Category: Software Patents

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Repeated References to “Still” Image Precludes Coverage of Video Dispite Alternative Embodiment Reference

St. Clair Intellectual Prop. Consultants v. Cannon, 2009-1052 (Fed. Cir. 2011) [PDF]

This case raised the issue of whether one or two references to an alternative embodiment (MPEG) in the specification can overcome the predominance and repeated reference to the first embodiment (still images). Two issues are explored here (1) whether all the claims were limited to an interpretation requiring the infringing devices to have formats corresponding to different computer architectures, and (2) whether the claim language of “plurality of different data formats” includes moving (movie) images or only still images. The district court found infringement, the appeals court disagreed and reversed, with one judge dissenting.

In St. Clair the plaintiff sued several digital camera manufacturers for infringing  United States Patent Nos. 5,138,459 (“‘459 patent”), 6,094,219 (“‘219 patent”), 6,233,010 (“‘010 patent”), and 6,323,899 (“‘899 patent”).  Claim 16 of the ‘459 patent provides: “A process for storing an electronically sensed video image comprising the steps of: . . . recording in selectable addressible memory means at least one of a plurality of different digital output data format codes where each of said plurality of out-put data format codes corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus.”

The parties disputed whether the phrase “plurality of different data formats for different types of computer apparatus” language” was limited to formats related to different computer architectures (e.g., IBM or Apple PCs) or if it could also include formats related to different computer applications (e.g., software that can run GIFF or PICT). If the phase was limited to different computer architectures then Fuji, the appellant, would avoid infringement.

Majority: Claims Treated Similarly Requiring Different Computer Architectures. Reviewing the specification and the prosecution history, the majority found that the claim phrases should be limited to the  different computer architectures and not the broader interpretation of formats related to different computer applications. During the prosecution the inventors stated, as summarized by the court, that the invention ” ‘solve[d] a long felt need’ by allowing data format compatibility with a ‘plurality of types of personal computers manufactured by different [personal com-puter] companies, IBM PC, Apple, Sun Micro Systems, Digital Equipment, etc.’ ”

Dissent: Not All Claims Contain Architecture Language and Deserve Broader Interpretation. Some The dissent agreed with the majority regarding claims having the language of  “a plurality of different file formats for different types of computer apparatus” or “a plurality of different data formats for different types of information handling systems.”   However, the dissent asserted that the claims of the ‘010 and ‘899 patents did not contain the “for different types of computer apparatus” limitation. For example, claim 1 of the ‘010 patent provides “…a digital control unit for formatting said digital image signal in one of a plurality of computer formats.” The dissent asserted “Because the inventors omitted the ‘for different types of computer apparatus’ limitation, the plain language of those claims is broader.” Further the dissent found that  neither the specification nor the prosecution history supported importing such a limitation into those claims. The dissent would have affirmed the district courts finding of infringement.

Majority: Use of “Still” and “Image” throughout Patents Excludes Video Coverage. The majority found the repeated use of the word  “still” in the title and the abstract of the ‘459 and ‘219 patents, and its use throughout the specification and summary of invention of all of the patents precluded the possibility that the “plurality of data formats” limitation in claim 16 included moving image formats. The majority noted that the word movie did not appear anywhere in the patents. A finding that this limitation covered movie formats would have resulting in infringement.

Dissent: Single Reference to MPEG and DVI is Sufficient to Broaden Claim to Cover Video. The disent noted that the specification expressly names MPEG and DVI compression as “an alternative embodiment of the present invention.” ‘459 patent col.10 ll.46-59. It is known that MPEG and DVI are video formats. The dissent found that the claim language of “plurality of different data formats” plainly included MPEG video and thereby video formats. Again the dissent’s interpretation would have resulted in affirmation of the district courts finding of infringement.

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“Use” Infringment of a System Requires Control Sufficient to Put System in Service

Centrillion Data Systems LLC v. Quest Communications International, 2010-1110  (Fed. Cir.  Jan 20, 2010) [PDF]

This case addresses the issue of whether infringement may be found for a “use”–under 35 U.S.C. 271(a)– of a system claim, which includes elements in the possession of more than one actor, e.g., the service provider possesses some elements and the end user possesses other elements.

