|Authored by: PolR on Saturday, March 16 2013 @ 05:57 PM EDT|
But my thought is that if we can clearly say "this is the software
this is the hardware bit", then it becomes much easier to argue "but
device cannot infringe THAT patent".
Why is that so? This is not
how infringement analysis proceeds. They just go through all the elements
mentioned in the claim and check if they are in the accused implementation. If
every element checks as present then it is infringement. Nowhere do they ask
whether the element is software or hardware. They just ask if it is
It should be clear that adding software to general purpose
COTS hardware cannot
make a "new patent-infringing machine".
is not clear for the Federal Circuit. We wish to make it clear but it is hard to
That's where I'm trying to go - maybe aimed more at the
courts than the patent
office - but it helps enforce the importance of "what is
new IN THE
HARDWARE to make a new machine?".
The legal analysis
doesn't work that way. The analysis is done on the claim as a whole. If there is
a new element anywhere in the claim then the whole claim is new. Also the
combination of elements could be new even though each individual element is not
new. Courts are not allowed to dissect the claim to look whether the point of
novelty is. They are not allowed to disregard an element of the claim because it
is not hardware. The only exception is when they apply the printed matter
doctrine. Then they are allowed to disregard the printed matter. This
claim-as-a-whole constraint is part of what makes the problem so
Even a formal statement from the patent office that
"COTS hardware +
software cannot create a patent-infringing machine" would be a
advance. That promptly gets all software houses off the hook for any
Yes it will be a big advance. But it
is not as big as you think because of the claim-as-a-whole constraint. Patent
attorneys will just include in the claim something which is not the hardware or
software and the is no longer just software added to off-the-shelf hardware.
This would send the legal problem back to the drawing board.
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