History of Software Patents III: In re Alappat
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Written by Gene Quinn Patent Attorney & IPWatchdog Founder Editor of the IPWatchdog.com Blog Posted: November 1, 2009 @ 8:50 pm Page viewed 2,571 times 
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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.
Part IV of the History of Software Patents will focus on the State Street decision and exactly how and why the Federal Circuit did, in fact, overrule the central legal test set forth by Judge Rich in State Street.
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- The History of Software Patents (♥ ♥ ♥ )
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- Deciding Bilski on Patentable Subject Matter is Just Plain Wrong (♥ ♥ )
- Bilski Arguments Complete at the US Supreme Court (♥ ♥ )
- Exploring Justice Steven's Patent Past for Clues (♥ ♥ )
- A Bird's Eye View of the Bilski Oral Argument (♥ ♥ )
- The Fundamental Unfairness of Retroactively Applying Bilski (♥ ♥ )
- US Supreme Court Grants Cert. in Bilski (♥ ♥ )
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Posted in: Computers, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Blog, Patent Fools™, Software, US Supreme Court
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Gene,
What is interesting about both the CAFC decisions and the Sct. decisions is that in all instances we have judges appointing themselves as experts on what mathematics is and on what natural phenomenon or abstract ideas are, and what reality and application of ideas are, without ever calling for testimony from expert witnesses in these fields. One would suppose that the Supremes have already patented reality for themselves and thus have exclusive say so on what it is or is not.
Early on, in his book, Road to Reality, author Roger Penrose discusses the interrelations between mathematics as thus far fabricated by mankind and our current understanding of the Universe and why “reality” may or may not intersect with either of these.
See:
http://en.wikipedia.org/wiki/The_Road_to_Reality
P.S. The scheduled oral arguments date, 11/9 will be 9/11 in reverse. But then again, it’s just numbers and those don’t matter.
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Can someone explain to me why the tests of “novelty” and “practical utility” are not sufficient as the line of demarcation against frivolous patent apps? Specifically, why should novel abstract mathematical inventions (reduced to practice) be walled off as unpatentable?
Here’s the argument for their patentability: If novelty is truly being met, then the invention comes as a revelation to everyone but the inventor. Beforehand, there is no awareness of the invention, nor practical usage. Therefore, nobody can argue that “something they already have been enjoying” is taken away, or its use restricted by licensing, as a result of issuing a patent. If they can document prior usage, then they immediately have a defense against infringement. But, in the case of true novelty, they are finding out about the invention, and gaining a means of access to it EARLIER than would be the case without patentability.
Mathematical and algorithmic (or business process) inventions are no more inherently difficult to adjudicate than organic chemistry or nano-optical inventions…all require specialized domain knowledge (and perhaps open-peer dissemination) to evaluate for novelty and practicality. The only drawback to “thoughtware” IP patents is that their potential numbers dwarf the number of physical process patents, because the latter are more bound by physics constraints.
However, is there any moral or legal basis for walling off content just because a wall is needed to prevent the volume of patent applications from expanding uncontrollably? Wouldn’t it be truer to “promotion of the sciences and useful arts” to evolve the patent system to handle 10-100X higher volumes, instead of trying to arbitrarily wall off high-volume content areas as unpatentable?
Pierre,
Yes, I’ll answer part of your question; and actually this goes to the heart of the oral arguments heard on Nov. 11, 2009 by the US Supreme Court.
Historically, US patent and copyright laws have split with the former being structured to cover the “Useful Arts” and the latter being structured to cover the “Entertainment Arts and other non-useful arts”.
I’ll give you an example of entertainment arts. A musician, who knows next to nothing about electronics and computers, records a new and nonobvious musical piece using a conventional CD or DVD disc burner. The CD or DVD he produces is a novel article of manufacture (the pits or phase changes on it are different from those of other such discs) and yet most of us will be in agreement that the musician should not get a patent for his acts because they are directed purely to the entertainment arts and not to the “useful arts”.
So what are the “useful arts” and why is non-applied mathematics not included among them? As to the first part, that is the 64 million dollar question that the US Supreme Court was trying to come to grips with yesterday (Bilski versus Kappos).
However, as to the second half of the question, it is current US law that merely thinking about a mathematical problem and its non-applied, abstract solution is no different than thinking about a cross word puzzle and what words might fit into the boxes or thinking about a chess position and what next move you should make. It is all very entertaining and some of it is indeed hard and brilliant work. However, a policy decision was made that patents should not provide property rights for activities that do not fall in the “useful arts or processes” category. US patent law section 35 USC 101 specifically says: “any new and useful process” (where “process” is defined in 100(b) to include “art”).
I agree with you that mathematicians have been unfairly cut out from being compensated directly for the clever and often useful work product they produce. In fact, Bernard Bilski and his co-inventor bill themselves as a bunch of mathematicians. What they tried to get a patent for was for the applied version of a commodity hedging system they came up with. So far the US Patent Office and the courts have said no; which is why they were in front of the US Supreme Court yesterday.
Hope this helps.