Patent Law Practice Center

Software Patentability 2017

Today, most computer innovations relate to software, at least in some important ways, and the USPTO continues to issue at least some patents for software-related inventions. No one seriously believes software will become patent ineligible per se, although it is undeniable that there is now a much steeper hill to climb than there once was. The trick is to define the invention as providing a technological solution to a technological problem. See A Guide to Software Patents and Software Patent Eligibility at the Federal Circuit.

For now, there has been no definitive statement by the Supreme Court that software is, in fact, patent eligible, although the Court has recognized at least some software-related innovation as being patent eligible. See Diamond v. Diehr. The Supreme Court also continues to consider the invention at issue in State Street Bank to be patent eligible, even if the “useful, concrete and tangible result” test does not live on.

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Deciphering TLI Communications and FairWarning IP

Beginning in May 2016 with the Federal Court’s decision in Enfish, carrying over into the July decision in BASCOM, and then into the Court’s Fall decision in McRO (sometimes referred to as “the Blue Planet case”), the patent stakeholder community finally started receiving some much-needed guidance with respect to patent eligibility of computer-implemented inventions.

While decisions where claims have been ruled patent eligible have been helpful, decisions finding claims patent ineligible have been at least as informative, at least from a patent drafting standpoint. Indeed, as important as the aforementioned pro-patent-eligible decisions are two decisions where the Federal Circuit found the claims to be patent ineligible. In TLI Communications and then more recently in FairWarning IP, LLC v. Iatric Systems, Inc., the Federal Circuit distinguished the claims at hand from those that have been held patent eligible, which help identifies brighter lines and nuances of software practice.

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Deciphering BASCOM and McRo on Patent Eligibility

The United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, Deputy Commissioner for Patent Examination Policy, provides examiners with a discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility. What follows is my summary of these two important cases.

BASCOM v. AT&T (Decided June 27, 2016)

The claims generally recited a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. The patent explains that the advantages of the invention are found in the combination of the then-known filtering tools in a manner that avoids their known drawbacks. The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server. Thus, the claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks.

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Not a lot closer to understanding when software is patent eligible

“There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,” Paul Clement wrote in a brief filed on behalf of IBM to the Supreme Court in 2014. Ultimately, the IBM brief would argue that the abstract idea doctrine is unworkable, which it is. Sadly, nearly 30 months after the Supreme Court’s landmark decision in Alice v. CLS Bank we are not a lot closer to having a working understanding about when and under what circumstances software is patent eligible.

Yes, the Federal Circuit has started to issue rulings that give hope, but they also then issue non-precedential rulings that seem to just string together buzzwords too. They also continue to allow the invalidation of patent claims without a claim construction, which is antithetical to pretty much the whole of patent law. See No claim construction, CAFC rules claims ineligible.

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Federal Circuit says automating 3D-animation method is patent eligible

The Federal Circuit recently issued a decision in McRo, Inc. v. Bandai Namco Games America, which found that the software patent claims at issue were not directed to an abstract idea and were patent eligible.

The patents in question related to automating a part of a 3D-animation method. Essentially, the patents cover lip synchronization of animated characters so that the lips of the animated character move in a normal fashion to the point where the animated character’s lips can be read.

After going through a two-plus page recitation of the law, Judge Reyna summarized the district court holding, that the claims were drawn to an abstract idea of automating rules-based use of morph targets and delta sets for lip synchronization in 3D animation. Reyna explained that the Federal Circuit disagreed with that determination, reminding the district court that they have cautioned courts to carefully “avoid oversimplifying the claims.” Reyna would go on to say that these claims are specifically “limited to rules with specific characteristics.”

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