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Allvoice v. Microsoft: When is a Claim Not a Claim?

June 17, 2015

By Ken Bousfield

Allvoice Developments US LLC v. Microsoft Corp.,
Fed. Cir. May 22, 2015 (Non-Precedential)

Allvoice’s patent pertained to speech recognition software. Dismissing Allvoice’s suit for infringement, the US District Court for the Western District of Washington granted summary judgment in favour of Microsoft declaring Allvoice’s claims not to have been infringed; to have been indefinite; and to have lacked patent-eligible subject matter under 35 USC 101. Allvoice appealed to the Court of Appeals for the Federal Circuit. The Federal Circuit affirmed.

Allvoice is a holding that software, alone, cannot be patent-eligible subject-matter other than as a process.

The Federal Circuit held that under 35 USC 101i, all of the statutory classes except processes must have “some physical or tangible form”. Allvoice’s software claims recited no such physical formii, and were therefore neither for a machine nor for a manufacture. The Court relied upon Digital Image Technologies v. Elecs for Imaging, Inc., 758 F. 3d 1344, 1348 (Fed. Cir. 2014)iii, which itself relied upon Burr v. Duryee, 68 US 531, 571 (1863)iv; and upon the controversial In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007)v.

Nuijten, Digital, and Burr v. Duryee are thought to stand for the proposition that machines, manufactures and compositions of matter must have a physical form.

Patent eligibility of subject-matter remains a badly confused area of the law. The Allvoice decision might merit scrutiny.

Burr – Omnibus Claims

Burr might be read with caution. First, the Court held that Burr could not claim a “mode of operation” in an apparatus casevi. However a “mode of operation” would now be a use falling within “art” in the definition of “process” in 35 USC 100. Second, Burr’s claim was in an omnibus form “generally as shown and described” and “as set forth”.  Omnibus claiming was abolished in US utility patents in 1870vii. Third, the Court objected to use of a re-issue in 1860 on a patent originally granted in 1846 as impermissible broadening far beyond that to which Burr was entitled, which appears to colour the decision.

Nuijten – 35 USC 101 or 35 USC 112, 2nd Para, or Both?

Nuijten, was also a troublesome case, decided on the basis that Nuijten’s signal did not fall in any of the statutory classes.  The most contentious discussion was whether the signal was a “manufacture”.  The Court held that it was not.

The real problem in Nuijten, however, is that Nuijten didn’t really claim anything. If Nuijten had claimed a modified encrypted watermark, the claim might have been valid.  The heart of the claim concerns the difference between a modified encryption sample and a datum sample. However, neither the modified sample of the signal nor the datum sample, nor the difference is positively claimed. They are all inferentially claimed elements for which there is no properly established antecedent basis. It is difficult to see how the claim met the 35 USC 112, 2nd para requirement of particularly pointing out and distinctly claiming. The overbroad claims of Nuijten look to be a shaky basis for the current law that no signal claim is patentable. In both Digital and Allvoice, there are similar 35 USC 112 issues.

Cosmetic Enhancement v. Coherence

To decide whether an invention falls within the statutory pigeon holes of 35 USC 101, it is a necessary pre-requisite that there be a claimed invention of any kind. The problem of cosmetic enhancement of claims with non-limiting limitations of conventional pre-processing and post-processing features is addressed in the US in Diamond v. Diehrviii, and in Canada in Schlumbergerix. In both Schlumberger and Diehr, the issue is coherence. Claims must include elements reflecting conception and reduction to practice; and must have coherence as a unified wholex. If not, there is no invention sufficient to reach the threshold of the statutory classes.

Digital

Digital was a case in which the claims were supposedly directed to “A device profile”. The problem with the claims was that they did not actually claim anything. In Digital, the words “for describing properties of a device in a digital image reproduction system to capture, transform or render an image,”xi are placed in the preamble. They do not define a positive claim limitation and have no weight in establishing patentability – although they may be limiting for the purposes of enforcement. Arguably, they are a promise of performance of the combination of positively claimed elements that may be expected to follow.

From another perspective the words may be read as a pre-emptive whereby clause.  However, a whereby clause is only proper where it necessarily follows from the interaction of the positively recited elements. That is not the case in Digital. The words really amount to a desired result. They do not “claim a result” merely because the feature comes before the transition, rather than after.

In the remainder of the claim, the only positively claimed elements are “first data” and “second data”.  In each case the recitation is followed by a non-limiting intended-use “for” this purpose or that purpose, rather than a positively recited feature.

A patent is not granted for unrelated parts in a box. In Digital, not only does the claim lack positive elements, even the quasi-elements have no defined relationship of coherence. As in Schlumberger, Digital’s claims were like the disappearing Cheshire cat’s grin in Alice in Wonderland: once the non-limiting limitations were stripped away, there was no claim left.

