Patenting Software Technology in the current patent environment

newspaperA brief recent history of patenting software in the United States goes something like this:  before 1998 it was possible, but the internet was just coming to its own so there were not many software patents; then in 1998 the State Street decision was handed down.  The State Street decision essentially said that patents that claimed inventions for methods and processes traditionally accomplished using manual techniques but now accomplished using a computer process or method such as spreadsheets, financial calculations etc could be valid – that is, they were at least within patent subject matter and not merely laws of nature. In the ensuing years before the run up to the turn of the century “everything under the sun” in software and internet technology was sought to be patented, and hundreds of thousands of “software” patents were issued.  The crash of 2000 wiped out a lot of marginal internet businesses, however software patenting continued in earnest under State Street.   Thanks in part to the combination of the huge number of software patents issued and the bankruptcy of a lot of companies after the financial crashes of 2000 and 2007, a new industry was born – the so called “patent troll” or in our parlance, non practicing entity (NPE) or patent assertion entity (PAE).  Whatever you call it, the business model is to sue companies that use what most of us consider to be “basic building blocks” technology in those patents.  Economically patent suits are staggeringly expensive so many companies, including many of our clients, opted to pay -or colloquially – feed the troll – it just made more economic sense.  However, slowly bigger companies started fighting back. What was born from that unholy (or holy, depending on your view) war was  a series of Supreme Court cases, starting with In Re Bilski, and finishing on the Alice Corp decision.

Alice Corp literally laid waste to nearly every software/internet patent in its path.  Alice Corp’s impact can be seen in the somewhat dramatic reduction of patent filings since it issued (see 2015 Patent Litigation Study) – some people have just given up trying…  Recently, however, a Federal Circuit decision has given some hope in overcoming Alice Corp.

In Enfish v Microsoft the Federal Circuit found that certain database technology process described in the patent was not abstract – that is, that the invention overcame the first prong of the 2 part Alice Corp test.  Under Alice Corp and the previous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, “[w]hat else is there in the claims before us?” [] To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.” The first prong of the test is known as the “abstract idea” prong, meant to embody “the longstanding rule that ‘[a]n idea of itself is not patentable.”  So, for example “an algorithm for converting binary-coded decimal numerals into pure binary form” was merely abstract because it sought to “in practical effect . . . [] patent [] the algorithm itself.” Likewise, “a method for hedging against the financial risk of price fluctuations” was unpatentable because “”the basic concept of hedging, or protecting against risk. [is] a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.'”  The addition of the computer did not transform the idea of hedging into anything inventive.  Most cases that find prong 1 of the test go on to find that whatever the system or process that is claimed in the patent is, it is not sufficiently transformative to overcome the 2nd prong.   

In Enfish, the Federal Circuit held that the database technology described in the claim was not abstract.  The specific technology deals with a better method of handling related database data.  In a traditional relational database, an information source is stored in one table, another information source is stored in another table, and the relationship between those tables is either defined in columns on each table, or held in a third “pivot” table that defines the foreign table keys that link the tables together.  The invention in Enfish involved placing all of the related data in ONE table, and defining the relationships in table columns in that same table.  The effect of doing that was to make the process of retrieving related data faster and more efficient, among other benefits.  This invention thus directly impacted computer process efficiency – in this case, database efficiency.  The Federal Circuit held that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. . . [a]ccordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”

The patent lawyers at Oliver & Grimsley have overcome Alice Corp rejections in several instances, and have learned to navigate the intricacies of obtaining patent protection over computer based technology.  In a series of future articles we will go over some of the issued patents we have been counsel on and some of the issues that come up during prosecution of software and computer based patents.

For further information, feel free to contact Mike Oliver, Larry Guffey or Pamela Riewerts.   You can view many of our prosecuted patents here.

Oliver & Grimsley, LLC Secures Patents in USPTO

Hancock U.S. Patent No. 9304496 Pamela Riewerts Larry Guffey Oliver Grimsley Patent Attorney Lawyer BaltimoreMulti-Purpose Wrist Worn Tool Watch: O&G Timely Moves Through USPTO to Obtain Patent

We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,304,496, entitled: “Multi-Purpose Tool Watch Housing Multiple Tool Members to be moved from a Stored Position and Extended Position for Use”.  This application proceeded through the patent office in less than one year as a prioritized application.

