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SCOTUS Rules Alice Software Claims Patent Ineligible


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: June 19, 2014 @ 10:54 am
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Justice Thomas

UPDATE 2: June 19, 2014 at 6:44 pm ET.

On Thursday, June 19, 2014, the United States Supreme Court issued its much anticipated decision in Alice v. CLS Bank. In a unanimous decision authored by Justice Thomas the Supreme Court held that because the claims are drawn to a patent-ineligible abstract idea, they are not eligible for a patent under Section 101.

In what can only be described as an intellectually bankrupt opinion, the Supreme Court never once used the word “software” in its decision. This is breathtaking given that the Supreme Court decision in Alice will render many hundreds of thousands of software patents completely useless. While the Supreme Court obviously didn’t want to make this decision about software, the holding does make it about software because each of the ways software has been claimed were ruled to result in patent ineligible claims. On first read I don’t see how any software patent claims written as method or systems claims can survive challenge. For example, these claims to IBM’s Watson computer, which is really akin to the first generation omnipotent Star Trek computer, seem to be quite clearly patent ineligible. See Is IBM’s Watson Still Patent Eligible. It is impossible to see how the Watson claims remain patent eligible in light of this ruling and how the Alice claims were written. The only potential solace for IBM and others would be if the Federal Circuit narrowly interprets this decision noticing that the Supreme Court seemed almost preoccupied by the fact that the patent claims covered a financial process. Still, the structure of the claims are nearly identical, with Alice’s claims actually having more recited structure, if anything.

More difficult to understand is how the Court could issue a decision that doesn’t even use the word software. Software is clearly patent eligible if you read the patent statute. Software is mentioned throughout the statute. It was specifically mentioned in the America Invents Act in 2011. Tax strategies are not patent eligible in and of themselves, but the AIA says that software is not patent ineligible just because it incorporates a tax strategy. This is the type of analysis the Supreme Court engaged in the Bilski decision finding that business methods are patentable.

So, at the end of the day today there is a tremendous irony. Software claims as they have typically been writing now seems to result in patent ineligible claims, although the Supreme Court didn’t specifically say that software itself is patent ineligible. Yet, at the same time, business methods are patentable. To call this bizarre and inconsistent doesn’t begin to scratch the surface.

What this means is that companies like Apple, IBM, Microsoft, Google and others have had the value of their patent portfolios nearly completely erased today. If they wish to remain compliant with Sarbanes Oxley and other laws and regulations of the Securities and Exchange Commission they will need to level with their shareholders and tell them that their patent portfolios have been decimated.

This doesn’t mean that moving forward software won’t be patentable, it just means that getting a software patent will be much more difficult than it ever has been. Software can be described by reference to a series of physical actions operating through gates. This type of micro level description of what happens is going to be required, which means getting a patent for software has just become much more expensive and time consuming. It can be done, but a 50 page patent application will now become a 75 to 100 page patent application; a 100 page patent application will now need to become a 150 to 200 page patent application. That will raise costs substantially. It will also drive innovation underground because a patent will be unaffordable to many. That means we won’t get disclosures, information will be held as trade secrets, and those who follow will not be able to stand on the shoulders of those who come before them. Whenever that happens, whether it is in Myriad or Alice, it is bad for science, bad for innovation and bad for society.

In response to the Supreme Court opinion in Alice, AIPLA Executive Director Q. Todd Dickinson stated, “While affirming the CAFC broadly, it is disappointing that the Supreme Court did not take the hoped-for opportunity to provide greater clarity on how to distinguish patent-eligible process claims from ineligible abstract ideas. It also appears they are still confusing subject matter eligibility with the patent statute’s separate and more definitive requirements that an invention be novel and non-obvious.”

 

To the Court’s Decision

While the Court did acknowledge that an overly expansive view of patent ineligibility would swallow the entirety of patent law rendering everything patent ineligible, the Alice claims were still, nevertheless ruled patent ineligible. Thomas explained:

“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.  Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.”

The Supreme Court, then explained that a court must distinguish patents that claim the building blocks of human ingenuity, which are ineligible for patent protection, from those that integrate  the building blocks into something more thereby transforming them into a patent-eligible invention, citing Mayo Collaborative Services v. Prometheus Laboratories. Thomas explained that the former inventions, those that block human ingenuity, would present preemption problems, while the latter category of invention that integrate building blocks do not present a preemption issue.

From a purely logical standpoint Justice Thomas is correct. If human ingenuity would be completely blocked that would create a preemption problem and a patent should not issue. Where he and the rest of the Supreme Court are dead wrong is to claim that the claims at issue in this case would preempt human ingenuity. The claims are narrowly drawn, have numerous tangible limitations specifically within the claim, and it is simply factually and legally inaccurate for the Supreme Court to say that the claims would preempt an entire field, let along all human ingenuity.

In any event, the Supreme Court, using what they call the Mayo frameworkwhich is ironic given how the Court so famously misapplied patent law in the Mayo case, said that there are two considerations that must be taken into account. The first Mayo step is to determine whether the claims at issue are directed to one of those patent-ineligible concepts. The second Mayo step is to examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.

