The U.S. Court of Appeals for the Federal Circuit (CAFC) recently issued a ruling with profound implications for the patent eligibility of software-related innovations. In Brian McFadden v. United States, the CAFC partially reversed and vacated a decision by the Patent Trial and Appeal Board (PTAB), which had rejected Brian McFadden’s U.S. Patent Application No. 16/231,749 as unpatentable under 35 U.S.C. §§ 101 and 112.
PTAB’s Initial Decision
The PTAB upheld the examiner’s rejection of claims 10 - 17 under §112(b), arguing that these claims were “mixed” by reciting both apparatus limitations and method steps. Additionally, it found claims 10 - 18 ineligible under Section 101, contending they were directed to software without any hardware or structural limitations.
CAFC’s Ruling
In a per curiam opinion, the CAFC agreed with the PTAB on the indefiniteness of claims 10 - 17 but reversed the ineligibility decision for claims 10 - 18. The court emphasized that these claims use “means-plus-function” language, which requires analyzing the corresponding structure described in the specification.
The CAFC found that the specification discloses tangible computer systems, satisfying the structural requirements under 35 U.S.C. §101. Specifically, the description includes details about computer hardware and software, sufficient to avoid falling under abstract ideas ineligible for patent protection.
Key Takeaways
Means-Plus-Function Format: The court stressed that when claims use terms like “means” or “configured to,” they must be analyzed under the means-plus-function standard. This requires identifying corresponding structure in the specification.
Alice/Mayo Analysis: On remand, the PTAB should conduct the two-step Alice/Mayo test to determine if the claims are directed toward an abstract idea. The CAFC declined to perform this analysis itself and left it for the PTAB on remand.
Impact on Businesses: This decision underscores the importance of clear and detailed specifications in patent applications, particularly for software-related innovations. It also highlights the need for businesses to maintain robust trademark monitoring programs to mitigate risks of confusion.
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Conclusion
This ruling is a reminder that software-related claims can still be deemed patent eligible if they sufficiently describe structural components or use appropriate functional language. However, companies must remain vigilant in protecting their trademarks and intellectual property to avoid infringement claims and ensure compliance with patent laws.
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