In re Hayes
Encyclopedia
In re Hayes was a case decided in 1992 by the United States Court of Appeals for the Federal Circuit
, the successor of the United States Court of Customs and Patent Appeals
. It concerned, among other things, whether or not the software on a patented device needed to be disclosed in a patent application.
. When other companies began marketing modems that made use of infringing technologies, Hayes asked for licensing fees. The infringing companies then filed suit, claiming that Hayes's patent was invalid because it did not meet the disclosure requirements of 35 U.S.C §112 because the patent did not contain a description of the firmware on the modem.
, in which the court stated that source code disclosure was often not necessary to fulfill §112's disclosure requirement, since the creation of source code is usually within the skill of the art.
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
, the successor of the United States Court of Customs and Patent Appeals
United States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
. It concerned, among other things, whether or not the software on a patented device needed to be disclosed in a patent application.
Background
In 1985, Dale Heatherington was issued a patent entitled "Modem with Improved Escape Sequence Mechanism to Prevent Escape in Response to Random Occurrence of Escape Character in Transmitted Data," and the patent was assigned to Hayes Microcomputer ProductsHayes Microcomputer Products
Hayes Microcomputer Products was a U.S.-based manufacturer of modems. They are particularly well known for their Smartmodem, which is introduced the ability to control the modem through commands sent in the data stream itself. The "smart modem" approach dramatically simplified operation, making...
. When other companies began marketing modems that made use of infringing technologies, Hayes asked for licensing fees. The infringing companies then filed suit, claiming that Hayes's patent was invalid because it did not meet the disclosure requirements of 35 U.S.C §112 because the patent did not contain a description of the firmware on the modem.
Issues
The main issue before the court was whether or not a patent like Hayes's needs to disclose the code for the firmware or software that runs on the invention in order to meet §112's disclosure requirements.Decision
The court decided in favor of Hayes. In its decision, it referred to an earlier case, In re SherwoodIn re Sherwood
In re Sherwood was a case decided in 1980 by the United States Court of Customs and Patent Appeals. It dealt with a patent regarding the analysis of seismological data.-Background:...
, in which the court stated that source code disclosure was often not necessary to fulfill §112's disclosure requirement, since the creation of source code is usually within the skill of the art.