Amici Urge Caution on Software Patents at the Supreme Court
|Written by Gene Quinn (left), Founder of IPWatchdog, Inc.
Steve Brachmann (right), Freelance Journalist
Posted: March 13, 2014 @ 12:54 pm
In recent years, however, the Supreme Court has shown far more willingness to find things patent ineligible, which is a disturbing trend. In fact, In Mayo v. Prometheus, the Supreme Court conflated Section 101 with 102 to say that something that a patent claim that does not related to a law of nature was still nevertheless patent ineligible as a law of nature because the additional steps added that made it different than a law of nature were merely conventional. Up until Mayo such an analysis had been mandated by the Supreme Court to occur under Section 102. Indeed, the statute the Supreme Court ostensibly must follow requires novelty and conventionality to be addressed under 102. Thus, as the result of Mayo, and the Supreme Court’s decision in Myriad, there is great concern about the future of patent eligibility because it seems the Supreme Court now seems to prefer to find inventions patent ineligible without the mandated statutory analysis under 102, 103 and 112.
Software innovations are ubiquitous in our country, in use by machines and systems from consumer devices on to basic utility grids. There are numerous individuals who are keenly interested in the outcome of this case, and many have volunteered to participate and provide their insight, opinions and arguments to the Supreme Court. With this in mind we wanted to share some of the most informative amicus curiae briefs that have been filed with the U.S. Supreme Court. We have already published articles about the IBM amicus brief, the brief filed by the Solicitor General and the Trading Technologies amici brief joined by another 45 companies. Now as a part of our ongoing coverage of this case, we’ll look at what several other interested parties have to say about the patentability of software, and how our country’s patent system should be treating this issue.
The United States Court of Appeals for the Federal Circuit is the body involved in ruling on major patent validity litigation in this country, and Paul R. Michel is the only retired living Chief Judge of this court. As the brief states, he would have an ability to provide expert and objective opinion because of his 22 years deciding on matters much like this. In fact, few people are as capable of providing relevant, helpful commentary on any patent issue.
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. Some suggest that software is brought into question as possibly patent-ineligible because a computer program relies on mathematical algorithms to perform a process. However, Michel points out that real world applications of natural laws, such as an algorithm, should be patentable if claimed in conjunction with a computer. Although the computer is known prior art, the software serves to specialize the machine, which again would indicate the patentability of software. Furthermore, the tethering to a machine means that the software does not preempt ideas.
Another recommendation regards splitting claims into new, “patentable” material and older material that is sometimes thrown out as irrelevant in patent validity claims. The whole of the claims are the scope of the patent grant, as has been affirmed many times by the Federal Circuit and other courts. Some have advocated for removing old material from the claims, but this is ill-advised. Michel argued:
If a claim can be sliced-and-diced, however, it is likely that each element of the claim is, by itself, old and conventional, and is preemptive of a truly broad range of implementations, as no one works from scratch but God.
Because these patents protect a process implemented on a computer, some features of that process are likely going to rely on prior art, but that alone shouldn’t be enough to render the patent claims ineligible. If the whole of the process is novel, removing prior art material from the claims would create claims that don’t adequately reflect what is being protected. Essentially, removing the conventional re-writes the claim and the re-written claim is then evaluated, which means that patent eligibility would be decided not on the claimed invention but on some judicially re-written version of what was originally articulated as the claimed invention.
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.
More than 1,000 members make up the Intellectual Property Law Association of Chicago (IPLAC), a voluntary bar association operating since 1884. It is the country’s oldest bar association that has a sole focus on intellectual property law. Its members are often involved in intellectual property litigation on either side of the aisle, whether as a plaintiff or as a defendant.
The summary of arguments in the IPLAC amicus brief reiterates the low threshold of Section 101, stating that the elasticity of this section “has made the U.S. patent system one of the strongest in the world.” In order for a patent to be ineligible under Section 101, it must by necessity include natural phenomena, laws of nature or abstract ideas, including mathematical algorithms or fundamental business principles. By utilizing Section 101 as an inclusive threshold, the U.S. patent system can continue to foster “innovation and public disclosure over a wide variety of useful arts.”
