For the past few years, hot patent topics have revolved around the issue of patent eligible subject matter, especially for software patent. The Supreme Court has handed down a number of opinions attempting to give broad based guidance to the lower courts and the USPTO. The lower courts and the USPTO have been left to promulgate rules and decide cases based on those broad based holdings. As parties to a lawsuit argue their positions, the issues are supposed to become clearer. However, some issues take longer to clarify than others such as in the case of patent eligible subject matter for software patents.
Sap v. Versata is popularly known as the first case dealing with the America Invents Act (AIA). However, this case also dealt with the hot topic issue of patent eligible subject matter (i.e., whether an invention should be eligible for patent protection).
In Sap v. Versata, the Patent Trial and Appeal Board (PTAB) reviewed two different aspects of the claimed method to determine eligibility of patent protection, namely, (1) whether recitation of a general purpose computer imparts patent eligibility, (2) whether the steps of the claimed method imparts patent eligibility.
The PTAB stated that merely reciting a computer within a method step does not transform an otherwise non-eligible invention into patent eligible subject matter. In this case, the PTAB looked to the specification of the patent which stated that the claimed method “may be implemented in any type of computer system or programming or processing environment.” (emphasis in original). Since the claimed method can be performed by any computer, the claimed method could be performed on a a general purpose computer. Thus, the PTAB held that the claimed method is not eligible for patent protection.
Based on this analysis, software patent claims should avoid use of the generic phrase “with a computer” or the like. Rather, the claims should attempt to focus on the special computer parts that enable the claimed method. Moreover, based on this case, it appears that electromechanical devices appear to still be eligible for patent protection, whereas, the end result for pure software inventions and software patents may be uncertain.
Secondly, the PTAB reviewed the steps of the claimed method. The PTAB stated that the claimed steps of storing, retrieving, sorting, eliminating and receiving are well known, routine and conventional. Hence, the PTAB held that the claimed method is not eligible for patent protection. In coming to this conclusion, the PTAB took the position that “even if the abstract idea and ‘specific’ steps represent marketplace improvement, the claims are not patent-eligible where the appended steps lack meaningful limitations that prevent the claim as a whole from covering the practical applications of the abstract idea.” It appears that the PTAB is requiring something more in the steps. Until we receive more written decisions from the PTAB that give more guidance on this issue, one may consider drafting computer method steps that with more unique names for the steps. One may also consider drafting computer method steps so as to link the steps more with the hardware associated with the computer, if possible.
This written decision from the PTAB contained difficult language when arguing for patent eligibility for software patents. Bear in mind that it is merely a written decision of the PTAB and is not authoritative. Nonetheless, inventors must still face the PTAB after prosecution or in the case of litigation when the defendant seeks a post grant review of the inventor’s software patent. Additionally, bear in mind that the Federal Circuit has also rendered an opinion that is authoritative over the PTAB in Hulu v. Ultramercial which contains more moderating language on patent eligible subject matter for computer software patents.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.