The Patent Battles Have Begun

2 recently filed, and large, patent cases have made the news lately.  NPR referred to one of them as the "a full employment act for patent attorneys."

Interval Licensing LLC v. AOL, Inc. et al, Case No. 2:10-cv-01385 (W.D. Wash)

Paul Allen (co-founder of Microsoft), sued 11 companies.  You know all of them:  Apple, AOL, eBay, Yahoo, Google, Netflix, Staples, YouTube, Facebook, Office Depot, and Officemax.  Allen's company is asserting 4 patents:

• U.S. Patent No. 6,263,507: "Browser for use in navigating a body of information, with particular application to browsing information represented by audiovisual data"
• U.S. Patent No. 6,034,652: "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device"
• U.S. Patent No. 6,788,314: "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device"
• U.S. Patent No. 6,757,682: "Alerting users to items of current interest"

You'll note 2 of the patents (the '652 and '314 patents) have the same title.  The '314 patent is a continuation of the '652 patent.

For those of you who don't deal with patents, the key information that will be debated is the scope of coverage of the claims of the patents.  And these 4 patents have a lot to fight about.  The '507 patent has 129 claims, the '652 patent has 18, the '314 patent has 15 and the '682 patent has 20.  That's 182 patent claims potentially at issue.  As a sampling, the 1st claim of the '507 patent provides:

A system for acquiring and reviewing a body of information, wherein the body of information includes a plurality of segments, each segment representing a defined set of information in the body of information, the system comprising:

means for acquiring data representing the body of information;

means for storing the acquired data;

first display means for generating a display of a first segment of the body of information from data that is 5 part of the stored data;

means for comparing data representing a segment of the body of information to data representing a different segment of the body of information to determine whether, according to one or more predetermined jrj criteria, the compared segments are related; and

second display means for generating a display of a portion of, or a representation of, a second segment of the body of information from data that is part of the stored data, wherein the second display means displays the portion 15 or representation of the second segment in response to the display by the first display means of a first segment to which the second segment is related.

Thus, there are at least 5 main limitations to this system claim.  And each of those 5 are likely written in means-plus-function form governed by 35 U.S.C. § 112, ¶ 6.  So Interval will have to show what function is performed by the limitation, and then explain what structural elements in the specification are there to perform that function.  And since this is a software issue, Interval will need to show that the specification adequately discloses enough of an algorithm for performing the limitation.

That's a lot of stuff to fight about.  This will certainly generate a lot of work for patent attorneys.

NPR questioned the timing of why Allen waited approximately 10 years to file this dispute.  No answer to that question.  Pure speculation, but I think that the Supreme Court's Bilksi decision could have been a small factor here, as had the Court tanked all software claims, this case wouldn't have begun.  This will certainly be an interesting one to watch.

Oracle America, Inc. v. Google, Inc. Case No. 4:10-cv-03561 (N.D. Cal.)

This is certainly a clash of the titans.  And Oracle isn't playing around.  Lead counsel is David Boies.  He's a serious trial attorney.  He represented Al Gore in Bush v. Gore.  He just scored a victory challenging California's prop 8.  Oracle is taking this seriously.  Oracle views Google's Android as a threat to Oracle's Java (which it acquired from Sun). It's asserting 7 patents:

• U.S. Patent 6,125,447: "Protection domains to provide security in a computer system"
• U.S. Patent 6,192,476: "Controlling access to a resource"
• U.S. Patent 5,966,702: "Method and apparatus for preprocessing and packaging class files"
• U.S. Patent 7,426,720: "System and method for dynamic preloading of classes through memory space cloning of a master runtime system process"
• U.S. Reissue Patent 38,104: "Method and apparatus for resolving data references in generated code"
• U.S. Patent 6,910,205: "Interpreting functions utilizing a hybrid of virtual and native machine instructions"
• U.S. Patent 6,061,520: "Method and system for performing static initialization"

Oracle is also asserting copyright infringement for the code, documentation, specifications, libraries, and other materials that comprise the Java platform.  Oracle's allegation is that the Android operating system is built on top of Java, and is distributed with a Java Virtual Machine (the Dalvik VM).

