Posts Tagged: "software patents"

It would be extremely unsettling if the Supreme Court has weakened Judge Lourie’s resolve to independently and properly interpret the Patent Act. If there is another explanation for his flip-flop on matters of patent eligibility I would love to hear it, but so far an explanation for diametrically different opinions has not been forthcoming. I don’t expect Judge Lourie to make a speech or hold a press conference like a politician, but if he is going to make diametrically opposite decisions in the same case, on the same facts, relating to the same claims, he owes litigants and the industry an explanation. Without an explanation it makes the entire process seem nothing more than arbitrary and capricious.

Based on the Supreme Court decision and the Patent Office guidelines it is clear to me that the Alice Supreme Court decision is a major victory for patenting computer-implemented (software) inventions. When the Supreme Court unanimously agreed that the critical issue is whether there is an inventive concept (and not on how an invention is implemented) the Supreme Court finally ended the debate on whether computer-implemented inventions are patentable.

If you have any software patent that is essentially a software version of a human practice — something that was done in human practice — and you decide to write up a patent, even if you automated it in such a way and did things that the human brain could never do it will be problematic. If you can look at the patent and then make an argument that humans were doing this outside the software realm before you implemented it in software, under Alice, I think you’ve got a big problem.

Software and method patents may appear to have fallen out of favor because of recent court decisions and legislation. However, recent trends indicate that they comprise surprisingly high portions of four US companies’ recent grants. Of the 2,599 US patents granted last year to Google, 1,522, or 59% were in the methods classes. Microsoft, with 2,847 patents received, had 1,575, or 55%, that fall under the heading of methods.

Truthfully, the Supreme Court decision in Alice can only be described as an intellectually bankrupt. The Supreme Court never once used the word “software” in its decision. The failure to mention software a single time is breathtaking given that the Supreme Court decision in Alice will render many hundreds of thousands of software patents completely useless. Ironically, at the end of the day, software patent claims written in typical, industry standard format will result in patent ineligible claims. Yet, at the same time, business methods are patentable. To call this bizarre and inconsistent doesn’t begin to scratch the surface.

Despite the improvements that could reopen the door for important patents in important fields, the Guidelines seem far from perfect. But how could they be, given that they seek to harmonize the mushy judicial activism underlying Section 101 in the first place? Few federal statutes have spawned “judicially crafted exceptions” to flat Congressional instructions like the one in Section 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

A strong sense of innovation runs through the entire operations of the Walt Disney Company and the many forms of entertainment media developed by the corporation. For decades, Disney has benefitted from the work of its Imagineering teams, groups of designers and engineers who develop rides and many other features for Disney’s 11 theme parks located worldwide as well as cruise ships, water parks and hotels. Disney’s amusement parks have long had a particular focus on the subject of innovation as can be seen in the many attractions of the Tomorrowland and Epcot theme lands over the years, from the Carousel of Progress to the high tech interactive facility known as Innoventions.
Surprising to some may be that the effects of the Supreme Court ruling in Alice v. CLS Bank has negatively impacted the patent holdings of Disney as a series of patents protecting lip-sync animation technologies were declared invalid in September by a U.S. district judge in California, which found that the patents only protected an abstract set of rules.

Of particular interest, the Federal Circuit found that the ‘399 patent constituted patent eligible subject matter, was not invalid and was infringed. This is big news because in the wake of the Supreme Court’s decision in Alice v. CLS Bank software patents have been falling at alarming rate. Assuming this decision stands any further review we finally have some positive law to draw from that will provide clues into how to tailor patent claims to make them capable of overcoming what has become a significant hurdle to patentability— namely the abstract idea doctrine. Of course, Judge Mayer was in dissent.

Given that the Supreme Court almost never overrules its own prior decisions, then Justice Rehnquist tried to explain in Diehr that both Gottschalk v. Benson and Parker v. Flook remained good law, despite the fact that the holding in Diehr clearly set patent eligibility for software on a new path different and distinct from the path chosen by the Court in Benson and Flook… In historical terms, the next factual inquiry that presented itself was whether a computer implemented method that transformed data into a readable waveform that could be quickly interpreted was patent eligible. Ultimately, it was wrestling with this scenario that led to the end of the Freeman-Walter-Abele test.

The influence of the thinking behind Freeman-Walter-Abele can also be seen in the Supreme Court’s decision in Alice. Thanks to Alice the focus is now on whether the claims cover an abstract idea or concept, and in order to make the determination we are not supposed to look at the language of the claims, but rather to look through the claims. This causes the apparatus claims to rise and fall with the method claims despite the fact that machines are clearly patent eligible according to the terms of the statute. Further, as the law associated with software developed the industry, with good reason, thought that it would be enough to say that the process steps had to be carried out on a machine (i.e., a computer). That clearly isn’t enough after Alice. While the Supreme Court hasn’t adopted the Freeman-Walter-Abele test, and the current articulation of the test is couched as whether the claims cover only an abstract idea, it does seem that if patent claims could be written to satisfy the moving target of the FWA test then the patent claims should work to satisfy the Alice test that adopts the Mayo framework.

Software patents have a long history in the United States. Computer implemented processes, or software, has been patented in the United States since 1968… Originally in Benson, the Supreme Court decided that software was not patentable, but then later retracted the blanket prohibition against patenting software in Diehr. The Federal Circuit then spent the better part of two decades trying to figure out under what circumstances software (or computer related processes) should be patented. This seemed to culminate in the 1998 ruling of the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group, Inc. Unfortunately, the waters were once again made murky as a result of the 2008 ruling by the Federal Circuit in In re Bilski. Some questions were answered when the Supreme Court issued its ruling in Bikski v. Kappos in 2010, notably saying that business methods are patent eligible, but the Supreme Court did not definitively say that software is patent eligible. Then in June 2014, the Supreme Court issued a decision in Alice Corporation v. CLS Bank, which has for the time being slammed the door shut for many, if not most, software patents.