Software Patents

THIS CASEBOOK contains a selection of 161 Federal Circuit decisions that analyze and discuss issues surrounding software patents. The selection of decisions spans from 2004 to the date of publication.

Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Precedent has long established that eligible subject matter does not include laws of nature, natural phenomena, and abstract ideas. Other than as so limited, the patent system is described as available to “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)). Yet the technologies of recent decades have challenged the understandings of a simpler past. Internet Patents Corporation v. Active Network, Inc., (Fed. Cir. 2015).

“Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter. ‘In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.'” Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). If a claim is drawn to subject matter that falls outside the four statutory categories of § 101, it is not patent eligible. In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir. 2007). This is true without regard to whether it might otherwise be ineligible because it encompasses a law of nature, natural phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 124 S. Ct. 2347, 2354 (2014). Allvoice Developments US, LLC v. Microsoft Corp., (Fed. Cir. 2015).

Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.'” Id. at 1349 (quoting Burr v. Duryee, 68 U.S. 531, 571 (1863)). Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.” Id. (citing Diamond, 447 U.S. at 308). Allvoice Developments US, LLC v. Microsoft Corp. ,ibid.

[I]nstructions, data, or information alone, absent a tangible medium, is not a manufacture. See Digitech Image Techs., 758 F.3d at 1349-50 (rejecting a patentee’s attempt to argue that the disputed claims were subject matter eligible because the claim language did not describe “any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system”); In re Nuitjen, 500 F.3d at 1356 (declining to import a tangible medium element into the claims directed to only encoded signals, which were unpatentable under § 101). We [do not] import or, [ ] “imply” a tangible medium into claims that fail to recite or reference any such medium. Allvoice Developments US, LLC v. Microsoft Corp., ibid.

. . .THIS CASEBOOK contains a selection of 161 Federal Circuit decisions that analyze and discuss issues surrounding software patents. The selection of decisions spans from 2004 to the date of publication.

Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Precedent has long established that eligible subject matter does not include laws of nature, natural phenomena, and abstract ideas. Other than as so limited, the patent system is described as available to “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)). Yet the technologies of recent decades have challenged the understandings of a simpler past. Internet Patents Corporation v. Active Network, Inc., (Fed. Cir. 2015).

“Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter. ‘In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.'” Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). If a claim is drawn to subject matter that falls outside the four statutory categories of § 101, it is not patent eligible. In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir. 2007). This is true without regard to whether it might otherwise be ineligible because it encompasses a law of nature, natural phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 124 S. Ct. 2347, 2354 (2014). Allvoice Developments US, LLC v. Microsoft Corp., (Fed. Cir. 2015).

Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.'” Id. at 1349 (quoting Burr v. Duryee, 68 U.S. 531, 571 (1863)). Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.” Id. (citing Diamond, 447 U.S. at 308). Allvoice Developments US, LLC v. Microsoft Corp. ,ibid.

[I]nstructions, data, or information alone, absent a tangible medium, is not a manufacture. See Digitech Image Techs., 758 F.3d at 1349-50 (rejecting a patentee’s attempt to argue that the disputed claims were subject matter eligible because the claim language did not describe “any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system”); In re Nuitjen, 500 F.3d at 1356 (declining to import a tangible medium element into the claims directed to only encoded signals, which were unpatentable under § 101). We [do not] import or, [ ] “imply” a tangible medium into claims that fail to recite or reference any such medium. Allvoice Developments US, LLC v. Microsoft Corp., ibid.