However, rather than finding invalidity under 35 USC 112, 2nd para., for failure to have particularly pointed out and distinctly claimed the subject matter of any invention, the Court in Digital held that the claims lacked subject matter under 35 USC 101.

Allvoice

In Allvoice, the words “that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications” are a promise of performancexii.  It is the result the inventor desires.  If they followed “comprising” the inventor would be claiming a result, a desideratum, rather than claiming an invention yielding that result.  Placing the words before the transition makes them a promise of performance of the positively claimed features that follow.  It seems fairly doubtful that everything within the scope of the subsequently recited elements would have the utility promised in the preamble.

The words following the transition establish only three positively claimed elements: (i) an “input means”; (ii) an “output means for outputting”; and (iii) “audio playback means”xiii,xiv. There is no relationship established between the elements.  There is no indication what occurs between the input and the output, or where the audio playback fits.  There is no claimed invention.  The claim does not rise to the threshold of a need to determine the statutory class in 35 USC 101.  There is no need to create some implied statutory exception for software.

Analogue Devices v. Software

It is true that all software is a series of method steps. However, blocks of software that perform one particular function or another are well known as programming plug-ins, much as it is known to plug in a compressor, a condenser, a valve, and an evaporator. The last items may be hardware “machines”, but they are universally known for their functions, i.e., the method steps they perform, as reflected in their names. Assembly of programming blocks to yield a larger entity is no different from assembling a larger machine out of standard sub-components. Why should a software “machine” not be composed of blocks or sections of code assembled in a certain order, or in a certain functional relationship?

A “machine” is not a machine by virtue of being a physical object of wood or steel, but rather by the function it performs.  The origin of “machine” is a contrivance for making or doing.  The origin of “manufacture” is similar: manu+facere = to make, something that has been made.

Patentability should not depend on whether a relay is an analogue device or a digital device; or whether a band-pass filter is analogue or digital. Yet by Allvoice, an analogue device is a machine falling within 35 USC 101, whereas software performing exactly the same function would not be. That seems a rather arbitrary distinction.

Allvoice is another example of the mischief that arises from confusing grounds of rejection within 35 USC 101; and of confusing 35 USC 101 with 35 USC 112.  It may be that purely software inventions do not establish the existence of either machines or manufactures. However, neither Allvoice, nor Digital, nor Nuijten, nor Burr establishes a reliable foundation for such a far reaching legal conclusion.xv


i See also the statutory classes are found in Canadian Patent Act s. 2 under the definition of “invention”.

ii In Allvoice, the claims were:

60.  A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and
audio playback means for playing audio data associated with the recognised words.

64.  A speech-recognition interface that enables operative coupling of a speech-recognition engine to a computer-related application, the interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into a computer-related application to allow processing of the recognised words as input text, including changing positions of the recognised words; and
means, independent of the computer-related application, for determining positions of the recognised words in the computer-related application.

iii In Digital the claims were:

1.  A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
first data for describing a device dependent transformation of color information content of the image to a device independent color space; and
second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

26.  A device profile for describing properties of a device in a digital reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device said data is represented by spatial characteristic functions.

iv In Burr v. Duryee, the claim was for

1.  The mode of operation, substantially as herein described, of forming hats of fur fibres of the required varying thickness from brim to tip, which mode of operation results from the combination of the rotating picking mechanism, or the equivalent thereof, the previous former and its exhausting mechanism, or the equivalent thereof, and the means for directing the fur bearing current, or the equivalent thereof, as set forth. (Emphasis added)

v In Nuijten, the claim was for:

14. A signal embedded with supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of a signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

vi  Burr had already filed for re-issue in a parallel case directed toward his method.
vii Patent Act of 1870, Ch. 230, 16 Stat. 198 – 217 9July 8, 1870, s. 26
viii Diamond v. Diehr, 450 US 175 (1981)
ix Schlumberger Ltd. v. Canada (Patent Commissioner) (1981), 56 CPR (2d) 204 [1982] 1 FC 845.
x The same coherence issue is seen in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 132 S. Ct 1289 (2012): “… those steps, when viewed as a whole, add nothing significant beyond the sum of their parts”.
xi One may leave aside the question of the ambiguity inherent in the use of the word “or”.
xii See endnote (i), supra.
xiii Again, one may leave aside what “input means”, “output means” and “audio playback means” add that “input”, “output”, and “audio playback” would not, and what was
achieved by falling under 35 USC 112, 6th para.
xiv Query whether the claim reads on a portable reel-to-reel tape-recorder with ports for microphone and speaker jacks, e.g., from the 1960s.
xv These and related issues are discussed at much greater length in The Progress of Science and the Useful Arts: Misadventures in Canadian Law on Patent-Eligible Subject-Matter, 10 C,J,L,T 129 (2012).

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