Special Software Series of the Litigation Quality PatentCast



In the Special Software Series, Craige Thompson discusses recent software patent decisions. If you would like to know what works and what doesn’t work since the Alice decision we invite you to listen to the show. Check back for new additions to this series.

LQ PatentCast: ZeroClick, LLC v. Apple Inc.

Summary: Zeroclick's  finger gesture patents were  temporarily brought back to life on appeal, Apple has ample avenues to kill it off permanently on remand back to the trial court in the Northern District of California.  The  patent, which was  drafted pro se by a doctor who wanted to improve the patient charting process  without having to click on a pointer, was not invalid on the ground that it should be interpreted in means plus function form (if it were so interpreted, it would likely have stayed dead).

Apple did not appear worried. Apple  appears to have simply used the opportunity on a relatively weak patent to try to undermine a huge swath of all software patents that might have been subject to means plus function rules.  Had Apple been successful, many more software patents would have been put on life support. 

However, the Federal Circuit reversed Apple's win below, and the result is that software patent claims are more likely to survive if they recite terms like "User Interface Code" or "Program Code," which makes them more likely to be considered sufficiently definite structure (like "circuit" is for hardware), and less likely to fall under the more challenging means plus function rules.

LQ PatentCast: SIRF Technology v. the International Trade Commission

Summary: What would happen if your top engineers walked out the door with a patentable idea?

As the CEO of a technologies company, have you thought about what would happen if your top engineers walked out the door with a patentable idea and started a very profitable business? Every employment agreement these days should have a clause obligating employees to assign their rights and invention to your company. However, this doesn’t always happen. Every engineer will leave their current position at some point, and some of them will leave with extremely valuable ideas in their heads that they have been moonlighting on.

In today’s PatentCast, discover how an engineer walked out with valuable patentable ideas when his company was focused on GPS technologies for surveying applications. This former employer lost out on the “Big Win” when they could have had a very profitable idea without expensive or risky litigation. 

LQ PatentCast: DDR Holdings V Digital River

Summary: You Must Use Analogy to Patent Software 

"Alice" is the pivotal U.S. Supreme Court decision that shifted the landscape for software patents in 2014. In our post-Alice software series of Litigation Quality PatentCasts, we break down the impacts of this decision because it is often cited in prosecution and in litigation. The "Alice Analysis" determines whether a claim to software is even eligible for patent protection. At TPL, we regularly crack the Alice code, and one way to do that successfully is by using analogy to patent software.

In Alice, the Supreme Court established a two-step test for analyzing whether claims are patent-eligible subject matter, or whether they’re too abstract to be patentable. A great case study to use to analogize in favor of software patent eligibility is known affectionately as the "DDR" case.

Click here to read more.

LQ PatentCast: SAP America v. Investpic

Summary: The Federal Circuit burns off some of the fog surrounding software claims at Step 2 of the Alice inquiry.

In this installment of the Post-Alice Software Series, the Federal Circuit burns off some of the fog surrounding software claims at Step 2 of the Alice inquiry. The case of SAP vs. Investpic appears to directly answer, for the first time, whether a claim can lack the “inventive concept” needed to survive Alice, even though the claims are “groundbreaking, innovative, or even brilliant” as well as non-obvious.
Now we know that an “inventive concept” cannot be found in the non-abstract realm, e.g., the claimed improvement can’t be an improvement to merely abstract “math.”

LQ PatentCast: Mastermine Software V Microsoft

Summary: The 4 layers that must be considered to properly interpret a patent claim. 

In this enlightening review of Microsoft's successful non-infringement defense against Mastermine's software patent relating to pivot tables, Craige exposes the 4 layers that must be considered to properly interpret a patent claim.  Craige provides crucial insights into the subtleties of each layer that make the difference between successful patent enforcement and just getting close but falling short, as Mastermine did with their claims.  As a bonus, Craige takes this case as a rare opportunity to explore hybrid claiming techniques, showing the factors that courts look at to decide when to permit both method and apparatus elements to be recited in the same claim - which can produce very powerful claims, for example, to protect software! 

LQ PatentCast: MCRO V. Bandai Namco

Summary:When is software that automates a human task patentable?

When is it too abstract to be patentable? In this special edition of the post-Alice software PatentCast series, Craige explains how the automation software claims were indeed patentable. Craige extracts key themes that pop up in many software litigations, and explains how to apply the lessons learned to create and enforce Litigation Quality Patents®.

LQ PatentCast: Berkheimer v. HP

Summary:A Double Win for Software Patent Owners!
The Alice barrier to software just got cut down a couple notches! 

Is this sleepy little case going to shake up prosecution and litigation of software patents?
Tawfiq uncovers how it might have just become harder to invalidate software claims, under step 2 of Alice in District Court, while Craige explains the potential sea change that promises to hold the patent examiners back from sloppy Alice rejections. Help is on the way for protecting software.

LQ PatentCast: Enfish LLC v Microsoft Corp.

Summary: 3 Lessons on How to Patent Software Claims
Since the Supreme Court tightened the law for patenting software inventions in a case called Alice, businesses have been uncertain about the fate of software patents. In the years since Alice, the law has started to settle. In this PatentCast, Craige explains why Microsoft was unable to kill off software claims owned by Enfish, and he shares 3 valuable Litigation Quality Patent lessons and 3 business takeaways from Enfish decision by the Federal Circuit.

LQ PatentCast: Electric Power Group v Alstom

Summary: Software is patentable – we do it here at TPL all the time. But many software inventions die a slow, and painful death in the patent office. Many others are killed off in litigation – all due to a Supreme Court case called Alice. Alice shapes which software claims thrive, and which don’t survive. In today’s EPG case, Craige explores how to identify whether claims will survive Alice. Craige also offers some Litigation Quality Patent practice pointers – including “red flag” phrases that are symptoms of potentially weak claims. 

LQP Patentcast: Visual Memory v Nvidia

Summary: Money in the middle of conventional extremes.
One repeatable trick companies can use to mine patentable inventions is to find the "third way" that takes the best (but leaves the rest) from both extremes. In this case, the invention mining formula claims software that automatically configures a memory system to optimize performance based on the type of processor. This has the performance benefit of a custom solution with the affordable cost of a "one size fits all" approach.

LQP Patentcast: ex parte stefan hartman


Case Study: How Not to Write Software Claims.

Software is patentable when you follow the rules. Craige analyzes how the Patent Trial and Appeal Board (PTAB) invalidated issued software claims because the claim drafter simply framed the claims in a way that was too abstract. This illustrates an avoidable, but all too common, flaw that leads to the demise of many software claims.

Check back soon for more episodes...

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