Lack of Detail in Software-Related Claims Can Mean Invalidity
What This Means To You
- For software-related claims, lack of detail in the claims or in the specification as to how to particularly adapt a computer can provide a basis for invalidating the claims for failing to claim patentable subject matter or as being indefinite.
In Dealertrack, Inc. v. David L. Huber
, the US Court of Appeals for the Federal Circuit (Federal Circuit) held that software-related claims not tied to a particular machine in a meaningful way fail to claim patentable subject matter under the patent statute. The court also addressed indefiniteness of software-related means-plus-function claims and held that a general-purpose computer failed to provide adequate structure corresponding to the claimed functions.
In the mid 1990s, Dealertrack developed network-based, computer-aided methods and systems for the automotive industry to facilitate the processing of auto-loan applications at auto dealerships. In 2006, Dealertrack sued Huber for infringing claims of two of Dealertrack’s patents.
Dealertrack appealed the district court’s grant of summary judgment of invalidity of claims of one of the patents for failing to claim patentable subject matter. A co-defendant in the case appealed the district court’s denial of summary judgment of invalidity of means-plus-function claims of the second patent.
When evaluating the first patent, the Federal Circuit distilled the independent method claim down to three generalized “clearinghouse” steps. The court also construed hardware-related terms of the claim (“remote application entry and display device” and “remote funding source terminal devices”) as being nothing more than general purpose computers, which Dealertrack did not contest.
The court then concluded that the claims “[did] not require a specific application, nor [were] they tied to a particular machine,” and therefore found the claims to be abstract, preemptive of all clearinghouse methods, and invalid.
When evaluating the second patent’s means-plus-function claims, the court looked for structure in the specification corresponding to the claimed function and only found description of a general-purpose computer. The court failed to find sufficient disclosure, in terms of flow charts or algorithms, detailing how the computer could be adapted to perform the claimed function, and therefore found the claims invalid as lacking sufficient structure corresponding to the claimed functions.
When evaluating software-related claims for determining patent eligibility , look for sufficient detail in the claim as to what distinguishes the steps or elements of the claim from a general-purpose computer.
When evaluating software-related means-plus-function claims, look for sufficient detail in the specification as to how a general-purpose computer is particularly adapted to execute functions of the claims.