Procuring & Enforcing Business Method & Other Software-Based Patents After Bilski & BMC
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
Why Should You Take This Course?
Director Kappos has recently stated that patents on software are "every bit as well deserved" as patents on air flight, electric bulbs and such more traditional inventions. At the same time, he acknowledges past, often inadequate and inconsistent, examination of software patents but points out improvements at the USPTO for increasing examination quality. This is a critical time to get an important update on software patent law, given:
- The impact of the America Invents Act
- The need to understand the post-Bilski decisions that attempt to apply its principles (Research Corporation: Ultramercial; Prometheus, et al).
- The decisions analyzing infringement when computer-based methods or other activity span borders (Research in Motion; Transocean).
- The decision finding no infringement when multiple actors are involved in completing the infringment (Muniauction; Akamai).
- Patent damages in software cases have been impacted by the decision of Judges Posner and Alsup
- The need to understand how the USPTO and courts are using indefiniteness as a basis for rejection or invalidity of sotware claims.
This course addresses the difficult and sophisticated task of how best to claim, prosecute, and litigate software-based inventions in their rich variety so as not to have their patents held not valid and infringed by the Federal Circuit. But that rich variety requires a variety of disparate claiming, specification drafting, prosecution, and litigating techniques.
The America Invents Act impacts software patents in general and business method patents in particular. Specifically, a new inter partes review proceeding is available during litigation for defendants to challeng certain business method patents at the USPTO on a wide variety of invalidity grounds.
The broad spectrum of available software patent prosecution opportunities that appeared available after State Street Bank and AT&T v. Excel was questioned in the Bilski decisions. In its Bilski decision, the CAFC retreated from the "useful, concrete and tangible result" analysis to "tied to a particular machine or apparatus" or "transforms a particular article" texts. The Supreme Court found this "machine-or-transformation" test useful but too narrow. It fell back on general principles of "abstracness." It also declined to exclude all business methods from patentability, but it seemed to invite their close scrutiny. Courts as well as the USPTO continue to struggle with the application of the Supreme Court's decision and the CAFC decision it largely affirmed. Practitioners need to understand the signposts left by the Bilski decisions and those that attempt to apply their guidance.
Software-based inventions face another issue. Recent cases have suggested that infringement may be avoided when infringing activity crosses borders or multiple parties are involved int he acts or elements comprising infringement of a claim. The doctrine of "joint infringement" (a/k/a "divided infringement") as developed in BMC Resources, Inc. v. Paymentech,Muniauction Inc. v. Thomson Corp. and other cases poses particular problems for proving infringement as more computer-based inventions use processors, storage and specialized data processing services of others, sometimes located in the "cloud." Using resources in the "cloud" can involve multiple actors and jurisdictions. The course and text address why different software applications (e.g., Intenet-related software) require special claim drafting, prosecution or litigation techniques. Claim styles and limitations designed to meet the somewhat unclear post-Bilski section 101 standards are discussed. This course also explores the countercurrents arising from concern about the quality of some business method patents and from the open source movement. Legal ethics in the context of duty of disclosure under 37 CFR section 1.56 and USPTO conflict of interest issues will be presented from 9:00 to 11:00 a.m. on the third day, as currently estimated.
The comprehensive text, written by its distinguished faculty, will be handed out at the course as will a set of Slides.