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Software Is Still Patent Eligible

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank[1] and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.

Recent Federal Circuit opinions have provided much-needed clarity and guidance on how to avoid having a patent application rejected or an issued patent invalidated for lack of patent eligibility. For example, in Enfish v. Microsoft, the court held that a software patent for a self-referential table was patent eligible because it was directed to a specific, asserted improvement in computer capabilities.[2] In BASCOM v. AT&T, the court held that a software patent on a specific, new customized content filter program on a remote ISP server was eligible because “the patent describes how its particular arrangement of elements is a technical improvement over prior ways of filtering such content.”[3] And, in McRO v. Bandai, the court held that a software patent requiring specific rules to render 3-D animations in a specific way was patent eligible because the use of the rules did not preempt others from animating with generic rules.[4]

These cases highlight the importance of showing how a claimed invention implemented by software (or software in combination with computing hardware) is both different from and provides advantages over prior solutions to a technological problem, and, more broadly, to existing approaches that might be considered well known, routine, or conventional. In our experience, providing explanations on this point within a patent application can have the effect of making the eligibility requirement a simple threshold issue, like making sure a patent claim is written clearly. Drafting patent claims so that they recite a specific and unconventional way of solving the problems described in the application may be all that is needed to satisfy the eligibility requirement. Of course, in order to strengthen the chances of success, the patent claims should be directed to a technological improvement that solves a technological problem, not to the mere automation of known economic practices or ways of organizing human activity.

The line between what is and what is not patent eligible is becoming clearer—provided you know how to interpret and apply the evolving jurisprudence governing patent eligibility requirements. Mintz Levin does. We are monitoring the evolving landscape closely and will continue to help our software clients successfully navigate through the obstacles they face in obtaining and litigating patents. Mintz Levin’s expertise comes in part from over a decade of writing and prosecuting patent applications in foreign patent systems that have a more stringent test for the patentability of computer-implemented inventions—one closer to the Alice standard now governing patent eligibility in the United States.


Endnotes

Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).

BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).

McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299, 1315 (Fed. Cir. 2016).

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VII, Number 48

TRENDING LEGAL ANALYSIS


About this Author

Michael Van Loy Intellectual Property Attorney Mintz Law Firm
Member

Michael is a skilled patent attorney and technology protection strategist. He works with both growing and established companies to create, manage, and improve patent portfolios both domestically and internationally with a keen focus on enforceability and business value. He combines a deep and broad technical background with extensive experience developing innovative legal strategies to address patentability challenges involving the mechanical arts, materials science, and computer-implemented technologies (including inhaler technologies, database management, manufacturing techniques,...

858-314-1559
Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is Division Head for the Intellectual Property Section at Mintz and serves as a member on the firm’s Policy Committee. He is an experienced litigator known for his business approach to creating value in patent assets. His success on behalf of clients comes from his ability to identify the value drivers in a portfolio and communicate that value to competitors, investors, purchasers, licensees, counsel, judges, and juries.

With a background in mechanical engineering and nearly 20 years’ experience practicing law, he has the combination of technical and legal skills essential to a strategic patent practice. He has achieved courtroom victories and negotiated favorable settlements on behalf of both patent owners and accused infringers in complex negotiations and protracted litigation.

Michael develops strategies for and guides clients through monetization programs for complex technology portfolios. Several recent monetization programs have each returned tens of millions of dollars through litigation, licensing, and sale activities.

Michael also advises clients on patent portfolio assessment and conducts IP due diligence in connection with transactions. He counsels private equity firms and venture capital funds on IP assets and patent value. He also helps patent owners develop and implement strategies for identifying and leveraging untapped assets in their patent portfolios.

He has particularly deep experience litigating Section 337 matters before the International Trade Commission and has also achieved significant success in Federal District Courts, including the Eastern District of Texas, District of Delaware, Northern District of California, District of Massachusetts, and numerous others.

Michael’s technology experience includes electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others.

617-348-1870
Associate

Sandra Badin focuses her patent practice on appeals before the Federal Circuit and high-priority motions in the federal district courts and the U.S. International Trade Commission.  She has represented clients in many different technology fields with patents covering radio frequency transceivers, graphics processing units, LCD displays, medical records processing systems, electronic point-of-sale systems, high-density plasma cutting torches, dental materials and processes, specialty fabrics, and financial and business methods.  Sandra crafts winning appellate briefs and...

617.348.1604
Matthew A. Karambelas Associate Boston Strategic IP Monetization & Licensing Federal Circuit Appeals International Trade Commission Patent Litigation
Associate

Matthew practices with Mintz's Intellectual Property Litigation group, specializing in patent litigation at the International Trade Commission, United States District Courts, and United States Court of Appeals for the Federal Circuit. Matthew’s experience includes litigating cases all the way through trial and appeals, including several ITC Investigations. Matthew’s clients are focused on technologies ranging from high tech and software to life sciences and medical products.

During law school, Matthew served a judicial intern for the Hon. Dennis J. Curran of the Massachusetts...

617-348-1831
Nicholas P. Mouton Associate Mintz Patent Prosecution & Strategic Counseling Patent Prosecution
Associate

Nicholas's practice is dedicated to intellectual property, namely patent prosecution. His experience focuses primarily on electronics, semiconductors, wireless communications, software, and information technology.

Prior to joining Mintz, Nicholas worked as an attorney for one of the largest intellectual property firms in America. His primary responsibilities included drafting and prosecuting provisional and non-provisional patent applications for domestic and international filings.

858-314-2791