Software Patents - Lantana v The Comptroller









Lantana Ltd. ("Lantana") is a California company that offers communication cable services, telephone systems and services and computer and data network services mainly to customers in Southern California. One of the company's employees invented a "method, systems, and computer program products for retrieving a file of machine readable data" for which Lantana applied for patents in the USA and around the world under the Patent Co-operation Treaty.

The Invention 
The invention is described in the abstract of the application as follows:


"A user, wishing to retrieve a file of machine-readable data from a remote machine-readable data storage device, transmits a first e-mail message from a local station to a remote station via a packet switched network. The first e-mail message includes a first machine-readable instruction and a first machine-readable retrieval criterion. The remote station receives the first e-mail message from the packet switched network. The remote station parses the first e-mail message to determine if it includes the first machine-readable instruction and the first machine-readable retrieval criterion. The remote station executes the first machine-readable instruction to transmit a second e-mail message from the remote station to the local station. The second e-mail message includes the file as an attachment. The local station receives the second e-mail message from the packet switched network."
One of the countries for which patent protection was sought was the United Kingdom. When the application was examined by the Intellectual Property Office the examiner found that the invention was excluded from patentability as a program for a computer as such.

The Law
It will be recalled that s.1 (2) of the Patents Act 1977 declares that:
"the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
....................................................
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer."
However, that exclusion is subject to the following exception:
"the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."
The effect of these provisions was summarized neatly by Lady Justice Arden at paragraph [7] of her judgment when Lantana's appeal against the refusal of Mr Justice Birss (Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat) (4 Sept 2013) to disturb the Comptroller's decision to uphold the examiner's objection (Re Lantana Ltd.'s application BL O/056/13 4 Feb 2013) came before the Court of Appeal (Lantana Ltd v The Comptroller General of Patents, Design And Trade Marks [2014] EWCA Civ 1463 (13 Nov 2014):
"Computer programs are not therefore wholly excluded. They are excluded unless the applicant shows that his application goes beyond an application for a computer program "as such".
Her Ladyship referred to computer programs which are within the exclusion and not patentable, as 'excluded matter'".

History
Lantana appealed to the Comptroller who upheld the examiner on the grounds that the contribution made by the invention fell solely within excluded matter and that the contribution did not have a relevant technical effect.  The company appealed to Mr Justice Birss contending that the contribution made by the invention was technical in nature and not within the exclusions on patentability because:
"(i)  telecommunications messages are generated by computers forming part of a telecommunications network, and transmitted from one computer to another over the network;
(ii)  one computer remotely controls the processing performed by another via a telecommunications network;
(iii) the result of this remote control is the transmission of files and information from the remote computer over a telecommunications network to the local computer;
(iv) this remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers."
Between paragraphs [32] and [34] of his judgement the judge considered the 4 effects relied upon:
" [32]  ......... The first one is no more than the fact that the invention involves communication between two computers over the internet. This cannot help. At the priority date in 2008 (as today) this was entirely conventional and cannot form part of anything contributed by the invention. The same goes for the third effect, that files or information are transferred from one computer to another over a telecommunications network.
[33] The second effect is that one computer remotely controls another. I do not accept this as a fair characterisation of what is going on. If one computer really was exercising control over another in some way that might be a genuine technical contribution but all that is happening here is one computer is sending an email message to another. That is not control at all. The first email message includes machine readable instructions directed to the remote computer. But this is not something these inventors have contributed to the art at all. Conventional examples of emails which include code which can be executed by the computer receiving the message were mentioned at the hearing. An example can be found in figure 5 of one of the cited prior art documents (US Application 2006/0059129 A1). Mr Beresford submitted that this conflicted with the acceptance by the examiner that the claim was novel and non-obvious. I do not agree. Those matters apply to the claim as a whole, that is to say the entire combination of features. The point here is a different one, i.e. that the idea of an email message containing machine readable instructions as a contribution to the art in this case is wrong. The computers in the claim are not operating in a new way and the third signpost does not assist the applicant.
[34] The fourth effect relied on is said to be that the remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers. This is said to be a solution to the problem of the need for continuous connections described in the patent. The Hearing Officer dealt with this point in paragraph 28 of the Decision (quoted above). He characterised the use of email not as solving the problem but as circumventing it."
Looking at the invention overall, His Lordship concluded at paragraph [41]:
"In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s1(2) of the Act / Art 52 EPC."
The Appeal
Lantana appealed to the Court of Appeal on grounds that Lord Justice Kitchin summarized in paragraphs [61] to [63] of his judgment:
"[61] ............ Birss J fell into error in the following fundamental respects. First, in considering the computer program exclusion from patentability, he failed to consider the claimed invention as a whole and instead dissected it into various components and then dismissed them one by one as irrelevant to the issue of technical contribution on the ground that each was known at the priority date. This, Mr Beresford continued, was wrong in law and that, in assessing the technical contribution, the judge ought rather to have taken into account the whole combination of features specified in the claim, and all of the technical effects that combination provides, regardless of whether those features and effects were new or old.
[62] Second, and in consequence, Birss J wrongly disregarded features of the claim because he considered they were not novel and so did not form part of the contribution.
[63] Third, when eventually Birss J did consider the claim as a whole, he wrongly reasoned that the invention uses the conventional technique of email for moving data from one computer to another. This was inconsistent with the position taken by the Comptroller in not raising a novelty or inventive step objection. The judge ought to have found that the invention does provide a technical contribution because, using novel and inventive processing, it generates emails, transfers files from one computer to another across a telecommunications network, and does so by causing the local computer to control the remote computer, all with the advantageous consequence that a user may work at a local computer on a document stored at a remote computer without the need for a continuous internet connection."
The First Ground
Lady Justice Arden dealt with Lantana's first submission shortly at  paragraphs [31] and [32]:
["31] ...... In my judgment, the judge could not determine whether there was a relevant technical step outside the computer program without breaking the invention down into its constituent parts. In fact he also looked separately at the whole of the invention as well, but his assessment overall does not assist Lantana. He summarised his views on the invention overall as follows:
'In substance the claim relates to computer software running on conventional computers connected by a conventional network' (judgment, paragraph 48).
[32] This was the correct approach in law: see HTC v Apple at paragraphs [46] and [48] ......"
Although Lord Justice Kitchin accepted Lantana's submission that
"it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other" 
he could not accept that Mr Justice Birss had wrongly dissected the claim into various components as Lantana had suggested. It was true that he did consider the invention by reference to various signposts and that he also addressed each of the alleged technical effects relied upon by Lantana but he could not be criticized for taking that course for that is what he had been asked to do. Further, he then stood back and considered the claim as a whole. His analysis led him to conclude that the presence of machine readable instructions in an email directed to a remote computer was not new at the priority date. Further, the invention consisted entirely of software running on a conventional computer arrangement, and the computers themselves were not operating in a new way. The increase in reliability resulted from the use of email rather than a new method or system of communication. Overall, the invention avoided the problem of accessing a remote computer by a continuous connection, but it did so by using a conventional technique. The judge was right to conclude that the overall contribution which the invention had made was therefore wholly within excluded subject matter and was not technical in nature.

