US claims employ a pseudo-grammar that has its own rules. If you don’t know those rules, you’re going to get yourself and your clients in trouble. That’s the lesson from this case, not whether or not SW is patentable.

All of the claims begin with an uppercase letter, and yet they all are read to include the introductory “I claim . . .” etc. The direct object of the “I claim” clause is the preamble of each independent claim as modified by the rest of the independent claim and its dependents. Everything else in a claim set acts as a limitation on the preamble of the independent claim – including structural elements (if there are any) and steps (if there are any).

No matter how complex the preamble, somewhere in there there is a noun, which is the subject of the preamble clause, if it is a clause. Otherwise the noun is the direct object of “I claim.” That noun is the key to the 101 analysis. That’s what this case is really about.

It stands to reason that all one has to do to avoid a 101 punch-up is to be sure that the subject of the preamble of each independent claim clearly and unambiguously falls within the four statutory categories OR improvements thereon. Pick that noun out, look at it, and be sure it is something that would clearly be considered a process, composition, machine, or manufacture (whateverthehell those last two terms mean).

AV botched it when they claimed in Claim 60 an “interface” instead of an “interface device.” In the broad view of the courts, there is no doubt that “interface device” would avoid any 101 challenge, whether as a machine or manufacture I’m not sure. But when Claim 60 was written as “I claim an interface . . . “ it makes no difference what else the claim says, it’s 101 road kill. And it should be. Maybe Phillips could save “interface” from a 112 rejection, but forcing the public to dig through the spec to determine what statutory class the noun “interface” was meant to convey is nuts.

Claiming an “interface” was a daft mistake made by someone who probably should have been better supervised by someone who knew what they were doing. Allowing the claim was equally daft, again, probably by someone who should have been better supervised by someone who knew what they were doing.

It’s a simple rule: The subject matter of what you claim is what the preamble of your independent claim says you claim, therefore make sure the preamble says you claim something that is clearly and unambiguously within the statutory classes. Avoiding 101 conflicts is so simple it amazes me that these issues ever reach the courts.

Sometimes I wonder whether there isn’t a class of patent lawyers who set up their claims to fail on examination and/or to attract litigation – it’s gotta’ be good for the bottom line.