This article tries to bring a little more clarity to what is a computer-implemented invention —and what is an obvious use of a computer —by reviewing some of the Alice v CLS Bank oral arguments.
Certain things are obvious. It was obvious in the oral arguments that it was a challenge for both the Supreme Court judges and the lawyers to distinguish between abstract ideas, ideas, computer programs, technological innovations, patentable subject matter, and inventions. (This confusion also showed up in the seven different written opinions of the judges in the Appeals Court review of this same case.)
In the oral arguments (P34-L17), Justice Sotomayor in response to a discussion on abstract ideas, inventive contributions and the Mayo test for technological innovation asked Mr. Perry, counsel for CLS Bank, the following…
Justice Sotomayor: “How about email and just word processing programs?”
Mr. Perry: “At a point in time in the past, I think both of those would have been technological advances that were patentable. . . . because they would have provided a technological solution to a then unmet problem. Today, reciting, and do it on a word processor is no different than and do it on a typewriter or [sic] — and do it on a calculator.”
Throughout the one hour oral discussion there were many references to e-mail and word processing and there was the general belief that sometime in the past both word processing and e-mail were inventions which deserved patent protection.
Mr. Perry was wrong about word processing and e-mail. Providing a “technical solution to a then unmet problem” and providing a “technological advance” often does not constitute making an invention. That’s because with computers you can often make a technical advance that is obvious.
Let me try and explain why it is not an invention by giving you a concrete example of my previous company’s experience developing and marketing both a word processing product and an e-mail product in the 1970’s and 80’s.
In the 1960’s Applied Data Research (ADR) developed a software product called Autoflow and needed technical documentation to support its use. So rather than use a standard typewriter or the several stand-alone word processors that were available (IBM’s Selectric Typewriter or Wang’s word processor) ADR had the idea, in the late 1960’s, to develop an in-house program on its IBM mainframe computer for creating and updating manuals. The program was quite flexible and included an automatic table of contents and an automatic one word index. Over the years it was used to produce manuals for all of ADR’s products. In 1974 we named it ETC (Extended Text Compositor) and began to market it as a new ADR product. With the advent of display terminals in the 1970’s the product was enhanced and became On-line ETC. We advertised it as follows “On-line ETC automates the preparation of any textual material from 1-page memos to 250 page user manuals”.
By the late 70’s ADR had expanded to eleven domestic offices and, for better internal communication, had dedicated leased lines to all of its offices. In 1981 we expanded On-line ETC so that ADR could replace its domestic TWX machines (which were tied to the leased lines) with a system for electronic mail transmission using IBM 3270 terminals. The ETC facilities were modified so that you could specify recipients by name, group, or function (like all sales managers or all people in one office). It was very functional and in 1982 ADR began marketing this in-house program as ADR/Email. Although ADR was the first company to market an Email product we did not invent electronic mail. In the 1970s IBM also had its own internal e-mail program for its employees on its own worldwide network and ARPA was using an e-mail system as it was developing ARPAnet, the forerunner to the Internet.
Was using a computer to develop a word processing program an abstract idea or just an idea? Let’s agree that ADR had the idea to build a word processor system for its own use. And let’s agree ADR was the first company to license a word processing software product for mainframe computers. Yes, it was a technological advance. But did the ADR developers invent anything and was ADR remiss in not seeking patent protection. Absolutely not. The implementation of a word processor on a computer was obvious. It was not a flash of genius. It was simply filling an in-house need. While the Courts have used the term “abstract idea” to differentiate that term from an “idea”, there are many in and out of the legal profession that believe it is only a play on words (see The Paradox Of “Abstract Ideas”). Ideas or abstract ideas, most agree, are not something that is patentable in of itself. So how do we get from an idea to a patentable invention?
There is no clear legal definition of “invention”. The USPTO defines “inventions patentable” as “whoever invents or discovers…”. Certainly, ADR did not discover word processing or E-mail. This is true about most uses of general purpose computers, be it mainframe computers or PCs. It was absurd for Amazon to argue that in 1997 they discovered the one-click computer processing for which it received a patent. It was an obvious use of a computer. Since the early days of computers storing customer information and reusing the same information was the way most applications were programmed. Unfortunately there have been thousands of patents issued where there was no invention; just an idea to do something different or new on a computer. Another good example of a good idea, but obvious, is Apple’s slide-to-unlock patent which is currently being contested in court.
No wonder there is such apathy for computer implemented inventions. As I wrote in my previous IPwatchdog article Misnomers, Myths, Misunderstandings and Misconceptions about Software Patents “Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure.” While the Courts have in the past tried to define obviousness (see Supreme Court: Current Test of Obviousness is “Gobbledygook”), not much has yet changed.
But there are thousands of valid computer-implemented inventions where the entire patent is based on using a computer to solve a previously unsolved problem. A good example is Microsoft’s research labs development of instant English-Chinese translation which lets English speakers talk in Mandarin in a user’s own voice. This is a software-only development that certainly is not obvious, probably required lots of research and testing, and could be a breakthrough in real time voice translation between different languages.
Another computer-implemented invention, but where the computer is used in a very obvious way, is the Argus II Retinal Visual Prosthesis invention. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013. Here the software, which analyzes video input, is only a small part of the invention. It’s an outstanding and important invention, but it falls under the classification of a computer-implemented invention. Would one want the Court to deny patent protection for these computer implemented inventions?
In the past, the Court has recognized that the use of a computer in implementing a new discovery is no basis for denying the patentability of an invention. Let us hope the Court will continue to recognize the importance of computer-implemented inventions — since virtually every major industry depends on the US Patent System to protect their computer-implemented inventions.