• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
    • Areas Served
  • Services
    • Patents
      • Patent Consultation
      • Patent Search Service
      • Patent Application Service
      • Patent Prosecution
      • Utility Patents
      • Design Patents
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademarks
      • Trademark Search
      • Trademark Application Services
      • Trademark Prosecution
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Info on Forms
    • Nonpublication Request
    • Declaration of Utility or Design Application
    • Provisional Patent Application Cover Sheet
    • After Final Consideration Pilot Program
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent Infringement / Patent Claim / Software patents need to drill down to the core algorithms

Software patents need to drill down to the core algorithms

July 6, 2019 by James Yang


ReduceIndirectInfringement-minBottom line
:
Software patent specifications require disclosure of an algorithm for all means-plus-function limitations.  Otherwise, the claim may be invalid for being indefinite.  The problem may not be related solely to means limitations since a non-means limitation could be impliedly construed as a means-plus-function limitation even without using the trigger word “means.”

In Eon Corp, IP Holdings LLC v. AT&T Mobility LLC (Fed. Cir. 2015), the patent involved software used in a local subscriber data processing station that operates in tandem with a television to interconnect various interactive features of the television.  The patent owner (EON) alleged that the modern iteration of the local subscriber data processing station is a smartphone or cellphone with certain capabilities.

Eon sued 17 defendants for patent infringement.  Eon’s patent claims recited 8 means plus function limitations.  By statue, means plus function limitations are limited to the structure disclosed in the patent specification and their structural equivalents that perform the recited function.  If there is no structure disclosed in the specification for the function associated with the means limitation, then the claim is indefinite and invalid.  For softwarepatents, means plus function claims are written with pure functional language.  For example, in Eon, one of the means limitations was “means for indicating acknowledging shipment.”  Very broad and purely functional.  By statute, this limitation is limited to the structure disclosed in the specification and its equivalents that perform the function of “indicating acknowledging shipment.”  However, software steps do not have any physical structure.  As such, the courts have construed the “structure” of a software step to be the associated algorithm(s) or software program disclosed in the patent specification that performs the recited function.

The Federal Circuit explained that, in general, two types of software means-plus-limitations are litigated: 1) situations where the specification discloses no algorithm and 2) situations where an algorithm is disclosed but the dispute is whether the extent of the algorithmic disclosure is sufficiently definite.

Here, the patent owner agreed that no algorithm was disclosed in the patent specification but argued that the claims were still not indefinite since they fell within the Katz exception.  In Katz, the court held that a disclosure of a standard microprocessor can serve as sufficient structure for “functions [that] can be achieved by any general purpose computer without special programming.”  Specifically, in Katz, claim terms involving “processing,” “receiving,” and “storing” were not necessarily indefinite because a general purpose computer need not be specifically programmed to perform the recited function.

Eon argued that the various means plus functions limitations which the defendant identified as lacking an associated structure in the specification fit within the Katz exception since they were simple to implement and Eon’s patent disclosed a microprocessor.  The Federal Circuit hammered the patent owner on this point since this contention conflates enablement and indefiniteness.  Even though a process in software can be easily implemented, the ease of implementation relates to enablement or whether one of ordinary skill in the art can make and use the process.  That is a separate requirement for patentability.  For a means plus function limitation, a greater burden is placed on the patent owner since the inventor is allowed and has chosen to craft the claim in terms of broad functional language.  The inventor must thus describe some structure (i.e., algorithm) associated with the function in the patent specification.

The Katz exception only applies to functions inherent in a standard microprocessor regardless of how easy a non-inherent function might be to implement on a general purpose computer.  The court explained that this situation applies only in rare circumstances since any programming required above that which is provided in the general purpose computer would transform the general purpose computer into a special purpose computer.

On one hand, this case is limited in that its holding is applicable only to means plus function claim language.  Typically, means plus function limitations are intentionally drafted as a means plus function limitation by using the trigger word “means” and associating a pure function with that “means” term. However, courts may construe claim limitations as a means plus function limitation even though the operative “means” trigger word is not used.  Accordingly, to mitigate a finding of indefiniteness and invalidity of a software claim that uses functional language, one should consider drilling down through the functions more carefully and should consider including all available algorithms to perform those functions so that structural support in the patent specification exists even when the claim limitations are construed by the court as a means plus function limitation against the desire of the patent owner.

I invite you to contact me with your patent questions. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Patent Consultations
Patent Searches
Patent Applications
Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Overview
Trademark Search Services
Trademark Application Services
Trademark Prosecution Services
Trademark Enforcement Services
Trademark Defense Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients throughout Orange County, Los Angeles, Long Beach, the Inland Empire (e.g. Corona and Temecula), and throughout SoCal.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney