Prelude to SCOTUS Oral Arguments in Alice v. CLS Bank: A Software Conversation with Eric Gould Bear
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course Posted: March 28, 2014 @ 12:44 pm
With the oral argument in Alice v. CLS Bank scheduled for Monday, March 31, 2014, I reached out to Bear to see if he would go on the record to discuss the issues he saw in the various briefs filed, what was good, what was problematic, and how he as a software expert would try and convey the issues to a layperson, or scientifically untrained jurist such as the Justices on the Supreme Court. He agreed and we spoke on the record about the issues, using as our focal point several of the high profile amici briefs filed.
What appears below is part 1 of my 3 part substantive software converation with Bear. In part 1 we discuss the false distinction between hardware and software, and Bear goes into deal with examples, saying at one point that most of the innovation today relates to software. He also takes issue with the ACLU amicus brief, calling it “embarrassing.”
Without further ado, here is part 1 of our conversation.
QUINN: Thanks a lot, Eric, for taking the time to chat with me today. I want to talk to you about the big issue that’s sweeping the patent world at the moment, which is the Supreme Court’s consideration of Alice vs. CLS Bank. I know you’re a computer user interface expert, an inventor and a testifying expert as well, so I thought you may be in a good position to try and comment both on the case, on some of the amicus briefs, perhaps what you saw that you liked, what you thought might have been persuasive to you as an industry expert and then maybe what you think may be persuasive or what the Supreme Court may do. I know there’s a lot there but perhaps you can pick a direction and we can go from there.
BEAR: Sure, I’d be glad to. Well, as of the last time I looked, there were 43 filed briefs in all including the two by the parties. And, to be sure, I have not read them all. I’ve reviewed ten of them including, of course, the briefs by the parties in suit. I’m familiar with the Trading Technologies brief, which my own companies joined. And I studied the IEEE, AIPLA, Chief Judge Paul Michel and IBM briefs. I also read at the ACLU, the Google, Amazon, et al, and the Checkpoint, et al, briefs. Those are the ones I’ve read in detail. But please keep in mind – I’m not an attorney. And there’s a lot of case law discussed that’s not in my area of expertise.
QUINN: Well, that’s fine because I don’t really think any of this is the Supreme Court’s area of expertise either. I don’t know whether you saw it, maybe a little less than a year ago Justice Kagen was interviewed by Politico and she said that Justices don’t even use email, which was scary to me.
BEAR: Well, it is. I believe it’s good to have this quantity of material. My biggest concern is whether they are going to read it with a critical eye.
QUINN: Why do you say that? Is it that you think that the issues in this case are particularly nuanced? What do you have in mind when you say that?
BEAR: Well, the issues are nuanced. A few months ago, I wrote an Op Ed piece arguing that false distinctions between hardware and software patents are not the answer. IBM highlights that point of view. The IEEE does as well. But the ACLU, for example, goes starkly against it. And it’s easy to be swayed by propaganda. And I think that’s because the concept of abstract ideas strikes a chord emotionally for people. I certainly trust the court to act intellectually and not emotionally. And I’m optimistic they’ll do what’s right. But there is widespread confusion about “abstract ideas” and confusion around software being distinct from hardware. The possibility of “ideas” being patentable occurs to the uninformed like a threat to freedom in the United States, and it’s hot from a PR standpoint. In the Google brief, for example, they make a big deal about this – and they’re playing both sides.
QUINN: Yes, I know. The thing that I’ve always said about Google is that they really don’t know what they think because somebody there really, really loves these patents because they’re getting over 4,000 patents a year and filing all kinds of applications. They do a lot of complaining about so-called nonsense applications, but if you look at what they file and try and get, they’re trying to get the same things. They just had an application published recently where they were trying to get a patent on a method of ordering in advance of going to the restaurant. So they live in glass houses, I think.
BEAR: Yes. But in a way you can’t blame them. Because while you might not like a system and you might invest in trying to dismantle it, you can’t bank on it. And therefore, you’ve got to play within it, or go so far as to abuse it in some cases. Now, I’m not advocating for that approach. I believe a big part of the problem that everybody sees are the abuses and everybody wants it to be solved. But what “solved” looks like really differs for different parties.
