Alice, the Illusory Death of Software Patents

~ ‘The report of my death was an exaggeration’ –Mark Twain

Mark Twain, American humorist.

With apologies to the great humorist, the report of the death of software patents is an exaggeration. Some commentators quite quickly suggested that the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298 (June 19, 2014), will “invalidate the majority of all software patents in force today” and is “bad news for software patents”. That interpretation may make good copy, but it is simplistic and overblown. While the Court invalidated Alice’s patents, the decision certainly does not invalidate the majority, or even a large percentage, of software patents, nor does it radically restrict the kinds of inventions that can be patented going forward. The decision is a modest and incremental clarification in the patent law, and a not wholesale revision.

The Court set forth a two-step test grounded in Bilski v. Kappos and Mayo v. Prometheus. While the Court may not have defined a clear boundary for so called “abstract ideas” specifically, it did squarely place this case within the “outer shell” of the law set forth in Bilski and Mayo. In doing so it articulated an approach that focuses not on finding the boundary line, but rather on the core properties of an ineligible patent claim. In Part I of this two-part post, I will focus on just the first step of the test, whether a claim recites a patent-ineligible “abstract idea.” In Part II, I’ll address issues regarding preemption, mental steps, and the application of Alice to software patents.

What the Supreme Court Did Not Do

To highlight how limited the decision is, I think it is best to quickly point out what the Court did not do. I will then go into a more detailed analysis of the decision and its context.

  • The Court did not even mention “software” or “computer programs” or discuss the eligibility of software as a general matter. For all of the discussion about software technology by the parties and amici, the Court never goes into a discussion of what software is. This is particularly striking since Justice Thomas, the author of Alice, provided some technical discussion in his opinion in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., 133 S.Ct. 2107 (2013). As I will discuss in the second part of this essay, the Court’s discussion about using a generic computer to implement a concept is not directed to software technology.
  • The Court did not hold that all claims, or even all computer-implemented claims, necessarily contain an abstract idea.
  • The Court did not mention anything about business methods. Indeed, the absence of any discussion of business methods is striking, given the nature of Alice’s invention, so much so that three justices had to file a concurrence to point out their view that business methods are never patent eligible. The need for the concurring opinion suggests that the majority opinion did not narrow eligibility for business methods.
  • The Court did not rely upon the ad hoc rules against data gathering and pre- and post-solution activity as not contributing to patent eligibility, even though these “rules” are commonly cited by the Federal Circuit and many of the amici.
  • The Court did not talk about “disembodied concepts,” “mental steps” or other formulations that have been used by the Federal Circuit and urged by amici.
  • The Court did not mention patent trolls, the costs they are believed by some to impose on society, or the need to use Section 101 as a weapon against them.
  • The Court did not mention any First Amendment considerations, such as “software is speech” as urged by the ACLU and others.

The Court’s opinion is relatively short, focused, and to the point, and avoids addressing issues that are not central to the question before the Court. For that, the patent community can be thankful.

Setting the Stage

To understand why Alice is a limited decision, it is necessary to consider the context of the Court’s opinion and specifically how the parties positioned and argued the case before the Court. The Court was very much focused on whether they were ruling on the patent eligibility of software in general or on just Alice’s patent claims, and at oral argument various members of the Court questioned the parties as to how they could rule in a way that did not touch upon software patent eligibility.

Alice positioned the case as one about the patent eligibility of computer-implemented patents—software patents—in general. Alice’s certiorari petition and merits brief focused on the general question of “Whether claims to computer-implemented inventions” are patent eligible, and argued in detail why computer-implemented inventions are not abstract ideas, providing the Court with a tutorial on software technology. See Brief of Petitioner Alice Corporation Pty. Ltd. at 35-43, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. ___ (2014) (No. 13-298). Likewise, many of the amicus briefs spent time discussing the nature of software technology and the eligibility of software generally, including the briefs by Microsoft, IBM, IEEE-USA and others. At oral argument, Alice further emphasized that their case was about software patents. Alice’s counsel Carter Philips argued that if the Court held software to be ineligible in the absence of making an improvement in the operation of the computer, “[w]hat we know is that this would inherently declare and in one fell swoop hundreds of thousands of patents invalid, and the consequences of that it seems to me are utterly unknowable,” Transcript of Oral Argument at 20, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. ___ (2014) (No. 13-298) (“Transcript”), borrowing heavily from Judge Moore’s concurring opinion that “if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1313 (Fed. Cir. 2013) (en banc) (Moore, J., dissenting-in-part).

