Customedia Technologies LLC v. Dish Network Corp. addresses the patentability of computer-implemented inventions, such as software, telecommunications protocols, computer-based commerce, and the like.
Whereas federal law defines patentable subject matter inclusively (any new and useful process, machine, manufacture, or composition of matter), courts typically focus on judicially characterized exclusions (laws of nature, natural phenomena, and abstract ideas). Computer-implemented patents involving software, methods of business transactions, data manipulation and analysis, and the like, frequently invoke analysis under the abstract ideas exclusion, as was the case in Customedia.
The Federal Circuit’s analysis, including its survey of prior decisions, provides several valuable lessons to patent owners seeking to ensure their computer-implemented innovations receive strong patent protection, and conversely to third parties seeking to challenge patents for computer-implemented inventions.
Claim and Description Requires Improvement to Computer Function
First, computer-implemented inventions should be described and claimed as an improvement to the functioning of the computer. Customedia’s patents related to downloading advertising data to a local receiver, such as a cable set-top box, and storing the advertising data in memory locations specifically reserved for that purpose. Even though the claims recited specific hardware components (server, receiver, memory, etc.), the court held the claims were simply “directed to the abstract idea of using a computer to deliver targeted advertising to a user.”
In rejecting Customedia’s argument that the use of dedicated memory locations improved the system’s ability to transfer and store advertising data efficiently, the court noted that those features were not “improvements to the functionality of the computer itself.” Rather, the improvements were to the (abstract idea of) delivering advertising content. The invention used the computer “only as a tool” but did not improve upon the computer’s functioning or solve any technological problem.
The court provided several examples of patentable computer-implemented inventions:
- Claims to a self-referential database, because the invention improved the way computers store and retrieve data;
- Claims relating to storing a verification structure in memory, to reducing software vulnerability to hacking, and to behavior-based virus scans, because they all related to improving computer security; and
- Claims to a user interface because, they allowed computers to be used with smaller display screens.
By contrast, computer-implemented inventions that were unpatentable include:
- A method for classifying and organizing digital images, because the improvement was to abstract concepts of classifying and organizing data, not to how the computer performed;
- A system for providing tailored Web content to a user, because improvements in speed and efficiency are simply inherent in the use of computers and not an improvement to computer functionality; and,
- An on-line stock trading system, because the computer was simply used as a tool, that is a conventional computer used in a conventional manner.
In short, if the underlying method or function is not by itself patentable, simply performing the method or function on a computer will not make it patentable. Had Customedia focused its patents on an improvement to organizing or structuring the computer memory space, rather than on a system for delivering advertising content, the patents might have received a more favorable outcome.
Software Is Patentable If It Improves Computer Functioning
A second lesson from Customedia is the affirmation that software is patentable. Despite differing, sometimes conflicting, rulings regarding software patents in the past, Customedia makes clear that “software can make non-abstract improvements to computer technology just as hardware improvements can.”
Again, however, the invention must focus on how the software improves the computer functioning, not simply how it improves some abstract goal or idea. For instance, software for navigating three-dimensional electronic spreadsheets was held patentable because it improved the computer’s functionality in accessing the spreadsheets, whereas software for selecting, analyzing, and displaying data was found not patentable, because it simply improved on the abstract idea of data analysis, but offered no improvement to how the computer accomplished that result.
Important to Highlight Unique or Specialized Aspects
A final lesson from Customedia is the importance of highlighting any unique or specialized aspects of the computer components, including configurations, connections, locations, etc. Often, such components are described as generically as possible – in order to make the patent claims broadly applicable to a wide range of possible products. This strategy comes with risk, however, as Customedia demonstrates.
As the court noted, Customedia’s patents claimed only “generic computer components” and identified only “generic speed and efficiency improvements inherent in applying the use of a computer to any task.” With the benefit of hindsight, it is clear that Customedia should have emphasized the technological nuances and improvements of its memory organization and allocation as well as any associated procedures or routines for optimizing its use of the specialized memory space.
While it is impossible to say whether that would have altered the ultimate outcome, the court’s ruling suggests this strategy would have, at a minimum, improved the chances that the computer-implemented claims would have withstood the challenge.
Strategies for Addressing Patent Eligibility Challenges to Computer-Implemented Inventions
Computer-implemented inventions, whether hardware or software and whether couched as a device, a system, or a method, are particularly vulnerable to patent eligibility challenges. Care should be taken to disclose and claim improvements to the functionality of the computer components themselves, rather than merely disclosing and claiming conventional use of conventional computer technology to obtain improvements to an abstract idea such as data analysis, stock trading, data storage, or the like.
Particular care should likewise be taken to describe specific embodiments of the hardware and software components, the details of which can be incorporated into claims, if needed, to provide the requisite level of improvement to computer functionality.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Steven H. Slater, one of the founders of Slater Matsil, negotiates complex patent licenses, technology transfers, and alliance agreements, and represents his clients in related patent preparation and prosecution matters.