that Twitter’s initial round of funding dated back to 2007 and the near universal reality that high-tech investors not only love patents, but they demand patents. Investors love patents because if the company does not succeed at least some valuable patent assets will remain, which can be sold to recoup losses.



Why E-mail & Word Processing Were Not Computer-Implemented Inventions: A Response to Alice v CLS Bank Oral Arguments

Posted: Tuesday, May 6, 2014 @ 8:00 am | Written by Martin Goetz | 48 comments
| Tags: , , , , , , , , , , ,
Posted in: Authors, Guest Contributors, IP News, IPWatchdog.com Articles, Martin Goetz, Patents, Software, Technology & Innovation

This article tries to bring a little more clarity to what is a computer-implemented invention —and what is an obvious use of a computer —by reviewing some of the Alice v CLS Bank oral arguments.

Certain things are obvious. It was obvious in the oral arguments that it was a challenge for both the Supreme Court judges and the lawyers to distinguish between abstract ideas, ideas, computer programs, technological innovations, patentable subject matter, and inventions. (This confusion also showed up in the seven different written opinions of the judges in the Appeals Court review of this same case.)

In the oral arguments (P34-L17), Justice Sotomayor in response to a discussion on abstract ideas, inventive contributions and the Mayo test for technological innovation asked Mr. Perry, counsel for CLS Bank, the following…

Justice Sotomayor: “How about email and just word processing programs?”



Software Patent Amici in Support of Petitioner Alice Corporation

Posted: Sunday, Mar 23, 2014 @ 8:30 am | Written by Gene Quinn & Steve Brachmann | 14 comments
| Tags: , , , , , , , , , ,
Posted in: Authors, Computers, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Software, Steve Brachmann, US Supreme Court

When the U.S. Supreme Court finishes hearing arguments in the upcoming case Alice Corporation v. CLS Bank International, it will be asked to judge whether or not software and computer-implemented inventions are eligible to receive patent protections through the U.S. Patent and Trademark Office. Should the Supreme Court uphold the original decision and declares that the Alice’s patents on computer-implemented systems for managing risk in financial transactions are patent ineligible, thousands upon thousands of software patents could become invalidated.

We discussed some of the issues in play with this major case in our previous look at amicus briefs filed with the U.S. Supreme Court for this case. We have also profiled the IBM amicus brief that argued that the abstract idea doctrine was unworkable. These parties, though largely neutral, had a number of disdain for how the judiciary has handled the issue of software’s patent eligibility under Section 101 of Title 35 of the United States Code. Today, we’re taking a look at briefs filed for either side of this historic case to get a broader sense of the viewpoints involved in this issue. A number of major corporations, non-profit organizations in technological fields and renowned scholars have lent their ideas to these briefs, and readers may find their views on the patent eligibility of software programs to be enlightening.

A quick perusal of the amicus briefs published online by the American Bar Association shows that only a few of the briefs filed are supporting the petitioner, Alice Corporation, in this case. In fact, only three briefs in support of the petitioner are shown on the ABA’s official site listing amicus briefs for this case; there are a total of 40 amicus curiae briefs shown on that site, as of this writing.



Misnomers, Myths, Misunderstandings and Misconceptions about Software Patents

Posted: Thursday, Mar 20, 2014 @ 4:40 pm | Written by Martin Goetz | 29 comments
| Tags: , , , , , , , , , , , , ,
Posted in: Authors, Computers, Guest Contributors, IP News, IPWatchdog.com Articles, Martin Goetz, Patentability, Patents, Software, US Supreme Court

This article is a follow-up to my January 21st article Why the Supreme Court in the CLS Bank v. Alice Case Should Not Answer the Question on Computer-Implemented Invention.

As I enter my 60th year in the Software Products and Services Industry I am amazed that the question of the patentability of true inventions implemented in software has been discussed and debated for the last 50 years. And again, for the fourth time, it is before the Supreme Court. Many in the media are predicting its death e.g., Obituary for software Patents and Court Case Could Mean ‘Death’ of Software Patents while others just wish it e.g., “Will the Supreme Court Save us from Software Patents?”.

Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.

In this new article I intend to provide facts about software and the software industry to debunk these misnomers, myths, misconceptions, and just pure misunderstandings about “software patents”.