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Re: Software Patents

From: Lee Hollaar
Subject: Re: Software Patents
Date: Thu, 21 Jun 2007 08:28:12 -0600 (MDT)

In article <> writes:
>rjack wrote:
>> The Federal Circuit took it upon itself to decide new law when it declared:
>> "The first question, i.e., whether software may be a “component” of a
>> patented invention under § 271(f), was answered in the affirmative in
>> Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005),
>> which issued while the instant appeal was pending. In that case, we held
>> that “[w]ithout question, software code alone qualifies as an invention
>> eligible for patenting,” and that the “statutory language did not
>> limit section 271(f) to patented ‘machines’ or patented ‘physical
>> structures,’” such that software could very well be a “component” of a
>> patented invention for the purposes of § 271(f)."; AT&T v. Microsoft,
>> 414 F.3d 1366 (Fed. Cir. 2005).
>> The Supreme Court in review of that case held:
>> "Abstract software code is an idea without physical embodiment, and as
>> such, it does not match §271(f)’s categorization: “components” amenable
>> to “combination.” Windows abstracted from a tangible copy no doubt is
>> information—a detailed set of instructions—and thus might be compared to
>> a blueprint (or anything else containing design information). A
>By their retarded logic (i.e. Windows, apart from material objects on 
>which it is stored, is merely a blueprint (or anything else containing 
>design information), §271(f) MUST cover exported copies (material 
>objects) of blueprints (or anything else containing design information) 
>since they held that "[i]n sum, a copy of Windows, not Windows in the 
>abstract, qualifies as a “component” under §271(f)."

With respect to the Supreme Court's opinion in Microsoft v. AT&T, the
amazing thing is that neither the parties, nor the Federal Circuit
in the opinion below, nor the Supreme Court addressed what seems to
be a fundimental question -- A component of what?  In other words,
what was actually claimed to be the invention.

As I noted in "The Form of a Software Claim Makes a Big Difference," (BNA PTCJ.
Vol. 73, No. 1795, 11/17/2006), if we are considering a Beauregard-type
claim the software should be a component -- perhaps the most important
    The patent (5,838,906) considered by the Federal Circuit
    in Eolas Technologies v. Microsoft, 399 F.3d 1325,
    73 USPQ2d 1782 (Fed. Cir. 2005) (69 PTCJ 471,
    3/11/05), claims its invention as both a method and as a
    computer program product. In particular, its media
    claims are:
       A computer program product . . ., the computer program
       product comprising:
       a computer usable medium having computer readable
       program code physically embodied therein, said
       computer program product further comprising: computer
       readable program code for [performing the
       steps of the method].
     In other words, the claimed invention is some computer
     usable medium and particular program code
     stored on the medium. It should be clear that the digital
     software code is a component of the claimed computer
     program product.
     The claim specifically recites computer readable
     program code that is stored in the medium. In fact, it
     is the code that is the only component of the claimed
     computer program product that has any unique characteristic.
     The combining of this code with some conventional
     computer medium makes the claimed invention,
     an act that would be infringement if done in the
     United States.

I go on to note that the AT&T patent was granted pre-Beauregard and
therefore doesn't have article of manufacture claims, but it does have
appratus claims, and a similar analysis may apply.

It amazed me at oral arguments that AT&T did not address the claims
and there were no questions from the Court asked what the claimed
invention actually was.

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