On the other hand, CLS denied that the case was about software patents in general and denied that the patents-in-suit were software patents. In its Responsive Brief, CLS specifically argued that “The patentability of “software” is not presented in this case. Alice’s patents are not software patents—they do not explain how to configure a computer to perform the claimed methods.” Brief of Respondent CLS Bank Int’l at 11 n.1, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. ___ (2014) (No. 13-298). At oral argument CLS counsel Mark Perry told Justice Sotomayor “they have no software, first. They’ve never written software. They’ve never programmed a computer.” Transcript at 30. Perry further emphasized that the Alice’s invention was a very small part of the overall patent, “It’s less than five pages in the printed appendix that actually pertains to this invention. And it contains no disclosure whatever.” Id. at 32. Perry argued that the Court’s decision would not impact a large swath of patents: “We are talking about a group of patents, Justice Kagan, that’s way out at the tail end of distribution. Most patents never have a 101 challenge . . . . This is a problem for the most marginal, most dubious, most skeptical patents.” Id. at 44. CLS’s argument has very clear implications: not every patent claim reciting the use of a computer is a software patent. Rather, real software patents are a much narrower type, they describe “how to configure a computer to perform” a specific method. This is the key to the Court’s analysis.

Unfortunately, Phillips unintentionally reinforced the view that a software and computer implementation was not that significant for Alice’s patent claims. First, at the beginning of oral argument Justice Kennedy asserted that a second-year college class in engineering could program Alice’s invention over a weekend, “that would be fairly easy to program,” to which Phillips replied “I don’t disagree with it,” id. at 5, and then later “Well, that’s absolutely, I’m certain that’s true.” Id. at 12. Then later on, Justice Ginsburg picked up on CLS’s argument that Alice’s patents were not really software patents, that they were simply applying a computer to a general idea, asking Philips “There is no special software that comes with this that’s part of this patent, is it is there?” Id. at 13. Philips admitted that there was no code in the patent, only an identification of “the functions that you want to be provided for with the software.”

Justice Kagan also returned to the theme of whether merely using a computer to implement a simple idea was patent eligible, asking Mr. Philips about whether thirty years ago the founders of the Internet could have patented “essentially tak[ing] the process of mail order catalogues and making it electronic.” Id. at 25-26. Phillips here replied that he could write claims for such an invention that would satisfy Section 101—and then unnecessarily admitted that “to the extent you’d think those are no different than the ones I have here, then my argument is simply I think I satisfy 101 with the claims we have before us.” Id. at 26.

Justice Sotomayor put the question of software eligibility directly to the Solicitor General, asking “Do you think we have to reach the patentability of software to answer this case?” Id. at 46. The Solicitor General replied “I think the answer to that question is no, not necessarily,” and then laid out in general terms the same reasoning that the Court ultimately adopted, that “ Bilski answers the question whether this is an abstract idea” and “Mayo answers the question of whether the use of a computer in this case adds enough to the abstract idea beyond conventional steps.” Id.

Read in this light, the intent and the scope of the Court’s decision is clear. The Justices were looking for a way to invalidate Alice’s patents without ruling that software is per se ineligible. They did not accept that Alice’s patents were complex, inherently computer-implemented methods. Instead, they accepted CLS’s framing of the Alice patents—that these were not really software patents at all, since a real software patent describes how to configure a computer to do something, not merely saying use a computer to do something. They apparently believed that Alice’s patents were outliers, part of “the tail end of distribution” of patents, not part of the “hundreds of thousands” of patents that would be invalidated by a general ruling against software patents. And they accepted the Solicitor General’s argument that they did not need to reach the eligibility of software, as evidenced by their adoption of the government’s overall position, that Bilski and Mayo entirely answer the question before the Court.

The Decision Deconstructed

I now turn to the Alice decision itself. The Court’s primary concern is that a patent should not “preempt” “fundamental concepts,” ideas that are “building blocks” of “human ingenuity” and “modern commerce.” Thus, the judicial exceptions to § 101—restrictions on patenting laws of nature, natural phenomenon, and abstract ideas—are used to prevent patents on these types of ideas. “We have described the concern that drives this exclusionary principle as one of pre-emption,” and “We have repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Alice,slip op. at 4-5.

