Software: The Heart and Soul of Many Innovative Advances
|Written by Charles Cooper
Posted: March 12, 2014 @ 10:42 am
EDITORIAL NOTE: A diverse group of 46 amici, spearheaded by Trading Technologies International, filed an excellent amici brief worth reading in Alice v. CLS Bank at the United States Supreme Court. The Summary of the Argument is republished here with permission. Charles J. Cooper is the Counsel of Record, but is joined on the brief by Vincent J. Colatriano and William C. Marra (both of Cooper & Kirk), as well as Steven Borsand and Jay Knobloch (both of Trading Technologies)
In keeping with the Constitution’s expansive grant to Congress of power to secure for “Inventors” exclusive patent rights to “promote the Progress of Science and useful Arts,” U.S. CONST. art. I, § 8, cl. 8, Congress has since 1790 broadly defined the subject matter of inventions eligible for patent protection. For nearly as long, this Court has applied exceptions, of its own making, to Congress’s designation of these “broad patent-eligibility principles.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). This case focuses on one of those judicial exceptions – the “abstract ideas” exception.
The Court granted certiorari to decide “[w]hether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?” Importantly, the patent claims in this case do not recite “a scientific truth, or the mathematical expression of it,”  Mackay Radio & Tel. Co. v. Radio Co. of Am., 306 U.S. 86, 94 (1939), and no court below entertained any evidence relating to whether the claims are novel and non-obvious under Sections 102 and 103 of the Patent Act. Thus, the question here is whether computer-implemented inventions that are not directed to a scientific truth should be deemed ineligible even if such inventions are novel, non-obvious, and otherwise patentable. 
In light of Section 101’s expansive language unambiguously making “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” eligible for patent protection, the answer to this latter question must be “no.” There is no doubt that a computer- implemented invention qualifies as a “machine” (e.g., a computer programmed to carry out an invention), a “process” (e.g., the series of steps performed by the programmed computer to carry out an invention), and an “article of manufacture” (e.g., the programmable media on which software comprising the computer instructions is stored). Moreover, given that a general purpose computer is a “machine” within the meaning of the statute, it also follows that software providing new and useful functionality to a computer is an “improvement” of such a “machine.”
The approaches to the “abstract ideas” exception suggested by some of the opinions below and by Respondents and their supporters are not grounded in law and will adversely impact tens of thousands of legitimate patents protecting inventions that solve pressing real-world problems in almost every industry. At the most basic level, the various tests pro- posed below that result in finding any of Petitioner’s claims ineligible under Section 101 are based on a fundamentally flawed understanding of computer- implemented inventions today. These approaches are based on the false notions that a computer is merely a calculator and that programming merely instructs the computer to perform basic mathematical calculations. While this may have been true of many of the applications programmed on the earliest computers over 40 years ago (such as the program at issue in Gottschalk v. Benson, 409 U.S. 63 (1972)), it is simply not the case today.
The capabilities of computers have dramatically grown and evolved – computers are highly configurable machines capable of being turned into new and different machines through how they are programmed. Today, software forms the heart and soul of many innovative advances in all aspects of society, including automobiles, aircraft, mobile phones, audio/visual equipment, medical devices, gaming devices, engine and power generation systems, data mining and analysis tools, administration and management tools, and appliances. Viewing computers as merely calculators is completely disconnected from the reality of where innovation is occurring today and where most innovation will occur in the future.
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. As Judge Moore noted in her partial dissent below, between 1998 and 2011, the PTO issued more than 300,000 patents in just one of the host of patent classifications that include computer-implemented inventions. CLS Bank, 717 F.3d at 1313 n.1. Indeed, the U.S. Government Accountability Office recently reported that approximately 50% of all granted pa- tents are software-related. U.S. GOV’T ACCOUNTABILITY OFFICE, GAO-13-465, INTELLECTUAL PROPERTY: ASSESSING FACTORS THAT AFFECT PATENT INFRINGEMENT LITIGATION COULD HELP IMPROVE PATENT QUALITY 12-13 (2013). This body of patents comprises an important literature that is available to re- searchers and developers in every field, who are free to use the information disclosed in these patents (much of which would otherwise be cloaked in trade secrecy) to develop improvements and, upon expiration of the patents, to practice the inventions.
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. Computer-implemented inventions thus reflect the patent system’s “carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989).
