The US Federal Circuit Rules that Software must be Claimed as a Process or Physical Object to be Patent Eligible

In Allvoice Developments v Microsoft (Fed Cir 2015), the Federal Circuit (Court) has ruled that the disputed claims at issue related to speech-recognition interface software lack subject matter eligibility because they merely claim software instructions without any hardware limitations.

The plaintiff, Allvoice Developments US LLC (Allvoice), sued Microsoft Corporation alleging infringement of US Patent Number 5,799,273. The District Court granted Microsoft’s motion for summary judgment finding that Microsoft did not infringe the asserted claims and that claims at issue (claims 60-68) were invalid for failing to qualify as one of the four statutory categories of invention. Allvoice appealed but the Federal Circuit affirmed the District Court’s decision related to non-infringement and invalidity of the claims at issue.

Allvoice’s invention is a form of application programming interface (API) that allows applications running on a computer to receive the output of a speech recognition program and “allows its users to store an audio recording of a dictation, replay the recording to correct the recognized text and directly dictate into any application”.

The Court reiterated that section 101 specifies four categories of inventions or discoveries that are eligible for protection: machines, processes, articles of manufacture and composition of matter. Further, except for process claims, the eligible subject matter must exist in some physical or tangible form. The Court concluded that the claims at issue do not recite a process or tangible or physical object, and thus do not fall within any of the categories of eligible subject matter.

Allvoice asserted that the interface recited by claim 60 consisted of software instructions, but the Court did not find this point sufficient to result in the claims meeting the requirements of section 101. The Court notes that “software may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form.” Claims 60-68, in the Court’s view, were “software instructions without any hardware limitations” and therefore intangible.

Allvoice further contended that these claims were patent-eligible by their very nature as it must necessarily be in a “machine readable, physical state in order to exist” and thus they are directed to a manufacture. However, the Court noted that “instructions, data, or information alone, absent a tangible medium, are not a manufacture,” and thus refused to import a tangible medium into Allvoice’s claims, which failed to recite or reference any such medium.