Collectively, there are well over 100 claims potentially at issue.  This will be a big fight.  Stay tuned.

"interactive channels" is patent eligible

David Schrader invented a method for getting advertising feedback on "interactive channels." He described interactive channels in the context of "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."

He claimed:

A method for obtaining feedback from consumers receiving an advertisement from an ad provided by an ad provider through an interactive channel, the method comprising the steps of:

creating a feedback panel including at least one feedback response concerning said advertisement; and

providing said feedback panel to said consumers, said feedback panel being activated by a consumer to provide said feedback response concerning said advertisement to said ad provider through said interactive channel.

The Examiner rejected the claims as failing to claim patent-eligible subject matter under 35 U.S.C. § 101. (The Examiner also rejected the claims for obviousness, but that analysis is not discussed in this post.) The applicant appealed these rejections to the Board of Patent Appeals and Interferences, which addressed the § 101 issue briefly.

After explaining that the test for determining patentable subject matter for a process is Bilski's machine or transformation test (i.e. whether the claimed process is (1) tied to a particular machine or apparatus; or (2) transforms a particular article into a different state or thing), the Board found:

We will not sustain the rejection of claims 1-12 under 35 U.S.C. § 1because one of ordinary skill in the art would understand that the claimed “interactive channels” constitutes patent eligible subject matter under § 101 because the Specification unequivocally describes interactive channels as part of an overall patent eligible system of apparatuses which include "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."

§ 101 rejection reversed (although obviousness rejections were sustained).

Documents

• U.S. Patent Publication 2004/0059625

Ex parte Schrader, Appeal 2009-009098 (BPAI Aug. 31, 2009)

A "classifier" is a particular machine, and thus patent eligible

George Forman (no, not that George Foreman) invented a method for selecting a predetermined number of features for a set of binary partitions over a set of categories given a dataset of feature vectors associated with the categories. Read the application here. Claim 1 and 4:

1. A computer-implemented feature selection method for selecting a predetermined number of features for a set of binary partitions over a set of categories given a dataset of feature vectors associated with the categories, the method comprising:

for each binary partition under consideration, ranking features using two-category feature ranking; and

while the predetermined number of features has not yet been selected:

picking a binary partition p;

selecting a feature based on the ranking for binary partition p; and

adding the selected feature to an output list if not already present in the output list and removing the selected feature from further consideration for the binary partition p.

4. A method in accordance with claim 1 and further comprising using the selected features in training a classifier for classifying data into categories.

The Examiner rejected claims 1-35 as nonstatutory subject under 35 U.S.C. § 101. (There were also obviousness rejections, which are not discussed in this posting). The Board of Patent Appeals and Interferences explained the law:

As the U.S. Supreme Court has noted, “‘[a]n idea of itself is not patentable[]’….‘A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.’” [Diamond v. Diehr, 450 U.S. 175, 185 (1981)] (citations omitted).

In determining whether a claim as a whole is directed to an abstract idea, a key distinction has been drawn between (1) claims that seek to wholly pre-empt the use of a fundamental principle, and (2) claims that are merely limited to foreclosing others from using a particular application of that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964).

Based on U.S. Supreme Court precedents, Bilski restated the U.S. Supreme Court’s “definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself.” Bilski, 545 F.3d at 954. This restatement, embodied as the “machine-or-transformation test,” requires that a claimed process either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. Id. This test ensures that the claimed process does not pre-empt uses of the principle that do not use the specified machine or apparatus. The test further precludes a claimed process from pre-empting “the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.” Id.

Claim 1 -- not patent eligible

Addressing claim 1, the Board found the recited steps were not tied to a particular machine or apparatus, nor did they transform a particular article into a different state or thing. As such, the claim failed Bilski, as was not patent eligible. The Board found the preamble's requirement that the method be "computer-implemented" was merely "a nominal structural recitation [which] would be a tantamount to a general purpose computer and would therefore not tie the process to a particular machine or apparatus." (citing Gottschalk v. Benson, 409 U.S. 63 (1972)). The Board also found no transformation in claim 1, and upheld the finding of rejection under § 101.

