It is now clear that the Supreme Court’s decision in Alice fundamentally changed the law and future of software patents, at least those already issued and applications already filed, which cannot be changed without adding new matter. Those applications were filed at a different time and under a substantially different regime.
After discussing the ramifications of Alice with computer software expert Bob Zeidman, I thought it would be interesting to discuss the same from a different perspective with one of the most decorated and published scholars on the topic — Professor Mark Lemley, the William H. Neukom Professor of Law at Stanford Law School and partner in Durie Tangri.
As you will read in this two-part interview, Lemley largely agrees with my assessment of the impact of Alice and has been telling patent attorneys in speeches and presentations that the landscape has significantly changed.
QUINN: I appreciate you taking time to chat with me, Mark. And I wanted to talk to you about software patents in wake of the Alice decision. I understand you’ve been giving some talks around the country and I think our views are largely in sync and contrary to what a lot of people seem to think about the decision. So maybe we could start with an open ended question – now that you’ve had some time to reflect on the Alice decision and consider what we are calling the new Alice standard, where do you think software patents are?
LEMLEY: Well, I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking. Here’s what it seems to me Alice does that’s significant. The first thing it does is it makes it clear that Mayo wasn’t a one-off thing, but rather is the fundamental test going forward for all kinds of patentable subject matter issues. I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent. You’ve got to add new steps or new hardware, not just conventional hardware or conventional steps. Not just computer technology that is generic or functionally described. And if you can’t do that not only your method claims but also your article of manufacture claims are going to be invalid.
QUINN: I agree with you. I think that it is a real sad state of events because I’m left wondering whether any of the software patents that were granted prior to that decision and any of the software applications that were filed prior to the decision really can stand up to the new test. I think the answer is no.
LEMLEY: Yeah. I don’t think it’s all software patents, but I guess what I would say is a majority of the software patents being litigated right now, I think, are invalid under Alice. And certainly the claims that are being asserted. If you look at the actual claim in Alice it’s got a long series of steps. But that doesn’t prevent it in the Court’s mind from being an abstract idea. It’s got hardware implementation and computer technology, but that’s not enough. The Court seems to think if I’ve actually got improvements in the operation of the computer itself, if I have a claim that is to an improved computer program or way of programming, maybe that’s patentable. But a lot of the claims that were written particularly during the 1998 to 2008 period when there was no patentable subject matter restriction I think are vulnerable under this test. And I think you’re starting to see the confirmation of that if you look at the Federal Circuit decisions in Digitech, their most recent decision in Planet Bingo and the Board’s decision in the US Bank Corp. case. There are a bunch of claims that I think we would have looked at five years ago and said well these are run of the mill claims in the software industry. And the Court said, yeah that’s just an idea implemented in a computer and that’s not sufficient.
QUINN: I think you’re right. I think it’s going to be harder and harder for people to convince themselves that nothing has really changed as you see the Patent Office withdrawing notices of allowance issuing supplemental office actions at the Federal Circuit hearing these cases. I think little by little people are going to realize that this is a massive shift. And it’s bizarre in some ways – as you were just talking one of the things that jumped to mind is – do you remember back in the day when we had all the copyright litigation about whether or not it was an infringement to speed up the play of a video game? Do you remember those cases?
QUINN: It seems odd to me, but it almost seems like that the game itself that is embedded in software may not be patent eligible, but that piece that you would plug into the game to alter the play of the game may wind up being patent eligible under this test.
LEMLEY: I think that’s right. And the courts have long flirted with and always rejected some kind of a technological arts limitation. But I think part of what’s driving the Supreme Court here, though they don’t say it, they don’t make it part of the test, is this doesn’t look like technology to them. The novel bit of this invention is not a technological idea; it’s just an idea. And we just happen to have implemented it into a computer. And I think what they’re looking for is show me some real technology and they have in mind, I think, hardware. But if you really did have an improvement in software – some component within the computer system – my guess is that would survive. So I think there are claims out there that are patentable under this standard but a whole bunch of them written during this period don’t have that technology improvements piece at all. Or even if the invention had some technology improvement, that’s not how people were claiming it because you could get away with writing a claim more generally and so you had a better case against an infringement.