BEAR: There are a lot of interesting issues here. One of the issues particularly interesting to me is the confusing – or perhaps intentional conflating – of section 101 with 102, 103, and 112.
BEAR: Wouldn’t the determination of whether a claimed invention is “abstract” be better handled by the 112 written description requirement? And wouldn’t novelty and non-obviousness questions be better handled by 102 and 103? Instead it seems some parties are trying to shoehorn aspects of 102, 103 and 112 into 101 as a way of shutting the door before the courts can even get to the material questions.
QUINN: Right, right. And that’s something that they’ve historically said that they didn’t want to do, at least until recently in the Mayo case. The Supreme Court has always cautioned that it is important to allow the various parts of the statute do the work they were designed to do. This limited use of 101 has always been so you don’t wind up cutting an entire category of innovation off before you even ask whether it’s useful, novel, or non-obvious.
BEAR: That’s right.
QUINN: Now, there was one thing that I read that really kind of caught my mind. And I’ll just summarize it for you and I’d like to get your thoughts on this. One of the briefs says that it really is difficult for people who are not familiar with what software is and how it is created to understand that it is not an abstract idea but that it really is a set of mechanisms in place for controlling a machine. Do you think that that really lies at the heart of what the problem is for the layperson? That they just don’t know what software really is?
BEAR: Well, I think that’s a key piece of it. Should it matter how much of a machine is built in software versus how much of it is built in hardware? In my mind, it doesn’t really matter. My field of expertise is in human computer interaction. In the span of time between human input to a system and the output from the system back to the human – from the standpoint of the kind of patents that I deal with – it doesn’t matter whether those steps were performed in hardware or in software.
There are times when it’s better to build portions using one medium and not the other. And there are times when you can flip the balance. In the Op Ed piece I wrote back in June for IPWatchdog, I gave an example of a mouse with asymmetrical scroll wheel functionality that impacted how many pages a user might traverse as they scroll up versus down. Different factors might influence one’s choice to implement such functionality in hardware versus software. But it doesn’t matter, as long as you get the same result and perform the same operations. That doesn’t mean the software version is any more an abstract idea than the hardware version. Several of the briefs bring up the fact that at the heart of every invention is an abstract idea that can be bandied about by human beings. The ability to take and systemically implement a novel and non-obvious idea – no matter how abstract that idea is at the core – is what the patent program is here to protect.
QUINN: Could you maybe expand a little bit on the idea that software can really manifest itself in something that is tangible and concrete and performs in hardware? Because that seems to be something that a lot of people challenge. I think that this sort of gets at the hub of what a lot of the so-called laypeople have a problem understanding that software really is not limited to just being “soft.” You can really use hardware to bring about these types of functionalities. So it’s not that there’s not an invention there, it’s really all about form over substance in my mind. Now the question is, how do you get somebody who isn’t really familiar with the technology of software, who hasn’t gone through computer logic classes and hardware classes to understand that?
BEAR: Let’s see if this resonates. At the most basic level of analysis, software can be considered an integral part of a machine that performs special functions, but can be erased and replaced – perhaps with other software that can perform other functions. New soft parts can be downloaded, say from an app store. The hardware, on the other hand, is generally immutable. But many functions can be built in either software or hardware. Video decompression algorithms are a common example – sometimes existing in software, sometimes in hardware. The hardware versions are like codified expressions of the software versions. But they’re both performing the same functions.
Now, think about your smartphone. There are certain aspects that are part of the hardware: the processor, the buttons, the antennae, the graphical display. And then you’ve got all your apps which you downloaded to it that have added new functionality: your weather app, your camera app, your movie player app, your ebook reader app. These are distinct software functions that could be burned into hardware and remain forever inflexible. But that’s just not how technology generally works these days. Much of our innovation these days – most of it, in fact – is in software. Even our cars, SLR cameras, pacemakers, hearing aids – each of which present like immutable machines, have software subsystems that can be reprogrammed at will.
QUINN: So almost the very fact that it is flexible and not as you I think you just said ‘burned into it’ somehow in the mind of some people makes it trivial and less valuable as an innovation it seems. When it seems to me that it should be the exact opposite way.
