Software-Related Claim Construction: How to Steer Clear of "No-Man's Land"

In Allvoice Developments US, LLC v. Microsoft Corp., the Federal Circuit affirmed a district court finding that claims were invalid under 35 U.S.C. § 101. The Federal Circuit noted that although the claims were directed to software, which is not per se patent-ineligible, the claims were nonetheless invalid because they did not pertain to a process and did not recite hardware limitations. Although the decision is non-precedential, it nonetheless contains a valuable lesson in claim drafting by reaffirming that when a claim is not directed to a process, the claimed subject matter must exist in tangible form. The decision also reiterates a particular distinction practitioners should bear in mind when considering any software-related patent claim: that claimed subject matter directed to a process does not necessarily have to include hardware features for it to be patent-eligible.

The Story of Allvoice

Allvoice brought suit against Microsoft for infringement of U.S. Patent No. 5,799,273, directed to a voice-recognition system that stores, replays and facilitates correction of dictated information that can be directly dictated into third-party applications. The district court granted Microsoft’s motion for summary judgment, concluding that the accused products did not infringe the ‘273 patent. The court also concluded that claims 60 - 68 of the ‘273 patent involved non-patentable subject matter. The Federal Circuit affirmed the district court on both counts. Specifically, the Federal Circuit found that the district court did not abuse its discretion in reaching its conclusion of non-infringement. The Federal Circuit also affirmed the district court’s decision to dismiss claims 60 - 68 on the grounds that they were “not directed to one of the four statutory categories of inventions identified in 35 U.S.C. § 101.”

Section 35 U.S.C. § 101 defines patentable subject matter as “any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof.” In addition, in accordance with judicial exceptions, such as the one cited in the recent buySAFE, Inc. v. Google, Inc. decision (in which the abstract-ideas exception played a major role), laws of nature, natural phenomenon and abstract ideas are not patent-eligible. The Federal Circuit in Allvoice reaffirmed that “eligible subject matter must exist in some physical or tangible form” unless a claim is directed to a process, citing the same rule used in Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. to invalidate “device profile” claims. In Digitech, the Federal Court invalidated device profile claims directed to describing profiles of a device because the claims were not directed to a process and were not tied to a physical, tangible device. Thus, machines, manufactures and compositions of matter must exist in physical or tangible form to be patent-eligible. Looking to claims 60 - 68 of the ‘273 patent, the Federal Circuit concluded that they were not directed to a process, but to a “universal speech-recognition interface.” The Federal Circuit also concluded that, despite reciting a “speech-recognition interface,” the claims did not recite, and were not directed to, any tangible or physical object. The Federal Circuit cited Allvoice’s argument, before the district court, that the claims were directed to software. Software, as the Federal Circuit explained, does not exist in physical or tangible form. Allvoice also failed to convince the court that the claimed subject matter included physical features. For example, Allvoice argued that the claimed software necessarily exists in a physical, machine-readable form, and thus the claims were directed to a manufacturer. The Federal Circuit rejected this argument, noting that “instructions, data or information alone, absent a tangible medium, is not a manufacturer.” The Federal Circuit also noted that Allvoice failed to argue that the claimed means-plus-function limitations included tangible structure. Therefore, because the claimed subject matter did not exist in physical form, and because the claims were not directed to a process, the Federal Circuit concluded that the claims fell outside allowable subject matter as defined by 35 U.S.C. § 101.

Takeaways From Allvoice

The decision in Allvoice reaffirms the rule that out of the four categories of patent-eligible subject matter, including machines, manufactures, compositions of matter and processes, only processes are patent-eligible when the claimed subject matter does not exist in physical or tangible form. Thus, when patent applications involve software processes or procedures (e.g. algorithms), practitioners should strongly consider the addition of process claims to prevent a claim set from falling into “no-man’s land” in which none of the four categories of patent-eligible subject matter applies. For the same reasons, practitioners should also ensure that non-process claims encompass tangible features. In addition, for existing patents that are directed to software-related inventions, patent owners and assignees would be wise to review software claims to assure that they are directed to a process if those claims do not recite sufficient hardware features. Even where non-process software claims are understood to recite hardware features, adding process claims to the claim set is advisable lest the claim set be determined to fall into “no-man’s land,” as they did in Allvoice. If claims do fall into “no-man’s land,” patent owners and assignees may have options to amend the claim set, such as by filing a reissue patent application.