Current Issues in IP for Software Engineers and Web Developers

Current Issues in IP for Software
Engineers and Web Developers
Frisina, LLC
Creating Wealth Through Intellectual Property TM

www.frisinaIP.com
Copyright © 2007-2011 Frisina, LLC

Introduction
Representative Sectors Our mission is to create wealth for our clients through the
• Chemicals strategic use of intellectual property.
• Polymers
• Pharmaceuticals We understand the challenges facing businesses in today's
• Biotechnology economic environment, and strive to secure and monetize our
• Biomedical clients’ intellectual assets. With nearly 15 years in innovation
• Medical Imaging combined as a patent attorney and scientist, I am uniquely
• Advanced Materials positioned to guide clients through the legal maze of intellectual
• Nanotechnology property strategy facing start-ups and more established ventures.
453 South High Street
Suite 302 • Semiconductors
Akron, OH 44311 • Medical Instruments In addition to legal expertise and an unimpeachable commitment
(330)338-0589 direct
• Medical Tests to quality, we offer our clients unparalleled value and security.
dominic@frisinaIP.com • Liquid Crystals Particularly, we have strategically invested in state-of-the-art
www.frisinaIP.com • Power Generation practice and intellectual property (IP) portfolio management
• Fuel Cells systems. These systems enable us to intelligently analyze
• Software clients’ IP holdings and suggest tactics to exploit strengths,
• Internet Law identify and shore-up weaknesses, and generate income.
• Business Methods


Contents
• How to protect software
– Copyright versus patent
• Recent Post-Bilski Developments in The Law
• Dissecting Patentable Subject Matter


How to Protect Software
Copyright v. Patent
• Copyright • Patent
– Protects the expression of an idea – Protects the underlying idea
rather than the underlying idea – Exists upon grant by the USPTO after
– Exists upon fixation in a tangible substantive examination
medium of expression. Registration is – Patent must issue in order for rights to
a formality accrue
– Protection exists without registration, – Enforceable Life: 20 years from the
but registration is necessary to sue in earliest effective filing date.
federal court
– Enforceable Life: life of the author plus
70 years; or, the earliest of 95 yr from
first publication, or 120 yr from creation



• Traditional copyright law is a good fall-back position
• Digital Millennium Copyright Act (DMCA)
– Passed 1998
– Modernized copyright law accounting for new technology
– Offers some additional protections and limits liability of service
providers
• Patents can be a valuable additional tool



• Why register a copyright?
– Access to federal courts
– Eligibility for statutory and enhanced damages

• What if my work is not registered?
– Access to DMCA protections


• Copyright protects the expression of an idea
– e.g. source code or object code; GUI layouts; graphic artwork,
etc.
• Patents protect ideas
– The process that the software embodies
– This has been the source of much recent case law e.g. Bilski,
RCT v. Microsoft, Prometheus Labs, and others


Recent Developments


Bilski Redux
• Summary:
– Bernard Bilski developed and attempted to patent a method of commodities hedging. He was
rejected by the Examiner on the grounds that his claims were drawn to an abstract idea. The
Board of Patent Appeals and Interferences upheld the rejection, as did the Federal Circuit. The
Federal Circuit additionally held that the Machine or Transformation Test (MOTT) is the exclusive
test for patent eligible subject matter. The Supreme Court found that although Mr. Bilski’s claims
are drawn to unpatentable subject matter, the Federal Circuit was wrong to conclude that the
MOTT is the exclusive test. In doing so, the Court referred to prior cases setting out other tests
which should be regarded as “guideposts.” In effect, the Supreme Court has created test
comprising a laundry list of factors.


Bilski Redux
• Machine or Transformation Test (MOTT):
– “[a] claimed process is surely patent-eligible under § 101 if: (1)
it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing.” In
re Bilski, 545 F. 3d 943 (Fed. Cir. Oct. 30, 2008).


Bilski Redux
Bilski’s Claim 1 reads:
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.