BEAR: Well, it’s being treated as if it’s an abstract idea because you can’t touch it. You can’t put it under a magnifying glass and see its constituent parts. When you turn a doorknob on a door, inside are all these physical parts that turn and move the striker in and out, enabling you to open or secure the door. But you can also dial a remote code from your phone software to give a door a signal to unlock remotely. Some would argue that such functionality should be unclaimable. The ACLU brief takes this to an extreme, and is kind of embarrassing, I think. Have you read it?
QUINN: I’ve looked at it briefly. That’s not one that I’ve spent a lot of time on. I’m kind of working my way up to being able to stomach some of the arguments that are there.
BEAR: It’s really phenomenal. They argue that writing software code is a speech act that should be protected under the First Amendment. Since code is an expression from a person written in a language of human communication, they argue that anything blocking somebody from expressing themselves in such a language is a challenge to the First Amendment.
QUINN: Well that would mean that the entire body of copyright law violates the First Amendment, which is not something the Supreme Court, or any other court, has ever held, although they’ve been invited to do so.
BEAR: One of the far out things that they say is, oh, if you were to write an article about a patented invention and provide an example using software code in the article then you could find yourself in a position of infringement – at least induced infringement – because you have expressed code that somebody might implement and thereby infringe on another’s patent.
QUINN: Yes, see, and that’s the problem what you get is those truly asinine arguments when an entity like the ACLU who knows nothing about patent law tries to get involved in an area that they really just don’t understand. I mean a lot of people are afraid that the Supreme Court will be convinced by some of these truly just frivolous, specious arguments. If that happens it could destroy the software world, which would be a terrible blow to the economy. Without patents the software startup is not able to get the money they need to move forward and you’re going to get far less innovation. It seems to me that the whole idea of what is innovation is just fundamentally misunderstood. Certain briefs are going down the path of saying that if others can’t write this code then their innovation is being stopped. This argument strikes me as fanciful because those who are out there merely copying code from others are not innovating, they’re copying what others have done. There is nothing innovative about copying what others have previously done.
BEAR: That’s right. And what’s missing is intelligent extrapolation. The risk we have in this case is that there are positions being put forward that would need to be analyzed to the breaking point. Take the ACLU’s example of publishing code as free speech. It is, of course, reasonable that people would want to be able to communicate using programming languages. But that doesn’t mean those communications are stored in computer executable format, right? Using computer code in a publication as a representation of speech is not the same as a computer readable medium that’s executable by a computer.
It doesn’t take much effort to extend the logic of such an argument to ask, “what would it be like to apply that same principle to something physical, like the manufacture of an engine which someone could diagram and describe.” If someone were to build a patented machine that has been described in a publication well, then, they’d be at risk of infringing. But there’s nothing about the patent system that precludes public disclosure or restricts free speech and discussion of patented inventions. On the contrary, I believe that the patent system fosters both innovation and public disclosure because it allows entities to protect their R&D investments while disclosing information about work-in-progress. Those disclosures are important for the industry because they’re what kick everybody else in the butt to try and one-up each other with new and better ways of doing things. Without the protections that the patent system affords, companies would have to act in more secrecy to avoid public disclosure. That would slow down the release of new products that make the world a better place and it would slow down competition. That’s my belief. IBM and the IEEE, if I’m remembering correctly, both made that socio-economic risk plain in their respective briefs.
QUINN: I think you’re right. And I think we have evidence of that, although the critics simply ignore it. If you look—every year the World Intellectual Property Organization does a listing of countries and the inventiveness of countries based on a sort of what’s called a complex scoring algorithm. The countries that come in at the bottom are also the countries that don’t have any innovation and most of them don’t even have an economy like Ethiopia, and the Sudan, and many countries in the Middle East. And it’s striking to me that on a factual basis it can be proved that the argument completely falls apart, yet they continue to make it. For example, if patents were going to stop innovation you would expect to see runaway innovation in places with no patent system. And you would expect to see no innovation in places where you have strong patent rights. And instead what you see is the exact opposite. And yet somehow that doesn’t seem to conclusively prove that they’re wrong. To this they say, “correlation is not causation,” which really translates into “I have no facts and need to say something pithy to justify my ignoring the overwhelming facts you have on your side.” But it doesn’t stop there. They make these arguments about how innovation is different now than it ever was, which to me just sounds like they are saying “I’m special, I’m different, I don’t want to have to play in the patent pool and prefer you to conform to my lack of business acumen to level the playing field.”- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.