The invention is an integrated combination of a wristwatch with multi-purpose tool members that may be stored and extended from a wristband housing. Use of the tool watch is particularly suited for an individual to carry a tool set in a convenient form on the user’s wrist and to be able to access tools during daily or outdoor activities.

Congratulations to Patrick Hancock on his recently issued patent!

Oliver & Grimsley, LLC Secures Patents in USPTO

Wright Patent PicCore of the Matter: O&G Maneuvers through USPTO Securing Patent

We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,193,081 entitled, “Child-Safe, Hand, Fruit Corer and Slicer,” that proceeded through the patent office barring only one rejection.  The invention relates to hand, fruit corer and slicer.

Generally, the length of time to navigate the patent system is 2-3 years for a regularly filed application.  In addition, the USPTO generally rejects 85%-90% of all filed patent applications at least once.  In this case, Oliver & Grimsley, LLC was able to successfully clear the patent prosecution phase of the application in about two years.

Congratulations to Peter Wright on this recently issued patent!



Clayton Patent Pic_Oliver Grimsley Larry Guffey Pamela Riewerts Patent AttorneyKeeping Warm: O&G Obtains Patent despite USPTO Chill

We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,220,307 entitled, “Dual-Use Clingable Handcovering for Protecting the Hand of Wearer from the Atmospheric Conditions in the Surrounding Environment”.  The invention relates to a handcovering typically worn by an individual who is running for exercise in non-ideal atmospheric conditions, in order to keep warm and make time outdoors more comfortable.  Although various styles of gloves and mittens exist on the market, this handcovering is unique in that it encloses all fingers and the entire thumb together in a capped enclosure to assist the individual with maintaining body heat, while allowing the individual to remove the capped portion when use of the individual’s fingers are needed.

Congratulations to Susan Clayton on her recently issued patent!




Allen Patent Pic_Oliver Grimsley Larry Guffey Pamela Riewerts Baltimore Patent AttorneyTrimming the Excess:  O&G Succeeds in Obtaining Baking Form Patent in USPTO

We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,220,277 entitled, “Form Insert for Use with a Springform Pan to Make a Uniform Thickness Crust” that proceeded through the patent office in one year and six months, as a prioritized application.

The invention is designed to allow a baker to utilize a baking form in combination with a springform pan to cut and trim excess crust in order to achieve a consistent and substantially uniform thickness crust for a baked good.  Use of the baking form is particularly suited for a baker in making a single or multiple baked goods on a repeated basis.  The uniform crust thickness provides for consistent baking throughout the baked good and also provides for aesthetic visual appeal.

Congratulations to Michelle Allen for her recently issued patent!

Client Spotlight – Evolution Craft Brewing

Evolution Craft Brewing Company®

200 Elmwood Street
Salisbury, Maryland 21801
(443) 260-2337

When a Bill Becomes a Law: Oliver & Grimsley’s Client Takes on State Government to Save and Advance Business By Creating New State Law to Regulate the Production of Malt Beverages

A special congratulations to Oliver & Grimsley’s client, Evolution Craft Brewing Company® (“EVO”), that played an instrumental role in advancing Maryland State House Bill 1039 (the “EVO Bill” [PDF])  that was signed into law on May 12, 2015.

This bill raised the Wicomico County, Maryland limit on the number of barrels of malt beverages from 22,500 to 45,000 that a micro-brewery may collectively brew, bottle, or contract for in a calendar year.  With this change, the brewing company is able to keep its current staff and create new jobs.

Evolution Craft Brewing Company features expertly crafted brews including mainline, seasonal, barrel aged, and special beers.  Visit the brewery and elevate your experience with friends by gathering in EVO’s relaxed tasting room where you can sample over 10 varieties of craft beers.  EVO also offers a variety of unique culinary fare at its artisanal restaurant located on site in Salisbury, Maryland.

EVO has won a number of awards for its top-rated craft beers and delicious eats, including its most recent accolades in Men’s Journal where Lot #3 IPA was named one of the “70 Great Beers You’ve Never Heard Of”.  In addition, in Draft Magazine Nouveau Rouge® was ranked “Top 25 Beers of 2013”, and Lot #6 Double IPA® and Exile Red Ale were rated 94, with Menagerie No. 5 receiving a 96 rating.  Also, Evolution Craft Brewing Company has been the recipient of Coastal Style Magazine “Best of Winner 2014”, the Metropolitan Magazine “Best American Restaurant” and “Creative Menu & Best Burgers Winner 2014”.

