By now most are likely already familiar with the unfortunate reality that the United States Court of Appeals for the Federal Circuit issued a non-decision in CLS Bank v. Alice Corporation on Friday, May 10, 2013. There were 10 judges who heard the case en banc, with 7 of the 10 finding that the method claims and computer-readable medium claims were not patent eligible. While there may be reasonable room for a difference of opinion relative to those claims, it was the system claims that specifically and clearly recited tangible structure that has thrown the patent law of software into such disarray. 5 Judges would have found that the systems claims were patent ineligible (Judges Lourie, Dyk, Prost, Reyna and Wallach), and 5 Judges would have found the systems claims were patentable subject matter (Chief Judge Rader, Judges Newman, Moore, Linn and O’Malley). For more see Federal Circuit Nightmare in CLS Bank and 5 CAFC Judges Say Computer Patentable, Not Software and Did the CAFC Ignore the Supreme Court in CLS Bank?

Today, however, I want to write about one of the more bizarre passages I have ever seen in any decision, and then pose an almost unthinkable question: Is IBM’s Watson still patent eligible in the view of Judges Lourie, Dyk, Prost, Reyna and Wallach?

First, let’s start with the passage. Judge Lourie, who was joined by Judges Dyk, Prost, Reyna and Wallach, actually wrote: “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”

UPDATED Friday, March 29, 2013 at 3:30pm ET (see comment #1)

International Business Machines Corporation (IBM) is an international business technology consultant and developer headquartered in Armonk, New York. As the top patenting company for the last 20 years, every week you can expect to see at patents on computer systems and other technologies where IBM is the assignee. This past week IBM received over 120 patents, which is a fairly typical week for the company. Below are a few of the patents and patent applications that caught our attention for one reason or another.

Social Gathering of Distributed Knowledge 
U.S. Patent Application No. 20130066944 – Click to see File History

Task management has increasingly become a digital job as it becomes more productive to employ remotely isolated workers on the same job or project. Media and data such as job instructions, video or even computer code for computer-controlled machines can keep business activities going without requiring all workers to be physically present.

IBM looks to improve the access to knowledge for task management applications by creating a system for identifying a task creator and likely task participants. Once these participants are identified, the computer system works to selectively delegate tasks and information to the members that the system deems most likely to participate in a specific activity.

EDITORIAL NOTE: What follows are the prepared remarks of David Kappos, Under Secretary of of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, delivered at the Center for American Progress in Washington, DC, on November 20, 2012.  This is reprinted here with permission.  

Thank you, Winnie, for that kind introduction. Good morning, everyone. It’s great to be here at the Center for American Progress. I’m pleased to be able to talk about intellectual property and the role that intellectual property rights play in enabling innovative goods and services to come to market. And specifically, I’m going to focus my remarks on software patents and the so-called smartphone “patent wars,” which have become front page news in the last year or so.

It is increasingly clear that intellectual property, or IP, is a key driver of economic growth, exports, and job creation. IP rights are the global currency for creating value for products and services, for all innovators, in all markets. And the protection provided by patents is critical to the innovation ecosystem. In fact, last spring, the U.S. Commerce Department released a report that found IP-intensive industries support at least 40 million jobs and contributes more than $5 trillion to our economy, accounting for 35 percent of America’s gross domestic product. So it is in this context that we are seeing multi-billion dollar acquisitions of patent portfolios and a number of high profile patent lawsuits, involving some of the most innovative companies on the planet, who are producing some of the most popular technologies ever created.

Article One Partners (AOP), the world’s largest online patent research community is seeking Patent Researchers to support our growing inventory of technical and research Studies.

Presently we have a number of research Studies in the field of medical devices, diagnostics and associated technologies. An example is DEV 1847 (A Medical Device Assembly Process Including Inserting a Proximal End of a Metal Needle into a Hub).   Therefore, we are particularly looking for Researchers with a background, training and/or expertise with respect to medical devices and healthcare related technologies.  Those with mechanical engineering and biomedical engineering training or knowledge may find this opportunity particularly appropriate for their unique knowledge. Advanced degrees may be helpful, but are not necessarily required.

Similarly, we also have a number of research Studies that relate to various computer technologies. Illustrative of this are ongoing research needs with respect to DEV 1783 (Customer-Based Product Design Module) and DEV 1784 (Systems for Gathering Information from Units Across a Network), for example.  Therefore, we are particularly looking for Researchers with a background, training and/or expertise with respect to market research, online surveys, field programmable logic devices, handheld bar code readers, calculators, smart cards, and software design. Those with degrees in Electrical Engineering, Computer Engineering, Computer Science, as well as those with related real-world work experience with systems, software and network design are encouraged to consider these opportunities.

This article follows up a post by Gene on 19 September entitled Remembering Nuijten and Comisky 5 Years Later. I commented that in the EPO the practice relating to signals is directly contrary to the U.S.  Gene commented in response, inviting me to write an article on the topic.