IPLAC also advises against various patent eligibility tests adopted by members of the court to handle cases of patent validity. This has led to a diverse spectrum of standards where continuity in decision making is more desirable. Many of these tests also introduce the problem of defining inventiveness, which the IPLAC brief seems to argue is a job that Section 101 was not written to perform. The lack of a uniform definition for “invention” also proves problematic in this regard.
The IPLAC brief concludes by urging the court to continue to apply prior precedents regarding patent eligibility exceptions to computer-implemented inventions under Section 101. The one test for patent eligibility advocated by IPLAC is a simple two-question test which could be summed up as: Do the claims include an abstract idea, mathematical formula or similarly unpatentable material? And, are these natural laws applied to a new and useful end? This is an effective way to judge the patent eligibility of software inventions, IPLAC argues, because at some level every software patent relies on a mathematical algorithm or abstract idea.
IBM’s position as a global leader in technology development is impossible to ignore. Since being founded more than 100 years ago, the company is responsible for the development of virtual machines and the relational database. Its employees have included a number of scientists and engineers whose work with IBM have earned them honors such as the National Medal of Science and the National Medal of Technology. Over the last 21 years, no organization has been awarded more patent rights from the U.S. Patent and Trademark Office than IBM.
Even in its neutral stance, IBM uses a lot of pointed and harsh language to describe the current status of patent law as applied by the USPTO. As the corporation argues, software has been around in some form since the 1950s, it is critical to our nation’s economy and it currently has become an important medium for systems in many other industries, including automobiles and medicine. “The fact that the court is now – in 2014 – actively considering such a basic question as whether computer-implemented inventions such as software are even eligible for patent protection is deeply troubling,” the brief states.
This brief reiterates many of the problems stemming from the court’s inability to find a working test for determining the patent eligibility of software, especially under the terms of Section 101. Although some have taken the view that most software simply takes an abstract idea and applies it to a computer-implemented medium, IBM argues that “even the most problematic computer-implemented invention will be meaningfully different from and narrower than the associated abstract idea.” Instead of declaring software ineligible under Section 101, which could create a reaction that seriously affects software development in our nation, Section 103 and its requirements for non-obviousness should be applied to determine patent eligibility for software. Section 101 rejections won’t foster technological development and improvements to patent granting structures for software in the same way that Section 103 rejections would.
IBM concludes by encouraging the court to consider software inventions as patent-eligible under the terms of U.S. Code Title 35 Section 101. Questions as to the validity of software patents must be evaluated under other sections of Title 35. The official position of IBM is that most of these evaluations regarding software should focus on Section 103 of Title 35.
The Association of the Bar of the City of New York, first founded in 1870, is a non-profit organization of more than 24,000 members involved in a wide range of law-related activities. It’s Committee on Patents is one of more than 150 standing and special committees supported by the organization. This brief, which supports neither party, is filed with the aim of improving the administration of patent laws, one of the goals of the Association.
The Association’s arguments begin with a look at what they deem is Federal Court misapplications of precedents in two cases: Diamond v. Diehr (1981) and Mayo Collaborative Serv. v. Prometheus Lab., Inc. Decisions in these cases have led to a variety of approaches with how to handle patent eligibility claims. A focus on considering claims as a whole to determine whether the claim is patentable, akin to Paul R. Michel’s suggestions above, is heavily promoted here.
Like many other briefs we’ve looked through, this one also focuses on the drawbacks of using Section 101 as the major determinant of patent eligibility in this case. Even in cases where an invention is “routine, well-understood, or conventional,” ineligibility should be determined under Sections 102 for novelty, Section 103 for non-obviousness and Section 112 for claims specification.
This organization is a proponent of any decision that considers patent claims as a whole, as is consistent with the finding in the Diehr case. It also supports the analysis of claim construction as a prerequisite for invalidity analysis prior to any Section 101 inquiries. Finally, it encourages the Supreme Court to decide in a way consistent with the view that patent eligibility determinations under Section 101 don’t take analysis of novelty or obviousness into account.In a few weeks, the Supreme Court of the United States will begin to hear arguments in
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Posted in: Computers, Gene Quinn, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents, Software, Steve Brachmann, US Supreme Court
About the Authors
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.
Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than five years. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. He also provides website copy and documents for various business clients.