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Subjecting Software Subject-Matter to Limitations that Matter

by Eduardo Gonzalez and

Mr. Todd Juneau, Esq.

Introduction

The patent-eligibility of abstract software (SW) processes is determined by analyzing various factors. These factors

originate from prior applications of 35 U.S.C. § 101 by the Courts. This statute sets forth categories of inventions that are

patent eligible in stating that “whoever invents or discovers any new and useful process, machine, manufacture, or

composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.”1 Since SW is neither

an article of manufacture nor a composition of matter, it must be defined as either a process or a machine to be patent-

eligible. The Courts had developed a test to filter out SW when not tied to a specific machine or not causative of the

transformation of matter. However, SW developers are loathe to limit their subject matter to any specific hardware (HW),

2 which may become obsolete within a few years. Patent applicants and their attorneys have therefore sought to remove as

much of the tangible aspects as permitted to broaden the scope of their patents.

The problem arises that, without being tied to a machine, SW is per se merely a recitation of a process, since it

operates steps.3 SW inventions have therefore been held to fall into one of the three judicial exceptions to eligible

processes, namely the exception to patent-eligibility called “abstract ideas.”4 The rationale behind this proscription is that

SW methods, being inherently abstract, do not provide clear boundaries between them. This thwarts the Courts from

objectively determining the scope of new or improved processes. The difficulty is compounded when considering the

“patent system's constitutional objective of encouraging innovation,”5 while balancing that with the Supreme Court's

concern “that patent law not inhibit future discovery by improperly tying up” the future use of abstract ideas.6

In the wake of the most recent Supreme Court cases, the lower courts have struggled to provide clear guidelines to

patent applicants and to patentees seeking to enforce their rights. The difficulties arise from the fact that SW, though

abstract, is nonetheless bound to the computer machine that implements it.7 The proposed solution is to tie SW to a

machine in a manner that would satisfy all of the different factors and potentially salvage otherwise unpatentable

inventions. Specifically, this technique would require that SW recite a particular percentage of the HW that is needed by

the SW in order to run. It is believed that this approach would maximize the probability that Patent Examiners and Judges

1 35 U.S.C. § 101 (2011). 2 Microsoft Computer Dictionary 246 (5th ed. 2002) (“Hardware” is defined as the “physical components of a computer system”). 3 Diamond v. Diehr, 450 U.S. 175, 184 (1981) (statutory processes “detail a step-by-step method for accomplishing” a claimed invention); See also, In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994) (SW inventions, “standing alone, represent nothing more than abstract ideas” and are not patent-eligible). 4 Diehr, 450 U.S. at 184 (processes are statutory except when they contain abstract ideas; this is the first judicial exception). 5 CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1276 (Fed. Cir. 2013) (Lourie, J., joined by Dyk, Prost, Reyna, & Wallach, JJ., concurring in pages 1274-92); See also, U.S. Const. art. I, § 8, cl. 8 (constitutional mandate “to promote the Progress of Science and useful Arts”); and In re Bilski, 545 F.3d 943, 976 (Fed. Cir. 2008) (quoting H.R. Rep. No. 82-1923, at 7 (1952)) (this bill is now-famous for the phrase that the general preference in U.S. patent law is to allow “anything under the sun made by man,” which impels an earnest attempt to find a sensible solution). 6 Mayo Collaborative Servs. v. Prometheus Lab., Inc., 132 S. Ct. 1289, 1292 (2012). 7 Kevin Emerson Collins, Patent Law's Functionality Malfunction and the Problem of Overbroad, Functional Software Patents, 90 Wash. U. L. Rev. 1399, 1441 (2013) (“an operable embodiment of a software program exists only because it is crafted from a tangible medium”); See also, Memorandum from Andrew H. Hirshfeld, Acting Deputy Comm’r for Patent Examination Policy to TC Dirs., Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 1 (Aug. 24, 2009), available at http://www.uspto.gov/patents/law/comments/2009-08-25_interim_101_instructions.pdf [hereinafter “2009 Interim Guidance”] (a machine is defined as “a concrete thing, consisting of parts … to perform some function and produce a certain effect or result”); Software is comprised of abstract functions.

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would find it patent-eligible. This approach encompasses an invention or discovery that may be comprised of algorithms,

whether mathematical or not,8 and even the two other judicial exceptions, “laws of nature” and “natural phenomena.” 9

The scope of this proposal therefore encompasses any SW function via a technical disclosure of the machine-structure.

Consequently, the proposed technique may raise issues relating to the doctrine of ‘means plus function’ claiming.

The statute covering such claiming is 35 U.S.C. § 112(f). The purpose of § 112(f) is to limit “the scope of the claim to the

particular structure disclosed.”10 By it, a patentee is allowed to claim in broad functional language, “provided that the

specification indicates what structure constitutes the means for performing the claimed function.”11 The law essentially

acquiesces to lawyers' “natural tendency” to broaden claims “as much as possible.”12 Nonetheless, whether detailing the

utilized apparatus13 in the specification for means-plus-function recitations, per § 112(f), or succinctly in the claims for

standard processes, per § 101, the approach discussed herein is believed to satisfy both statutes.

Summary of Legal Solution

A SW program is given shape and detail by the use of flowcharts. Flowcharts are “invaluable” for understanding the

“functioning of the program.”14 Practitioners commonly use them today to portray abstract processes. By the proposed

approach, they become a necessary disclosure in a patent application’s specification to better convey how the computer

HW is used to perform the claimed SW. The proposed solution is not a single test that the Courts would shun but rather a

drafting or claiming technique. It satisfies the gamut of eleven factors that SW inventors have been effectively required to

satisfy in light of all pertinent case-law. The solution therefore leverages the numerous recently invalidated attempts at

patenting computer implemented ideas. How it does so will be belabored individually in each of the sections that follow

the Background section.

The technique articulated and defended in this essay bridges the literary divide between abstract SW development and

its implementation. For § 112(f) claims, the task is impliedly performed in the specification’s detailed description of the

structure-means. For all other claims to SW processes seeking § 101 patent-eligibility, the task is drafted into the claims.

Either way, the task is accomplished by first selecting a partitioned subset of the SW from the flowchart(s) that represents

the particular, inventive concept. The subset is then mapped to a range of the corresponding HW resources, i.e. specific

percentages of each of the underlying computer components utilized by the invented SW process. These components are

primarily the Central Processing Unit (CPU), Random Access Memory (RAM), non-volatile storage space (Flash and

hard-drives), and the power supply. In other words, the mapping mirrors the actual execution of the SW in the

programmed computer for the sake of satisfying all of the known factors from the case-law.

8 Gottschalk v. Benson, 409 U.S. 63, 65 (1972) (suggesting that the solving of a mathematical, procedural problem was of an algorithmic nature); See also, State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1373 (Fed. Cir. 1998) (defining an abstract idea as a “mathematical algorithm, formula, or calculation”); Microsoft Computer Dictionary, Microsoft Press (5th ed. 2002) (an algorithm is “a finite sequence of steps for solving a logical or mathematical problem or performing a task”); Diehr, 450 U.S. at 186 (viewed mathematical algorithms as laws of nature). 9 Diehr, 450 U.S. at 185; See also, James R. Klaiber & Stephen M. Goodman, Diagnosing Patent Ineligibility: The Supreme Court's Mayo v. Prometheus Decision and Computer-Implemented Claims, Patent, Trademark & Copyright Law Daily (accessed Apr. 27, 2012), http://www.bna.com/diagnosing-patent-ineligibility-b12884909921 (SW “algorithms are treated by the Courts in the same manner as natural laws” and abstract ideas). 10 Aristocrat Techs. Austl. Pty., Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1336 (Fed. Cir. 2008). 11 Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 n.1 (Fed. Cir. 2007); See also, Mark A. Lemley, Software Patents and the Return of Functional Claiming, 2013 Wis. L. Rev. 905, 907 (the law essentially incorporates a quid pro quo; the benefits to the patentees are general claiming to secure the strongest possible rights and to prevent others from implementing the gist of the invention even if the details differ); and Biomedino, 490 F.3d at 948 (these benefits are given inventors in exchange for precisely indicating “in the specification what structure constitutes the means”). 12 Id. at 948. 13 In re Alappat, 33 F.3d at 1545 (an apparatus structure is synonymous with a computer machine, i.e. it is considered “apparatus not mathematics”). 14 Lester Horwitz & Ethan Horwitz, Software Protection, 2-11 Intellectual Property Counseling & Litigation § 11.02.1.a.

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Background

The most notable and earliest instance of a technological claim to an abstract idea dates back to a mid-nineteenth

century patent application.15 The Supreme Court faulted one of the inventor’s claims for having a “functionally defined”

limitation to delineate claim scope.16 Despite this holding, questionable claims with progressively more obscure, tangible

limits continued until the mid-twentieth century. The Supreme Court near the end of this period invalidated a series of

technological patents with overbroad, functional claims for not sufficiently limiting the inventors’ actual inventions.17

The Court then clarified that even though an abstract idea was “not a patentable invention, a novel and useful structure

created with the aid of knowledge of scientific truth may be.”18 The patentability issue was ameliorated somewhat in the

1952 Patent Act when section 112(f) was enacted.19 While slim, a pathway was left open for the field of computer science

to grow in the ensuing decades. The Supreme Court expanded the case-law in the 1970's and early 80's with a trilogy of

SW programming cases, namely, Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr. 20 The holdings remained

the highest authority for almost thirty years until Bilski v. Kappos,21 but they continue to serve as useful “guideposts”

when inventing SW with abstract ideas.22

SW patents before 1994 were “disguised as something else … to be deemed eligible subject matter.”23 The United

States Court of Appeals for the Federal Circuit (“CAFC” or “Federal Circuit”) addressed this problem with the Freeman-

Walter-Abele test, by insisting that recited algorithms and abstract principles be applied “to physical elements or process

steps.”24 The test, for eligibility purposes, began to be used in the late 70's before being rejected in 1999.25 The Machine

or Transformation Test (MOTT) alluded to earlier, by comparison, started a few years before26 and lasted a decade longer.

In a 1994 en banc decision, the CAFC suddenly became more amenable to SW patents, holding a computer

“configured to perform specific electronic procedures … no less statutory than any other combination of steps and

components.”27 This 1994 case, Alappat, introduced a teleological inquiry to check if a claimed process contributed to a

“useful, concrete, and tangible result.”28 Four years later, the CAFC ruled in State Street Bank29 that even a numerical

calculation resulting in a “price” was sufficiently concrete and tangible.30 The state of the law existed like this for more

than a decade, but the pathway to easy SW patents has since been rapidly closing.

