Copyright (c) 2000 Berkeley Technology Law Journal
Berkeley Technology Law Journal
BERKELEY TECHNOLOGY LAW JOURNAL ANNUAL REVIEW OF LAW AND TECHNOLOGY: I. INTELLECTUAL PROPERTY: B. PATENT: 4. Patentability: a) Computer Software: AT&T Corp. v. Excel Communications, Inc.
© 2000 Berkeley Technology Law Journal; Berkeley Center for Law & Technology
15 Berkeley Tech. L.J. 165
By Cathy E. Cretsinger
In AT&T Corp. v. Excel Communications, Inc., 1 the Federal Circuit formally put an end to an apparent dichotomy in the treatment of patent claims involving computer software. Since 1994, the Federal Circuit has regarded machine claims drafted in means-plus-function format as patentable subject matter, provided that the inventor disclosed some supporting structure. 2 At the same time, a trio of aging Supreme Court decisions 3 indicated that patents claiming processes involving mathematical algorithms must incorporate a significant, if ill-defined, physical component. With its decision in Excel, the Federal Circuit eliminated the requirement of physical elements or limitations for process claims, undermining the Supreme Court's attempt to preclude the patenting of abstract ideas or thought processes. This Note contends that after Excel, the goal of preventing patents on thought can be achieved by relying on other provisions of existing patent law.
Courts have broadly interpreted 35 U.S.C. 101, which establishes the scope of patentable subject matter. 4 In the famous words of Diamond v. Chakrabarty, 5 "Congress intended statutory subject matter to include "anything under the sun that is made by man.'" 6 The Supreme Court has consistently read this statute to exclude laws of nature, natural phenomena, and abstract ideas. 7
With the rise of the digital computer, courts have repeatedly confronted claims involving mathematical algorithms, usually defined as "procedures for solving a given type of mathematical problem." 8 In analyzing the patentability of these claims, the Supreme Court has consistently stated ...
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