At issue in the case is Quest’s customer billing information systems. Centrilion asserts that Quest’s billing systems infringe U.S. Patent No. 5,287,270. Claim 1 of the ‘270 patent, at a high level, requires–as summarized by the court–a system for presenting information . . . to a user . . . comprising:  (1)  storage means for storing transaction records, (2) data processing means for generating summary reports as specified by a user from the transaction records, (3) transferring means for transferring the transaction records and summary reports to a user, and (4) personal computer data processing means adapted to perform additional processing on the transaction records. Centrillon acknowledged that the claim includes a a back-end system maintained by the service provider and a front end system maintained by an end user.

Quest’s billing system software has a back office system and a front-end client application that a user may install on a personal computer.  When the user sign’s up for the billing software, the software made available to the users electronic billing information on a monthly basis.

Control means ability to put system into service. The court held that to “use” of a system for purposes of infringement “a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.” However “control” is not to be interpreted too narrowly. Control includes, as in the case of NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), the ability to put the system as a whole into service. Therefore, a customer in NTP remotely “controlled” by simply transmitting a message (email)  and it did not matter that the use did not have physical control over the relays of the system.

Customer’s Use. In Quest’s case, the court rejected Quest’s argument that its customers did not use the system because they did not control the back-end processing. Quest’s system has two operations, an on-demand operation and a normal operation. Under the on-demand operation, the user’s request directly generated a query returning data to the user. Under the  normal, operation the system generated reports on a monthly basis that the user could retrieve. The court found that both the on-demand and standard operation of the billing information system was a “use” as a matter of law.  The on-demand operation was a use because the customer controlled the system on a one request to one response basis.  Under the normal operation, the court found that the user controlled the system by signing up initially with the service, which triggered the monthly reports to run. In both modes of operation, but for the customer’s actions, the entire system would never have been put into service.

Quest’s Use. The court determined as a matter of law that Quest did not “use” the patented invention. To “use” an invention, a party must “put the claimed invention into service, i.e., control the system and obtain benefit from it.” The court found that Quest never uses the entire claimed system because it never puts into service the :personal computer data processing means.” In other words, it does not use a front end system required by the claims. Further, “supplying software for the customer to use is not the same as using the system.”

Vicarious liability requires control or direction of actions of another. The court noted the only way to show that Quest used the patented system was if Quest is vicariously liable for the action of its customers so that the use by the cutmers may be attributed to Quest. The court stated that vicarious liability attaches when there is an agency relationship where one party controls or directs the action of another to perform one or more steps of a method claim. The court found Quest was not vicariously liable because Quest’s customer’s are not its agents and Quest did not direct its customers to perform.

“Making” requires combining all the elements of the claim. The court found that Quest did not “make” the invention–under section 271–because Quest manufactures only part of the claimed system and does not make the “personal computer data processing means.”

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Apple Patent Application Reveals iPhone FM Radio Receiver and Control

On November 18, 2010, a patent application [USPTO, PDF] owned by published showing the use of a device, such as an iPhone, to control FM radio. Other sources have noted or speculated that the iPhone  has an FM radio receiver [The Register, CNet UK, iPhone Hacks]. This patent application supports the prior reports from CNet that Apple is developing a radio app for the iPhone.

The application discloses that a mobile device, such an an iPhone, that provides an interface for controlling the station that is received through an FM receiver and played on the device. The application shows that the device can provide the use with the options for calling, texting, or sending an email to the radio station that is currently being played through the device.

The application suggests that the FM function or App can integrate with purchasing function to allow a user to purchase a song–presumably through iTunes–that is played on an FM station, as previously suggested by 9 to 5 Mac.

To be clear, the application discloses the device, i.e. iPhone, can include a FM receiver [ see ¶¶ 51, 86] however, the application does not foreclose the possibility that the FM Receiver is external to the device (e.g is an add-on accessory) [ see ¶ 86, “Example mobile devices 701 and 702 are mobile devices that are equipped with or can be coupled to an RF receiver 121 that can receive radio broadcast and a simulcast data stream.”]

The patent application also reveals the following:

  • Providing users with links to other sites (i.e. “Watch on YouTube,” “Books at Amazon.com”, or Wikipedia)  having content related to the song being played.
  • Serving advertising related to the content being played–i.e. on offer to buy tickets  for a concert of the artist currently being played in the geographic area of the user.
  • Suggesting other radio station having similar content as the one currently playing when the current radio station begins to become out of range.
  • Tracking the history of radio stations tuned by a user, categories of content listened to and for how long–“identify the user’s interests, which can be used by the server to make content recommendations to the user.” The application discloses that a user can turn off the tracking.
  • A social networking component where a user can disclose to other in a social network the user’s listening history–similar to Pandora or Last.fm
  • Providing a location aware function that suggests radio stations based on the location of the user.
  • A library aware function that integrates with a users library of music–iTunes–were the application will refrain from suggesting the purchase of a song currently being played where the user already owns that song.

