In the judgment International Business Machines Corporation v Commissioner of Patents  FCA 625, the invention by IBM was to computer graphics and more specifically to a method and apparatus for generating curves on computer graphics displays.
The invention solved the problem of generating curves on computer displays without perceptible discontinuities, by using a known mathematical algorithm. His Honour stated that the use of the algorithm is not different conceptually from use of the compounds involved in NRDC. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers. Because application of the algorithm to computers was unknown, and the production of an improved curve is commercially useful and thus in a field of economic endeavour, it was his Honours view that the invention was a manner of manufacture.
His Honour also cited with approval the words of Graham J in the UK decision Burroughs Corporation (Perkin’s) Application (1974) RPC 147 at 161:
“(I)t is not enough to take a narrow and confined look at the `product’ produced by a method. Of course, if a method is regarded purely as the conception of an idea, it can always be said that the product of such a method is merely intellectual information. If .. in practice the method results in a new machine or process or an old machine giving a new and improved result, that fact should in our view be regarded as the `product’ or the result of using the method, and cannot be disregarded in considering whether the method is patentable or not.”
Justice Graham built a bridge between the old ideas of the patentability of mechanical machines and the like and the patentability of the new technology of software patents.
As an aside, Graham J also was of the view that:
“If the bare method or idea is also clothed by the patentee in his specification with a practical garment in the shape of apparatus enabling that method or idea to be realised in practice, it should no longer be regarded as a naked conception, for it has found a practical embodiment in the apparatus. It is then a manner of new manufacture” and “computer programs which have the effect of controlling computers to operate in a particular way, where such programs are embodied in physical form, are proper subject matter for letters patent”.
This suggests that some physical effect is required for patentability. There is ongoing debate as to whether there is a physical requirement in Australian patent law (see, for example Physicality in Australian Patent Law, Ben McEniery, Deakin Law Review Vol 16 No. 2). The Grant decision appears to introduce a physicality requirement, however this is inconsistent with earlier Authority, including NRDC and is questionable.
This case also provides a practical lesson as to how a claim to a software patent should be drafted. Claim 1 does not include features that are manifestly machine features. The claim may be read as a pure algorithm or abstract idea. Claim 1 is:
A method for producing a visual representation of a curve image from a set of control points which define the curve and which are input for each dimension and a number of intervals of the curve to be computed, said method comprising the steps of:
(a) computing a set of scaled vector coefficient integers for each dimension from the set of input control points for that dimension and from a scaling parameter;
(b) computing forward difference interval coefficient integers for each dimension for each interval from the scaled vector coefficient integers for that dimension and the interval integer number;
(c) computing the curve coordinate values for each interval for each dimension from the forward difference interval coefficient integers for that dimension for each interval and the scaling parameter; said computing steps being carried out without the use of floating point arithmetic; and
(d) displaying the curve by displaying curve coordinate points in accordance with the computed curve coordinate values for each dimension and a plurality of straight lines which successively connect said computed curve coordinate points.
The lack of positive computing machine features in the claim enabled the Commissioner of patents to argue that the invention defined by the claim was no more than an abstract idea, or mathematical algorithm which is not patentable. A literal reading of claim 1, giving the words their ordinary meaning, does not insist that the features relate to a computing machine. This provided the Commissioner with an opportunity to attack the claim for lacking manner of manufacture. Fortunately for the patent applicant, the judge gave the claim a purposive construction – that the context of the specification insisted that claim 1 is referring to the operation of a computing machine. His Honour said his view was reinforced by computer related words in the claims, such as “input”, “computing”, “displaying”, and so forth.
This was a close thing and there is a clear lesson. Incorporating features that are plainly computing machine features lessen the opportunity to argue that the claim is to no more than an algorithm or abstract idea, which is not patentable. The more detailed the description of the computer implementation in the body of the specification the more likely a purposive construction of the claims will result in the features being interpreted as computing machine features.
This is a theme in many of the computer software cases. Cases that do not clearly articulate that what is meant is a computer implemented algorithm are vulnerable to attack.