The court emphasizes that role of § 101 is to prevent patents only on “building blocks,” and not on just any application of an abstract idea: “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’ Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept . . . . Accordingly, in applying the §101 exception, we must distinguish between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more.” Id. at 6. This is a key point: The Court recognizes that the presence of an abstract concept is not fatal, precisely because all inventions rely on them. Thus, proper application of § 101 requires a differentiation between the kinds of abstract ideas that the Court is worried about, and the kinds of abstract ideas that are necessarily part of all invention.

Doing the Two-Step

To implement § 101 to distinguish in this fashion, the Court uses a two step approach. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, ‘[w]hat else is there in the claims before us?’” Id. at 6. It is important to note here the specific phrasing of the first question. The question is whether there is abstract idea in the claim—and not what is the abstract idea in the claim. This is a critical distinction, and one that is easily overlooked. Asking whether there is an abstract idea implicated by a claim makes no assumptions and allows for the possibility that there was no abstract idea implicated by the claim at all. In that event, the claim obviously satisfies § 101.

By contrast, asking what is the abstract idea in the claim begs the question and assumes that there is an abstract idea in the claim to begin with, an assumption that easily leads down the path to ineligibility. Arguably, this is error was made in the Federal Circuit’s en banc plurality opinion: “As described, the first step in that analysis requires identifying the abstract idea represented in the claim.” CLS, 717 F.3d at 1286 (Lourie, J. concurring). Thus, both patent examiners and the courts must be careful not to assume that every claim for a computer-implemented method or system necessarily incorporates an abstract idea, but must instead investigate whether it in fact does.

The Court goes on to find that Alice’s claim did recite an abstract idea of intermediated settlement. Yet, the Court also avoids attempting any definition of “abstract idea”:

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of ‘abstract ideas’ as we have used that term.

Alice, slip op. at 9 (emphasis added).

At first glance, this appears to be a massive punt, since the definition of an abstract idea has been a central problem in the law since Gottshalk v Benson,and is what essentially led to Bilski and then eventually this case. But perhaps the Court did not punt. Contrary to the lament that “no one understands what makes an idea ‘abstract,’”, there is a considerable philosophical literature on the nature of abstract ideas. Our amicus brief for Advanced Biological Laboratories offered a general description of an abstract idea, and a technology-independent way of determining whether there is an abstract idea in a patent claim, and other amici likewise proposed definitions and explanation.

But the Court did not turn to any of these extra-legal definitions of an abstract idea. Instead, the Court has clearly announced that “abstract ideas” is special legal term—like willful infringement or inducement—and has nothing to do with the general linguistic, philosophical or common uses of the phrase:

Both [referring to the concepts implicated by the claims in Bilski and Alice] are squarely within the realm of “abstract ideas” as we have used that term.

Putting abstract ideas in quotes, and then stating “as we have used that term” indicates that the Court is now and (in a 1984-ish sort of way) always has been, using this term to mean something specific and distinctive from its ordinary dictionary meaning. Let’s call this Abstract Ideas, with a capital A and a capital I. This is similar to the “big-C” Creativity, described by the psychologist Mihaly Csikszentmihalyi as the kinds of activities that change some aspect of the relevant culture itself: “To have any effect, the idea must be couched in terms that are understandable to others, it must pass muster with the experts in the field, and finally it must be included in the cultural domain to which it belongs.” Mihaly Csikszentmihalyi, Creativity: Flow and the Psychology of Discovery and Invention 27 (1996).

