Prelude to SCOTUS Oral Arguments in Alice v. CLS Bank, Part 3

This is the third and final installment of my conversation about software, patents and software patents with expert and inventor Eric Gould Bear. To begin reading our conversation from the beginning please see A Software Conversation with Eric Gould Bear.

BEAR: In Judge Michel’s brief, he writes about not confusing §101 with §102 and §103. I’m also looking at this and thinking that patentability questions regarding “abstract ideas” may, perhaps, be better handled under §112 on specificity grounds.  What do you think about that?

QUINN: I totally agree.  And I think that that was the way that Director Kappos meant it when he was at the Patent Office and the Bilski case came out.  That was what he was urging the examiners to do. Do not to make this a §101 issue but instead get the §112 issue. I think that’s the exact right approach because the real question I think they’re struggling with is whether there is an invention there.  You can’t know whether there is an invention there until you ask what does somebody of skill in the art understand by reading the disclosure.  And what some want to do is make it a §101 question so that they don’t have to do any analysis or heavy lifting.

BEAR: Heaven forbid.

QUINN: I think you need to get to what is described in the specification and ask whether there is enough there to prove that the inventor is in possession, or that the application sufficiently describes the invention that the inventor is in possession of.  Instead, they want to focus on claim techniques and then also at the same time really ignore the claims themselves. What some members of the Federal Circuit said was that the method claims and the computer readable medium claims fall into one category and therefore the system claims, which are clearly tangible, fall into that same category because the system claims are really just trying to claim the same thing as the method and computer readable medium claims.  Of course, the system claims have all kinds of tangible elements in the claims specifically recited. So what these Judges did was determine patent eligibility without ever looking at the claim. Either claims are required and you have to look at them or they shouldn’t be required and then we just look at what’s in the specification. Sadly, it seems those advancing this viewpoint are trying to have the best of both worlds; namely look at the claims when they do not include patent eligible subject matter and ignore the claims when they do include patent eligible subject matter and pretend they are abstract despite having tangible components.

BEAR: It seems backwards to say that a test applied to a method claim should therefore apply to a system claim.  A more stable analysis model might be to go in the other direction.  The claimed system – separate from novelty and non-obviousness – seems to clearly pass the §101 hurdle.  The method claims, however, raise a question of whether they’re clearly to be implemented on a computer.  Do the specification and claim limitations make that intent unmistakable?  Whether they wrote the patent well enough to make such context explicit or inherent in the claims is really a stand-alone question.  But I don’t think it’s a §101 question.

QUINN: I think if you read the method claims some people would really scratch their head and say, you know, where is there anything tangible there?  The problem is that during the oral arguments the attorneys for CLS Bank admitted that there were tangible components recited in the method claims, that certain of the terms in the claims had been defined in the specification, and that the definition made them tangible.  So, from a legal standpoint, that should be all she wrote. You shouldn’t be able to go back and undo that admission.

BEAR: One would hope.

QUINN: Which sadly they seem to have done.  While it is not sexy, I think that admission really answers the entire question associated with the method claims.  If it’s tangible it should be patentable – because that which is tangible can’t be abstract, which seems rather self evident to me really. It strikes me as a particularly intellectually dishonest definition of “abstract” when you argue that something real, tangible, and you can put your hands on is abstract.

BEAR: Well, the other test to look at is whether the method can be performed in the human mind alone – or possibly with paper and pencil.  More importantly, the question is, “Would it be practical to do in a human mind alone, or by a person with paper and pencil?”  And here, the answer should be a resounding, “No, it’s not practical without a computer.”

QUINN: I don’t think it’s possible, either, particularly with the systems claims.  There is mention of a computer.

BEAR: That’s right.  This is a question for method claims not physical apparatus claims.

QUINN: I agree with you completely, and I have written about that.  And I was kind of hoping IBM would make a bigger deal about that.  Because they are in the best position really to make this argument convincingly.  Because if you look at Watson, Watson does 80 trillion calculations per second.

BEAR: It’s amazing.

QUINN: Now there is no amount of lifetimes a single individual could live in which they could do 80 trillion anything.

BEAR: Of course not.

QUINN: And that’s what Watson can do in one second.  So this whole argument that software should be viewed by whether a human could do it using paper and pencil is childish.  Saying that a human could do these things is a misrepresentation of reality.  But yet that logical fallacy works its way into the Federal Circuit decision – software’s not patentable because it merely does what a human could do, just faster.  But that’s what methods have done since the dawn of the patent age.  A method has always been patentable if it does something better, stronger, faster, more reliable, more predictable, and/or in an automated fashion.

BEAR: One would think!  You know, I’ve faced the automation issue in patent prosecution myself and found that adding the word “automatic” was what got claims allowed.

QUINN: I can somewhat see that because then that makes it such that a human couldn’t do it.  But on some level this case really is not even about preemption.  The solicitor’s brief, the government’s brief in this case, admits that even the method claims are not preempting anything. And up until now that really has been the cornerstone of the patent eligibility analysis. We don’t want to give you a patent on something if you’re going to preempt an entire field.

