Happy Birthday, Beauregard

Twenty years ago tomorrow, U.S. Patent No. 4,864,492 issued to IBM for a “System and method for network configuration.”  On its face, nothing appears out of the ordinary with this patent.  However, lurking within its claims is this:

10. A computer program product having a computer readable medium having computer program logic recorded thereon for establishing a network configuration in accordance with a plurality of protocols of a network architecture, said computer program product comprising: means for incorporating the protocols of the network architecture into a table of rules; means for determining the validity of user input data with said table of rules; and means for feeding back to the user at least one of said rules in said table of rules if said user input is determined to be in valid.

 

And thus, the era of the “computer readable medium” claim was born (albeit with 112/6 "means for" language seldom seen in today's CRM claims).

For those unfamiliar with the “software arts,” here’s the nutshell on CRM claims: rather than simply claiming the method (i.e., the steps performed by a computer program) or a computer system (e.g., the hardware configuration that can be used for performing a computer program), the CRM claim essentially tries to protect the floppy disk (remember those?) or CD, DVD, flash drive, etc. on which the program is stored.  For practical purposes, these claims allow software companies, for example, to go after manufacturers of competing programs on theories of direct infringement—they made and sold infringing disks.  When software claims are limited to systems and methods performed via the end user’s computer, often only indirect infringement theories are available.  More importantly, it may be easier to demonstrate infringement by showing a sale of a disk than by finding an actual instance where method steps were performed.  And of course, that sale would still infringe the CRM claim even if the disk were taken to Mexico and the encoded method was actually performed there -- not so with a straight method claim.

The attorney who prosecuted the ’492 patent, the former Marilyn Smith (now Dawkins), also prosecuted a more famous patent for IBM, U.S. Patent No. 5,710,578 to Beauregard et al.  This patent’s prosecution, of course, went up to the CAFC on the question of the patentability of such CRM claims under Section 101.  In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).   As a result, CRM claims are often referred to as “Beauregard claims”. (Note, however, that that the Beauregard case was vacated, and its merits were thus never ruled upon by the CAFC.)  Interestingly, Dawkins apparently left IBM and now works for (John) Deere & Co. in Moline, Illinois.  But she co-authored a 1995 IDEA journal article on CRM claims that is loaded with examples and explanations.   Dawkins notes that there was an earlier patent, 4,853,962, that claimed the CRM as a multiple-dependent claim of a method:

10. An information storage device tangibly embodying a program comprising instructions adaptable for execution on a programmed machine, wherein the method of any one of claims 1-9 is performable through the execution of said instructions by the machine.

CRM claims are commonplace today.  How common, you ask?  Consider the following charts showing the history of CRM claim issuances, in absolute numbers as and as a percentage of total patents issued:

The upturn of the hockey stick in the later half of the 90's corresponds directly to the Beauregard case working its way up through the courts, casting more light on the claim format.  But it is almost certain that these charts undercount the actual number: there are many variants of language used in drafting CRM claims, e.g., “machine readable medium”, “computer readable storage medium”, etc.  And now, in light of In re Nuijten, you are seeing more tweaks to the standard language to make clear that the medium is limited to a physical storage device.  It is impossible to capture all these permutations with reasonable effort (using the public PTO database, anyway).

Growing even faster is the rate at which CRM claims are being filed, (note the gap in data sources beginning in 2001, when the PTO started publishing pending applications)::

The last data point shows that 5.5% of all applications filed in 2007 (that subsequently published) contained CRM claims.  That's a hefty percentage, but still far short of what we saw for Jepson claims in the early 1980's.

We can only guess how CRM claims will fare after the Supreme Court’s forthcoming decision on Bilski.  Already we have seen inconsistent results from the BPAI.  In Ex Parte Li, for example, the Board gave tremendous weight to Beauregard claims and found that they were outside Bilski’s purview.  Other panels, however, such as in Ex Parte Cornea-Hasegan, have found that CRM claims may just be exaltations of form over substance, and thus are subject to the Machine or Transformation test.

But until things are sorted out, a CRM claim will likely remain as standard ammunition in the software practitioner’s arsenal.