Like big-C Creativity, which is different from little-c creativity—being a creative person, making a creative floral arrangement or creative limerick, or even inventing a new gadget, machine, or software app—for the Court, Abstract Ideas are necessarily “building blocks” and “fundamental” to the culture or the “modern economy,” are “the basic tools of scientific and technological work.” These are not the ordinary types of abstract ideas that are essential to every invention. Instead, they are what Justice Breyer called the “big ideas,” basic to a given domain in science or commerce. (“Business methods are similarly often closer to “big ideas,” as they are the basic tools of commercial work.” Bilski, 130 S.Ct. 3218, 3255 (Stevens, J. concurring). The Court’s methodology then is to look for evidence that the claim recites something that is “fundamental” enough to qualify as an Abstract Idea in “as [they] have used the term.” In Bilski the claim was plainly on the “fundamental economic practice” of hedging, something “long prevalent in our system of commerce and taught in any introductory finance class”—that is something core to cultural domain of finance. In Benson, the Court believed (wrongly it turned about, but that’s beside the point) that the claims covered the basic algorithm for converting binary coded decimal to binary, something that appeared “fundamental” to the domain of computer science and mathematics. Similarly, in Mayo, the Court believed (again, wrongly, but again that’s beside the point) that Prometheus’s claim covered a so-called “law of nature,” something “fundamental” to the domain of medicine and biology. (It’s ok that the Court was wrong on the facts in Benson and Mayo, because what really matters for the future application of § 101 is the methodology and underlying theory, not the specific facts.)

In Alice, the Court stated that “on their face” the claims are “drawn to concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk,” which is also a “fundamental economic practice,” again core to cultural domain of contracts. Alice,slip op. at 8. The Court then links the “fundamental” notion to the “building block” notion: “The use of a third-party intermediary (or ‘clearing house’) is also a building block of the modern economy.” Id.And as if the explanation of Abstract Ideas as being “fundamental practices” is not plain enough, the Court repeats it just one page later to defeat Alice’s argument that abstract ideas must be “pre-existing, fundamental truths” that exist independently of human action: “Although hedging is a longstanding commercial practice, it is a method of organizing human activity, not a ‘truth’ about the natural world . . . the Court [in Bilski] grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that risk hedging was a ‘fundamental economic practice.’” Id. at 9 (internal citation omitted).

As I stated as the outset, the key to understanding the Court’s opinion is that it did not view Alice’s patents as software patents at all, but instead as patents on an Abstract Idea itself. Going back to the oral argument, Alice did little to convince the Court that its invention was a true software invention and not an Abstract Idea. Telling the Court (inaccurately, no less) that Alice’s system could be programmed by group of graduate students “sitting around a coffee shop in Silicon Valley . . . over a weekend” was a critical error. By arguing to Justice Kagan that claims to using a computer to order products electronically over the Internet would be patent eligible, Alice suggested that it needed a rule broad enough to cover an obviously (to Justice Kagan) ineligible “fundamental building block” in order to support its own patent claim—which by logical extension was also an ineligible Abstract Idea. In contrast, CLS offered a much more limited, and reasonable position: that Alice’s patents were not software patents, and that software really was not at issue in this case, a position that I believe the Court implicitly adopted. Justice Sotomayor said it best: “There is no software being patented in this case.” Transcript at 46. The Court’s opinion then is not about software patents, and it never holds up Alice’s patents as exemplary of that class. Rather, the opinion is about patents on the kinds of Abstract Ideas I have described above.

CLICK HERE to CONTINUE READING… In the next post, I will discuss how this analysis ties into issues of preemption, mental steps and the application of Alice to software patents.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

33 comments so far.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    July 9, 2014 06:47 pm


    WOW how Abstract and true.

  • [Avatar for step back]
    step back
    July 9, 2014 03:00 pm

    The SCOTUS process in Alice of Blunderland is pure genius.

    Step (backwards) number 1: Read only a “representative” claim and abstract from it an abstract concept.
    Step (backwards) number 2: Determine whether the abstract concept you abstracted from the claim is indeed “abstract”.
    Step (backwards) number 3: Determine that the claim is “sketched” (drawn) to an abstract concept based on the abstract concept you abstracted from the claim and thus the entire patent sinks into the abstract abyss from whence it obviously came.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    July 9, 2014 12:49 pm

    Failure to define your terms is the hallmark of charlatans and tyrants.

  • [Avatar for Anon]
    July 9, 2014 10:27 am


    Do you see a distinction between “pre-emption” (with the accompanying specification details), and the Court’s apparently new tactic of applying “Gist” (which effectively neutralizes any such details), and then “Abstract” (which the Court purposefully will not define) to then reach “pre-emption?”

    I think the notion of “magic words” belies the fact that Congress uses words with intent, and that the Court here with its ruling throws that intent out the window. The Court has reached an “ends” and not provided any sense of meaningful guidance to the “means.” No one knows for certain what “abstract” means. No one knows for certain where to stop with a “gist” analysis. Words are all we have to use to describe the invention, and when the Court disrespects the use of words and refuses to define its own use of words, and sets out zero guidance as to how to go about determining what “gist” means, we have a decision based solely on the desired ends that does not – and cannot – serve the rule of law.

