History of Software Patents III: In re Alappat
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Nov 1, 2009 @ 8:50 pm
On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued a landmark decision in In re Bilski. The United States Supreme Court has accepted the Bilski case and will hold oral arguments on Monday, November 9, 2009. My plan is to be present for the oral arguments, and I have submitted a request to the Supreme Court for press credentials for the day. I still have not heard back from the Clerk of the Supreme Court, and it is my understanding that the Supreme Court has never provided press credentials for those who write primarily online, which is interesting in and of itself given the nature of the Internet and the fact that niche reporting is done far better (typically) by bloggers. Nevertheless, in order to prepare for the Supreme Court oral argument I am picking up the History of Software Patents series. The History of Software Patents Part I appeared in January 2009, and focused on US Supreme Court cases in the software space, namely Gottschalk v. Benson and Diamond v. Diehr. The History of Software Patents Part II appeared in April 2009 and focused on Federal Circuit development of law in Arrhythmia Research Technology, Inc. v. Corazonix Corp., and the supposed demise of the Freeman-Walter-Abele test. Part III now picks with In re Alappat.
Several years after Arrhythmia, the Federal Circuit seemingly abandoned the Freeman-Walter-Abele test. Sitting en banc in Alappat the Federal Circuit did not apply the Freeman- Walter-Abele test, rather opting for the mathematical subject matter exception. The Federal Circuit explained:
[T]he proper inquiry in dealing with the so-called mathematical subject matter exception to Section 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathematical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a “law of nature,” “natural phenomenon,” or “abstract idea.” If so, Diehr precludes the patenting of that subject matter.
Also of particular importance from Alappat is the Federal Circuit’s attempt to explain prior U.S. Supreme Court decisions regarding software patents. In this regard the Federal Circuit stated:
[A]t the core of the [Supreme] Court’s analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.
While the Alappat court may well have wished the Supreme Court decisions to be quite so simple, the truth of the matter is that previous Supreme Court decisions were not at all easy to reconcile. It seemed that the Supreme Court addressed each case on a case-by-case basis, which did not lead to a cohesive and well thought out approach to dealing with software patents. The Federal Circuit, on the other hand, increasingly fine tuned its analysis and continued to develop an increasingly coherent and consistent way in which to deal with the growing corporate desire to patent software, at least until the Bilski decision that is.
Shortly after the full Federal Circuit implicitly eliminated the Freeman-Walter-Abele test in Alappat by not mentioning or applying it, a three-judge panel once again resorted to and applied the Freeman-Walter-Abele test in In re Trovato. This controversial decision did not last long. The Federal Circuit, sitting en banc, withdrew the panel decision, lending further support to the death of the Freeman-Walter-Abele test. Unfortunately, as pointed out in Part II, some of the language from the CAFC Bilski decision does harken back to the schizophrenic and unpredictable Freeman-Walter-Abele test, which is the patent law equivalent of Jason from the Friday the 13th franchise. It keeps coming back even after it seems dead.
The Federal Circuit’s holding in State Street Bank & Trust Co. v. Signature Financial Group, Inc. further bolstered the belief that the Freeman-Walter-Abele test was a thing of the past, at least up until the CAFC Bilski decision. It is certainly true that the Federal Circuit said that they did not overrule State Street, but there is simply no other intellectually honest way to characterize the Bilski decision. Yes, the Federal Circuit explicitly said they did not overrule State Street, but when you throw away the rule announced in State Street and supplant it with something new that is clearly overruling the decision, regardless of whether the Federal Circuit wanted to admit the obvious or not.
CONTINUE READING —> The History of Software Patents IV: State Street Bank
RETURN TO PART 2 —> The History of Software Patents II: Arrhythmia Research
RETURN TO PART 1 —> The History of Software Patents
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.