In 2008, the CAFC clarified in Bilski that the Alappat inquiry was “never intended to supplant” the MOTT and

rendered it “insufficient” and “inadequate”31 for all processes, including those with algorithms. The court likewise

deemed inadequate a European “technological arts test,”32 choosing instead to reaffirm the MOTT as “the proper test to

15 O'Reilly v. Morse, 56 U.S. 62 (1853). 16 Collins, 90 Wash. U. L. Rev. at 1427. 17 See, e.g., Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) (the precedent was therefore to proscribe claims that described the invention in terms of “what it will do” when not coupled to anything concrete). 18 Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939) (reaffirmed in Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010)). 19 Collins, 90 Wash. U. L. Rev. at 1429. 20 Parker v. Flook, 437 U.S. 584 (1978); See supra notes 3 and 8 for citations to the other two Supreme Court cases. 21 Dina Roumiantseva, Patent Law: The Eye of the Storm: Software Patents and the Abstract Idea Doctrine in CLS Bank v. Alice, 28 Berkeley Tech. L.J. 569, 592 (2013); See supra notes 5 and 18 for full citations to the CAFC’s and Supreme Court’s Bilski cases, respectively. 22 Bilski, 130 S. Ct. at 3231. 23 Lemley, supra note 11, at 930 (“many early software patent claims were written to obfuscate what was in fact inventive about the technology”). 24 In re Abele, 684 F.2d 902, 906 (C.C.P.A. 1982); See also, In re Freeman, 573 F.2d 1237 (C.C.P.A. 1978); In re Application of Walter, 618 F.2d 758 (C.C.P.A. 1980). 25 AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1359 (Fed. Cir. 1999) (affirming and quoting State St. Bank, 149 F.3d at 1374) (the test has “little, if any, applicability to determining the presence of statutory subject matter”). 26 Benson, 409 U.S. at 70 (the test was borne by analysis of Cochrane v. Deener, 94 U.S. 780 (1876) and Tilghman v. Proctor, 102 U.S. 707 (1880)). 27 In re Alappat, 33 F.3d at 1570; See also, State St. Bank, 149 F.3d at 1373 (algorithms configured and performed in like manner were also considered patent-eligible under this test); In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (this court also held in 1994 that a computer’s data structure should be treated as a patent-eligible physical device); Collins, 90 Wash. U. L. Rev. at 1404 (In re Lowry affirmed the spark towards a “proliferation of overbroad claims in the software arts”). 28 Id. at 1544. 29 State St. Bank, 149 F.3d at 1368. 30 AT&T Corp., 172 F.3d at 1358 (citing State St. Bank, 149 F.3d at 1373). 31 In re Bilski, 545 F.3d at 959-60. 32 In re Bilski, 545 F.3d at 960.

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apply.” 33 But the Supreme Court demoted the MOTT just two years later, on certiorari review.34 More recently, the

Courts have illuminated their analysis by way of the Flook inquiry, which requires “inventive” aspects in tangible

recitations of SW claims,35 and the “preemption” doctrine begun in Benson.36 The MOTT had been the most prominent of

all of these tests and factors.37 But as has occurred with various others, it has lost much authoritative value.

The judicial course is decidedly aimed towards restrictive treatment of intangible, SW claims. This became clear after

Bilski, as seen by the narrower reading of subject matter eligibility in “most (though not all) Federal Circuit decisions.”38

For instance, the patents in Aristocrat in 2008, Cybersource in 2011, Bancorp, Fort Properties, & Dealertrack in 2012,

and Accenture & CLS Bank in 2013 were all found unpatentable by the CAFC.39 District courts have also deemed many

SW patents ineligible, such as those in Ubicomm, Fuzzysharp, and Lumen in 2013; the United States Patent & Trademark

Office’s (PTO’s) Patent Trial and Appeal Board (PTAB) did so as well in Versata.40 Although not patents that

implemented processes on a computer, Mayo, decided by the Supreme Court in 2012, and SmartGene & Ariosa, decided

by District courts in 2012 & 2013, respectively, are also representative of the restrictive trend.41 Ultramercial and

Research Corp are among the very few similarly adjudicated cases in the last few years whose SW patents were sustained

under such a hostile environment.42

Notwithstanding the many different rulings, there has been an “unfortunate misinterpretation of the nature of

computer programs … and … the computer hardware on which they ran.”43 The confusion began in 1972,

understandably, “because the PC Revolution had not yet occurred.”44 Its persistence, though, has led to uncertain changes

in the case-law, causing applicants to draft in a manner that must pass “divergent and at times contradictory standards.”45

This is especially true as to the extent that they have been expected to tie their computer programs to specific, tangible

HW. Understandably, a claim cannot be statutorily directed to “[a] computer program per se”46 but in “the software world

... an inventor implements a function not with 'a computer' or 'a processor' but with a particular computer program.”47 Yet

“the computer itself … may not execute that computer program without the algorithms and other abstract concepts.”48

The issue therefore returns full circle to the eligibility of processes, inherent to SW.

33 Id. at 960. 34 Bilski, 130 S. Ct. at 3227 (the MOTT is “not the sole test for deciding whether an invention is a patent-eligible ‘process’”). 35 Flook, 437 U.S. at 594; See also, Patent Act of 1952 — Patentable Subject Matter — Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 127 Harv. L. Rev. 388, 390 (2013) (citing Mayo, 132 S. Ct at 1297) (the inventive process requires "more than a description of natural laws"). 36 Benson, 409 U.S. at 72 (heavy analysis to ensure that whole ideas are not forestalled); See also, Lumen View Tech. LLC v. Findthebest.com, Inc., 2013 U.S. Dist. LEXIS 166852, at *23 (S.D.N.Y. Nov. 22, 2013) (the “broad preemption” risk persists, as seen more recently in the Supreme Court's patent invalidation in Bilski, and the CAFC's invalidation of the SW process claims in CLS Bank, which is currently under consideration by the Court). 37 See, e.g., 2009 Interim Guidance, supra note 7, at 1 (the PTO actually defined processes as “acts or steps that are tied to a particular machine”). 38 Lemley, supra note 11, at 939, 962 (“software patents today are invalidated more often than other types of patents”). 39 See, respectively, supra note 10; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012); Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012); Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012); Accenture Global Servs. v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); and supra note 5. 40 See, respectively, UbiComm, LLC v. Zappos IP, Inc., 2013 WL 6019203 (D. Del. Nov. 13, 2013); Fuzzysharp Techs., Inc. v. Intel Corp., 2013 WL 5955668 (N.D. Cal. Nov. 6, 2013); Supra note 36; and SAP Am. v. Versata Dev. Grp., No. CBM2012-00001 (MPT) (P.T.A.B. Jan. 9, 2013). 41 See, respectively, supra note 6; SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F. Supp. 2d 42 (D.D.C. 2012); and Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2013 WL 5863022 (N.D. Cal. Oct. 30, 2013). 42 See, respectively, Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013); and Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). 43 Adam Mossoff, A Brief History of Software Patents (And Why They’re Valid), Center for the Protection of Intell. Prop., at n. 17 (Sep. 2013) (the considerable misunderstanding of abstract SW “has caused much confusion” in terms of “what makes them patentable inventions”; the recent en banc CLS Bank decision “represents the nadir of this confusion”); note that ‘computer program’ is synonymous with the term ‘software.’ 44 Id. at n.17 (referring to the seminal Benson case in 1972). 45 Roumiantseva, 28 Berkeley Tech. L.J. at 603. 46 2009 Interim Guidance, supra note 7, at 2 (emphasis in original); See also, Tun-Jen Chiang, The Levels of Abstraction Problem in Patent Law, 105 Nw. U. L. Rev. 1097, 1098 n.9, 1152 (2011) (analyzed by its inventive nature, SW is at a high level of abstraction and thus the means for protection is fundamentally different than other intellectual property such as copyrights, which do protect computer programs). 47 Lemley, supra note 11, at 948. 48 Dealertrack, 674 F.3d at 1329 (emphasis in original).

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Summary of Legal Issue

Due to its inherently mental nature, “any software can be found to be so abstract that it is no longer eligible for patent

protection.”49 This is due to the “vagueness in the boundaries of software patents.”50 Such patents “routinely grant

inventors rights that extend further beyond the technology that an inventor has actually invented and disclosed.”51 The

CAFC, relying on their prior decisions and the mentioned trilogy cases, refuses to find “processes patentable when they

merely claimed a mental process standing alone and untied to another category of statutory subject matter.”52 It has left

“to future cases ... whether or when recitation of a computer suffices to tie a process claim to a particular machine,” and

“the elaboration of the precise contours of machine implementation.”53 The PTO has argued in step “that the Federal

Circuit should not adopt a single 'test' for the patent-eligibility of computer-implemented inventions.”54 Its PTAB has not

added clarity to the present crisis, considering that the overwhelmingly large number of their decisions has been

designated non-precedential,55 none of which have been on patentable subject matter since Bilski.56

The result is great skepticism “toward the existence of a simple, judicially administered solution to the problem.”57

Bright-line rules “when applied to § 101” may be “simple to apply,” but they are “impractical” due to a lack of

flexibility.58 The factors for patent-eligibility therefore cannot be relied on individually and separately. Neither alone is

sufficient nor a necessity for eligibility.59 As a whole, they are treated as a negative “coarse filter” or threshold60 that is

applied before the other patentability statutes.61

The first factor this essay purports to advance is the proscription of generic recitations to general purpose computers.

The second is the holding that a “principle, in the abstract ... cannot be patented.”62 A third, which also weighs on patent-

eligibility, is the requirement for computer implementations to claim a practical application. The fourth is that the steps of

a SW process cannot be performed purely in the mind. The fifth is to keep the machine implementation from preempting

all possible applications of the abstract idea or fundamental principle. The sixth is the MOTT. The seventh filters out

recitations to particular HW that are insignificant, post-solution activity. The eighth factor similarly requires that there be

meaningful limitations on the claimed, abstract idea.63 The ninth factor ensures that the claiming approach amounts to

more than mere draftsmanship. The tenth verifies that the recited HW is essential to the performance of the SW. And the

eleventh factor analyzes the inventiveness of a recitation to HW.

