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By J.D. Houvener
Patent Attorney and Founder

Hi everyone, I’m J.D. Houvener, the host of the Bold Today Show, where we review the inventor, business owner, entrepreneur, and get your daily dose of inspiration to make the world a better place. We’re on day three of a five-part series about software and how software patents have really become quite the news story lately this year, opening up quite a few different decisions by the Federal Circuit. We’re hoping for the Supreme Court to say that, look, patent software patents are eligible, and I’m going to talk about one of the big cases that’s recent about this whole situation.

So, we’ve talked yesterday and the day before, opening up, okay, what is subject matter eligibility all about, how software falls into the categories of machines or processes, and then we talk about the foundational framework basis of the decisions that have come up in 2012 and 2014 with Mayo and Alice. So, with that understanding, those cases have said that looked, you know, computer implementations of ideas that are abstract or that don’t do anything functional that don’t transfer any explainable or transferable media that’s tangible, it’s not eligible. Now, that is actually still the case, but some very recent Federal Circuit decisions, as we’re going to go over today and tomorrow, have changed that landscape.

The case I’ll talk about today is about software virus scanning, and a case that went before the Federal Circuit is called Finjan versus Blue Coat. So, this case was all about how Finjan, who owns the patent about computer virus scanning, argued successfully to the Federal Circuit that they don’t just do virus scanning. Their claims say that they actually scan, identify malware, or code that looks threatening, that’s going to do something harmful to one’s computer, and then they categorize it and dispatch it. They report on bad code in a proactive manner as opposed to traditional virus scanning, which simply reads over the code and then identifies. Finjan’s software system claims to take that action without seeking validation from the user. They sort of imagine a situation where the user isn’t allowed time. There’s no time for them to give a decision. They’ve identified malware or bad code, and they move it right off the books and get it off that system as soon as possible.

Long story short, the Federal Circuit bought it, and the key phrase in the decision is that by making an improvement in computer technology, it was sufficient to warrant an eligible patent. That got over the bar, and they did quote the Alice and Mayo decisions as being part of that inquiry as to whether it made a proper improvement or was substantially different.

So, there are a lot of now applications pending that have arguably some great room to say that they’ve also got an improvement on computer technology. So, with this great decision, it’s a big buttress to a lot of our current inventors that are in this space – SAS systems, even financial transactions, business methods that are using the computer. As long as they can point to the fact that computer technology is being improved through their technology, through their invention, they’ve gotten patent eligible and a valid claim in the world.

If you’ve learned something today or maybe you’d like to pass this along to someone else, feel free. Please also put a comment below if you have any questions or thoughts about what we talked about today. I’d love to hear from you. I’m your host J.D. Houvener, the Bold Today Show. Go big, go bold.

[Music] At boldip.com.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/