Global InformationIn re Alappat information
| In re Alappat | |
|---|---|
 | |
| Court | United States Court of Appeals for the Federal Circuit |
| Full case name | In re Kuriappan P. Alappat, Edward E. Averill and James G. Larsen |
| Decided | July 29 1994 |
| Citations | 33 F.3d 1526; 31 U.S.P.Q.2d 1545 |
| Holding | |
| That the claimed device was considered a machine or apparatus, not a mathematical formula, which fit within the categories considered as patentable subject matter. BPAI reversed. | |
| Court membership | |
| Judges sitting | En banc Court: Chief Judge Glenn L. Archer Jr.; Circuit Judges Giles Rich, Helen W. Nies, Pauline Newman, Haldane Robert Mayer, Paul Redmond Michel, S. Jay Plager, Alan David Lourie, Raymond C. Clevenger, Randall Ray Rader, and Alvin Anthony Schall |
| Case opinions | |
| Majority | Rich |
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994),[1] along with In re Lowry[2] and the State Street Bank case,[3] form an important mid-to-late-1990s trilogy of Federal Circuit opinions because in these cases, that court changed course by abandoning the Freeman-Walter-Abele Test that it had previously used to determine patent eligibility of software patents and patent applications.[4] The result was to open a floodgate of software and business-method patent applications,[5][6] many or most of which later became invalid patents as a result of Supreme Court opinions in the early part of the following century in Bilski v. Kappos and Alice v. CLS Bank.[7][8]
- ^ In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994).
- ^ In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994).
- ^ State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).
- ^ In the State Street Bank case, the Federal Circuit stated that it now found that the Freeman-Walter-Abele test "has little, if any, applicability to determining the presence of statutory subject matter." State Street Bank, 149 F.3d at 1374.
See also John E. McGlynn, Patent Law - Patentable Subject Matter and Computer Software Inventions - In re Alappat, 14 Temp. Envtl. L. & Tech. J. 135, 148-50 (1995) ("Conspicuously missing from the Federal Circuit's analysis is an application of the Freeman-Walter-Abele test. The Freeman-Walter-Abele test had been developed specifically to deal with patenting of algorithms. It had been consistently applied in previous cases and had served as the basis for the PTO's rejection of Alappat's claims. The Federal Circuit did not even attempt to apply the test. Tucked away in a footnote, the court explained that the Freeman-Walter-Abele analysis was not improper, but the ultimate issue is whether the claim as a whole is drawn to statutory subject matter. . . . What does raise concern is that by not applying the test, and not attempting to analyze the possibility in any depth, the court failed to apply principles that were created by the Supreme Court in Benson, Flook, and Diehr and applied by the CCPA in Freeman, Walter, and Abele. . . .Under the reasoning employed in Benson, Flook, Diehr, Freeman, Walter, and Abele such a claim would have been rejected. Furthermore, in Freeman and Abele the CCPA directed that an invention like Alappat's, which did nothing more than transform data from one form to another, did not constitute statutory subject matter. Had the Federal Circuit chosen to apply the Freeman-Walter-Abele test, or even the principles that underlie the test, the claims would have rejected. . . . [T]he impact of Alappat will be to greatly increase the opportunity to patent software inventions. Claims which previously would have been rejected as nonstatutory subject matter, might now be patented, provided the correct drafting techniques are followed. Under Alappat, mathematically intensive software such as financial software, which previously would have been very difficult to pass under the mathematical algorithm exception, will be statutory subject matter if drafted in means-plus-function format with accompanying structure."). - ^ Thompson-Reuters Practical Law, Software and business methods: should you be patenting them? ("In 1998 a US appeal court decision [State Street Bank] that a computerised method of managing mutual funds was patentable subject matter opened the floodgates for all kinds of business methods, even those not using software, to be patented in the US.").
- ^ Univ. of Tex. School of Law, 18th Annual Advanced Patent Law Institute, "Patentable Subject Matter: Software and Business Methods", p. 2 (Oct. 31, 2013) ("After the creation of the Court of Appeals for the Federal Circuit in 1982, the Federal Circuit heard several cases involving the patent eligibility of software related inventions coming to a head with the decision in 1998 in State Street Bank that seemed to open the floodgates of patents for software, business methods and other related inventions by holding that such patents only needed to provide a "useful, concrete and tangible result" to be patent eligible.")
- ^ See Robert Sachs, Bilskiblog Archived 2016-06-29 at the Wayback Machine, "#AliceStorm In June: A Deeper Dive into Court Trends, and New Data On Alice inside the USPTO" (July 2, 2015) ("For example, the 73.1% invalidity rate [after Alice] in the federal courts breaks down into 70.2% (66 of 96) in the district courts and a stunning 92.9% in the Federal Circuit (13 for 14).").
- ^ See also McGlynn, at 151 ("The impact of Alappat will be to greatly increase the opportunity to patent software inventions. Previously, claims that recited mathematical algorithms and which had the sole function of converting data, were found to be nonstatutory subject matter. Under Alappat, this same subject matter may be statutory if claimed in means-plus-function format with accompanying structure contained in the specification. In re Alappat directs patent attorneys to a reliable means to avoid the mathematical algorithm exclusion to statutory subject matter and in so doing creates a tremendous potential for patenting of previously non-patentable computer software inventions.").