WAZE is a GPS navigation application that provides detailed routes based on traffic updates received by users in real time. WAZE was developed in 2009 by an Israeli start-up company called Waze Mobile and was sold to Google in June 2013 for $966 million. Today there are over 140 million users in the WAZE application and the maps currently available in the application cover over 100 countries.
To block the possibility of developing competing software, WAZE registered a series of patents designed to protect various elements of its software. WAZE’s key patent was filed for registration in 2008 in the United States.
In this article, we will review the scope of protection of one of WAZE’s key patents, American patent US8762035B2: https://patents.google.com/patent/US8762035
How to block competitors in the software field?
The strategy of blocking the competitors of many software companies and WAZE in particular is based, among other things, on the registration of intellectual property in general and patents in particular. Patent protection allows software companies to obtain a monopoly on new and innovative software that includes certain components and certain steps of operation.
In other words, the patent protection allows during the validity period of the patent to prevent competitors from producing software that includes at least those certain components and certain steps of operation – protected under the patent.
What does the WAZE patent protect?
For example, in 2006, Waze Mobile Ltd. Submitted an application for patent registration No. 8762035 entitled “System and method for realtime community information exchange”.
When we want to know what the WAZE patent protects, we must locate the CLAIMS chapter in the patent and look for claim number 1 – which is a claim independent of the patent (the basic claim of the patent). We then need to analyze claim 1 and interpret it in accordance with the other patent chapters and patent drawings (see this article for more information on patent structure).
From the general to the particular, the monopoly of the patent was defined within claim 1 in the following wording:
“A system for a traffic mapping service, the system comprising:
a server to wirelessly communicate with a plurality of navigation devices ascribed each to one of a plurality of members of the service, respectively, wherein the server is to receive information on momentary location of each of said members from said plurality of navigation devices, and to provide traffic data on a map based on said momentary locations, wherein the server is to provide to a member of the service a preferred route to arrive at a required destination, based on said momentary location information of said members, wherein the server is to ascribe a member of the service to a particular group of members who are advancing in a same route as said member, wherein a majority of other members of said particular group are ahead of said member.”
If we disassemble claim 1 into its components we will get the following list of components:
A. A method of vehicle traffic mapping service, which includes: a wireless communication server that communicates with several navigation devices;
B. Each of the navigation devices is connected to the user of the service;
C. The server receives information about the momentary location of each user of the service;
D. The server creates a map of the traffic data based on the momentary locations received from the users;
E. The server provides the user of the service with a preferred path to reach the required destination, based on information on the momentary location received from the number of users of the service (all or some of them). When for the purpose of calculation in the route, the server refers to the user of the service as part of a certain group of users who advance ahead of him in the route.
What is a product that infringes the above patent?
In principle, as long as the competing product includes at least the 5 components above, it will be considered a patent infringing product. And it will be emphasized, if the product also includes additional components it is likely and it will still be considered a patent infringer.
And in more detail, the examination method of patent infringements consists of two stages. Examining the existence of verbal infringement and infringement of the essence of the invention.
In order for there to be a literal infringement of the patent, the product under consideration must be identical in all its components and cumulatively to those in the claim independent of the patent (claim 1). That is, a product that is identical in all its components and cumulatively to the components in claim 1 in WAZE’s patent is a product that infringes WAZE’s patent.
For the purpose of examining the infringement of the main part of the invention, there is no need for absolute identity between the product being tested and the one defined in the claims. When examining the essence of the invention, the essence of the invention must first be defined and for this purpose, the patent claims must be interpreted using the specification of the patent.
In the second step, it is necessary to examine whether the product under examination actually makes use of the “principle of the invention”. To this end, we will examine whether the product being tested works essentially identical to that of the invention, in the same ways as the patent works, and whether it achieves the same result as the patent achieves.
The main invention in WAZE’s patent is a system for calculating the fastest route, based on traffic reports received from its users.
That is, if the product in question mainly uses the invention in WAZE’s patent, it can be considered as a product infringing WAZE’s patent.
on software patents
Most countries place certain restrictions on the registration of patents for inventions involving software, but there is no single legal definition for a software patent and the legal systems that discuss the possibility of obtaining a software patent vary from country to country.
In Israel, Section 3 of the Patent Law states that an invention eligible to be registered as a patent must be a product or process belonging to a technological field. That is, ethereal ideas, lacking tangible expression, cannot be registered as a patent. Computer programs mainly consist of algorithms and mathematical flow charts, which are considered ethereal ideas. Therefore, it is difficult to register a patent for computer software.