Bilski Redux
• Results of Bilski
– New approach for assessing patentable subject matter (i.e. the
laundry list)
– New §101 guidelines from the USPTO
– Software and business method patents are still patentable
– Supreme Court is split 5/4 on the patent eligibility of business
methods


Bilski Redux
• Is the law settled with regard Justice
Roberts
Birth Year
1955
Age
56
Pro-BMP
Y
to patent-eligibility of software
Scalia 1936 75 Y
and business methods?
Kennedy 1936 75 Y
– Yes… most likely.
Thomas 1948 63 Y
– Ginsberg is the most likely to
retire due to age and illness, but Alito 1950 61 Y

a Ginsberg retirement is likely to Ginsburg 1933 78 N

be irrelevant Breyer 1938 73 N

– None of the pro-BMP justices Sotomyor 1954 57 N
are likely to retire during an Kagan 1960 51 N

Obama term


Bilski Redux
• The Take-Home Message:
– Business methods and software are still patentable subject
matter and are likely to continue to be so for the foreseeable
future.
– Drafting an allowable software and/or business method patent
is a still-developing area of the law


Post-Bilski
• USPTO • Selected Patents
– New Examination Guidelines – 7,797,405 (Intel)
• Case Law – 7,890,730 (SanDisk)
– Research Corporation – 7,895,523 (IBM)
Technologies v. Microsoft (Fed. – 7,908,610 (Microsoft)
Circ. 2010)


Post-Bilski
USPTO Guidelines Summary
• Factors For Eligibility • Factors Against Eligibility
– Satisfying the Machine or – Involvement of M or T is nominal,
Transformation Test (MOTT) insignificant, or tangentially related to
• Machine implements the process the process steps
• Particularity of M or T • E.g. data gathering, reciting a field
• Meaningful limitation of steps – Machine is generic
– Law of nature practically applied – Machine is merely an object on which
– A particular solution to a problem the process operates
– Tangible implementation – Monopoly of a natural law
– Observable and verifiable – Monopoly of a general concept


Post-Bilski
• Research Corp. Technlgs. v. Microsoft (Fed. Circ. 2010)
– Facts: RCT’s sued Microsoft for infringing six patents drawn to
halftoning technology.
Claim 1: A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of
the image against a blue noise mask in which the blue noise mask is comprised of a random non-
deterministic, non-white noise single valued function which is designed to produce visually pleasing
dot profiles when thresholded at any level of said gray scale images. US Pat. No. 5,111,310.

– Issue: Are the claims unpatentable abstractions?
– Answer: No. “The invention presents functional and palpable applications in the field of
computer technology. These inventions address ‘a need in the art for a method of and apparatus
for the halftone rendering of gray scale images in which a digital data processor is utilized in a
simple and precise manner to accomplish the halftone rendering.’”


Post-Bilski
• Claim 1 of US Pat. No. 7,797,405 (Intel)
– Method for streaming SOAP encoded messages between and
within networks
– Key recitations establishing statutory subject matter
• Step One: packets, a first server, data message, control message, a
first HTTP module
• Step Two: decoder module
• Step Three: storing (implies structural elements)
• Steps Four and Five: a first business logic module


Post-Bilski
• Claim 1 of US Pat. No. 7,890,730 (SanDisk)
– Method for expanding storage capacity without erasing data
• Step One: partition, storage memory, storage device
• Step Two: reserved-storage area, enabled-storage area
• Step Three: file allocation table
• Step Four: sectors (of a storage area)
• Step Five: memory-management area


Post-Bilski
• Claim 1 of US Pat. No. 7,895,523 (IBM)
– A method for obscuring only supplemental audio-visual web
content on a web page
– Step One: detecting a reference to supplemental web content
– Step Two: specifying a full-quality version, specifying a reduction in the audio-visual
quality
– Step Three: original layout of the requested web page is preserved
– Step Four: restoring the full-quality version, removing animation


Post-Bilski
• Claim 1 of US Pat. No. 7,908,610 (Microsoft)
– A method of enabling a business programming library for use
by an enterprise resource planning system
– Contains numerous clauses preventing it from being an
abstraction
– The overall claiming strategy was extremely narrow


Thank You
For Further Information
www.frisinaIP.com
Newsletters
IP Owl Blog
Slide Shows

Contact Me
(330)338-0589 Direct
dominic@frisinaIP.com


Current Issues in IP for Software Engineers and Web Developers

Recommandé

Recommandé

Contenu connexe

Tendances

Tendances (19)

En vedette

En vedette (18)

Similaire à Current Issues in IP for Software Engineers and Web Developers

Similaire à Current Issues in IP for Software Engineers and Web Developers (20)

Dernier

Dernier (20)

Current Issues in IP for Software Engineers and Web Developers