Posts in US Supreme Court

BEAR: ”When the Constitution was written, there was no concept of software. Nor was there computer hardware. We had physical, you know, very physical mechanical inventions. And computers have come around and software has come around, and the interpretation of these statutes has had to shift with the technology. And as unimaginable as it may seem to us here in 2014, there’s something in our future as unimaginable as software was when the Constitution was written. Inventions in that future domain need to not be shut down because of the way we rule today on §101. So the request for not having a real hard line – a bright line – is important. It protects the possibility of fostering future inventions in domains we can’t even imagine.”

BEAR: ”[T]here’s an amusing little brief worth visiting. It’s by a number of companies including LinkedIn, Netflix, Twitter, Yelp and Rackspace – whom I respect and appreciate as innovators – and takes a fairly radical stance. I believe it’s important for anyone reading along to be studying briefs on all sides. Their main approach is to establish that software patents are not only not necessary, but hinder innovation. While positioning themselves to be seen as utopian, the politics strike me as appealing to the fearful, emotionally insecure side of people. Twitter represents that they are recruiting engineers based on a purported fact that they don’t want to engage in offensive patenting. It seems intentionally misleading and inviting reactionary public support. Let me read you a sentence. It says, “Both trade secret and copyright law already protect software and effectively prevent both wrongful use and explicit copying by others.” As if, somehow, that addresses the issues at hand.”

There is a further gulf between those who view In re Alappat as sound logic and engineering (ABL, AIPLA, Alice, Mr. Ronald Benrey, BSA, CCIA, Mr. Dale Cook, Prof. of Computer Science Lee A. Hollaar, IEEE-USA, Microsoft) and those who it as mistaken (Electronic Frontier Foundation, Prof. Robin Feldman, Red Hat) and primarily responsible for an increase in such patents (Electronic Frontier Foundation, Google, “Law, Business and Economics Scholars”). The IEEE-USA provides an excellent analysis of the relationship between software and hardware, pointing out the incontrovertible principle of equivalency, that “special-purpose programming of general-purpose hardware” is “equivalent to special-purpose hardware,” though IEEE-USA fails to mention that this is a fundamental principle of computer science, as established by Alan Turing in the 1930s. To assert, as does the EFF, that the Federal Circuit “concocted” the equivalency of hardware and software goes beyond denying the foundational work of Turing and others. The equivalency of software and hardware is what makes it possible for Java to run on any type of computer using the Java Virtual Machine, as well the electronic design automation industry, which enables complex electronic circuits to be entirely designed in software before being implemented in hardware.

Eric Gould Bear is an inventor on over 100 patents and patent applications and a testifying expert witness for patent infringement cases. He is an expert in the software/patent space, and has seen the industry from multiple different angles over the years. With the oral argument in Alice v. CLS Bank scheduled for Monday, March 31, 2014, Bear and I spoke on the record about the issues, using as our focal point several of the high profile amici briefs filed… In part 1 we discuss the false distinction between hardware and software, and Bear goes into deal with examples, saying at one point that most of the innovation today relates to software. He also takes issue with the ACLU amicus brief, calling it “embarrassing.”

The fractured views of the world begin with the question presented, and reflect how different parties frame the debate in very different terms. Alice’s merits brief presents the question before the Court as “whether claims to computer implemented inventions…are patent-eligible.” Putting the question this way allows Alice to place its inventions and claims in the larger context of all computer-implemented inventions, the subtext being that if the Supreme Court holds that computer-implemented inventions are patent eligible—which is a fair bet—then Alice’s patents should be valid. Further, phrasing it this way allows Alice to distance itself from pure business method claims from the invalid claims in Bilski v. Kappos.

Supporters of CLS Bank have largely responded that software patents hurt innovation. But that can’t be! One of the areas critics always say has been allegedly hamstrung by patents, the smartphones industry, is barely over 6 years old. Have patents stopped innovation of smartphones? Hardly. In fact, with every new version companies tout just how much more the phones do and how they are so far superior to the previous model. Thus, it is easy to see that those claiming that software patents block innovation simply ignore market reality and how the functionality of current devices (which is thanks to software) match up with previous generations of devices over the last 6 years. Corporate critics must also ignore their own marketing of new smartphones, which directly contradicts the ridiculous claim that software patents are preventing innovation. Still they make these and other specious arguments as if they are true.

U.S. patent litigation has followed the centuries-old “American Rule” under which each party to a litigation pays its own legal fees and costs, regardless whether it wins or loses the litigation. A narrow exception exists in patent cases, but only in “exceptional cases” under 35 U.S.C. § 285, such as where the losing party engaged in litigation misconduct, or if the patent was fraudulently procured, or if the losing party raised arguments that were both objectively baseless and made in bad faith. Despite the long tradition of litigants paying their own legal fees and costs, Congress has shown interest in changing the playing field and deviating from the American Rule in patent cases. This comes at a time when the U.S. Supreme Court is already considering two cases that relate to the definition of “exceptional cases” in § 285 that may well alter how this existing exception to the American Rule is applied in practice.