    I for one expect more from our highest Court in the land.

  • [Avatar for Mark Summerfield]
    Mark Summerfield
    July 7, 2014 07:45 pm


    My understanding of the Court’s warnings about “the draftsman’s art” is that it is specifically referring to claim drafting. There is no suggestion in this warning that a patentable invention cannot reside in a software implementation that is adequately described and claimed with sufficient specificity.

    While patent-eligibility should not depend ‘simply’ on the draftsman’s art, this is not to say that it does not depend at all upon the skill of the drafts(wo)man. Claims are read in light of the description, through the eyes of the person skilled in the relevant art. Therefore, the patent specification, as a whole, needs to support the case for patentability (eligibility, novelty, nonobviousness), as well as meeting relevant disclosure requirements (i.e. 35 USC 112).

    I am not suggesting that the Supreme Court Justices necessarily get this right – it seems to me that Alice’s patent specifications are pretty detailed, and it is hard to believe that an invention was not, or could not have been, claimed with sufficient specificity to avoid the perceived problem of “pre-emption”. Perhaps it was simply that this was not how the case was positioned or argued. But as a point of principle there is nothing particularly controversial in suggesting that an eligible “invention” cannot be whipped up from nothing simply through the use of magic words or phrases in the claims.

  • [Avatar for Anon]
    July 7, 2014 05:54 pm


    You rather badly miss the point that the hubabub is largely a smokescreen obscuring the fact that inventions completely in line with the law are being targeted for exclusion by tactics that seek to obscure the plain meaning of the statutory text. I do make the presumption that you have assumed that software patents – IN ANY FORM – are not covering inventions of the sort that the patent system “should” protect. Of course, I would not agree with your assumption, but that might be a matter that we may simply be unable to see eye to eye.

  • [Avatar for step back]
    step back
    July 7, 2014 01:18 pm


    The part you quote is mere judicial opinion scribing art –not to be taken seriously. 😉

  • [Avatar for ikh]
    July 4, 2014 02:06 pm


    How does it make any difference which way you draft it. The first time you come to enforce
    against a software implementation you will give the game away. The courts then won’t enforce the patent so your clients will likely look to you for redress.

    Your can not draft you way out when SCOTUS keep saying quote This Court has long warn[ed]…against “interpreting 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.'”


  • [Avatar for step back]
    step back
    July 3, 2014 03:19 am


    I doubt the anti-patent folk are “purposefully dissembling about the nature of software”.

    It all comes down to education.
    What misinformation did our teachers unwittingly pump into the heads of each of us?

    Perhaps for the sake of expedience, some IT teachers do not bother to drill into the delicate skulls of their students some of the gory truths about the “lower” level details of how physical computers actually work? An abstract model of the Universe is “good enough” for purpose of getting their students going in the black art of chanting in codes to the machines and having the machines do their magic?

  • [Avatar for Anon]
    July 2, 2014 11:51 am


    I believe that the difficulty comes from the result/method dichotomy coupled with the natural language issue that describing software inventions is far easier to describe the “what it does” than to describe the “what it is.”

    As I have discussed with Gene Quinn, the semantics and placement of software into the “method” category – while appealing to those who understand the art – is just too simple to manipulate and obfuscate by those who for their own personal and philosophical reasons wish to deny patent coverage to this type of innovation.

    Thus, we see all types of (I daresay purposeful) dissembling about the nature of software and the “evils” of functional claiming. Anyone who wishes to be intellectually honest should simply consider the fact that software and hardware are equivalent representations of an underlying invention. Just as software written in C# or the equivalent software written in Basic makes no difference to the underlying invention, so to, hard-wiring or soft-wiring makes no difference (yes, I realize that I may be preaching to the choir with you).

    In a completely objective comparison, ask yourself (honestly), which brings greater clarity: a claim understood by the typical PHOSITA using nominal structural components with those components modified structurally – but in the easy to understand language of “action” and function, or an impenetrable recitation of mind-numbing actual structural series of open/closed gates and millions of designated timed pathways? There is simply no doubt that all software inventions could be claimed in purely structural language, but no reasonable person would ever want this done. And for obvious [pun intended] reasons.

