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  • R. Scott Kimsey

The Federal Circuit Strikes Down a Software Patent

Those of you following developments in software patents already know that the U.S. Supreme Court issued a significant ruling in the Alice Corp. case. There, the Court ruled that a software method for reducing risk to parties to a transaction was essentially an abstract idea, and that merely requiring the abstract idea to be performed on a generic computer was not enough to make it patentable. The Alice Corp. ruling does allow that some software patents are valid, but did not provide firm guidance as to where to draw the line between patentable and unpatentable software methods. That work was left for the lower courts.

Now, the U.S. Court of Appeals for the Federal Circuit has issued a software patent ruling, post-Alice Corp., in the case of Digitech Image Technologies v. Electronics for Imaging, Inc. The Digitech patent related to a software method for providing "device profiles" that describe spatial and color properties of a given device within a digital image processing system. In essence, the software addresses the problem of distortion, color differences, and the like between different imaging devices. These problems exist because all devices treat colors and spatial information of images slightly differently. Digitech's patented software accounts for the color properties of the image source device, as well as the image output device (e.g. a printer, monitor, etc.), and allows the image to be more faithfully reproduced between the two.

Digitech sought to cover two aspects of the invention: 1) the device profile itself; and 2) a method of generating the device profile. The Federal Circuit shot down both sets of claims as unpatentable subject matter.

The court ruled that the device profile is not a tangible or physical thing, and does not fall within any of the categories of patentable subject matter. Instead, according to the court, the device profile is simply an intangible collection of color and spatial information. With respect to the method claims, the court ruled that the patented method describes a process of organizing information through mathematical correlations, and that this process is not tied to a specific structure or machine. Again, this is not patentable subject matter.

Both Alice Corp. and Digitech give software patentees and patent applicants something to think about. Software patents are still viable, but care must be taken in drafting the claims, so that you don't end up with merely an abstract idea that is tied to a generic computer. It is clear from these cases that those kinds of software patent claims are not going to hold up to scrutiny.

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