Quotes of the day

The first question, i.e., whether software may be a “component” of a patented invention under § 271(f), was answered in the affirmative in Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed.Cir.2005), which issued while the instant appeal was pending. In that case, we held that “[w]ithout question, software code alone qualifies as an invention eligible for patenting,” and that the “statutory language did not limit section 271(f) to patented `machines’ or patented `physical structures,'” such that software could very well be a “component” of a patented invention for the purposes of § 271(f). Id. at 1339.

AT & T CORP. v. Microsoft Corp., 414 F.3d 1366, 1369 (Fed. Cir. 2005)(Judge Lourie writing for the court), cert. granted 127 S.Ct. 467 (U.S. 2006) and judgment rev’d on other grounds, 127 S.Ct. 1746 (U.S. 2007).

 

Exact duplicates of the software code on the golden master disk are incorporated as an operating element of the ultimate device. This part of the software code is much more than a prototype, mold, or detailed set of instructions. This operating element in effect drives the “functional nucleus of the finished computer product.” Imagexpo, L.L.C. v. Microsoft, Corp., 299 F.Supp.2d 550, 553 (E.D.Va.2003). Without this aspect of the patented invention, the invention would not work at all and thus would not even qualify as new and “useful.” Thus, the software code on the golden master disk is not only a component, it is probably the key part of this patented invention. Therefore, the language of section 271(f) in the context of Title 35 shows that this part of the claimed computer product is a “component of a patented invention.”

Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1338-39 (Fed. Cir. 2005).

 

Section 271(f) refers to “components of a patented invention.” This statutory language uses the broad and inclusive term “patented invention.” Title 35, in the definitions section, defines “invention” to mean “invention or discovery” — again broad and inclusive terminology. 35 U.S.C. § 100(a) (2000). The next section in Title 35, section 101, explains that an invention 1339*1339 includes “any new and useful process, machine, manufacture or composition of matter.” 35 U.S.C. § 101 (2000). Without question, software code alone qualifies as an invention eligible for patenting under these categories, at least as processes. See In re Alappat, 33 F.3d 1526 (Fed.Cir.1994); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed.Cir.1999); MPEP § 2106.IV.B.1.a. (8th ed., rev. 2 2001). The patented invention in this case is such a software product. ‘906 patent, col. 17, ll. 58 — col. 18, ll. 30. Thus, this software code claimed in conjunction with a physical structure, such as a disk, fits within at least those two categories of subject matter within the broad statutory label of “patented invention.”

Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1338-39 (Fed. Cir. 2005).

 

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