49 Marc Macenko & Bentley J. Olive, That’s Easy! I Can Do That With Pen and Paper!: Why the Mental Steps Doctrine Could Bring an End to Patent Protection for Software, 13 N.C. J.L. & Tech. On. 61, 62 (2011); See also, Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting Funk Bros. Seed Co. v Kala Inoculant Co., 333 U.S. 127, 130 (1948)) (abstract ideas need to be protected because they are considered “free to all men and reserved exclusively to none”). 50 James Bessen & Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk 201-03 (2008). 51 Collins, 90 Wash. U. L. Rev. at 1400 (“Compared to patents in other fields of endeavor,” the associated risk is greater with SW patents). 52 In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009); In re Comiskey, 499 F.3d 1365, 1378 (Fed. Cir. 2007). 53 In re Bilski, 545 F.3d at 962. 54 Roumiantseva, 28 Berkeley Tech. L.J. at 602 (quoting Br. for the United States as Amicus Curae on Rehearing En Banc in Support of Neither Party, CLS Bank Int'l v. Alice Corp. Pty. Ltd., Appeal No. 2011-1301 (Fed. Cir.)). 55 See PTAB Final Decision Search, U.S. Patent & Trademark Office, http://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp (accessed Jan. 8, 2014); List of Precedential Decisions, U.S. Patent & Trademark Office, http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp (accessed Jan. 8, 2014). 56 Joseph Taylor Gooch, Who's in Charge: an Analysis of BPAI Decisions Regarding Section 101 Patentability in Light of Bilski and Mayo, 95 J. Pat. & Trademark Off. Soc'y 60, 66 (2013). 57 Collins, 90 Wash. U. L. Rev. at 1401. 58 CLS Bank, 717 F.3d at 1281 (Lourie, J., concurring); See also, Versata, No. CBM2012-00001 (MPT), slip op. at 29 (“The Supreme Court has made it clear that the test for patent eligibility under § 101 is not amenable to bright-line categorical rules”); and Memorandum from Andrew H. Hirshfeld, Acting Deputy Comm’r for Patent Examination Policy to Patent Examining Corps, Federal Circuit Decision in CLS Bank et al. v. Alice Corp. (May 13, 2013) [hereinafter “2013 Interim Guidance”]. 59 See, e.g., Roumiantseva, 28 Berkeley Tech. L.J. at 587 (the courts have not provided a positive, determinative, or “rule-based” eligibility approach, such as one that would qualify a set elements in a claims’ analysis; this is presumably due to an aversion to rules that could easily become stringent eligibility formulas). 60 75 Fed. Reg. 43922, 43926. 61 35 U.S.C. §§ 102, 103, 112 (2011). 62 Diehr, 450 U.S. at 185 (citing Le Roy v. Tatham, 55 U.S. 156, 175 (1853)). 63 Note that the MOTT is such a big test that it cannot be satisfied until the 7th and 8th factors are satisfied; the 8th itself encompasses the 4th and the 5th.

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This is the outcome of the Courts’ attempt to make sense out of intricate64 yet abstract SW boundaries. “[B]road

functional claiming of software inventions” is responsible for most of the “well-recognized problems”65 in the case-law.

Although the Courts have resolved that limitations on the abstract nature of SW weigh toward eligibility, all eleven factors

remain in force. Patent Examiners and Judges are therefore left to reconcile the various, arcane factors for each nuanced,

technical dispute. If patentees orient their applications within this framework, the evaluators would likely find them

patent-eligible. To do so would require marginally technical and ad hoc recitations, dependent on the claims of each

invention. The proposed approach is itself not required, but it is nevertheless helpful for otherwise unpatentable

inventions.66

Factor #1: General Purpose Computers

Generic recitations cover “any machine capable of performing the claimed step(s).”67 The precedent from the CAFC

and PTAB is to invalidate these types of claims, which fail to recite “a specific hardware embodiment.”68 The impetus

derives from the fact that “general purpose computers can be programmed to perform very different tasks in very different

ways.”69 Claiming a “trivial structural element that everyone must include” as the performance means is tantamount to

“claims to function, not structure.”70 And the mere implementation of SW on general-purpose computers does not limit

abstract processes enough to be patent eligible machines, but it is an important first step.71 The claims should therefore

identify if any “particular physical elements beyond a generic computer environment” are recited.72 When identified,

claims to them would likely be patent eligible because they would “tie the otherwise abstract idea to a … specific

computer for doing something” rather than “claims directed to nothing more than the idea of doing that thing on a

computer.”73

More than forty years since the Supreme Court’s first SW case, general purpose computers are not only generic, but

they have essentially become old technology. It is inappropriate, though, to dissect a patent's claims into “old and new

elements and then to ignore the presence of the old elements in the analysis.”74 This is because any applied algorithm or

mental concept forming a SW invention may be considered the new element but even a new “combination of steps in a

process may be patentable even though all” had been “well known” beforehand.75 To be sure, “programming creates a

new machine.”76 It “in effect becomes a special purpose computer once it is programmed to perform particular functions

64 CLS Bank, 717 F.3d at 1281 (Lourie, J., concurring). 65 Lemley, supra note 11, at 908. 66 Incidentally, the patent in Ultramercial did not include a compelling recitation of computer HW. 67 Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, 43927 (July 27, 2010) [hereinafter “2010 Interim Guidance”]. 68 In re Trovato, 42 F.3d 1376, 1383 (Fed. Cir. 1994); See also, Versata, No. CBM2012-00001 (MPT), at SAP’s Exhibit 1001, 5:55-58 (the PTAB invalidated recitations to HW not “tied to a particular computer” and merely requiring “use of a general purpose computer,” including claims to “computer readable media comprising instructions ..., a processor,” and “memory coupled to the processor”). 69 Aristocrat, 521 F.3d at 1333. 70 Lemley, supra note 11, at 923; See also, Aristocrat, 521 F.3d at 1333 (in the SW industry, for “a patentee … to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming”); Factor 2 fully explains why claims to abstract functions are impermissible. 71 See, e.g., Bilski, 130 S. Ct. at 3227; Accenture, 728 F.3d at 1345; Fort Props., 671 F.3d at 1323–24; Dealertrack, 674 F.3d at 1332-32; CyberSource, 654 F.3d at 1375; CLS Bank, 717 F.3d at 1299 (Rader, C.J., joined by Linn, Moore, and O'Malley, JJ., concurring in part and dissenting in part in pages 1292-1313). 72 FuzzySharp, 2013 WL 5955668 at *13 (emphasis added); See also, Ex parte Halligan, B.P.A.I. Appeal 2008-1588, 27 (2008) (finding that the mere recitation of a general purpose computer is not a sufficient tie of an unpatentable idea to a particular machine). 73 CLS Bank, 717 F.3d at 1302 (Rader, C.J., concurring in part and dissenting in part); Ultramercial, 722 F.3d at 1348 (emphasis in original) (applying reasoning from Mayo and Bilski). 74 Diehr, 450 U.S. at 188. 75 Id.; See also, In re Alappat, 33 F.3d at 1544 (new, abstract SW such as “mathematical calculations” may be considered statutory subject matter even if performed on old “digital electrical circuits”). 76 Ultramercial, 722 F.3d at 1348 (citing In re Alappat, 33 F.3d at 1545); See also, Benson, 409 U.S. at 65 (but the mere act of “programming a general-purpose” computer does not prevent the invention from being considered an unpatentable abstract idea).

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pursuant to instructions from program software.”77 More recent case-law has apparently overruled this latter CAFC

holding. This is why the subsequent Factors need to be analyzed for safe applications of SW because it remains to be

shown how a machine’s use is integral-to and limiting-for claimed SW.

Factor #2: Abstractness

Abstract ideas are non-concrete concepts, i.e. purely mental subject matter.78 In practice, an invention is considered

ineligibly directed to an underlying principle when the claimed process is obviously manifest as such.79 Similarly,

“algorithms which merely represent discovered principles … are excluded from section 101.”80 Both abstract ideas and

algorithms may be implemented through SW functionality.81 But claims in SW inventions are frequently considered “so

abstract and sweeping as to cover both known and unknown uses.”82 When programmed into computers it is possible for

them to no longer be considered abstract, disembodied, and conceptual.83

A patent’s claims may be held narrower than an abstract idea it uses and thus grantable by adding limitations.84 This

is because the scale of the implementation is important, i.e. the tangible aspect of the recitation must be “commensurate

with the broadest interpretation of the claimed invention.”85 Therefore, “merely adding existing computer technology ...

does not as a matter of substance convert an abstract idea into a machine.”86 Factor 7 addresses criteria for finding

limitations significant, Factor 8 further elaborates on the limitation means, and Factor 11 sets out how an abstract process

“[must] also contain ... an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more

than a patent upon” the abstract process itself.87

Factor #3: Practical Applications

At minimum, for patent-eligibility of a SW process is the assertion of “well-established utility” or “a new and useful

end.”88 But the CAFC in 2012 held an argument “requir[ing] a series of steps to take place in the real world”

unpersuasive to transform an abstract process into a patentable one.89 This is because a SW invention may safely recite an

abstract idea with or without an embedded algorithm only when it is substantially applied to real world problem and “tied

77 Id.; See also, In re Freeman, 573 F.2d at 1247 n.11; In re Noll, 545 F.2d 141, 148 (C.C.P.A. 1976); and In re Prater, 415 F.2d 1393, 1403 n.29 (C.C.P.A. 1969). 78 United States Patent & Trademark Office, Manual of Patent Examining Procedure § 2106.II (8th ed. Rev. 9, July 2010), available at http://www.uspto.gov/web/offices/pac/mpep/s2106.html) [hereinafter M.P.E.P.]; See also, 2010 Interim Guidance, 75 Fed. Reg. at 43925 (the PTO exemplifying an abstract concept as a “principle, theory, plan, or scheme”); CLS Bank, 717 F.3d at 1299 (an abstract idea “has no reference to material objects or specific examples”); and MySpace, Inc. v. Graphon Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012) (what makes an idea “abstract” is “reminiscent of the oenologists trying to describe a new wine”). 79 See, e.g., In re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982) (while some algorithms and mathematical formulae represent “scientific principles or laws of nature,” others “represent ideas or mental processes and are simply logical vehicles for communicating possible solutions to complex problems”). 80 In re Alappat, 33 F.3d at 1582 (Rader, J., concurring); See also, Benson, 409 U.S. at 71-72 (treated mathematical algorithm as an “idea”). 81 Donald S. Chisum, Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement §§ 3.04-05 (2007) (neither are useful as disembodied truths “until reduced to some practical application” that “solves the problem”); See also, Collins, 90 Wash. U. L. Rev. at 1448 (an algorithm “lists a series of ... steps that ... accomplishes the more general task ... recited”). 82 Benson, 409 U.S. at 68. 83 In re Alappat, 33 F.3d at 1544; See also, M.P.E.P. § 2106.II.A (abstract ideas are clearly unpatentable, but “an idea that is tangibly applied to a structure is no longer abstract”). 84 Ultramercial, 722 F.3d at 1350, 1355 (Lourie, J., concurring) (holding that the SW subject matter was patent-eligible even though the recited “computers, on the internet,” were the only claimed physical structures; but the court did note other, “added limitations” that represented “significantly more than the underlying abstract idea”); Ultramercial’s claim at issue was also not so abstract because it was implementable. 85 2009 Interim Guidance, supra note 7, at 1. 86 CLS Bank, 717 F.3d at 1291-92 (Lourie, J., concurring). 87 Mayo, 132 S. Ct. at 1294 (quoting Flook, supra, at 594) (brackets in original, emphasis added). 88 2009 Interim Guidance, supra note 7, at 1; and CLS Bank, 717 F.3d at 1297, 1302 (Rader, C.J., citing Benson, 409 U.S. at 67, 93 in his concurrence and dissent, in part) (claims may “tie the otherwise abstract idea to a specific way of doing something”). 89 Fort Props., 671 F.3d at 1322; See also, 2009 Interim Guidance, supra note 7, at 2-3 (such limitation cannot be “merely to the result achieved by the invention”); See also, Research Corp., 627 F.3d at 868 (Research Corp. seemingly overruled Fort Props by finding a computer implemented process that claimed “functional and palpable applications” eligible); and Flook, 437 U.S. at 590 (any “competent draftsman could attach some form of post-solution activity to almost any” abstract equation; the recitation of a practical application is therefore insufficient, as further discussed in Factors 8a & 9).

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to a particular apparatus,” such as a programmed computer.90 “A particular machine ... recited in a claim can show how

[an abstract idea] is integrated into a practical application by describing the details of how that machine and its specific

parts implement the [idea].”91 The application therefore needs to be both practical and well-defined because, “even when

a practical application” is claimed, processes can remain unpatentable.92

Factor #4: Mental Processes

A computer is comprised primarily of a CPU, which processes programmed SW instructions. Programmed SW is an

expression of a mental concept or idea, except for the underlying HW that executes it.93 Claims of purely “mental

processes” are not patent-eligible subject matter because they are “directed to an abstract idea itself rather than a statutory

category.”94 An “unpatentable mental process” combined with a machine “may produce patentable subject matter” when

used in a process a human could not perform without it.95 The claimed “method,” which could otherwise be computed

“manually,” is nevertheless patent-eligible “so long as the computer implementation provides a functional benefit other

than efficiency.”96 Eligibility therefore depends on more than mere computation and basic functionality. For instance, a

claimed mental process may become slightly more eligible when it is scoped by a “particular” algorithm.97 Algorithms

are less abstract than mental processes, which is why flowcharts that can represent them add value.98 The manner of using

the flowcharts as part of the proposed technique is described in Factor 8c.

Factor #5: Preemption Problem

Patent claims are normally drafted to cover a broad genus of implementations.99 In the SW world, this luxury is

restricted100 to narrow process claims that encompass only particular applications of abstract ideas101 and/or to claims that

do not suffer from “boundary definition problems.”102 The courts have not allowed “functionally-defined” claims of

abstract ideas to “encompass any and every means for performing the recited functions.”103 Avoiding the preemption of a

90 In re Comiskey, 499 F.3d at 1376; See also, In re Bilski, 545 F.3d at 955, 961 (citing Benson, 409 U.S. at 71) (the patent-ineligible, mathematical formula in Benson had “no substantial practical application” and no “utility other than operating on a digital computer”; the Supreme Court ruled and Chief Judge Rader has echoed that a claim to an abstract idea need not recite any physical steps to pass muster under § 101 as long as it is particularly applied or “tied to a machine”); FuzzySharp Techs., Inc. v. 3DLabs, Inc., 447 F. App'x 182, 185 (suggesting that the computer hardware recitation must be part of a “substantial practical application”); and M.P.E.P. § 2106.II.A (a claim to a machine that “fails to include tangible limitations in accordance with its broadest reasonable interpretation is not limited to a practical application”) (emphasis added). 91 M.P.E.P. § 2106.01.III.E (emphasis added). 92 In re Comiskey, 554 F.3d at 980; In re Comiskey, 499 F.3d at 1378. 93 Horwitz, supra note 14, at § 11.02.1.a (a “computer program ... is the means for imparting human intelligence to hardware”). 94 In re Comiskey, 554 F.3d 967, 981 (Fed. Cir. 2009) (As seen in the Factor 2 analysis, a claim to a mental process is not a statutory “application of human intelligence” In re Comiskey, 554 F.3d at 980; it is “no more than a claim to a fundamental principle” In re Bilski, 545 F.3d at 965; or a claim to “basic tools of scientific and technological work” Gottschalk v. Benson, 409 U.S. at 67); See also, Id. at 961 n.26. 95 In re Comiskey, 499 F.3d at 1379; See also, Bancorp, 687 F.3d at 1278 (the computer has to facilitate at least one step in the claimed process that a person using a pen and paper could not, i.e. “[it] must be integral to the claimed invention”); CyberSource, 654 F.3d at 1372-74 (method steps which can be performed entirely “in the human mind, or by a human using a pen and paper” are “unpatentable”); and Macenko, 13 N.C. J.L. & Tech. On. at 62 (the CyberSource decision, which held the implementation of SW containing “purely mental steps” ineligible, “endangers the future of software patents”). 96 Patent Law - Patentable Subject Matter - Federal Circuit Holds that Certain Software Method Claims Are Patent Ineligible, 126 Harv. L. Rev. 810, 813; See also, SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that can “be performed without a computer”); and Bancorp, 687 F.3d at 1278 (citing SiRF Tech., 601 F.3d at 1333) (increased efficiency “via a computer does not materially alter the patent eligibility of the claimed subject matter”). 97 CyberSource, 654 F.3d at 1372. 98 Komal Sachdeva, Methods of Software Analysis and Design, at 13, 16; 1 Journal of Software Engineering and Simulation (Quest Journals, Issue 1 2013) (a flowchart is defined as “a schematic representation of an algorithm or a stepwise process”). 99 Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts? Rethinking Patent Claim Construction, 157 U. PA. L. Rev. 1743, 1766–67 (2009). 100 CLS Bank, 717 F.3d at 1281 (Lourie, J., concurring) (a SW invention claim “should not be coextensive with a[n]... abstract idea”). 101 In re Bilski, 545 F.3d at 954, 957. 102 Roumiantseva, 28 Berkeley Tech. L.J. at 586. 103 In re Application of Walter, 618 F.2d at 768; In re Abele, 684 F.2d at 909; See also, CyberSource, 654 F.3d at 1372 (a method or apparatus claim cannot be so “broadly worded that it encompasses literally any method”).

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few alternative implementations is insufficient protection to satisfy this factor because if the claim covers “the only

commercially viable way,” there remains a substantial risk.104

To “evaluate whether a claim preempts an abstract idea” it is first imperative that the idea be “unambiguously

identified”;105 the “breadth or narrowness of the abstract idea” is not relevant.106 Evaluators may then determine if the

claim is tied to “more than an idea ... because that same tie makes it less likely that the claims will pre-empt all practical

applications of the idea.”107 The problem is that a patent on broadly claimed subject matter will “grant a monopoly” over

it.108 By adding more limitation to the basic idea, the claim would cover significantly less.109 The CAFC has effectively

asserted that limitations resolve the preemption problem. Whereas Chief Judge Rader favors limitations being directed to

the claimed applications, Judge Lourie, who ideologically sits on the other side of the bench, favors limitation on the

underlying ideas themselves.110

The precedent from the courts, however, has been clear to deny that SW “patents could be saved by virtue of the

notion that the computers used were somehow 'specialized' by virtue of performing the abstract processes at issue.”111

The reason is that general purpose computers, by themselves, neither limit meaningfully claimed, abstract processes nor

do they define intelligible boundaries.112 When the computer, on the other hand, plays “a meaningful role in the

performance of the claimed invention, it is as a matter of fact not likely to pre-empt virtually all uses of an underlying

abstract idea.”113 Tangible implementations more readily distinguish other implementations of the same or similar

abstract idea.114 Factor 8c elaborates on structural limitations, but they are introduced here to demonstrate their

applicability to the root of the issue.

Factor #6: Machine or Transformation Test (MOTT)

The MOTT is used to verify that a SW process is properly anchored to a computer apparatus when programmed. As

its name suggests, it attempts to qualify a claimed process “under § 101 if it is tied to a particular machine.”115 A

“process” is defined as “a new use of a known ... machine”116 but to be particular it has to be “specifically identified.”117

104 Ariosa, 2013 WL 5863022 at *11. 105 CLS Bank, 717 F.3d at 1282 (Lourie, J., concurring). 106 Ultramercial, 722 F.3d at 1346 (only “whether the claim covers every practical application of that abstract idea” is relevant to this factor). 107 CLS Bank, 717 F.3d at 1302 (Rader, C.J., concurring in part and dissenting in part); See also, Ultramercial, 722 F.3d at 1355 (Lourie, J., concurring) (“the added limitations ... as a consequence, do not preempt the use of that idea in all fields”); and In re Bilski, 545 F.3d at 955 (the courts will reject claimed computer processes, including with algorithms, that do “not reduce the preemptive footprint”). 108 Bilski, 130 S. Ct. at 3231. 109 Collins, 90 Wash. U. L. Rev. at 1408. 110 Lumen, 2013 U.S. Dist. LEXIS at *21 (citing CLS Bank, 717 F.3d at 1299) (Rader, C.J., concurring in part and dissenting in part); CLS Bank, 717 F.3d at 1283 (Lourie, J., concurring) (to avoid monopolizing an idea, “§ 101 preemption analysis centers on the practical, real-world effects of the claim”). 111 Id. at *32. 112 See, e.g., Fuzzysharp, 447 F. App'x at 185 (Fed. Cir. 2011) (holding that general use of computers do “not confine the preemptive effect” of a claim’s scope); this is true even for computation and data storage purposes; See also, M.P.E.P. § 2106.II.A (but stored executable instructions do not, at least, render statutory-eligible medium non-statutory). 113 Ultramercial, 722 F.3d at 1349; See also, Benson, 409 U.S. at 72 (without a meaningful role, a claimed computer implementation “would wholly pre-empt the [abstract] formula and in practical effect would be a patent on the algorithm itself,” making it patent-ineligible); CLS Bank, 717 F.3d at 1300 (Rader, C.J., concurring in part and dissenting in part) (limitations “that meaningfully tie [an abstract] idea to a concrete reality or actual application of that idea” heavily weigh in favor of patent-eligibility of computer implemented SW); and In re Alappat, 33 F.3d at 1570. 114 Brian J. McNamara, Patent Protection of Computer Hardware and Software, 12 Wake Forest J. Bus. & Intell. Prop. L. 137, 197 (2012); Joshua D. Sarnoff, Shaking the Foundations of Patentable Subject Matter, at 81-84, 93 (draft April, 2008), available at http://www.wcl.american.edu/pijip/download.cfm?downloadfile=2E900771-B742-DD30-1B56F85D889A053E. 115 In re Bilski, 545 F.3d at 954 (emphasis added); See also, Flook, 437 U.S. at 589 n.9. 116 35 U.S.C. § 100(b); Bilski, 130 S. Ct. at 3225. 117 Morgan D. Rosenberg & Richard J. Apley, Business Method and Software Patents: A Practical Guide 17, (Oxford University Press 2012) (a machine can become a “particular machine” when “programmed to perform the steps of the method”).

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It is not a “positive test that if satisfied confers patent-eligibility.”118 Nevertheless, “the machine-or-transformation test is”

still “a useful and important clue, an investigative tool.”119

There are just two prongs to the MOTT. This proposal only addresses the machine prong because there is little

authoritative or even persuasive case-law as to how SW statutorily “transforms” matter.120 The machine prong consists of

the following two elements.

Factor 6a: Meaningful Limitations of the Machine Prong

The PTO requires a machine to “impose meaningful limits on the method claim's scope.”121 Without such limitations

and when claiming abstract, mental processes, the machine prong fails.122 The implementation of a process “over the

Internet,” for instance, is not enough limitation to satisfy the MOTT.123 An indication of what is sufficient is provided in

Factor 8. It suffices to impart here that SW processes and methods are not optimally limited by their application or

functionality but via their machine-structure.

Factor 6b: Insignificant, Post-Solution Activity in the Machine Prong

The second sub-factor of the machine prong requires “involvement of the machine ... in the claimed process” in such a

way that it “not merely be insignificant extra-solution activity.”124 Such activity “is not sufficient to pass the [MOTT].”125

The courts have consistently held insignificant the use of a machine for the mere function of gathering data.126 Factors 5

and 8 touch upon this patent-eligibility constraint, but the next one, Factor 7, analyzes it to a greater extent.

Factor #7: Insignificant, Post-Solution Activity

The Supreme Court has held that addition of “insignificant post-solution activity” cannot “transform an unpatentable

principle into a patentable process.”127 This includes claims directed to a field of use, i.e. a “technological

environment.”128 Abstract ideas may be saved, though, when “the claims require a computer to perform operations that

are not merely accelerated calculations.”129 But the recitation cannot be “silent as to how the computer aids the method,

the extent to which [it] aids the method, or the significance of [it] to the performance of the method.”130 It is therefore

imperative to know exactly how a claim may validly recite “a post-solution object on which the method operates.”131

118 Richard H. Stern, Mayo v Prometheus: No Patents on Conventional Implementations of Natural Principles and Fundamental Truths, 34 Eur. Intell. Prop. Rev. 502, 514 (2013) (the MOTT does not by itself make a claim eligible because it is “a negative test that if not satisfied typically leads to patent-ineligibility”). 119 Bilski, 130 S. Ct. at 3227. 120 In re Bilski, 545 F.3d at 964 (the Transformation prong would only be valid if an “electronic signal representative of any physical object” is considered transformed when SW is programmed into computer HW); See also, CyberSource, 654 F.3d at 1375 (the “mere manipulation or reorganization of data, however, does not satisfy the transformation prong”). 121 See Memorandum from John J. Love, Deputy Comm’r for Patent Examination Policy to TC Dirs., Guidance for Examining Process Claims in view of In re Bilski (Jan. 7, 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf [ hereinafter “2009 Memorandum”]. 122 CyberSource, 654 F.3d at 1372;such a claim would fail Factor 4; See also, Id. at 1375 and Lumen, 2013 U.S. Dist. LEXIS at *31 (this filter on mental processes is not only necessary for the machine prong but to help show how computers are integral to claimed inventions; visit Factors 7 & 10 for more). 123 Id. at 1369-70. 124 In re Bilski, 545 F.3d at 962. 125 2009 Memorandum, supra note 121. 126 See, e.g., In re Richman, 563 F.2d 1026, (C.C.P.A. 1977); In re Meyer, 688 F.2d at 794; 2009 Interim Guidance, supra note 7, at 6; CyberSource, 654 F.3d at 1372. 127 Bilski, 130 S. Ct. at 3230 (citing Flook, 437 U.S. at 590 and Diehr, 450 U.S. at 191-92). 128 Ultramercial, 722 F.3d at 1346; See also, Mayo, 132 S. Ct. at 1297-98, 1300-01. 129 CLS Bank, 717 F.3d at 1286 (Lourie, J., concurring); See also, Bancorp, 687 F.3d at 1278 (computers cannot be employed only for their “most basic function,” i.e. “the performance of repetitive calculations”). 130 Dealertrack, 674 F.3d at 1333. 131 2010 Interim Guidance, 75 Fed. Reg. at 43927; See also, Bancorp, 687 F.3d at 1273 (it is not enough if “the specified computer components are no more than objects on which the claimed methods operate”); 126 Harv. L. Rev. 810, 814 (not knowing this has resulted in unpredictable case-law).

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An applicant must specify in a claim how the required computer is “central to the purpose of the method invented.”132

At least some “level of involvement” needs to be shown, with more being conducive to eligibility.133 This may be

accomplished by mapping partitions of the invented idea from the flowcharts to specific and objective amounts of the HW

components needed to implement it in the real world. This shows how the computer is “inseparable” to the abstract

idea.134 Simply specifying or directing a claim to a general purpose computer, even a smart phone, does not accomplish

the task. The technological trend beyond laptops and smart phones is to wearable technology, such as Google Glass and

computerized-watches. Tangible resources in nanotechnology are expensive and improvements valuable, such as smaller-

size135 and lower-power.136 If an improved SW process consumes a third of the time, power, memory, and storage of prior

art, then a viable demonstration technique is needed.

Factor #8: Meaningful Limitations

A claim to SW cannot validly be scoped without “the pertinent abstract idea identified.”137 Afterwards, “the balance

of the claim can be evaluated to determine whether it contains additional substantive limitations that narrow, confine, or

otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.”138 Even “if a claim

does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token

pre- or post-solution activity.”139 In this Factor, limitations directed to applications are shown to be deficient without

particular HW, functional ones are similarly too abstract by themselves, but claim limitations by structure can sufficiently

make SW processes patent-eligible. These three sub-factors are set forth below, with emphasis on the third, as one would

expect.

Factor 8a: Meaningful Limitations by Applications

Evaluators consider claims as a whole140 to ascertain whether they include meaningful limitations that “confine their

reach to particular applications.”141 Patent applicants should therefore direct their claims to an application of an abstract

idea, “computer-based or otherwise,” rather than the idea itself “to transform [the] idea into a patent-eligible

application.”142 New uses of abstract ideas in specific applications weigh toward eligibility.143 But the type of application

132 M.P.E.P. § 2106.II.B; See also, CLS Bank, 717 F.3d at 1302 (Rader, C.J., concurring in part and dissenting in part) (SW inventions’ claims should “include the computer being part of the solution”; this could be accomplished by showing how the computer is “integral to the performance of the method”); Ultramercial, 722 F.3d at 1347; CyberSource, 654 F.3d at 1376 (the computer's use, “as a practical matter,” has to be required for fulfilling the core function of a claim); SmartGene, 852 F. Supp. 2d at 61 (the machine’s use also cannot be “incidental to the claimed invention”); and CLS Bank, No. 2011-1301, Oral Arg. at 28:28-29:13, available at http://www.cafc.uscourts.gov/oral-argument-recordings [hereinafter “CLS Bank Oral Arg.”] (cited argument is by Nathan Kelley, PTO’s Deputy Solicitor) (furthermore, the computer machine's use cannot be “just there to add on to the idea ... as an implementation detail”). 133 Dealertrack, 674 F.3d at 1334; See also, CLS Bank, 717 F.3d at 1286 (Lourie, J., concurring) (“a computer does not itself confer patent eligibility”). 134 CLS Bank Oral Arg., supra note 132; See also, Lumen, 2013 U.S. Dist. LEXIS at *30 (the onus is on patent applicants to clearly show “how the computer adds significant value” to the claimed SW process) (emphasis added). 135 Kalpesh A. Popat & Priyanka Sharma, Wearable Computer Applications: A Future Perspective, 3 I.J.E.I.T. 213 (2013); 136 Trevor Mudge, Power: A First-Class Architectural Design Constraint, 34 Computer 52, 52 (“Limiting power consumption presents a critical issue in computing, particularly in portable and mobile platforms”). 137 CLS Bank, 717 F.3d at 1282 (Lourie, J., concurring). 138 Ultramercial, 722 F.3d at 1355 (citing CLS Bank, 717 F.3d at 1282); See also, Accenture, 728 F.3d at 1345, 1348 (“unlike the patent at issue in Ultramercial, Accenture's claims do not contain 'significantly more than the underlying abstract concept'“); and In re Bilski, 545 F.3d at 961. 139 CLS Bank, 717 F.3d at 1300 (Rader, C.J., concurring in part and dissenting in part); See also, Bancorp, 687 F.3d at 1280. 140 2013 Interim Guidance, supra note 58. 141 Mayo, 132 S. Ct. at 1302. 142 CLS Bank, 717 F.3d at 1291 n.4, 1299 (citing Mayo, 132 S. Ct. at 1297) (it is important for eligibility to assess whether claims “incorporate sufficient additional limitations” on an invention by its application, rather than merely to an abstract idea); See also, Bilski, 130 S. Ct. at 3230 (citing Benson, 409 U.S. at 71-72) (repeating the argument but referring to algorithms, rather than abstract ideas per se); In re Alappat, 33 F.3d at 1543 (abstract SW must be “reduced to some type of practical application” to be eligible); and In re Application of Walter, 618 F.2d at 770 (abstract claims “not limited to any particular art or technology ... are classic examples of an attempt to embrace the algorithm or scientific truth itself rather than a particular application”). 143 Diehr, 450 U.S. at 179 (a molding machine was used for curing rubber); See also, Research Corp., 627 F.3d at 869 (“inventions with specific applications ... are not likely to be so abstract”); and Ultramercial, 657 F.3d at 1328 (the meaningful limitations on the execution of the SW process limited the coverage to a specific field of use, i.e. to a specific application).

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or field of use itself is not enough.144 This is because the Supreme Court has ruled that a necessity for specificity “cannot

be circumvented by attempting to limit the use of the [abstract idea] to a particular technological environment.”145 Even a

practical use does not circumvent this necessity, as found in the analysis of Factor 3. The implication is that inventors of

SW should also claim the machine’s structure and in a detailed way.

Factor 8b: Meaningful Limitations by Functions

Algorithms are often “necessary to the performance of [SW] functions.”146 A reference to such algorithms set forth in

the specification may save them from being deemed “pure functional claiming, and thus indefiniteness.”147 Flowcharts

pictorially represent SW functionality, including any algorithms,148 but they are not required149 because they can “fail to

provide any structure.”150 The CAFC has held “that the appropriate structure must include the algorithms disclosed in the

specification.”151 Algorithms when used are therefore necessary, but they are not enough to tangibly limit SW designs.