BEAR: Yes, great.  I’m really glad you mentioned that – because that’s another issue that really struck me.  For all three types of §101 exclusions to consider, is the claimed invention going to preempt any use of a law of nature, a phenomenon, or an abstract idea universally?  The ways in which the claimed approach to using escrow is being described by the respondents and their supporters is as if there’s no possibility of a design around.  They talk as if there’s no other way of doing it, and argue that the claims cover the most broad, general ways of handling escrow.  But as I read the claims, there seem to be specific limitations that make the claims narrower than a generic definition of what it means to use an escrow account.

QUINN: Right.

BEAR: And it should be impetus for others to either design around the claims and maintain parity with them, take a license and improve upon it, or design around the claims in ways that are even better.  To me, the claimed invention doesn’t appear to be universally preemptive.

QUINN: I agree.  And that really, I think, should answer the question.  Whether it does or not is a whole other question in and of itself.  But I suppose we’re going to know soon enough.  I just really hope they get this one right.

BEAR: I hope they do, too.

QUINN: I think a lot of people believe they have gotten the several recent biotech cases wrong, in Myriad and in Mayo. This is not to say that the claim in the Mayo case should have been patentable, but it should have been patent eligible under §101 and that’s largely why we’re in this whole mess. The Supreme Court opened Pandora’s Box. They had never done this before and they had always said that you couldn’t and shouldn’t conflate §101 with §102, §103 and §112, yet they did anyway. They don’t even know enough about patent law to really understand the Pandora’s Box they were opening when they were saying that if you have a law of nature and then you add only conventional steps to that law of nature it’s not patent eligible because it’s still a law of nature. Well, the factual and scientific reality is that if you add things to nature and it is not naturally occurring then it is no longer a law of nature. That is, of course, self evident even on a purely logical basis, but the Supreme Court has said some truly bizarre and incorrect things from time to time.

BEAR: Well, if you make use of a law of nature in accomplishing something, that’s just fine.  I mean, every invention has to be a combining of some – if not all – preexisting elements in a new way.  There’s nothing that’s truly new.

QUINN: Right.

BEAR: Everything has to come from somewhere.  In product design, there’s no “immaculate” conception.  Novelty doesn’t live in a vacuum.  That’s why the courts need to look at each claim as a whole.  The sum of the parts is the special sauce.

QUINN: Right.

BEAR: And I guess the last thing to look at is the appropriate relationship between – and this is a loaded question, really – the courts’ and Congress’s roles in making these definitions?

QUINN: Yes. Well, they’re supposed to follow the law unless it’s unconstitutional.  And if they do that then what they will do is they will say that this, all of these claims are patent eligible and that proper analysis comes under §102, §103, and §112, because this is not what §101 is intended to do.  But I really don’t have any belief that they are going to do that or get that right.  I mean, if you look at the Myriad case for example, Justice Thomas who’s writing for an unanimous court comes right out and says that it doesn’t matter how interesting a discovery is, the discovery is not patent eligible.  But if you actually read the statute, what he said is a completely wrong. The statute specifically says discoveries are patent eligible.  So the court makes these sweeping statements that to them seem to make sense to the layperson, but are completely contradictory to the law.

This is hardly shocking though. This comes from the same Court that at one point said a pH of 5 is equivalent to a pH of 6, which is absurd because pH is logarithmic. The Supreme Court also said once upon a time that manganese is equivalent to magnesium.  I mean these are scientifically ridiculous statements.  They’re just not true.  They said in Festo that in order to be entitled to prove infringement under the doctrine of equivalents the patentee has to provably demonstrate they were not in possession of the equivalent at the time they filed the application.  What that means is that the patentee must prove that they didn’t invent. If the patentee proves they did not invent then they are entitled to claim infringement under the doctrine of equivalence. These are just four different cases where the Supreme Court said things that are provably and clearly wrong.  These folks are not infallible, but particularly so when it comes to the intersection of science and patent law.

BEAR: Well, I guess we’ll just see what happens.

QUINN: Yeah, that probably didn’t make you as an inventor feel very good when I was saying all that, huh?

BEAR: What’s new?  The Federal Circuit report was just all over the map.

QUINN: And that in and of itself is the problem, isn’t it?  Software is so interwoven into the fabric of our economy and into innovation and nobody knows whether and to the extent it is patent eligible.

BEAR: It shouldn’t be a question of whether software is patent eligible, though.  It should be a question of how to write claims with sufficient specificity to be allowable.

QUINN: Right. Tell us how you want us to articulate the invention and we’ll give it to you.

BEAR: Exactly!

QUINN: But getting protection on something that is so vital to the economy touches so many different areas of innovation – whether it’s communications satellites, or automobiles, or whether it’s really the type of software that we used to once upon a time buy in a box at the store.

BEAR: Indeed.

QUINN: We can explain it to you.  We just ought to be given the opportunity to know how you want us to explain it so that we don’t have to continually guess.

BEAR: When the Constitution was written, there was no concept of software.  Nor was there computer hardware.  We had physical, you know, very physical mechanical inventions.  And computers have come around and software has come around, and the interpretation of these statutes has had to shift with the technology.  And as unimaginable as it may seem to us here in 2014, there’s something in our future as unimaginable as software was when the Constitution was written.  Inventions in that future domain need to not be shut down because of the way we rule today on §101.  So the request for not having a real hard line – a bright line – is important.  It protects the possibility of fostering future inventions in domains we can’t even imagine.

QUINN: I couldn’t agree more.

BEAR: So let’s end on that note.

QUINN: That sounds good. Thanks, Eric.

BEAR: My pleasure, Gene.