Thursday, January 31, 2013, 9:17 AM


Let’s continue with insights about software patenting, from Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011).  The Federal Circuit found that “mere manipulation or reorganization of data” does not satisfy the machine or transformation test (commonly called MOTT).  We can interpret this as saying the court did not believe that the claimed method was anything more than manipulation or reorganization of data, and thus neither performed a transformation of any kind nor required a machine to do so.  I believe this is a troubling precedent.  Extending this to an illogical conclusion, it could be argued that all computer software does exactly this, manipulates and reorganizes data, which viewpoint would invalidate all computer software patents.  Yet, 35 USC §101 Inventions Patentable states, in part, “Whoever invents or discovers any new and useful process, machine… or any new and useful improvement thereof, may obtain a patent therefor…”  We may well ask, at what point does a method expressed as computer software become a “new and useful process” and therefore patentable?  At what point does such a method become more than mere manipulation or reorganization of data?  Is it when an algorithm has been applied to the data, and that algorithm is new?  But, to return to the court ruling, don’t algorithms (even when new) just manipulate and reorganize data?  Perhaps it is when the result of applying the algorithm produces something new and unexpected.  We can’t claim a result, and we can’t claim all possible means of obtaining a result (this would be a single means claim), but we can claim a method and the steps thereof, that produces a result.  When these claimed steps as a whole are novel, and the subject matter is in a patentable class, the method as claimed should be patentable.  This should apply whether or not the method can be expressed as software.  Tying the method to a machine may be helpful in terms of MOTT, but the court has ruled this is not the only test.  This is where the art of claim writing and arguing the claims before the United States Patent and Trademark Office comes in.

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