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Posts Tagged ‘ software patents ’

The Walt Disney Company – An Innovative and Creative Pioneer

Posted: Saturday, Dec 20, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Authors, Companies We Follow, Computers, IP News, IPWatchdog.com Articles, Patents, Software, Steve Brachmann, Technology & Innovation, The Walt Disney Company, Video

The Walt Disney Company (NYSE: DIS) is a multinational mass media corporation headquartered in Burbank, CA, and is one of the few companies in the world that could be considered beloved by its customers. Disney has thrived for decades on offering family friendly experiences at its many amusement parks and in movie theaters across the globe. So far, 2014 has been a banner year for the company thanks in large part to box office successes from films such as Guardians of the Galaxy, Captain America 2 and Frozen; a resulting rise in dividends extending from this success is seen as a sign of increased corporate strength for Disney. In 2015, Disney’s movie business is expected to reap even more from what are expected to be great returns from the next movie installments of The Avengers and Star Wars, both of which are coming out next year. Disney is also heavily into the development of video games, which we’ll discuss in more detail below, as is evidenced by the recent announcement of a Disney research initiative completed in partnership with the Institute of Technology Zürich for better quality in eye capture for building digital face models in video games.

Disney may not be as prolific in patenting activities as many other corporations featured in the Companies We Follow series, but the company did place 211th overall during 2013 in terms of U.S. patents received by entities worldwide; statistics released by the Intellectual Property Owners Association show that Disney earned 137 patents that year, almost 25 percent more than they received the year prior.

Surprising to some may be that the effects of the Supreme Court ruling in Alice v. CLS Bank has negatively impacted the patent holdings of Disney as a series of patents protecting lip-sync animation technologies were declared invalid in September by a U.S. district judge in California, which found that the patents only protected an abstract set of rules. Over the years, Disney has patented a wide array of technologies, from drink dispensers to amusement rides with spinning passenger cars to irrigation control systems. But they do have a variety of software related innovations that have been patented, so like everyone else in the space they are not immune to the uncertainty created by the Supreme Court.



1998: Federal Circuit Says Yes to Business Methods

Posted: Friday, Dec 12, 2014 @ 1:40 pm | Written by Gene Quinn | 2 comments
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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

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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
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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
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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.



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

Posted: Thursday, Dec 4, 2014 @ 3:30 pm | Written by Gene Quinn | No Comments »
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Posted in: Authors, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Software, Technology & Innovation

This is part 3 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. 

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For some time after the Supreme Court decision in Diehr, the Court of Appeals for the Federal Circuit applied what was known as the Freeman-Walter-Abele test to determine whether a computer program is patentable subject matter pursuant to 35 USC 101. The last of these cases, In re Abele, was decided by the Federal Circuit a little more than a  year after the Supreme Court issued its decision in Diehr.

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. Indeed, in a recent interview Judge Richard Linn told me: ” I have great difficulty rationalizing the Supreme Court’s opinions in Flook and Diehr, and in many regards I think those decisions are irreconcilably in conflict.” Judge Linn isn’t the only one to hold that opinion. If only his panel opinion in Alice were the law of the land — but that is another story for another day.



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

Posted: Tuesday, Dec 2, 2014 @ 9:00 am | Written by Gene Quinn | 6 comments
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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. 

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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
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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.



Patentability of Business Methods and Software In Australia – Full Federal Court Decides Much Anticipated Research Affiliates Case

Posted: Tuesday, Nov 18, 2014 @ 11:11 am | Written by Ernest Graff | 6 comments
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Posted in: Australia, Authors, Guest Contributors, International, IP News, IPWatchdog.com Articles, Patents, Software, Technology & Innovation

The Australian Full Federal Court recently handed down its decision in Research Affiliates LLC v Commissioner of Patents [1]. The decision is an important addition to Australian case law concerning the patentability of business methods and software.

Judges Kenny, Bennett, and Nicholas ruled that the Appellant’s claimed computer implemented method for generating an index for use in securities trading was unpatentable as an abstract idea. The Court held that “[t]he claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea. The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.”[2]

In our opinion this case does not present a major change in the law in Australia regarding the patentability of business methods and software, but clarifies that mere reference to computer implementation in patent claims will not be enough to satisfy Australia’s requirements of patentable subject matter. Otherwise, the patentability of business methods and software, where a computer is “inextricably linked with the invention itself”, appear to remain patentable in Australia.[3]



Ultramercial Patent Claims Invalid as Abstract Ideas

Posted: Sunday, Nov 16, 2014 @ 11:46 am | Written by Gene Quinn | 48 comments
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Posted in: Anti-patent Nonsense, Federal Circuit, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patents, Software, Technology & Innovation

On Thursday, November 14, 2014, the United States Court of Appeals for the Federal Circuit issued its latest decision in Ultramercial v. Hulu, which deals with the patent eligibility of software related patent claims. The district court originally held that U.S. Patent 7,346,545 (the “’545 patent”), the basis for the complaint filed by Ultramercial, does not claim patent-eligible subject matter under 35 U.S.C. § 101. This decision was appealed to the Federal Circuit, which reversed, concluding that the district court erred in granting WildTangent’s motion to dismiss for failing to claim statutory subject matter. WildTangent filed a petition for certiorari with the Supreme Court, which was granted. The Supreme Court vacated the Federal Circuit decision, and remanded the case for further consideration in light of its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.