The Second Ground
Lord Justice Kitchin said at paragraph [69] that Mr Justice Birss was required to identify the actual contribution made by the invention, and that is precisely what he and the hearing officer sought to do. The judge did not fall into error. At paragraph [38] Lady Justice Arden said:
"In the second step, the relevant technical step was the fact that the computers communicated with each other, but they did so in a way which was unquestionably conventional, namely via the internet, so the judge was right to hold that this was not a relevant technical contribution. He had to look to see if the remaining steps made a relevant technical contribution."
The Third Ground
Both Lady Justice Arden and Lord Justice Kitchin rejected rejected Lantana's submission that the judgfe;s reasoning conflicted with the hearing officer's. Lady Justice Arden observed that there was no technical contribution outside the computer program. The transfer of data and recovery of the file by an automatic email were not inventive steps in themselves.

Lady Justice Gloster agreed with both Lady Justice Arden and Lord Justice Kitchin. Thus, the Court of Appeal upheld Mr Justice Birss's decision.

Comment
Lady Justice Arden reminds us at paragraph [53] that it is not the fact that an invention relates to a computer program that renders it un-patentable. The exclusion is not so worded. It is worded as a partial exclusion. The invention must make some technical contribution over and above that provided by the program itself, such as an improvement in the working of the computer. Her judgment reviews many of the decisions of the English courts (and in passing the Boards of Appeal of the European Patent Office) many of which I have written about in this blog and sets out the methodology for identifying a technical contribution. It was not the first decision to do that but it is one of the clearest. I have often thought when writing case notes on those decisions that this must be the case that settles the issue for good but then a case like this one comes on and goes all the way to the Court of Appeal.

If anyone wants to discuss this case, software patents or excluded matter in general he or she should give me a ring during office hours on 020 7404 5252 or message me through my contact form.

Further Reading
13 May 2013 Jane Lambert Software Patents: HTC Europe Co Ltd v Apple Inc
2 Jan 2012  Jane Lambert  Patentability of Computer Programs: Halliburton Energy and Protecting Kids
17 Jan 2010 Jane Lambert Patents: Fisher Rosemount Systems Inc.'s Application
16 Jan 2009  Jane Lambert  Software Patents: January Patents Limited's Application
29 Dec 2008 Software Patents: New Guidance from the IPO
11 Nov 2008 Jane Lambert Patents: Software Protection after Symbian and Bilski
9 Oct 2008 Jane Lambert  Software Patents: Here we go again
23 Feb 2007 Jane Lambert  Patents: More Macrossan Fallout
19 Feb 2007 Jane Lambert Patents: The Macrossan Aftermath
13 Feb 2007 Jane Lambert  Patents: Macrossan v Controller-General of Patents, Designs and Trade Marks
5 Apr 2006 Simon Hart  Patents: Re Macrossan's Application - Guest Contribution by Simon Hart
14 Sep 2005 Jane Lambert  Software Patents Revisited
30 Aug 2005  Jane Lambert  Software Patents: Call for EP Resolution

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