The representative method claim in this case recites the following steps: (1) “creating” shadow records for each counterparty to a transaction; (2) “obtaining” start-of-day balances based on the parties’ real-world accounts at exchange institutions; (3) “adjusting” the shadow records as transactions are entered, allowing only those transac- tions for which the parties have sufficient resources; and (4) issuing irrevocable end-of-day instructions to the ex- change institutions to carry out the permitted transac- tions. See n.2, supra. Petitioner principally contends that the claims are patent eligible because these steps “require a substantial and meaningful role for the computer.” Brief for Petitioner 48. As stipulated, the claimed method requires the use of a computer to create electronic records, track multiple transactions, and issue simultaneous in- structions; in other words, “[t]he computer is itself the intermediary.” Ibid. (emphasis deleted).

In light of the foregoing, see supra, at 11–14, the rele- vant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer. They do not.

The systems claims at issue in the case faired no better. The Supreme Court explained:

[T]he system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.

In years to come this decision will be ridiculed for many legitimate reasons. In the meantime patent attorneys and clients will need to figure out how to proceed with pending patent applications and with applications that have not yet been filed. Most already issued software patents will not be able to be saved. The disclosures issued patents contain will be inadequate unless Congress steps in and overrules this asinine decision. Pending patent applications could potentially be saved depending upon disclosure, what has become prior art since filing and whether a continuation-in-part application is feasible. Applications that have yet to be filed can still be created to satisfy even this exceptionally naive ruling, but software will need to be described as it is a machine on a granular level, describing gates, switches and relays. Boy are those going to be fun to write, read, prosecute and litigate!

 

 

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Posted in: Computers, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patentability, Patents, Software, Technology & Innovation, US Supreme Court

About the Author

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.

 

216 comments
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  1. Rookie patent attorney here. You mention the need to include describing gates, switches and relays. Do you have example claims that do just that? (to overcome the Alice Corp barrier)

  2. “Intellectually Bankrupt?” No, this ruling is an amazing piece of common sense. Kudos to SCOTUS for a correct and unanimous decision.

  3. You are overblowing this. My reading of this case boils down to that a claim is not abstract if is satisfies 102/103.

    There is no guidance on what is “abstract” aside from (a) mathematical formulas (i.e., relationships that have existed since the dawn of time); and (b) fundamental economic principles (hedging, minimizing settlement risk).

    SCOTUS is conflating 102/103 with 101, so argue that, shit, this is a novel, non-obvious concept and is clearly not some fundamental truth that has been around for 100 years or so.

  4. David-

    No. Wrong. This decision is even intellectually dishonest by SCOTUS standards. There is no way this decision is reconcilable with Supreme Court precedent. It also kills existing patent portfolios. If investors are paying attention it should devalue publicly traded companies by in excess of $1 trillion.

    So yes, this is an amazing decision written by a bunch of Judges who know knowing about software and less about patent law.

    -Gene

  5. “but software will need to be described as it is a machine on a granular level, describing gates, switches and relays” – But Diehr didn’t do this. I think your interpretation is overly pessimistic.

    It seems that one way to avoid getting included under this decision’s holding is to show that the invention “improves an existing technological process” (Alice v CLS, p. 13).

    Thoughts?

  6. I would love to devalue publicly-traded companies by $1 trillion if it prevents them from using a fundamentally flawed business model that exploits patent law to punish innovation. Software patents in the US are for the most part gross distortions of the free market that have drained the economy of untold billions while armies of lawyers fight it out for no ethical reason.

    I say: Good riddance to software patents. We’ll all be better off for it, except for the patent lawyers which is why Genes is so outraged by this ruling.

  7. RookiePA-

    Take a look at this article and the patent described.

    http://www.ipwatchdog.com/2013/09/08/software-patents-are-they-really-soft-ware/id=45047/

    This will become the new norm moving forward, likely with even more disclosure of tangible piece and parts on the smallest level that describe gates and switches.

    -Gene

  8. When you say:
    “Software can be described by reference to a series of physical actions operating through gates…software will need to be described as it is a machine on a granular level, describing gates, switches and relays.”

    That isn’t really true. Software is a different level of abstraction from gates. Saying that software can be represented as gates is like saying that an electronic circuit can be represented as a series of interconnected molecules. Such a submission may not be patentable at all. It would more likely be subject to copyright. But even if a patent was issued on a specific series of gates, it would likely cover only that specific configuration. It would be unrealistic to represent software through gates while retaining any breadth to the claims.

  9. mmmkay-

    Interesting. Funny, but interesting. Sadly, I think you are correct.

    Under the Mayo line of cases the Supreme Court does indeed seem to be saying that a claim is only patent eligible subject matter under 35 U.S.C. 101 if it is new under 102 and non-obvious under 103. They are purposefully conflating 102/103 with 101. Rather than letting the different parts of the statute do the work they are designed to do all patent decisions seem to be lumped into patent eligibility. That is inconsistent with Supreme Court patent precedent that hasn’t been overruled, which makes it impossible to make any sense of SCOTUS jurisprudence on 101.

