By Cameron G. Funnell

18 September 2012

Developers of computer programs can protect their products using both copyright and patent law. The nature of these intellectual property rights are illustrated by two recent U.S. court decisions: Apple v. Samsung and Oracle v. Google (both 2012 cases of the U.S. District Court for the Northern District of California).

In Apple v. Samsung, a jury found that Samsung was liable to Apple for over a billion dollars in damages. The jury held that Samsung had infringed several of Apple’s utility patents and design patents. (The discussion in this article is limited to utility patents. For a discussion of the difference between utility patents and design patents, see “Apple v. Samsung and the Importance of Design Registration” also in this newsletter.)

One of these patents was for a device that included a computer program that implemented the “bounce back” feature which can be seen when a user scrolls rapidly to the end of a page on an iPhone or iPad. The patent claimed a monopoly over devices which contain, among other things, “instructions for translating the electronic document displayed on the touch screen display in a first direction”. This type of language is typical of software patents. The patentee does not seek a monopoly over a particular piece of code, but rather over any code which can be used to carry out a specified function.

In Oracle v. Google, Oracle sued Google for copyright infringement. Oracle owned the copyright in computer code in the Java application programming interfaces (Java APIs). Google was unable to secure licenses to use the Java APIs, so it wrote new code which carried the identical functions as the Java APIs.

Judge Alsup dismissed Oracle’s claim. He held that there could be no copyright infringement unless there was identical copying of code in the Java APIs. He wrote: “So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API.”

Thus for computer programs, copyright grants a monopoly over the reproduction of a specific piece of code, whereas a patent grants a monopoly over all possible pieces of code which can implement a particular, patented function.

While every original piece of software is automatically protected by copyright, to obtain a software patent an applicant must convince a national patent office that a new software-implementable function has been “invented”. The threshold for an “invention” can be difficult to meet, but as Apple recently confirmed for itself, a software patent can be an extremely valuable asset.

For further information, please contact any one of our lawyers at Oyen Wiggs Green & Mutala LLP / oyenwiggs.wpengine.com / tel: 604-669-3432 / email: mail@patentable.com

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