It should be remembered that the USPTO and courts traditionally granted signal claims, and Nuijten was an innovative decision and arguably an outlier that deserved more challenge than it received. The pre-Nuitjen position and the desirability of allowing signal claims or claims to computer program products without specifying non-transitory media embodiment is recorded in a paper by Stephen G.Kunin et al.,  Patent Eligibility of Signal Claims, Journal of the Patent and Trademark Office Society, 87, No. 12, 907 – 1002 (December 2005).  Many positive reasons for allowance of such claims are described in that paper, and they are traced back in history to O’Reilly v Morse.

The good news is that signal claims and broad claims to computer program products are obtainable in Europe. However, such claims are only grantable if the necessary language is present in the European application or the International application as filed, otherwise objection will arise under a.123(2) EPC. Further, the EPO rules on priority are strict, and if the necessary language is missing from the US provisional or utility application from which priority is claimed, then signal or unrestricted computer program product claims will not benefit from priority. It is at the time of US filing that the necessary language must be introduced, and in particular entry into the European regional phase is too late.

Seven rent-to-own companies and a software design firm have agreed to settle Federal Trade Commission charges that they spied on consumers using computers that consumers rented from them, capturing screenshots of confidential and personal information, logging their computer keystrokes, and in some cases taking webcam pictures of people in their homes, all without notice to, or consent from, the consumers.

The software design firm collected the data that enabled rent-to-own stores to track the location of rented computers without consumers’ knowledge according to the FTC complaint. The settlements bar the companies from any further illegal spying, from activating location-tracking software without the consent of computer renters and notice to computer users, and from deceptively collecting and disclosing information about consumers.

Means-plus-function claiming has been disfavored (by and large) since at least 1994 when the Federal Circuit handed down its decision in In re Donaldson, where the Federal Circuit sitting en banc explained:

If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.

In other words, if it is not in the specification then the fact that it may be a “means” to accomplish the function does not save you.  Means that accomplish the recited function that are not within the specification of a patent application are not captured by the claims.

Means-plus-function claiming is not very popular in many technical disciplines because of how narrowly limited the claims are to what is specifically disclosed.  Over the years, however, mean-plus-function claiming has continued with various levels of popularity for those who deal with computer-implemented methods (i.e., software).  After all, software is just a series of steps directing a machine (typically a computer) to perform certain processes to accomplish a result.  Thus, “means for” doing something remained a rather descriptive way, at least generally speaking.

Despite the protestations of some, software is patentable in in the United States.  There are some jurisdictions that do not allow for the patenting of software or computer implemented processes, but the law in the United States allows for software to be patented.

Given the software patents are my business, one of the questions I typically receive from an inventor is: What software can be patented? How does one know that what they have is something that can be protected?  The short answer is this: In my experience those who come to me before they start coding always have something that can be patented.  Of course we have to do a search and seek out the available space, but there are some many twists and turns that there is almost always something patentable. Unfortunately, some do the programming first and never approach the design as an engineering problem for which they have a unique solution.  That means no attempt has been made to identify the unique characteristics so what is programmed is many times virtually identical to the prior art.  It doesn’t have to be that way though.

Provisions are Designed to Foster Competition in the Computer Chip Business

The Federal Trade Commission approved a settlement with Intel Corp. that resolves charges the company illegally stifled competition in the market for computer chips. Intel has agreed to provisions that will open the door to renewed competition and prevent Intel from suppressing competition in the future.

William Shakespeare

Earlier this week, on October 27, 2009, Amazon Technologies, Inc., received US Patent No. 7,610,382, which relates to a computer implemented method of marking copies of content distributed on a network. More specifically, the patent discloses and claims a variety of embodiments of a method and associated apparatus for programmatically substituting synonyms into text content distributed through a Web service. Embodiments include having a synonym substitution mechanism that will replace selected words in text with synonyms for those selected words, such as by substituting the synonyms in excerpts of copyrighted works that are provided to via a Web service interface. Tip of the hat to Slashdot for finding this patent and bringing it out into the open, but the major thrust of the patent and its potential importance was unfortunately downplayed. The submitter did recognize that in one version of the invention the method can be used to identify and call out copyright infringers, but then snidely joked about a minor aspect of the patent by saying “anti-piracy measures should trump kids’ ability to spell correctly, shouldn’t they?” Perhaps it is to much to ask for the masses to take any software related patent seriously, but there is no doubt this is an innovation and a good example running up to the Bilski Supreme Court arguments why software innovations should be patentable if they satisfy the other patentability requirements; namely if they are new and non-obvious.

One of the things that makes protecting computer related inventions tricky is that first you have to define the invention, and defining the invention is not something that is altogether easy when the invention is a computer process or relates to software. Sure, it is easy enough to define a list of desired functionality, and if you have some computer programming skills it is easy enough (after investing the requisite time) to write the code that will enable the functionality, but that which can be protected via patent lies somewhere between the desired functionality and the code, making the defining of the invention rather elusive.

As I wrote in a blog post a couple weeks ago titled Writing Software Patent Applications, a patent does not have to be a blueprint, but it must direct.  What this means is that you do not have to provide micro-level details, but rather you need to be able to describe how a computer programmer would be able to get from point A to point B, with point A being a list of desired functionality and point B being the code that enables the functionality.  So that which is patented is not found either at point A or at point B, but in between.  The exclusive rights that will flow from a patent that protects computer processes will describe the journey from point A to point B.