    What is beyond sad is that this statement needs to be written down and shared.

  • [Avatar for step back]
    step back
    July 2, 2014 08:41 am

    Gene asks:

    “Why do you people find software so difficult [to understand what it is]?”

    In the fantasy fiction books the sorcerer /witch “speaks” magic words (i.e. hocus pocus) and then magically something comes into reality (i.e. an image of Dorothy and Toto in the poppy fields appears inside a glass globe).

    In the field of computerhood, as seen by the lay person, the sorcerer /witch /coder “writes” magic words (i.e. hocus pocus, begin HTML code here) and then magically something comes into reality (i.e. an image of Dorothy and Toto in the poppy fields appears behind the glass screen).

    It is hard for lay persons to separate in their heads, one such kind of magic from the other.

  • [Avatar for Gene]
    July 2, 2014 07:52 am

    if my algorithm for frying eggs is to crack the egg and drop it in a frying pan and your algorithm for frying eggs includes the use of a whisk to whip the egg first, and you claim that algorithm, then my prior art method will not anticipate your algorithm. after filing hundreds of patent applications for software, i find that hardly any of those escape this simple analogy. why do you people find software so difficult? you simply must describe what your software inventor did, what s/he made that is new.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    July 1, 2014 05:07 pm

    Step back

    Hear Hear – pick your result and then attach a bunch of BS to justify it. What ever you don’t actually read the statute.

  • [Avatar for step back]
    step back
    July 1, 2014 03:24 pm


    It should be self-evident that SCOTUS picked and mindlessly copied those briefs among the ‘frenemies of the court” ones that led to a big banking interest not going under.

    See my post:

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    July 1, 2014 12:44 pm

    I love how us attorneys work so hard to make Supreme Court decisions sound like they are rational and well thought out. It is clear that the reasoning in Alice does not pass the high school level. First the decision is intellectually dishonest. Alice did not claim or state “just use a computer.” In any rational world the Justices would be barred from ever deciding another patent case. Second, the Justices are clearly ignoring the 1952 Patent Act and 35 USC 103 and examining each element of a claim separately and throwing out the parts they find inconvenient. Third, the court has not defined what they mean by an abstract idea. Every invention is an abstraction at some level. Inventions are about a class of things not a specific instance. This allows the SCOTUS to invalidate any patent they FEEL they don’t like. It is absurd to pretend that there is any rational thought in this decision.

  • [Avatar for wow]
    June 30, 2014 05:25 pm

    angry dude,

    your comments are confusing and obviously had no idea what i was asking.

  • [Avatar for angry dude]
    angry dude
    June 30, 2014 11:15 am

    “…software that are designed to make money and not to improve hardware performance?”


    My dear clueless,

    all “softwares” and “hardwares” are designed to make money for someone

    e.g. big company makes popular hardware device (e.g IPhone) complete with proprietary OS, but allows third party developers to build software apps to make some money for themselves and even more money for Apple
    So the split between software and hardware is governed by money

  • [Avatar for step back]
    step back
    June 29, 2014 10:13 pm

    Mark @ 9:

    Might we also add that 35 USC 101 does not say ” and any improvements to only the technological performance of the computer”

    SCOTUS claims it does not legislate.

    Alice sure smells like re-writing of the statute to me.

  • [Avatar for step back]
    step back
    June 29, 2014 10:09 pm

    wow @11

    I don’t know what you intend to mean by “the software” and “the physical hardware”.

    In the Alice v. CLS case there was a fairly complex “network” with separate data processing apparatus disposed in at least 3 separate locations: two transactors and the escrow company. Each of the transactors has its own accounting system, possibly with different accounting data formats. How do you recognize and solve the problems without aid of hindsight? SCOTUS seems to think that a “concept” instantly appears like magic before your eyes and then you “merely” utter the sorcerer’s apprentice words: apply it to a generic computer. Is that how you see it too? Pure hocus pocus?

  • [Avatar for Anon]
    June 29, 2014 09:29 pm

    wow @ 10.

    Read the decision again: the very same “concern” applies across the board and no matter what the statutory category.

    There is no distinction whatsoever in the takeaway of the case, and the Rule of Law will apply equally in the next case, be that next case hardware or software.