Abstract functions do not sufficiently limit the scope of an invention, since they “encompass all structures that are

capable of performing the claimed behaviors, meaning that they reach beyond the structures conceived and disclosed.”152

A claim with a “nominal hardware limitation serves to obscure ... the real structure doing the work—the computer

program.”153 This explains why a general purpose computer “programmed in an unspecified manner to implement the

functional steps recited in the claims” does not meaningfully limit the scope.154 It also implies that the functions of a

computer program must be specified.155

The machine, though, actually performs the physical work.156 To fully scope the structure, applicants should also

include details of the computer machine. The CAFC would agree, for in 2005 it rejected attempts by the parties to

characterize the structure of the patent at issue as either a specific algorithm or as a microprocessor.157 Rather, the court

found the “corresponding structure” for a “processing means” to be “a microprocessor programmed to carry out a two-

step algorithm.”158 It would therefore behoove applicants to combine abstract algorithms with specific, computer

components in their SW claim recitations.

For the usage of a machine “to impose a meaningful limit on the scope of a claim, it must play a significant part in

permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a

144 Ultramercial, 722 F.3d at 1350, 1352 (the patentee had claimed an application of advertising as currency, which the court affirmed as valid, but beyond a specific application the court cited “several computer systems” and eleven factors to find sufficient limitations to an abstract idea); See also, Bilski, 130 S. Ct. at 3231, 3233 (even if the claimed methods are limited to performance within “specific applications” the courts may find such limitation insufficient for patent-eligibility). 145 Diehr, 450 U.S. at 191 (citing Flook, 437 U.S. 584) (a patent-ineligible technological environment in Flook was intended as the application of a mathematical formula rather than any particular HW); a ‘technological environment’ is synonymous with a ‘field of use.’ 146 Dealertrack, 674 F.3d at 1329. 147 Id. (emphasis added). 148 See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); See also, Collins, 90 Wash. U. L. Rev. at 1448; Horwitz, supra note 14, at § 11.02.2 (flowcharts graphically represent “the ideas ... of the program”). 149 Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997) (PTO nor case-law has required them for “disclosing the functions of software”). 150 In re Keisuke Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011); Overruling, Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005) (had held that the “corresponding structure for a § 112 P 6 claim for a computer-implemented function is the algorithm disclosed in the specification”). 151 Dealertrack, 674 F.3d at 1329 (emphasis added) (must only include algorithms, implying that the algorithms qua algorithms do not provide structure). 152 Collins, 90 Wash. U. L. Rev. at 1402; See also, Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997) (a “definition by function ... does not suffice to define the [invented] genus [of technologies] because it is only an indication of what the [claimed invention] does, rather than what it is”). 153 Lemley, supra note 11, at 923; See also, M.P.E.P. § 2106.01(I) (8th ed. Rev. 5, Aug. 2006) (patentees should disclose the “elements of a computer which permit the computer program's functionality to be realized”). 154 Ex parte Halligan, B.P.A.I. Appeal 2008-1588, 27 (2008). 155 See, e.g., Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013) (a “recited algorithm ... must be sufficiently defined to render the bounds of the claim”). 156 Jerod Weinman & Janet Davis, Algorithms and Computer Programming, Grinnel College Technical Readings (2012), available at http://www.cs.grinnell.edu/~davisjan/csc/105/2012S/readings/programming.html (SW can consist of programmed steps of abstract algorithms, but the actual steps are executed on HW in the real world in “assembly code”). 157 Harris, 417 F.3d at 1254; a microprocessor is obviously a computer HW component. 158 Id.

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solution to be achieved more quickly.”159 Even though SW alone represents the invented idea, there is value in claiming

the actual HW used to perform it in addition to the functional limitations that specify “how it was programmed.”160 The

HW cannot be entirely separated from the functionality for there to be an executable invention. It is therefore unlikely

that the Courts will replace machines with “algorithms as the metaphorical structure of software inventions,”161 even if

they are very “detailed ..., for the purposes of making [them] eligible.”162

Factor 8c: Meaningful Limitations by Structures

The intent of this sub-factor is assurance that structure is suitable for limiting claims to SW.163 At minimum, patent

applicants and patentees need to show that their invention requires a tangible embodiment.164 This is because the more

specific the computer machine, i.e. the more dissimilar from a general purpose computer, the more likely the application

will be sufficiently limited.165 Patents, by nature, are exclusive166 to create investment incentives, but the stated concern is

capturing too much. The Courts therefore want specificity and boundaries between prior art and other possible inventions,

foreseeable and unforeseeable.167

The proposed technique easily meets this need, by disclosing and claiming precise and meaningful ranges of the HW

components used.168 A mapping of the SW to the HW also expresses manifest boundaries such that a “new and useful

improvement” is more apparent.169 A feature is otherwise not as observable. Concrete HW, such as memory components

and CPUs, which may be “recited in a claim are often called 'limitations,' as each additional [HW] property recited further

limits the scope of the claim.”170 The PTAB echoed the CAFC’s SiRF Tech. opinion when it held that “specific ...

computer equipment ... required” to implement an invention may sufficiently and meaningfully limit claims for patent-

eligibility.171

Because “every general-purpose computer will include ‘a computer,’ ‘a data storage unit,’” etc., 172 SW inventors

could specify the amounts used by each as if they were ingredients. Ingredients for other industries are as HW

components for computers. Chewing gum manufacturers, for instance, cannot just list their claimed ingredients as

lubricant, microgranular cellulose, and precipitated silica. Rather, their claims specify specific amounts, e.g. they are

159 SiRF Tech., 601 F.3d at 1333; Bancorp, 687 F.3d at 1278 (mere performance of an otherwise abstract concept via generic use of a computer does not weigh in favor of eligibility, i.e. performance does not alone “impose meaningful limits on the scope of those claims”); See also, Dealertrack, 674 F.3d at 1333; and Fort Props., 671 F.3d at 1323-24. 160 Aristocrat, 521 F.3d at 1336. 161 Collins, 90 Wash. U. L. Rev. at 1405, 1470-71 (“even a more sustained focus on algorithms is unlikely to put the scope of software patents on par with the scope of patents in other arts”); See also, supra note 150 (Keisuke Aoyama seems to overrule Harris, which improperly attributed algorithms). 162 CLS Bank Oral Arg., supra note 132. 163 Having analyzed the functional relationship between HW and SW, this goal will not be addressed by showing how any technology is essential to the invention; such analysis is reserved for Factor 10. The intent is, rather, to show how general purpose HW is required for specifying implementations. 164 Dealertrack, 674 F.3d at 1333 (Revisiting Factor 1, the simple addition of a “computer aided” claim limitation is insufficient by itself to render patent-eligible a claim covering an abstract concept); See also, CLS Bank, 717 F.3d at 1302 (Rader, C.J., concurring in part and dissenting in part) (when computers are used as part of the solution or integral to its performance they help provide “meaningful limitations”). 165 M.P.E.P. § 2106.01.III.E (limitations to machines “that are necessary for all practical applications of the [abstract idea] ... would not be sufficient”). 166 Gerald R. Ferrera et al, CyberLaw: Text and Cases 102 (3d ed. 2011). 167 Benson, 409 U.S. at 68; See also, Klaiber, supra note 9 (“process patents might best be drafted or defended by convincing the PTO or the court that the patent leaves open the possibility for someone to 'invent around' the claims”). 168 Macenko, 13 N.C. J.L. & Tech. On. at 67 (“a method claim will more likely be deemed patent-eligible if the claim recites more specific machine components or modules”). 169 35 U.S.C. § 101. 170 Collins, 90 Wash. U. L. Rev. at 1408 (quoting Jeffrey A. Lefstin, The Formal Structure of Patent Law and the Limits of Enablement, 23 Berkeley Tech. L.J. 1141, 1145 (2008)). 171 Versata, No. CBM2012-00001 (MPT), slip op. at 28, 32 (the PTAB held ineligible claims that required only a general purpose computer and routine programming); See also, SiRF Tech., 601 F.3d at 1332 (holding that particular HW, essential or “integral to each of the claims at issue,” may place “a meaningful limit on the scope of the claims”; in this case a GPS receiver was the patent-eligible subject matter, considered sufficiently particular); CLS Bank, 717 F.3d at 1301 (Rader, C.J., concurring in part and dissenting in part) (a claim may be “meaningfully limited if it requires a particular machine”); Adam Pash, Your Smartphone Is a Better PC than Your PC Ever Was or Will Be, LifeHacker (accessed Mar. 4, 2014), available at http://lifehacker.com/5681573/your-smartphone-is-a-better-pc-than-your-pc-ever-was-or-will-be (the risk in relying too heavily on SiRF Tech. is that the technological trend is continually moving away from ad hoc gadgets; abstract concepts implemented by them are increasingly consolidated into smartphones; “smartphones easily meet the generic requirement for being classified as PCs”); many technological methods such as GPS navigation can now be implemented by software on general-purpose computers such as smartphones. 172 CLS Bank, 717 F.3d at 1291 (Lourie, J., concurring).

