There is plenty of buzz today about the Federal Circuit’s decision affirming that Microsoft infringed I4I’s XML software patent. People are talking about the permanent injunction, the damages, and willful infringement. These are all very interesting to me, but there is something much more interesting. You see, this patent really hits home for me because I bought the infringing product Microsoft Office after the District Court’s had issued its final decision. What I bought, and what the Federal Circuit discussed in their decision was completely different than what was in their claim. In patent number 5,787,449, the patent describes both system claims and method claims.
The Federal Circuit referred to the invention as software practicing the invention. When I went to the Mac store to buy Microsoft Office, I bought software that infringed the invention. The Federal Circuit can refer to it as such, the consumer can refer to it as software, but for some reason the PTO for subject matter reasons makes the patentee claim the invention in round-about ways. The system at issue (claim 1) claimed it as “a computer system for the manipulation of the architecture and content of a document.” However, I did not buy a computer system. I bought software. I could have bought the software online and downloaded it from a server and it would have been exactly the same as the discs that I bought at the mall. It seems counter-productive to claim software as anything other than software.
The next interesting point is how the Federal Circuit looked at the method claim. The Federal Circuit had no problem with the method claim at issue:
14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:
providing the mapped content to mapped content storage means;
providing a menu of metacodes; and
compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
providing the document as the content of the document and the metacode map of the document.
Here we have a method of dealing with data. It is clearly useful as it was “an improvement over prior technology in several respects.” But now we’re getting to the part that is perplexing for me. How is this method tied to a particular machine or apparatus? At first glance it appears that it is not, as there is no mention of a machine or apparatus. The next question is how does this method transform a particular article into a different state or thing? The only way that I can see this inquiry satisfied is if the court interprets a data structure as a particular article.
Now I understand that the Federal Circuit only looks to those issues that are before it, but subject matter has been used before looking to invalidity arguments before. Maybe Judge Prost & Co. didn’t even think to consider the machine-or-transformation test because software has been patentable subject matter for so long.