Some of EVO’s most notable craft beers include:  Main Line Beers–Exile Red Ale, Lot #3 IPA, Lucky 7 Porter, Primal Pale Ale, and Lot #6 Double IPA®.  Award winning and favorite food picks include: the gourmet burgers—the duck confit burger, and the surf & turf burger, the EVO dip sampler, spicy Virginia clams, the artesian charcuterie and cheese selection, and the nightly fresh fish selection.

Savor creative craft beer and inventive culinary creations at Evolution Craft Brewing Company, tasting room, and restaurant in Salisbury, Maryland.

More information may be found on EVO’s website:

“Dear Prospective Defendant:” …

Having practiced enough years I should be able to say I have seen it all, sadly, I realize I never will.  Today is no different.  Today I reviewed a letter to one of our clients with the salutation of “Dear Prospective Defendant:”  It struck me immediately – was this necessary?  Do lawyers need to be so antagonistic, bombastic or just plain abrasive, to start a letter this way?

Talk about sending the wrong message.  The sender of this letter wants something from our client (money).  They clearly wanted to signal they were willing to take additional action, but really, is it not better to ask nicely, even in a dispute?  I did not even get to the first sentence of this letter without having formed a negative opinion of the sender.  A person so insecure in their position to start a letter this way cannot possibly be taken seriously can they?

The letter also reminded me immediately of the direct opposite – a firm that from top to bottom is run by the most respectful, honest, trustworthy just plain good  people you could ever find.  The title of the person that greets you at the door to this business and answers your calls is the “Director of First Impressions” – and she is fantastic at her job (of making good impressions!).  Leadership runs here from top to bottom.  And yes, I will name them:  Brooks Financial.

I never really put much stock in a person’s title – to me you have to earn it, so titles in many businesses are hollow and meaningless.  But this one title has stuck with me because if we were all better at being directors of first impressions, we would all be better people, and most likely get a lot more of what we want from others.  We would also be much better at resolving disputes.

We lawyers are called on often to deal with stressful situations where two or more parties are fighting – claiming one or the other violated some law or breached some agreement.  Even in a dispute it is important to remain cordial and civil, doing so will be more likely to get the result you want.

– Mike Oliver

Client Spotlight: Bloomery Plantation Distillery

Bloomery Plantation Distillery, LLC
Grand Re-Opening
16357 Charles Town Road, Charles Town, WV   25414

Oliver & Grimsley’s client, Bloomery Plantation Distillery, has mastered the art of crafting home-grown, natural fruit cordials, and a variety of flavored liqueurs. Located on a 12-acre farm, in Charles Town, West Virginia, Bloomery Plantation Distillery restored and transformed an 1840s, abandoned log cabin and created a charming mini-distillery where the owners of the distillery make artisan cordials by hand from their farm’s own lemons, raspberries, and other farm-fresh ingredients.

In October 2010, after returning from Italy, the owners of Bloomery Plantation went on a quest to find the best limoncello in America. Wanting to replicate the taste and experience of that wonderful Italian trip, the owners became enamored with making their own limoncello.

Since then, Bloomery Plantation Distillery has crafted a variety of SweetShines, from the original Limoncello, to Chocolate Raspberry, to Peach ‘Shine, to their proprietary Raspberry Lemon, to their “Moonshine Milkshake Cremma Lemma.” Other flavors include, Black Walnut, Ginger Shine, Hard Lemonade, Seasonal Pumpkin Spice, and the newest flavor: Cranberry Clementine.

Bloomery Plantation Distillery has won over 20 international awards for its unique and inventive cordials and for the creative artwork featured on the labels that adorns its bottles.

Savor inventive spirits and exclusive cocktails, and experience attentive service, in a friendly and relaxed atmosphere in the distillery’s historic 1840s log cabin distillery and tasting room where the Blue Ridge Mountains meet the Shenandoah River in Charles Town, West Virginia. Only 1.5 hours away from Baltimore and D.C.

More about Bloomery Plantation Distillery and products may be found on the website: