WhitServe: A lesson in claims writing for software, mobile app and business method patent applications

With technology improving at an increasingly rapid rate and our dependency on technology in our daily lives growing, there are many software, mobile app and business method patents being filed. Each patentee chooses the terminology of his liking to describe and claim his invention. However, understanding how some words have been interpreted in patent enforcement can be very useful to get the best possible result. In WhitServe et.al. v. Computer Packages Inc.2011-1206-1261 (Aug 7,2012), the Court of Appeals for the Federal Circuit gave some guidance on how it interpreted the claim language terminology “automatic” and “internet-based.”

Mr. Whitmyer, a patent attorney-inventor and sole principal of WhitServe LLC sued Computer Packages Inc. (CPi) for its patent maintenance software. The novelty argued during patent prosecution centered on the automatic features of the business method process. The litigants argued over what “automatic” really was – what if someone could cancel or override a pre-programmed feature? What if someone needed to enter a response into the computer to initiate or continue the pre-programmed process? The district court interpreted the term “automatic” in the claims as:

A process that, once initiated, is performed by a machine without the need for manually performing that process, that is, without the need for human intervention. A machine may still perform the claimed process automatically, even though a human might manually initiate or interrupt the process.

In reaching the conclusion that the term “automatic” as used in claim 1 does not exclude all possible human intervention, the trial court relied on our decision in CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005), where we explained that dishwashers and autopilots could still be automatic even though they must be started by a human. As we did in CollegeNet, the trial court focused on the use of the term “comprising” in the claim to find that unrecited elements of manual human actions were not excluded from its scope. See id. At 1235 (stating that, “[w]hile claim 1 does not expressly suggests that additional, unrecited elements are not excluded. Such elements could include human actions to expressly initiate the automatic [querying, generating, transmitting, or receiving], or to interrupt such functions.”).

The lesson to take from this case is the interpretation of the term automatic and the importance of the old standby patent language “comprising.” Use of this word suggests additional unrecited elements are not excluded, and that some amount of human intervention might be part of the claimed “automatic” process.

The court also noted approvingly the definition of “internet-based data”:

WhitServe’s expert accurately described Internet-based data as “[i]f you have data that constructed and you send it to a central computer for further processing, Internet based data is that data that you created yourself, plus the data that gets created as a consequence of doing that processing on a server computer.” He also agreed that a good definition is: “information that could be created on an application on the other side of the Internet from a client computer [.]”

What does this mean? Data that is not locally stored is internet-based. The data created by programs accessed in the cloud is internet-based data. Thin-client remote access to a non-local processor/software application is internet-based data.

Keep these definitions in mind as you write computer-related invention specifications and claims. Understanding these terms and their implications are critical to create a set of claims that will increase the likelihood of patent grant give the type of protection you are seeking. It is recommended that you hire a patent team that is experienced in writing software, mobile app and business method applications to assist you in this process.