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“added in an amount of between 0.2% and 2%,” 0.1% – 2%, and 0.05% – 1%, respectively, “by weight relative to the

[total] weight of the composition.”173 This teaching, if leveraged by SW applicants and patentees, would provide “real

direction” in the implementations because the claims to computer HW would not be “overly-generalized.”174

In practice, applicants could accomplish this by using a benchmarking software program to determine a reasonable

range of usage percentages.175 They could then claim the percentage range for each component needed to make the SW

process run in its specific application, e.g. claiming CPU cycles, RAM, and storage components as A% – B%, X% – Y%,

etc., respectively, by consumption relative to the total available resource for each. This technique presents a risk of abuse,

implicitly mentioned in the CLS Bank oral argument. The risk, in short, is that a company is granted a series of patents

that covers all possible ranges and effectively preempts the idea.176 This is rebutted by remembering that each application

after the first in the series would be neither novel nor non-obvious, per §§ 102 and 103.177

The PTO would applaud such use of HW as ingredients because it specifies the overall performance of an abstract

SW in a verifiable way.178 Objective HW also simplifies the demonstration of meaningful limits to the scope of claims.179

To achieve these benefits and “implement the [computer system] that is claimed,” there has to be “instruction for

connecting various components of the system.”180 The instruction is provided by first acknowledging “the purpose for

which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function

which it is intended to perform.”181 HW components disclosed in the specification could then be claimed in an

interrelated fashion to form a distinguishable machine with tangible “boundaries.”182 This is presumably why the case-

law has evolved to require patent applicants to demonstrate “clear intention to limit the claim scope using words or

expressions of manifest exclusion or restriction.”183

Disclosed flowcharts help, since they are sequenced words that exclude and restrict other methods of implementing

the same function. Flowcharts partition the abstract SW in such a way that its functionality may then be mirrored in

HW.184 They show how an abstract idea is “implemented in a specific manner to define structural relationships between

the physical elements of the claim.”185 Such a demonstration “passes muster under § 101” for an otherwise statutory

claim186 because it shows how “the claims are truly drawn to specific apparatus distinct from other apparatus capable of

performing the identical functions.”187

Case-law is littered with patent lawsuits involving claims to specific functionality, accompanied only by general

structure.188 The silver lining indicates that the programmed HW must be claimed in tandem with a SW process to “limit

173 See, e.g., U.S. Patent No. 5,711,961, Pharmaceutical Compositions Based on Chewing Gum and A Method for the Preparation Thereof (filed Jul. 15, 1995) (these ingredients and values are from claims 18, 20, and 21, respectively). 174 CLS Bank, 717 F.3d at 1301 (Rader, C.J., concurring in part and dissenting in part). 175 Ideally, the baseline standardizing and benchmarking could be done on a few different HW systems and SW platforms; the most common HW systems are PCs, Apple, Smartphones, and Sun workstations, and the four most commercial operating systems are Windows, Mac, Android, and Linux. 176 For example, a company could own a patent that covers 5-8% of the CPU, a 2nd patent that covers 9-11%, a 3rd that covers 12-15% and so on until all practical applications are covered. 177 See supra, note 61. 178 2010 Interim Guidance, 75 Fed. Reg. at 43925, 43927; See also, M.P.E.P. § 2106.II.B.1(d)(e) (quoting The Telephone Cases, 126 U.S. at 211) (“observable and verifiable” steps “weigh in favor of eligibility”). 179 2010 Interim Guidance, 75 Fed. Reg. at 43927 (the act of embodying meaningful limitations helps, especially when in an objective and tangible way). 180 CLS Bank Int'l v. Alice Corp. Pty. Ltd., 685 F.3d 1341, 1360 (Fed. Cir. 2012). 181 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 25 (1997). 182 In re Alappat, 33 F.3d at 1544, 1561; See also, M.P.E.P. § 2106.01.III.A (a “combination of claim limitations” operate to “establish the boundaries of the invention and limit its scope”). 183 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); See also, In re Application of Walter, 618 F.2d at 768 (the CAFC places “the burden ... on the applicant to demonstrate” an intention to limit the scope of a claim). 184 Horwitz, supra note 14, at § 11.02.1-2.a (flowcharts divide SW into “quasi-independent parts” or “modules” and “their relationships to each other are defined”; they provide “the link between the functionally-oriented problem definition phase and the means-oriented … phase”); See also, In re Alappat, 33 F.3d at 1583 ("the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred”). 185 In re Application of Walter, 618 F.2d at 767. 186 Id. 187 In re Application of Walter, 618 F.2d at 768; In re Abele, 684 F.2d at 909. 188 See, e.g., WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339, 1349 (Fed. Cir. 1999) (the proper way to disclose structure is “rather the special purpose computer programmed to perform the disclosed algorithm”).

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the scope of the claim to 'the corresponding structure, material, or acts' that perform the function.”189 There are few, if

any, other legitimate ways to tie down or add specificity, without narrowing or making particular the physical HW itself.

Applicants as part of the proposed technique should therefore recite a meaningful mapping between the HW and SW.

Factor #9: Draftsmanship

The Supreme Court has warned against reading § 101 rigidly. Dependence “simply on the draftsman's art ... would ill

serve the principles underlying the prohibition against patents for 'ideas' or phenomena of nature.”190 An overly

formalistic approach would invite unacceptable manipulation by patent applicants through hollow, “highly stylized

language,”191 which would exalt “form over substance.”192 The CAFC heeded this warning in Bancorp when it faulted the

simple rewording of SW functions (e.g. “calculating fees”) as structural HW (e.g. “a fee calculator”) in its claims.193 The

majority in Accenture similarly held illusory limitations insufficient for eligibility purposes.194

Clever descriptions of functions disguised as fictitious computer components do not validly limit abstract concepts.195

The courts will dismiss such claims that act as nothing more than a drafting stratagem.196 They do not suggest, as learned

in Factor 1, that patent applicants attempt to disclose statutory machines as whole computers either. With the case-law

guidance mostly worded in the negative, it is understandable why a comprehensive “patent eligibility test that can

consistently link new computer-implemented methods to specific technology remains elusive.”197 But the proposed

technique would satisfy any test because it distinguishes unsuccessful claiming approaches and precedent. It limits the

abstract idea with more specificity by directing claims to the actual HW components used in performing its process steps

as discussed in the previous Factor.198 Again, patent applicants would determine then claim a precise, numerical range for

each component. It is admittedly an onerous task but because the task of determining meaningful ranges could only be

performed by trained engineers, it is not likely to be considered insignificant, post-solution activity or wordplay.

Factor #10: Essential

Another factor for software's patent-eligibility is a determination of the essentiality of a computer for the idea to

operate. SiRF Tech exemplifies this factor, as its claims were held eligible for being directed to custom HW components.

199 Computer HW is non-optional when the method cannot be performed entirely by a human.200 The same steps of an

189 Aristocrat, 521 F.3d at 1333, 1336 (citing 35 U.S.C. § 101.6, an inventor should disclose the “structure that is used to perform the claimed function”); See also, supra note 77, which teaches that the act of programming creates a special purpose computer; Ultramercial, 722 F.3d at 1348 (A “special purpose computer” sufficiently ties an idea when “specially designed to implement” an algorithm or process); In re Alappat, 33 F.3d at 1545. 190 Flook, 437 U.S. at 593; See also, Mayo, 132 S. Ct. at 1294. 191 CLS Bank, 717 F.3d at 1281; See also, Bilski, 130 S. Ct. at 3230 (another problem with such illusory recitation is that it constitutes token post-solution activity). 192 Flook, 437 U.S. at 590; See also, Mayo, 132 S. Ct. at 1294. 193 Bancorp, 687 F.3d at 1276-77 (finding ineligible certain abstract ideas that did not require a computer). 194 Accenture, 728 F.3d at 1344 (“an insurance transaction database, a task library database, a client component, and a server component, which includes an event processor, a task engine, and a task assistant” were held as invalid limitations on abstract concepts); See also, CLS Bank, 717 F.3d at 1292 (Lourie, J., concurring) (“Abstract methods do not become patent-eligible machines by being clothed in computer language”). 195 FuzzySharp, 2013 WL 5955668 at *13 (citing CyberSource, 654 F.3d at 1375-76 and Benson, 409 U.S. at 73-74) (held invalid the directing of “a computer storage step to an otherwise unpatentable process, even though the claim named a particular type of storage component, the z-buffer”); one might assume that programmed storage is a recitation requirement but not sufficient by itself, since other structural limitations are still necessary. 196 In re Application of Walter, 618 F.2d at 769 (such a claiming approach is tantamount to drafting claims “in illusory apparatus format”). 197 Roumiantseva, 28 Berkeley Tech. L.J. at 585. 198 CLS Bank, No. 2011-1301, Oral Arg. at 32:42-33:00, available at http://www.cafc.uscourts.gov/oral-argument-recordings (CLS Bank's attorney stated, “The Supreme Court has told us that to transform an unpatentable principle into a patent eligible application, 'one must do more than simply state the principal while adding the words apply it'.” This essay does not propose casually adding the phrase “apply it” or “compute it” on a computer but specifically characterizing the invention itself at to how it operates on a computer). 199 SiRF Tech., 601 F.3d at 1333 (“the use of a GPS receiver is essential to the operation of the claimed methods”); See also, Ultramercial, 722 F.3d at 1347 (the claim weighs toward eligibility when “in addition to the abstract idea” it “recites added limitations which are essential to the invention”). 200 CyberSource, 654 F.3d at 1372.

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abstract process may be executed across diverse HW platforms201 but in terms of its performance the hardware may make

a tremendous difference.202 SW Engineers actually design their SW with certain, targeted HW in mind. This is because

SW cannot be implemented in such a way that it runs intolerably slow, which would occur when intensive SW overbears

its HW resources.203

Some commentators have strangely declared that HW was “not relevant to what constitutes a protectable software

invention or thus to the optimal scope of a software claim.”204 But the PTO’s stated policy is that a “computer

programmed with executable instructions” may be construed as a patentable “base structure combined with functional

material that could create a patentable distinction over the prior art.”205 When the “specification discloses sufficient

structure to perform the claimed functions,”206 the HW not only becomes relevant, but it becomes essential. Indeed, the

relationship between structure and function is like cause to effect.207 Without HW, SW cannot run; without structure, a

function cannot be implemented in any application.208 The technique elaborated in this essay proposes that applicants

claim only the specific amount of each component necessary to achieve the invented process.

Patentees of SW could also interpret the reasonable range as necessary to account for equivalent, future structures.

But the risk of preemptively wide-ranges, e.g. reciting 5% – 95% of a hard-drive, is not fatal to the proposed technique.

This is because Factor 8c instructs that structural limitations must be meaningful. For the same reason, it does not

succumb to the risk that the tying to particular machines would “freeze process patents to old technologies, leaving no

room for revelation of new technology.”209 It similarly withstands the risk of HW obsolescence,210 especially when

claimed as a means-plus-function. This is because § 112(f) statutorily allows for structural “equivalents thereof.”211 For

such claims, a “person having ordinary skill in the art” would interpret a structure needed for the function from the

specification.212 It is also unrealistic for SW to be useful ten to twenty years in the future in such a fast changing

industry.213

Although the nature of computer machines is bound to change, SW will always require HW to run. For this reason,

applicants of SW patents should focus on its inseparable components, such as CPUs, volatile RAM, nonvolatile memory,

and such HW characteristics as power.214 Even foreseeing the general migration of all processing to the so-called