In Israel, in order for an invention to be considered eligible for registration as a patent, whether it is claimed as a product or whether it is claimed as a process, it is required that a tangible technological process occurs in the performance of the invention, which means the manifestation of physical properties in some thing on which the invention is performed or in the nature of the operation that the product or process performs.
When an application is submitted to register a patent for an invention in the field of software, it is not requested about the source code of the software itself. The source code of the software itself is protected by copyright. Therefore, the patent application does not specify the software, but the idea behind it.
The patent, as long as it is registered, will give its owner the right to prevent his competitors, for at least 20 years, from developing software that utilizes the same idea protected by the patent. Therefore it is important to make sure that the invention itself in the field of software will not be focused in the field of content but in some technological field.
Because of this, the demand for the existence of a tangible technological character for the product or process, or the result of the process, claimed in inventions in the field of software, has developed in Israel. The “tangible technological nature” requirement means, as a rule, an expression of physical properties in something on which the invention is performed or in the nature of the operation that the product or process performs. The very idea of performing an action (control, creation, measurement, etc.) using a computer cannot be considered an invention in itself. The invention should also have a tangible technological character. That is, it must be checked whether the product of the performed operation or the method falls within the scope of an invention, even without the computing component[1].
According to work instructions for patent registration in Israel published on March 15, 2012, the existence of a tangible technological nature for the defendant’s product or process, or the result of the process, must be found and required when examining inventions eligible for patent registration in the software field.
The “tangible technological nature” test means, as a rule, an expression of physical properties in something on which the invention is performed or in the nature of the operation that the product or process performs. Therefore, if the invention is implemented by a computer and its operation does not go beyond the normal operation of the computer, then it is possible that the invention does not have a tangible technological character.[2]
Regarding Digital Layers,[3] the Patent Authority clarified that an invention meets the requirement of “tangible technological character”, if it can be seen as causing an additional technical effect when it is run on a computer, beyond normal physical results (electrical currents or normal interaction between hardware and software). [4]
In order to examine whether an invention is in any technological field, it is necessary to examine whether the invention as a whole results in a contribution that has an actual expression in a technological field – it is the tangible technological character. The contribution of the invention as a whole will be examined in relation to the relevant prior knowledge as it essentially emerges from the detail.
(For more information, see the book: Y. Drori, “Patent Laws”, Perlstein Ginosar Publishing, pp. 266 to 296 (2023)).
References:
[1] Decision of the Patent Authority regarding Biosense, Inc., Miami, Fla., U.S.A. v. Elbit Systems Ltd., Haifa Israel, opposition to patent applications 126864, 125755, pp. 12-13, 15 (Nevo, 16.4.2009) .
[2] Thus, for example, software that is an improvement of computer operation, the creation of an index of libraries of functions, a new use of means of communication, a new processing of image and sound, classification of images or video and more will be eligible for registration of patents. A counter example is that many times applications for patent registration in Israel that provide methods for doing business are not eligible for registration even if they are carried out by computerized means.
[3] Patent Application No. 190125 Digital Layers Inc., 2, 9 and 10 (2/17/2014).
[4] The additional technical effect was also discussed in England in the Apple case, where reference was made to the following criteria: Does the claimed technical effect have an effect on a process that takes place outside the computer? Is the technical effect produced regardless of the information processed (on the computer) or the applications used? Is the result of the claimed technical effect the operation of the computer in a new way? Is there an improvement in computer speed or the ability to rely on it? And did the claimed invention overcome an existing problem and not just bypass it? These criteria, which were found to be useful signposts, were actually expressed through the general question: “Whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer” (HTC Europe Co Ltd v. Apple Inc [2013] EWCA Civ 451, par 51 (2013)).
In addition to this, in the Apple matter, the court examined the overall technical contribution of the invention in question and determined that such a contribution exists in the patent in question. In doing so, he rejected the position of the judge at the lower court by stating that an invention would not be considered ineligible for a patent simply because a computer program was used to implement it: “It causes the device to operate in a new and improved way and it presents an improved interface to application software writers. Now it is fair to say that this solution is embodied in software but, as I have explained, an invention which is patentable in accordance with conventional patentable criteria does not become unpatentable because a computer program is used to implement it” (ibid., at para. 57).
That is, if the invention includes the creation of new interconnections between the physical system components – such interconnections will be considered an actual expression in a technological field.