Current Radio apps are restricted to streaming the content of the FM station over the Internet because it appears currently that Apple has not allowed developers to utilize the FM receiver function in the iPhone, if it exists there. Time will tell whether Apple allow developers to utilize the FM receiver function for third party apps.

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U.S. District Court Invalidates Computer Aided Method of Managing a Credit Application under Bilski

Dealertrack, Inc. v. Huber, et al., Doc. No. 06-2335 (C.D. Cal. 2009) [PDF]

Summary. The court granted summary judgment finding the asserted claims directed to a computer aided method of managing a credit application were invalid as failing the machine-or-transformation test from Bilski. The court found the process claims were not tied to a particular machine.

Facts. The plaintiff DealerTrack, Inc. (“DealerTrack”) asserted that defendant’s Finance Express and RouteOne infringed three of DealerTrack’s patents, including U.S. Patent 7,181,427 [Link] (the “‘427 Patent”). The ‘427 patent provides a “computer based credit application processing system [that] provides a graphical user interface, automatic software update downloading, lender to lender routing of credit applications, and integration with in-house finance and insurance systems and third party data entry facilities, among other features.”

Claim 1 of the ‘427 patent provides:

A computer aided method of managing a credit application, the method comprising the steps of:

receiving credit application data from a remote application entry and display device;
 
selectively forwarding the credit application data to remote funding source terminal devices;
 
forwarding funding decision data from at least one of theremote funding source terminal devices to the remote application entry and display device;
 
wherein the selectively forwarding the credit application data step further comprises:
 
sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time;
 
sending at least a portion of a credit application to more than one of said remote funding sources sequentially until a finding [sic] source returns a positive funding decision;
 
sending . . . a credit application . . . after a predetermined time . . . ; or;
 
sending the credit application from a first remote funding source to a second remote finding [sic] source . . . .

DealerTrack arged that the claims of the ‘427 Patent were tied to a (1) central processor “consisting of a specially programmed computer hardware and database,” a (2) “remote application entry and display device,” and a “remote funding source terminal device.”

Central Processor Not Specially Programmed. The court stated, “The ‘427 Patent does not specify precisely how the computer hardware and database are ‘specially programmed,’ and the claimed central processor is nothing more than a general purpose computer that has been programmed in some unspecified manner.” See Ex Parte Nawathe, No. 2007-3360, 2009 WL 327520, (BPAI Feb. 9, 2009) (rejecting under Section 101 a claim reciting a “computerized method” of inputting and representing XML documents as insufficiently tied to “a particular computer specifically programmed for executing the steps of the claimed method”).

Not Tied to a Particular Machine. In an earlier claim construction order the court found:

  • “remote application entry and display device” included “any device, e.g.,personal computer or dumb terminal, remote from the central processor, for application entry and display.”
  • “terminal device” as “any device, e.g., personal computer or dumb terminal, located at a logical or physical terminus of the system.”

The court has little trouble finding these devices were not particular machines withing the meaning of Bilski after finding that these various “devices” include “any device.”

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“End Software Patents” Group Lanches and Sparks Debate

  • The group “End Software Patents” was born recently and asserted that (1) software patent lawsuits result in $11.26 billion in costs; (2) non-software companies are increasingly targeted for software patent infringement suits; and (3) the USPTO and the US Supreme Court [link] do not support software patentability. [Report]
  • Joff Wild of IAM questions the 11.26 billion dollar figure and asserts the underlying data on “total cost” includes both legal costs as well as costs to the business from lost market share, management distraction, etc–not simply litigation costs.
  • Ben Klemens, Executive Director of End Software Patents defends his numbers and responds to Joff here. Joff responds to Ben’s defense here.
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Software and Information Industry Association Questions State Immunity

siia.jpgThe Software and Information Industry Association (SIIA) filed an amici curiae brief asking U.S. Supreme Court to hear a case where State sovereign immunity for patent infringement is at issue. The issue is whether a State waives its Eleventh Amendment immunity in patent infringement actions by regularly and voluntarily nvoking federal jurisdiction to enforce its own patent rights. The SIIA asserts that it is equitable for States to have immunity from damages for patent infringement while they are free to sue private sector organizations for violations of State held intellectual property rights. The SIIA joined the U.S. Camber of Commerce in filing the brief.