That only three briefs are filed in support of Alice Corporation is a little misleading in this case, however, since many of the briefs that were filed in support of neither party come out and directly support the patent eligibility of software. For example, the IBM amicus brief, which was filed in support of neither party, concludes that a Section 101 patent eligibility analysis is the wrong analysis to use in this and similar cases since the abstract idea doctrine is unworkable and yet to be defined by the Supreme Court. IBM suggests the Court use Section 103, the obvious analysis and the well developed case law under KSR, to determine patentability in this and similar cases. Thus, while IBM did not take a position on the specific merits of the case, as with many of the briefs filed, if the Supreme Court were to follow the IBM counsel it would lead to an Alice victory. Even Microsoft/Adobe/HP, which does not support Alice on these claims urged the Supreme Court to find software patent eligible. Thus, characterizing the position of the amici based on whether the support Alice, support CLS Bank or support neither party has proved quite difficult in this matter.

By Martin Goetz, inventor on the first software patent granted by the USPTO: “Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.”

Chief Judge Michel’s brief makes two major recommendations regarding the essential question of software’s patentability. First, Michel states that the criteria for patent eligibility under Section 101 should only exclude those inventions that are clearly patent-ineligible… In his conclusion, Michel argues that, although all patent applications must first be reviewed under Section 101 for eligibility, the evaluations that take place under Sections 102, 103 and 112 should be applied in the overwhelming majority of patent validity cases. In the case of an implied exclusion under Section 101, as in this case, ineligibility should only be applied in the clearest cases where the patent would preempt the most fundamental building blocks of technology.

Broadly construing and applying the abstract ideas exception would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies. Indeed, it is impossible to overstate the economic importance of software and other computer- implemented inventions. Virtually all industries now use computer-implemented inventions in some way… Notably, and notwithstanding the alarmist complaints of some interested parties that are most dependent upon computer-implemented technologies, high-tech industries are neither stagnating nor suffering from a dearth of innovation. To the contrary, these industries are highly competitive, vibrant fonts of innovation and economic vitality. The availability of patent protection for computer-implemented inventions has been a spur, not a bane, to their growth and development.

… in order to handle the messy reality that the system claims, illustrated above, are clearly not abstract under any intellectually honest definition, they merely say that if the method and computer readable medium claims are not patent eligible neither are the system claims because… well just because. It seems inventions rise and fall based on what the applicant really wants to protect, not the claims… Assuming you have snapped back from the Twilight Zone yourself you may be hearing in your head the clanking of coconuts as several Monty Python players exit stage left in search for the holy grail! Of course, regardless of whether the coconuts migrate, those coconuts are are obviously abstract and not tangible, clearly not patent eligible and a fiction of your imagination. Therefore, you really can’t be hearing the coconut clanking noise because imaginary non-migratory coconuts that don’t exist can’t be banged together to make a sound.

While the Lighting Ballast majority upheld the Cybor standard, even Judge Newman, who penned the opinion, seemed to recognize that the decision was on shaky legal footing, relying heavily on stare decisis and the fact that Cybor has been the law for over a decade in sustaining the rule. The majority stated, “the court is not now deciding whether to adopt a de novo standard in 1998. Today we decide whether to cast aside the standard that has been in place for fifteen years.” Opponents of the de novo standard of review in claim construction cases, as set forth in Cybor, might still have another day in court. The Federal Circuit’s ruling could be taken up by the United States Supreme Court next term, especially if the Solicitor General recommends granting the petition for certiorari that is sure to arrive at the Court in the next few months. In a prior case, Retractable Technologies v. Becton, Dickinson, and Co., the Solicitor General recommended to the Supreme Court that “in an appropriate case, this Court’s intervention might be warranted to determine the proper standard of appellate review of district court factual determinations that bear on the interpretation of disputed patent claims.” Here’s a look at the three basic arguments made to the Federal Circuit, and that would likely be made again before the Supreme Court, should it decide to hear the case.

The Court will hear oral argument as follows: on February 26, in two cases on granting (Octane Fitness) and reviewing (Highmark) attorneys’ fee awards; on March 31, in a case (Alice Corp.) on patent eligibility of system and computer-implemented method claims; on April 21, in a case (POM Wonderful) on claims under Section 43 of the Lanham Act challenging labels regulated by the Food and Drug Administration; on April 22, in a case (Aereo) on whether a provider of broadcast television programming over the Internet violates a copyright owner’s public performance right; on April 28, in a case (Nautilus) on the proper standard for finding indefiniteness invalidity for patents; and on April 30, in a case (Limelight) on joint liability for method claim infringement where all of the claimed steps are performed but not by a single entity.

The reason the abstract idea doctrine is unworkable is because the Supreme Court has never defined what is an abstract idea. The Supreme Court has treated the term “abstract idea” much as they have the term “obscenity”; they know it when they see it. Such a level of subjectivity leads to chaos, which is exactly how the Judges on the Federal Circuit can manage to find themselves evenly split on the issue of whether software is patent eligible. The Supreme Court abhors bright line rules unless they are the ones who announce them. Such an irrational fear of certainty and predictability is curious given how those concepts are so fundamentally important to a functioning judicial system. Still, if they don’t like bright line rules that everyone can follow as announced by the Federal Circuit they at least owe us a workable test that they are willing to endorse.