Software Patent Claims Are Invalid Under 35 U.S.C. § 101 Without Magic (Statutory) Words

A savvy drafter of software patent claims will, to use one of the worst legal cliches, exalt form over substance.  Software in general unquestionably can be patent-eligible even after Alice Corp. v. CLS Bank International.  Undoubtedly, no magic words can promise that a software patent claim will be found patent-eligible under 35 U.S.C. § 101.  However, the wrong words in a patent claim can lead to a finding of patent-ineligible subject matter, and hence a holding of invalidity under Section 101.  Such is the lesson of Allvoice Developments US, LLC v. Microsoft Corp., No. 2014-1258 (Fed. Cir. May 22, 2015).

In this case, the patent owner admitted that one set of claims were drawn purely to software.  Further, these claims, drawn to a “universal speech recognition interface,” did not fall into one of the enumerated statutory categories of a “process, machine, manufacture, or composition of matter.”  35 U.S.C. § 101.  Therefore, said a Federal Circuit panel consisting of Judges O’Malley, Prost, and Dyk, the claims were invalid under Section 101.

U.S. Patent No. 5,799,273 issued with 78 claims, including independent claims drawn to a “data processing apparatus,” a “data processing arrangement,” “an editor work station,” “a data processing method,” and “a computer usable medium,” none of which were challenged under Section 101.  Microsoft had, however, successfully argued in the district court that claims 60 and 64, which recited the “universal speech-recognition interface,” were not patent-eligible.  The Federal Circuit agreed.

The court, citing the 2014 Digitech case, explained that subject matter is not patent-eligible unless it is a process claim, or unless it “exist[s] in some physical or tangible form.”  In this case, “claims 60–68 of the ’273 Patent do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter.”

The patent owner, as noted above, had admitted that the recited “speech-recognition interface” was software.  With this backdrop, significantly, the court affirmed that “[s]oftware may be patent eligible.” The problem here was that “when a claim is not directed towards a process, the subject matter must exist in tangible form.” Claims 60-68 failed meet patent-eligibility criteria because they “merely claim software instructions without any hardware limitations.”

The court rejected the patent owner’s argument that the claims fell into one of the statutory categories because “the claimed software must necessarily be in a machine readable, physical state in order to exist.”  To the contrary, “instructions, data, or information alone, absent a tangible medium, is not a manufacture.”