QUINN: Yes. The interesting part of what you just said, I think, is the part where you said “I think they’ll be allowable.” And that’s really where we’re at, isn’t it? We can take a look and say with great certainly I think now that a whole lot of these things are not patent eligible. But I don’t know that we’ve really gotten any kind of meaningful guidance on what it’s going to take to get a patent, so we really just don’t know. Yes, we can and should disclose all this technology in the specification, and I think that you really have to almost overwhelm the average lay reader so that they see that there really is thick technology disclosure, but at the end of the day we still don’t know.
LEMLEY: I think that’s exactly right. I argued in a paper last year that we were going to run into a problem with functional claiming, with claiming the idea or the outcome achieved in any way. And that the right thing to do was to look at those claims as means plus function claims and to go in and look for the specific technology. It may be that whether we do it through the route I argued or whether you explicitly write a means plus function claims that the safest thing to do in the wake of Alice is actually including means plus function claiming to get some of that technology into the claim. That may be the way to survive 101. Now that is going to mean that your claims are narrower. And that’s why people never liked these claims in the past, but it may be as the future of software claims. If you really did do some programming that will survive, but will survive in narrowed form because they’re more specifically targeted to the algorithms than the general approaches you actually took. And as you said that’s still speculation. We don’t know for sure.
QUINN: Yeah, I understand and appreciate you speculating with me. I’m intrigued to hear you talk about means plus function claims because I’ve thought now for a little while that means plus function claiming will come back in vogue as the result of Alice. But you know the minute that you suggest that patent practitioners write means plus function claims they look at you like you’ve got three heads and that you obviously don’t know what you’re talking about because the perception is that means plus function claims are so limited and they’re garbage. And yeah, I’m not going to dispute the fact that they are limited. But you might as well have a couple of them, right? The near universal reality is that the client is going to run out of money long before you as a patent attorney run out of the ability to write more claims. So why not have a couple means plus function claims? At least that way you have coverage for the full disclosure and equivalents in the specification. But when I teach means plus function claiming I always tell students they have to treat them like a real heavy garlic – a little bit gets you a long way. And I’ve never been afraid to include some, and I think it forces you to have a real robust disclosure if you are even going to consider such a claiming technique. So I’m starting to hear more and more people make that argument you just made and, boy, what a change that represents from where we were a few years ago.
LEMLEY: Oh, that’s absolutely right. Although it’s funny how these things kind of go in waves. I went back and looked at the first edition of the Rob Merges patent case book, which was published in 1992. Rob had been a patent practitioner in the 80s and he had a statement in the book that said something like “make sure you include some means plus function claims because those are really broad.” And I went to Rob and I said, well, what are you talking about? Everybody tells me exactly the opposite. But I think in the 1980s, before we were expressly doing claim construction, having that “equivalents thereof” safety net made some people think this is a claim that’s going to protect me better than trying to specify all of the components of the claim itself. We may be going back to the world of the 1980s; not only the patentable subject matter world but maybe also in claiming and means plus function claims.
QUINN: I agree with that. I think that in one regard you can talk about means plus function claims being very narrow and in another regard you can talk about them as being broad because they do cover the entirety of the spec. The only wrinkle is that now you have to have 100% of the algorithm in the spec in order to use means plus function claiming, which I don’t really see any support for that in the broader means plus function cases, but there’s certainly that explicit statement in the algorithm cases. The Federal Circuit won’t even consider whether someone who is skilled in the art would understand if you don’t have 100% of the algorithm. It just seems they don’t like these things very much.
LEMLEY: Well, we’ll see. It’s definitely right that we’ve got that rule from the definiteness cases that seems to apply only to software means plus function claims. If you didn’t write an algorithm, if you didn’t actually code anything I think you’re out of luck. If you wrote it and you didn’t include it I suspect you’re going to be out of luck after Alice. But if you wrote it and you included it in the step I think you could survive the Aristocrat line of cases and then the question will become well what does equivalent thereof mean? Can I show you my algorithm and say, yeah, this is the approach I took but these other four approaches are equivalent and a computer programmer would look at those and say I don’t care which one of those you use. And if you can do that then you might end up with a claim that’s still pretty broad even though it’s in means plus function format.
QUINN: Well, that’s right. And I think the truth of the matter is that winding up with any claim is going to be broad compared to what else you might wind up with if you don’t do that.
LEMLEY: That’s right. Exactly. As I said in that functional claiming paper last year I understand why people want broader claims and not means plus function claims but the choice is not going to be between a broad functional claim and I narrower 112(f) claim, it’s going to be between a narrower 112(f) claim and invalidity under 101.
LEMLEY: And I think that’s the world we’re moving to.
TO BE CONTINUED…