  • [Avatar for wow]
    June 29, 2014 05:37 pm

    @step back

    “You are proof that the ordinary artisan in the “software” arts is getting dum6 and dum66er….”

    Is this how you actually draft your patent application, by proving that the software does interact with every aspect of the physical hardware? The courts seem to be looking for much more than just storing and retrieving something from the memory or database.

    In theory, you could try to include every detail of this software/hardware interaction but what about for commercial or consumer software that are designed to make money and not to improve hardware performance?

  • [Avatar for wow]
    June 29, 2014 05:17 pm

    @step back, Mark Summerfield, Anon

    Its not that i don’t understand how software works or how software may interact with physical devices, what is unclear under Alice is how much disclosure is needed in a software-related application to satisfy the requirement of being a non-abstract idea.

  • [Avatar for Mark Summerfield]
    Mark Summerfield
    June 29, 2014 03:15 am

    Hey, @wow –

    You could, I suppose, run MS-DOS on a current generation PC. The basic hardware architecture has not changed in over 30 years. I am guessing, however, that you might consider running a modern operating system to be an improvement! Better memory management alone has delivered multi-fold performance improvements across all aspects of computer operation, even without any changes to hardware or applications software.

    To give another example, the engine controller in your car could doubtless be reprogrammed to deliver whatever ‘improvements’ you might value above the compromise general-purpose software that is probably installed by default – more acceleration, lower emissions, higher fuel economy.

    Of course improved software can improve the operation of a machine without hardware changes. Only somebody with limited understanding of the role played by software across numerous fields of modern technology would believe otherwise. Even the Justices of the US Supreme Court seem to understand this much!


  • [Avatar for Anon]
    June 28, 2014 08:43 am


    Physical structure is changed with software.

    Think of this oft stated, simplistic, but very pertinent analogy:

    You have two sets of three resistors. Identical, yes? In the first set, you configure the three resistors in parallel. In the second set, you configure the resistors in series.

    Now multiply this a million-fold.

  • [Avatar for step back]
    step back
    June 28, 2014 07:36 am

    wow @5 (continued)

    There is an electronic device known as a Field Programmable Gate Array (FPGA)

    Inside the FPGA there is stuff called programmable interconnect.

    It is kind of like your imagined robot that changes the wiring within a computer.

    The programmable interconnect is controlled by a software called, configuration bits.
    There is your example of how software re-wires the computer.

    FPGAs were invented and used some 20 years ago.
    Look up companies like Xilix and Altera.

  • [Avatar for step back]
    step back
    June 28, 2014 07:29 am

    wow @5
    You are proof that the ordinary artisan in the “software” arts is getting dum6 and dum66er.

    Inside of almost every electronic computer there is an electronic circuit composed of transistors of opposite types and called a CMOS inverter.

    The CMOS inverter performs what can be seen as a Boolean NOT function.
    It receives an input bit and outputs the inverted version of the input bit.

    If the input bit comes from a memory device, say a one-bit storing register, that bit can be called “software” because it is a bit stored in a “memory”.

    If, on the other hand, the input bit comes from a wire hooked up to ground or to the +Vdd rail, that bit can be called “hard-wired” because it is fixed by the way the wires are hooked up.

    The electrons and the CMOS inverter do not know the difference. They do what they do. It is the illusion in your mind that calls one of the near-equivalent situations “software” and the other “hardware”.

  • [Avatar for wow]
    June 28, 2014 04:57 am

    how exactly does software “transform” or “improve” hardware or machine devices unless the software functions as a brain of a robot (hardware) which can add features to improve its own hardware?

    Software is simply software, it cannot change the physical structure of the hardware unless the software is some kind of robotics or artificial intelligence program for carrying out some kind of self-maintenance or self-improvement work.

  • [Avatar for Mark Summerfield]
    Mark Summerfield
    June 27, 2014 10:12 pm

    Gene –

    Firstly, I commend you for publishing this article, considering that you were one of the commentators who was quick to predict dire consequences from the Alice decision! The diversity of views is one of the things that makes IP Watchdog such a valuable resource.

    Second, I think you are being overly pessimistic about the amount of detail that will be required to support claims directed to computer-implemented inventions. It is important to keep in mind that the Alice patents were drafted a long time ago (an epoch, really, considering the pace of change in technology and patent law over the intervening years). They are far from being examples of good current practice, and the method claims in particular (which the court treated as representative of the scope of monopoly sought) really do add very little to the underlying generic business idea.