201 Lemley, supra note 11, at 954 (computer implementations of SW running “on a PC, a Mac, an Android phone, or an old IBM mainframe” are “functionality equivalent”). 202 Patterson, supra note 203, at 34-35, 40 (HW can make a considerable difference in terms of speed and power independent of software). 203 David A. Patterson & John L. Hennessy, Computer Organization and Design: The Hardware/Software Interface 34-35 (5th ed. 2014) (for a computer to perform the same program 40% faster it “must have twice the clock rate”, i.e. CPU doubling from 2GHZ to 4GHZ). 204 Collins, 90 Wash. U. L. Rev. at 1443; See also, Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308, 2323 (1994) (“the medium of software should no more be determined by the medium in which it was created than would be a work made of steel or plastic”). 205 2009 Interim Guidance, supra note 7, at 4. 206 Aristocrat, 521 F.3d at 1332. 207 Peter Kroes, Technological Explanations: The Relation Between Structure and Function of Technological Objects, 3 Phil. & Tech. 18, 18 (1998); See also, Collins, 90 Wash. U. L. Rev. at 1410. 208 Florian Huemer, Hardware vs. Software, Presentation at Vienna University of Technology (Oct. 23, 2012) (“Software always needs hardware”). 209 Benson, 409 U.S. at 71. 210 Claimed percentages may become obsolete and thus inapplicable to dramatic technological advancements in HW; See also, C.A. Mack, Fifty Years of Moore's Law, 24 IEEE Transactions on Semiconductor Manufacturing 202 (2011) (Moore's law, though, shows a trend for over 30 years of shrinking size, power, etc., so the pressure from the courts would always be to narrow the range rather than allow for no meaningful broadening. 211 35 U.S.C. § 112(f) (2012); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308 (Fed. Cir. 1999) (note that “[a]n equivalent structure or act under § 112 cannot embrace technology developed after the issuance of the patent”); Welker Bearing Co. v. PHD, Inc., 528 F. Supp. 2d 683, 706 (E.D. Mich. 2007) (citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., 145 F.3d 1303, 1310 (Fed. Cir. 1998)) (but non-literal equivalents from “technological advances ... developed after the patent is granted” are available via the doctrine of equivalents for § 112 claims). 212 35 U.S.C. § 103(a); See also, Atmel Corp. v. Information Storage Devices, 198 F.3d 1374, 1382 (Fed. Cir. 1999); and Function Media, LLC v. Google Inc., 708 F.3d 1310, 1318-19 (Fed. Cir. 2013) (a skilled person must be able to understand what the means limitation is from the structure disclosed in the specification so the burden but saving recourse are retained by the inventor). 213 H. Hungar, Test-Based Model Generation for Legacy Systems, 2 International Test Conference Proceedings 150 (2003) (even if the SW endured, such as has the idea behind Microsoft’s Excel and PowerPoint, practitioners could always perform regression tests on legacy platforms to assure the boundaries of inventions are still meaningful and valid). 214 M.H. Kryder, After Hard Drives—What Comes Next?, 45 IEEE Trans. on Magnetics 3406 (2009) (storage can be on flash or magnetic hard-drives).

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“Cloud,” it is technically plausible that SW will continue to require some form of HW, which would still help define how

it runs for precise, boundary making purposes.215

Factor #11: Inventive Concept

This factor checks if an abstract idea is being inventively applied, i.e. “a product of human ingenuity.”216 Such

application must amount to more than a “trivial appendix” to the underlying idea217 and represent more than “well-

understood, routine, conventional activity previously engaged” in the field.218 A general purpose computer for a SW

process cannot satisfy this constraint. Patent applicants cannot even “convey the gist of what he had invented by referring

to any of the physical, structural properties of the software.”219 This hostile comment towards HW, however, does not

imply that HW cannot play any role in allowing certain SW to weigh more toward eligibility, per this Factor. This point

is especially noteworthy when considering that the Supreme Court has held that an abstract idea if “assumed to be within

the prior art ... cannot support a patent unless there is some other inventive concept in its application.”220 This opens the

door for HW to play a role.

The Mayo holding nudges the analysis further in providing that an abstract equation with an “inventive application” of

claimed steps is patent-eligible when it has “integrated the equation into the process as a whole.”221 The claimed steps, for

instance, could “integrate (or apply) the patent-ineligible aspect of the invention in a way that demonstrates a measurable

improvement over existing technology.”222 Such an approach makes clear that the HW may even be necessary for

demonstrating an “improved process.”223 Part of the inventive aspect that led the CAFC to find Research Corp.’s patent

statutorily eligible was that it used “less processor power and memory space” than prior art.224 Similarly, in a third-party

oral argument to the en banc CAFC, Nathan Kelley, the PTO's Deputy Solicitor said, “If you had an algorithm that

actually made the computer … use less energy … that would be an eligible” invention.225 A given SW could be “better ...

not because it performs a different function, but because it performs the same function in a different and better way.”226 In

sum, the best recourse for SW inventions is not to claim a program or a computer, but a programmed computer,

programmed to implement the inventive function disclosed in the specification.227

Admittedly, flowcharts best represent the invented subject matter and by themselves may be sufficiently unique. But

only computer HW provides “the structural properties of the technology that an inventor actually produces.”228 Patent law

actually requires the inventor, having conceived of an inventive concept, to describe it in terms of its physical features

215 Jack Clark, Does Hardware Matter in the Cloud? Oracle is Hoping So, Cloud Watch (Sep. 26, 2012), available at http://www.zdnet.com/does-hardware-matter-in-the-cloud-oracle-is-hoping-so-7000004825. 216 Chakrabarty, 447 U.S. at 309. 217 CLS Bank, 717 F.3d at 1283 (Lourie, J., concurring). 218 Mayo, 132 S. Ct. at 1294. 219 Collins, 90 Wash. U. L. Rev. at 1441 (emphasis in original). 220 Flook, 437 U.S. at 594. 221 Mayo, 132 S. Ct. at 1292 (the Supreme Court was referring to Diehr, supra note 2). 222 See also, Klaiber, supra note 9. 223 Diehr, 450 U.S. at 181 (a critical way to measurably improve mobile technology, for instance, is by characterizing benefits in power use reduction; such a demonstration of a HW aspect could be needed for claimed recitations in “solving a practical problem which” may arise in a field of the invention). 224 Research Corp., 627 F.3d at 865; power and size are the digital real-estate. 225 CLS Bank, No. 2011-1301, Oral Arg. at 32:42-33:00, available at http://www.cafc.uscourts.gov/oral-argument-recordings (it is plausible for future low-power inventions in mobile smartphones to claim these characteristics). 226 Lemley, supra note 11, at 955 (“It is the way, not the function, that patent law is supposed to protect”; referring to the faster performance of Google’s premier, search engine software). 227 Aristocrat, 521 F.3d at 1338 (citing WMS Gaming, 184 F.3d at 1349); See also, Ultramercial, 722 F.3d at 1348 (unanimously held eligible a general purpose computer programmed with new software); Mossoff, supra note 44, at 4 (while it would be dishonest to deny that the true “value in a software program is [its] functionality of the program,” the functionality has to be programmed into the computer to be of ultimate use) (emphasis in original). 228 Collins, 90 Wash. U. L. Rev. at 1447 (emphasis added); See also, Eugene R. Quinn, Patent Drafting: Defining Computer Implemented Processes, IPWatchdog (accessed Dec. 11, 2013), available at http://www.ipwatchdog.com/2011/03/14/patent-drafting-defining-computer-implemented-processes/id=15758 (a disclosure of HW in a specification is preferable for showing "possession" of a claim rather than a merely "nebulous idea").

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with specificity and how it is put into practice.229 Precise surgery to carve out just the amount of HW that enables the

inventive value in the SW has seemingly become necessary. When flowcharts are coupled to the physical structures they

use, via declarations of a percentage range of the HW components utilized, claims to them become more particular and

specific to the inventive concept. Such a combined, claiming approach would be sufficient to pass this Factor as well.

Conclusion

Ultramercial, which was upheld by a unanimous CAFC panel, exemplified many of the above factors. To be

specific, the court noted that the claim in question was made with “regard to a particular process,” almost all of which had

steps “tied to computer implementation.”230 The “subject matter as a whole” involved an “extensive computer

interface.”231 Together, these findings were sufficient for the MOTT, but the court’s analysis did not stop there. It also

held that the “specific application”232 through a computer did not broadly preempt all forms of the idea and that there was

no evidence that the recited steps in the claim were “all token pre- or post-solution steps.”233 The claimed process also

“appear[ed] far from over generalized,” with many specific steps, “limitations and sub-steps in each category.”234 Less

notably, the claims “require[d] intricate and complex computer programming”235 and “advances in computer

technology.”236 These latter two factors were not incorporated into the proposed solution because a survey of the case-law

showed them to be unpersuasive in patentability decision making.

The proposed technique coheres with the lessons from Ultramercial to find the common thread that meets all eleven

of the factors. When exercised on SW, §§ 101 and 112(f) achieve the intended balance of protecting patentees seeking

venture capital for their inventions without stifling innovation. A recitation, which maps SW disclosed in the

specification’s flowchart(s) to the utilized computer HW, will: show how a machine is essential for the invention’s

implementation (Factors 1 and 10); limit the claims to preclude preemption of an abstract idea (Factors 2, 5 and 8); show

how the machine's implementation of an abstract idea is practical and significant (Factors 3 and 7); ensure that the process

cannot be purely performed in the human mind (Factor 4); pass the machine-or-transformation test (Factor 6); overcome

the aversion towards clever draftsmanship (Factor 9); and show how the machine's use serves the inventive concept

(Factor 11).

This technique even applies to business method patent applications, which have been notoriously elusive of

eligibility.237 And, to quote McNamara, this may be the “[r]eward” for finding “creative approaches to obtaining patent

protection.”238 Admittedly, the solution proposed herein adds considerable burden to patentees in characterizing their

invention to a range of HW platforms.239 However, when faced with the option of a narrower claim or no patent at all, the

logical compromise is a narrower but grantable and enforceable patent.240

229 Fiers v. Revel, 984 F.2d 1164, 1169 (Fed. Cir. 1993) (citing Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991)) (“Conception does not occur unless one ... is able to define it by ... its physical ... properties, or whatever characteristics sufficiently distinguish it”). 230 Ultramercial, 722 F.3d at 1351. 231 Id. (the specification did not provide details far beyond that vague description, but it did include two flowcharts). 232 Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1328 (Fed. Cir. 2011) (“specific application to the Internet and a cybermarket environment”). 233 Ultramercial, 722 F.3d at 1351. 234 Id. 235 Id. at 1328. 236 Id. at 1329. 237 Olivier Taillieu, In re Bilski: Business Method Patents Take a Hit; State Street Bank Is Out, LawUpdates (Jan. 7, 2009), available at: http://www.lawupdates.com/commentary/iin_re_bilski_i_business_method_patents_take_a_hit_istate_street_bank_i_is_. 238 McNamara, 12 Wake Forest J. Bus. & Intell. Prop. L. at 197. 239 See supra notes 175 and 213. 240 Christopher G. Wolfe, Charles D. Holland, & Mark G. Knedeisen, Intellectual Property Alert: What Is Next for Software Patents? (accessed July 9, 2013), available at http://www.klgates.com/what-is-next-for-software-patents-07-09-2013/?nomobile=perm (there is a benefit “to add physical limitations into claims where practical in order to have a granted patent available that will allow a business to prevent copying of various core business activities”).