On remand the Federal Circuit once again found that the claims asserted by Ultramercial defined patent eligible subject matter. WildTangent again filed a petition for certiorari with the Supreme Court. While WildTangent’s petition was pending, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International. Ultimately, the Supreme Court once again granted WildTangent’s petition for a writ of certiorari, vacated the Federal Circuit decision, and remanded the case for further consideration, this time in light of Alice.

Ultramercial’s Federal Circuit luck has now run out. Gone from the original panel was Chief Judge Rader who retired and was replaced by Judge Mayer, which does not bode well for any patent owner. This time in an opinion written by Judge Lourie the Ultramercial claims were found to be patent ineligible because they constitute nothing more than an abstract idea. If Judge Lourie were trying to predict what the Supreme Court would do when faces with patent claims that are clearly NOT abstract, his decision makes sense. Still, it is extraordinarily troubling that patent claims are being invalidated left and right based upon the so-called “abstract idea doctrine,” where the critical term “abstract idea” has never been defined by the Supreme Court or the Federal Circuit.



IBM Patent Applications: Business, Medical Data Analysis

Posted: Sunday, Oct 5, 2014 @ 8:00 am | Written by Steve Brachmann | 9 comments
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Posted in: Authors, Cancer Research, Companies We Follow, Computers, IBM, IP News, IPWatchdog.com Articles, Medical Devices & Methods, Patents, Software, Steve Brachmann

There is no corporation with a wider breadth of development in intellectual properties than the International Business Machines Corporation of Armonk, NY. Long associated as a developer of business technologies, IBM has recently announced a free tool for businesses who want to upload data to Watson Analytics to receive predictive insights. The company is increasing its presence in Indian markets by partnering with dozens of startups, including one trying to develop data technologies to predict instances of crime before they occur. IBM is also involved in efforts to develop more effective health care technologies, as is evidenced by the recent decision by Texas-based biosciences company Caris Life Sciences to use IBM technology to accelerate molecular profiling services for cancer patients.

In this edition of the Companies We Follow series, we’ve surveyed the recently published patent applications which have been filed by IBM with the U.S. Patent and Trademark Office. All in all, we found a wide assortment of data analysis technologies for business, medical and consumer fields which may likely their way into the corporation’s intellectual property portfolio in the months to come.

We start off with a look at a few inventions for software development projects, specifically for the management of artifacts connected to software development files by applications within development platforms. We discuss a trio of patent applications related to helping businesses make sense of immense data sets, including visualization methods and techniques for answering natural language questions. IBM’s patent applications involve more medical technologies, including a system for determining fraud within health care claims. We also profile one patent application describing a unique method for swaying the voting tendencies of a group of participants within an electronically hosted conference.



SCOTUS: Public Enemy Number One for Patent Owners

Posted: Thursday, Oct 2, 2014 @ 8:00 am | Written by Gene Quinn | 37 comments
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Posted in: IPWatchdog.com Articles

Editorial Note: This article is part 2 of a 2 part series adapted from a presentation I gave earlier this week at the annual meeting for the Association of Intellectual Property Firms (AIPF). To start reading from the beginning please see Dark Days Ahead: The Patent Pendulum.

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Justices of the United States Supreme Court. No friends to innovators who require strong patent rights.

As I was putting together the slides for this Powerpoint presentation I thought to myself, “how do I title this page.” I’ll tell you the thought that first jumped into my head, although I ruled it out: “Public Enemy Number One.” Or I suppose “Public Enemy Number One through Nine.” There is little doubt that the Justices of the Supreme Court are indeed public enemies, at least insofar as patent owners are concerned. Unless you are represented by Seth Waxman at the Supreme Court your patent claims are invalid! And even Seth doesn’t always win, although he sure wins a lot for Monsanto.

Let’s start our discussion of SCOTUS decisions with Mayo v. Prometheus. In Mayo the Supreme Court proudly proclaims that they’re not going to take the government’s invitation to apply 102, 103, and 112. Instead the Court decided to limit its handling of the issues to patent eligibility under 101. And as they go through their analysis they admit that the claim in question includes things that are not in nature, but yet they reach the conclusion that the claim is still a law of nature anyway because you’re just adding some extra stuff that already exists. It’s breathtaking. One, that’s not what the law is. Two, that’s not what the statute says. And three, every other Supreme Court throughout history specifically said never do that, and they did it anyway.



The Patent Drafting Disclosure Revolution: Don’t Ask Alice

Posted: Tuesday, Sep 30, 2014 @ 8:00 am | Written by Joseph Root | 4 comments
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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.

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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.