    We have seen a similar shift in the Australian law away from reliance solely upon the claim language as a basis for determining eligibility. Courts are rightly suspicious that applicants and their attorneys may be trying to dress up essentially abstract ideas with technical ‘limitations’ that are, in practice, no real limitation on the monopoly at all. The fundamental question is ‘what has been invented here?’ And while it is possible to have an eligible invention and claim it in an ineligible manner, courts all around the world are increasingly of the view that if the actual contribution made by the inventor is itself ineligible, then no amount of fancy claim language can rectify that defect.

    When it comes to the position in Australia, I am more familiar than most, having drafted and helped to defend the first software or ‘business method’ patent to have been considered and upheld by an Australian court since 2001 (see for the 2013 ruling, which is currently subject to an appeal that I very much doubt can succeed). What I find most interesting about this decision is that a significant portion of the judgment is dedicated to a detailed reproduction and discussion of the specification (including a reproduction of the drawings).

    Ultimately, the patent was upheld not only because the claims tied the invention to particular technological elements and steps, but also because the specification made out a coherent case for the technical contribution made by the invention to the art.

    Now, I have been drafting in this way for some time as, I am sure, have many other practitioners. Decisions like Alice, and like my Australian case, and like that of the Canadian Court of Appeals in the Amazon 1-click case, and like various recent UK and EPO cases, serve to remind us of the importance of doing the job right the first time. But I do not think they call on us to provide excessive design detail.

    It has long been the case that drafting defensible applications for computer-implemented inventions is more expensive than some other fields of technology. That will not change. But I do not envisage any change in my own practice as a result of Alice, or any other recent decision in Australia or internationally.

    Am I right in thinking that the Supreme Court has, as yet, neither granted nor denied cert in WildTangent v Ultramercial? If so, do you think that grant of cert with immediate remand back to the Federal Circuit (again!) likely, in view of Alice?


  • [Avatar for Steve]
    June 27, 2014 08:49 pm

    Thanks Robert — nice analysis.

    Hoping you’ll include some specific claiming thoughts & recommendations in part 2.

    Also folks — you may find this article worthwhile as well:

  • [Avatar for angry dude]
    angry dude
    June 27, 2014 08:04 pm

    “…you need to have an extremely detailed specification that includes a great deal of material that one might ordinarily only find in a design document”

    Specification or independent claims ?
    Specification can be all you want provided it’s sufficient – it’d better include at least a pseudo-code for preferred embodiment to escape any potential issues with enablement, but detailed independent claims mean your patent is worthless
    Patents are not about patentability in some idiot scotus view – they are about making money to inventor
    Remove money aspect and soon enough you won’t have any inventor-clients

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 27, 2014 05:02 pm

    patent leather-

    I think software is still patent eligible, but I think you need to have an extremely detailed specification that includes a great deal of material that one might ordinarily only find in a design document. I also think you want paragraph after paragraph of description about how the computerized device operates differently, and improved. They key will be to focus on the improvement, whatever that might mean given the specific software at issue.


  • [Avatar for patent leather]
    patent leather
    June 27, 2014 03:44 pm

    Hi Robert, I’ve always respected your work.

    Of course, the result at the Fed Circuit has always been panel specific (whether your claims are statutory or not is really just a crap shoot). I think Smartgene would have gone the other way with a different panel (Taranto turned out to be a real disappointment). After Alice, the importance of the panel composition is likely to continue, as we still have no concrete definition of “abstract idea.” I’m still unable to advise clients whether their software inventions are statutory or not. Do you think there will any end to this madness?

  • [Avatar for angry dude]
    angry dude
    June 27, 2014 01:43 pm

    “Building block” ???

    Let’s say I provided basic “building block” to wireless comm technology (potentially replacing what they used to have and improving the tech) which essentially boils down to a mathematical formula I derived (but one can find similar formulas in the literature used in unrelated context – those are listed in IDS as non-analogous art)
    Formula can be implemented in software, hardware or any combuination of those.
    As usual, I have method (algorithm) claims and apparatus claims in my patent.

    Do these claims pass the Alice patentability test ?

    Hint: if they don’t pass then pretty much all those tens of thousands of already issued patents on speech/audio/video compression will not pass either…

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