All of these benefits are put at risk by an expansive reading of the “abstract ideas” exception. Indeed, several members of the en banc Federal Circuit expressed concern that engrafting a broad “abstract ideas” exception onto the plain text of Section 101 would suffocate valuable innovation and investment in the field of software and computer technology. See CLS Bank, 717 F.3d at 1309 (Rader, C.J., et al., concurring in part and dissenting in part); id. at 1332 (Linn & O’Malley, JJ., dissenting); id. at 1313 (Moore, J., dissenting in part).
The warring opinions below vividly reflect the widespread confusion regarding how to apply the “abstract ideas” exception.  It is therefore imperative that the Court now provide concrete, practical guidance regarding the exception’s scope and analytical contours. Amici respectfully urge the Court to make two points clear, both of which are compelled by the language and history of the Patent Act, this Court’s precedents, the Constitutional separation of powers, and the purposes underlying the Constitution’s grant of power to Congress to promote technological innovation through the patent system.
First, insofar as it applies to claims that do not recite scientific truths (see note 3, supra), the “abstract ideas” exception to Section 101’s broad designation of patent-eligible subject matter must be narrowly construed and applied. As stated in Benson, the proper focus of the exception is on “abstract intellectual concepts” – that is, purely mental impressions or processes. 409 U.S. at 67 (emphasis added). As this Court has repeatedly acknowledged, Congress chose, for sound policy reasons and in the considered exercise of its Article I powers, to give expansive, permissive scope to the subject matter of inventions and discoveries eligible for patent protection. It should be the rare claimed invention that does not satisfy the generous eligibility criteria established by Congress, and for the courts to broadly apply judge-made exceptions to those statutory criteria would threaten both to usurp congressional authority and to stifle technological innovation.
Second, the exception to Section 101 established in this Court’s precedents dealing with “laws of nature, physical phenomena and mathematical formulas” (i.e., claims directed to scientific truths), is not implicated in this case. The exception to Section 101 that is implicated here – the exception for “abstract ideas” – merely asks whether a claim fails to recite tangible elements, such as computing elements. Patent claims that disclose an invention requiring implementation through computer devices or programmable media do not and cannot constitute an “abstract idea” for purposes of the Section 101 eligibility inquiry. This is not to say that all such claims are patentable; some will fail to satisfy novelty, nonobviousness, and other conditions governing patentability. But a claim that is not directed in any way to a “scientific truth” and that recites tangible elements (such as computing elements) cannot be deemed ineligible under Section 101. Not only do such claims fall well within the realm of eligible subject matter defined by the language and history of the Patent Act, but their eligibility under Section 101 is also entirely consistent with this Court’s precedents.
 The exception directed to laws of nature, physical phe- nomena and mathematical formulas (as set forth in this Court’s precedents) addresses such types of claims. For simplicity, the term “scientific truth” is used herein to encompass scientific truths and mathematical expressions of such. Scientific truths are laws of nature, natural phenomena and pure mathematical laws or axioms. A scientific truth can be expressed in words or mathematically. For example, Einstein’s theory of relativity is expressed mathematically as E=mc2. Of course, as this Court’s decisions make clear, not every invention involving mathemati- cal calculations implicates this exception. Indeed, most do not, because they are applying mathematics, not reciting a pure mathematical law or axiom. For example, the automobile- related inventions discussed below apply mathematics (making distance and other calculations based on input from sensors).
 Petitioner reads Bilski to have rejected a patent that, like the patents rejected in previous decisions applying the “ab- stract ideas” exception, recited a “fundamental or mathematical truth.” Pet. Br. 25-26. But because it is equally plausible, in amici’s view, to read Bilski as applying the “abstract ideas” ex- ception to claims that do not recite scientific truths, we devote our presentation to a demonstration of why computer- implemented inventions do not fall within the exception even as so conceived.
 Such complaints are hardly new. In the 1850s, for ex- ample, sewing machine manufacturers were up in arms over the proliferation of sewing machine patents, and yet judicial intervention was unnecessary to ensure innovation because private-ordering solutions eventually emerged. Adam Mossoff, The Rise and Fall of the First American Patent Thicket: The Sewing Machine War of the 1850s, 53 ARIZ. L. REV. 165, 170 (2011). Similarly, such unfounded complaints were made in the 1980s about the number of semiconductor patents.
 See also Mark A. Lemley, et al., Life After Bilski, 63 STAN. L. REV. 1315, 1316 (2011) (“Lemley”) (Following Bilski, “the problem is that no one understands what makes an idea ‘abstract,’ and hence ineligible for patent protection.” (footnote omitted)).
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