Claim 4 -- The Classifier is a particular machine & thus patent eligible

Turning to claim 4, the Board found that the "classifier" is a particular machine because of the following definition from the specification:

A classifier is typically constructed using an inducer. An inducer is an algorithm that builds the classifier using a training set comprising records with labels. After the classifier is built, it can be used to classify unlabeled records.” Spec. ¶ 0005.

Per the Board:

A “classifier” is therefore a particular machine in that it performs a particular data classification function that is beyond mere general purpose computing. Since the claim recites using the selected features in training this classifier, the claim is therefore tied to a particular machine, namely the classifier. Claim 4 also transforms a particular article into a different state or thing, namely by transforming an untrained classifier into a trained classifier.

Claim 15 -- A machine or article of manufacture, but still not patent eligible

First, the law:

If a claimed machine (or article of manufacture) involves a mathematical algorithm, then we must determine whether the scope of the claimed invention encompasses one of the judicially-created exceptions. This determination of claim scope requires that we make two inquiries:

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

If the machine (or article of manufacture) claim involves a mathematical algorithm and fails either prong of this two-part inquiry, then the claim is not directed to patent-eligible subject matter under § 101.

Claim 15 begins "A memory embodying computer program code for feature selection..." A memory is a machine or an article of manufacture, so it satisfies at least one category of § 101. But where the claimed machine involves a mathematical algorithm, the patent-eligibility analysis must go further. The Board's analysis:

Here, claim 15 is not limited to a tangible practical application in which the algorithm is applied that results in a real-world use. Although the preamble recites that the program code is “for feature selection for a plurality of categories,” this nominal intended use recitation falls well short of reciting a tangible practical application that results in a real-world use. Moreover, the remainder of the claim merely recites data manipulation steps that are performed by the processor upon execution of the program code. These limitations, likewise, fail to recite a tangible practical application that results in a real-world use. Furthermore, the sheer breadth of claim 15 encompasses substantially all practical applications of the algorithm. In essence, claim 15 merely recites a general purpose computing device intended to facilitate the future execution of the recited data manipulation functions—manipulations similar to those in claim 1 that we found to be unpatentable under § 101.

Reversed in part, affirmed in part.

Ex parte Forman, Appeal 2008-005348 (BPAI Aug. 17, 2009)

Computer programs are functional, and are patent eligible when recorded on computer-readable medium.

William Bodin and Derral Thorson invented a virtual camera and method for editing and browsing images for virtual cameras. Claims 17-24 were rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. For example, claim 17 claimed:

A computer program product for digital imaging, the computer program product comprising: a recording medium; means, recorded on the recording medium, for creating, in the virtual camera, an unedited image request for an unedited digital image; ...

The Examiner found these claims non-statutory because the claims were directed to the computer program product itself, which is not embodied on a computer readable medium. The Board of Patent Appeals and Interferences disagreed. First, the law:

Under § 101, there are four categories of subject matter that are eligible for patent protection: (1) processes; (2) machines; (3) manufactures; and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits within one or more of the statutory categories, it may not be patent eligible. In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).

“[A]n applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article” into a different state or thing. In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972).

“[A] machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).

IBM, who owns the patent application, argued that the claims expressly include "a recording medium" and the means-plus-function clauses "record on the recording medium for digital imaging." The Board then explained:

Computer programs and data structures are deemed “functional descriptive material,” which impart functionality when employed as a computer component. When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (claim to data structure stored on a computer readable medium that increases computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994) (claim to computer having a specific data structure stored in memory held statutory product-by-process claim but claim to a data structure that referred to ideas reflected in nonstatutory process rather than referring to a physical arrangement of the contents of a memory held nonstatutory).

Finally, the Board found that the "recording medium" disclosed in the Specification was equivalent to a computer-readable medium, and thus the Examiner's rejection was reversed.

Ex parte Bodin, 2009-002,913 (BPAI Aug. 5, 2009)