BMPG v. Calf Dept of Health Services, No. 07-956 [Docket Link] [SIIA Brief] [SIIA Press Release].

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IAM on In re Bilski: Tightening The Standards For Software Patents

IAMJoff Wild of IAM Magazine predicts that the Federal Circuit’s en banc rehearing of the In re Bilsk case signals a move to restrict the patentability of software and business methods. He predicts that the Federal Circuits decision will bring the United States closer in line with how Europe treats this subject matter.

He provides the following reasons:

  • Its rare for cases to be heard en banc
  • The Federal Circuit is aware that recently the U.S. Supreme Court has been placing limits on patent holders rights
  • Congress is considering the Patent Reform Act and the Federal Circuit’s Chief Judge is opposed to the changes in the Patent Reform Act

Rule 35 [link, PDF] of the Federal Circuit Rules of Practice provides that an en banc rehearing is ordered by a majority vote of the active circuit judges. It states that en banc rehearing is not favored and ordinarily will not be ordered unless:

  1. en banc consideration is necessary to secure or maintain uniformity of the court’s decisions; or
  2. the proceeding involves a question of exceptional importance.

Here, the court may be answering the Board of Patent Appeals and Interference’s (Board) request for guidance in determining what is patentable subject matter under section 101. The Board stated in its decision [PDF] that “Several major analyses of statutory subject matter [under section 101] have been published recently.” The Board continued, “The USPTO is struggling to identify some way to objectively analyze the statutory subject matter issue instead of just saying ‘We know it when we see it.’ ”

It is possible that the Federal Circuit could provide a framework for determining patentable subject matter under section 101 without restricting the patentability of software and business methods. However, it may also be that the Federal Circuit will provide a section 101 framework that restricts software and business method patents.

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Method of Rewarding Waiting Customers

ibmwaitingreward1.jpgA statement in a IBM patent application caught my eye and made me wonder whether the yet-to-be-released-results of the Federal Circuit’s en Banc rehearing of In re Bilski [Patently-O’s coverage] could effect the patentability of the claims in this application. In Bilski the court will consider, among other things, whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101.

The IBM patent application involves a method of reducing waiting-customer dissatisfaction by monitoring a waiting queue, calculating rewards based on the wait, and communicating the reward to the customer. A customer may be waiting on the phone, or at recreational, restaurant or lodging facilities. The IBM application provides, “although the concepts of the present invention are exemplarily discussed above as having been implemented as an automated system on a computer . . . [the] concepts of the present invention could be implemented completely devoid of computerization or automation of any kind.”

However, it is important to focus on what the application claims. Here, claim 1 provides:

A system for reducing customer dissatisfaction for waiting, said system comprising:a queue monitoring subsystem that detects an entry of a customer into a waiting queue;a reward computing subsystem that calculates a reward for the customer for being in the waiting queue; and a communication subsystem to communicate the reward to the customer, wherein at least one of said queue monitoring subsystem, said reward computing subsystem, and said communication subsystem is automated.

The IBM claim requires at least one of the steps to be automated–as for example–embodied in a computer, whereas claim 1 of Bilski does not:

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

Its not clear why Bilski did not add the requirement that a step be automated.

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Google Seeks Patent on Chinese Spell Check Program

GoogleCNSpellPatAppA patent application, published on January 31, shows Google is continuing to develop for the Chinese market. The application discloses a program for spell checking non-Roman character based languages, such as Chinese, Japanese, and Korean. Although the summary of the invention section provides that the program may cover any non-Roman based language, the dependent claims show the application is focused on the Chinese language.

The program identifies potentially incorrect inputs, identifies alternatives, determines the proximity between the potentially incorrect input and the alternative, and computes probabilities of possible correct “word” based on the proximity measurement and optionally on a context of the possible conversion. Then it determines the most likely conversion from all the possible conversions.

——

“Fault-Tolerant Romanized Input Method for Non-Roman Characters,” Wu et. al. (U.S. Patent Application No. 20080028303).

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Suburban Networking: Silicon Prairie Social 2

img2Today, the Silicon Prairie Social organizers announced their second technology networking event in the western Chicago suburbs. It’s happing on Thursday, January 24, 2008 from 6:30 pm to 10:00 pm at Mullen’s Bar & Grill in Lisle.

The purpose of the event is build mutually-beneficial business relationships between attendees. It is targeted at upwardly mobile tech professionals, tech executives, tech entrepreneurs, technology service providers, Internet professionals, Web 2.0 and startup companies, and the mobile industry.

RSVP here. See you there.