In the rapidly evolving landscape of software patents, inventors and patent practitioners face ongoing challenges in two critical areas: creating effective controller/processor claims to avoid 35 U.S.C § 112(f) scrutiny and navigating the intricacies of patent eligibility under 35 U.S.C. § 101. As technology continues to advance, understanding these nuances becomes increasingly crucial for securing robust patent protection for software-implemented inventions.
The Means-Plus-Function Conundrum in Controller Claims
When drafting claims for software-implemented inventions, one of the obstacles to avoid is the unintentional interpretation of claims as means-plus-function under 35 U.S.C. § 112(f). A concern with 112(f) interpretation may be that a patentee’s claimed term will be limited to structure expressly disclosed within their patent application. In the event structure is not disclosed within the patent application, the claims may be found invalid under 35 U.S.C. § 112(a) and (b).1 Recent court decisions have shed light on how to structure these claims effectively, providing valuable insights for patent practitioners.
The Federal Circuit’s decision in Zeroclick, LLC v. Apple Inc.2 emphasized that terms like “program” and “user interface code” don’t automatically invoke § 112(f) treatment. The key, as the court pointed out, is whether a skilled artisan may “reasonably discern” the claim’s structure from its language. This ruling underscores the importance of clear and specific language in software patent claims.
Building on this, the Dyfan, LLC v. Target Corp.3 decision highlighted that in software patents, structure is partly defined by function. The court demonstrated a willingness to look beyond generic terms to associated functional language to determine if the limitation had definite structure. This approach offers a pathway for drafters to provide sufficient structural context in software-related claims, potentially avoiding unintended means-plus-function interpretation.
Perhaps most illuminating is the recent WSOU Investments, LLC v. Google LLC4 decision. Here, the court drew a distinction between claims where a “processor” was found to be in means-plus-function format and those where it wasn’t. The key difference lied in the presence of additional structural elements like “memory” and “computer program code.” This ruling provides a clear strategy for patent drafters: when claiming a processor, consider including related elements and their interconnections to strengthen the claim’s structural basis.
To effectively navigate these challenges, patent practitioners should consider several strategies. Using terms like “circuit” or “circuitry” instead of more generic terms may help establish a clearer structural basis. Ensuring that the specification clearly describes both the hardware and software aspects of the invention, including algorithms where appropriate, may provide crucial support for the claims. Additionally, the use of flow diagrams in the specification may illustrate structure and support functional aspects of the claims, potentially heading off means-plus-function interpretations.5
Charting a Course Through Patent Eligibility
The two-step Alice/Mayo test continues to be the framework for determining patent eligibility under § 101.6 However, recent guidance from the USPTO and evolving case law have provided new pathways to eligibility, offering hope for inventors in the software space.
One such pathway is the “streamlined analysis,” applicable in cases where eligibility is self-evident. Another involves demonstrating that the claim isn’t “directed to” a judicial exception – that is, showing that the claim doesn’t recite but merely involves an abstract idea, law of nature, or natural phenomenon. For claims that may be alleged to recite abstract ideas, proving that the idea is integrated into a practical application may secure eligibility.7 Finally, claims that include elements amounting to “significantly more” than the judicial exception may also pass muster under § 101.
Recent examples from USPTO guidance illustrate these principles in action (“Guidance”).8 As provided by the Guidance in Example 46, while a system for monitoring livestock health based solely on data analysis was found ineligible, adding a physical control element – automatically dispensing feed based on the analysis – integrated the abstract idea into a practical application, securing eligibility. Similarly, Example 47 shows how an application-specific integrated circuit (ASIC) implementing a neural network was found eligible as a physical machine that doesn’t recite judicial exceptions. Example 48 demonstrates how a method involving complex mathematical operations for speech processing may be eligible when it integrates the abstract idea into a practical application, such as producing a speech transcript.9
When faced with eligibility challenges, practitioners have several strategies at their disposal. At Step 2A, Prong 1 of the Alice/Mayo test, one approach is to argue that the claim is not ‘directed to’ an abstract idea by demonstrating why it couldn’t practically be performed mentally. At Step 2A, Prong 2, highlighting how the claim integrates into a practical application through tangible improvements or transformations may strengthen the argument. If the analysis proceeds to Step 2B, focusing on claim elements that are not well-understood, routine, or conventional—even if they seem like extra-solution activity—may help establish eligibility.
Summary
As software continues to drive innovation across industries, the importance of effectively navigating these patent law challenges cannot be overstated. By carefully crafting controller claims to avoid unintended means-plus-function interpretations and strategically addressing eligibility concerns, inventors and their legal counsel may more effectively secure robust patent protection for software-implemented inventions. Staying abreast of the latest court decisions and USPTO guidance is important in this rapidly evolving field, enabling practitioners to adapt their strategies and maximize the chances of obtaining and defending valuable software patents.