    Am I overblowing this? I hope so, but I would bet just about anything that I’m not. The Patent Office will simply plow through their backlog in hundreds of thousands of applications by issuing an insurmountable rejection of all software claims written as methods and systems by saying “see Alice v. CLS Bank.”

    -Gene

  10. Gene,

    “The Patent Office will simply plow through their backlog in hundreds of thousands of applications by issuing an insurmountable rejection of all software claims written as methods and systems by saying ‘see Alice v. CLS Bank.’”

    What would be the citation by the PTO for such a rejection — i.e., what language could the PTO point to? Since, as you say, the opinion does not use the word “software,” there is no wholesale invalidation of software.

    Thanks,
    Alex

  11. Software was NEVER supposed to be patented in the first place. It’s clearly stated in law. If anything the patent office has done a disservice to everyone for letting this nonsense go on for so long. Very few countries in the world allow software patents. The few that do, have done so under pressure from the US. I’ve a software engineer and have never patented anything I’ve done, yet I still make money. In fact, my codes better because of it. Information should be freely shared amongst colleagues. Software is nothing more than a mathematical formula that achieves a goal. Simply making that formula more efficient is not innovation. A/B=C is the same statement as C*B=A And that is what the majority of software patents boil down to. A different way of solving the same damned problem.

  12. Code, enlighten us and point to the particular law that proscribes software patents.

  13. Freedom for code:

    If you want to comment here on IPWatchdog you MUST be accurate. False statements of fact are not tolerated.

    You say: “Software was NEVER supposed to be patented in the first place. It’s clearly stated in law.”

    That is a lie. Simply not true. The law is rather clear. The patent statute references software patents and computer programs as specifically being patent eligible.

    So please keep your comments factually accurate. Your opinion is up to you, but facts do matter.

    -Gene

  14. Alex-

    The way that the claims are drafted in the Alice patents are the ways that all software claims are drafted. So if these claims are patent ineligible all patent claims similarly constructed would be patent ineligible. So examiners will say: “Method claims, computer readable medium claims and systems claims drawn to computer implemented processes are patent ineligible. See Alice v. CLS Bank.”

    -Gene

  15. mmmkay, there’s considerable debate over the patentability of software. See the Wikipedia article “Software Patent” for examples. The EU, for example, does not permit the patenting of a computer program “as such”.

    US law currently permits software patents. However, in my opinion and the opinion of many, US patent law has been grossly abused and (at least with respect to software patents) no longer serves the greater good of society.

    US patent law needs a huge overhaul to stop this abuse. Unfortunately, many people’s business models rely on being able to abuse the US patent system so they squawk loudly at any suggestion of reform. To those people, I say this: The government is not obliged to protect your business model if it does not serve the greater good. Times change and bad business models go down the drain as society moves on.

  16. David Skoll-

    You say: “The EU, for example, does not permit the patenting of a computer program…”

    That is not entirely true. The EU is a big place with different patent laws. Ironically, as the result of this decision software is now more easily patented in certain EU countries than in the U.S.

    I also find it amusing how you say such over broad and clearly erroneous things. To pretend that software doesn’t benefit society is moronic.

    IBM’s Watson can predict cancer at an early stage, for example, in 50% of cases, while the best doctors in the world at best have a 20% success rate at early stage cancer diagnosis. To claim that the computer power enabled by software doesn’t benefit society is ridiculous.

    But let’s prove you wrong right away. Please remove all software on your computer. Once you’ve done that then please use your computer to explain how software doesn’t provide any benefit for society.

    -Gene

  17. Gene-

    Appreciated. It seems like Alice could have been saved with better claim drafting, though. For example:

    Clause (c) recites: “at the end of a period of time, the supervisory institution providing an instruction…”

    In my (humble) opinion, a clause like that should recite something more about the underlying system anyway — e.g., “transmitting, over a network, an instruction …” This language wouldn’t require logic gates, and I can’t imagine a tenable argument as to how that is an abstract idea. Interested in your thoughts though.

    Thanks,
    Alex

  18. Also think you are overblowing this. The decision was not about the structure of the claims but about that what they were patenting was an abstract idea. When ever they talked about the claims directly it went back to the fact that the claims were to an abstract idea if you stripped away the fact they were done on a computer. And that the computer as listed was simply a generic computer. A new process implemented through a computer or a new computer will still be patentable. There is a two step process (1) is the idea abstract (2) is anything added to the idea elsewhere in the patent or is it simply take abstract idea or idea known for a long long time do it on a computer. If so it is not patentable under 101. THAT is the holding of this decision. Yes it may make a lot of computer patents unpatentable but only because many are simply take already known idea (like say radio recording) and put it on a computer. Patently – O’s analysis you should check out.

  19. Gene, you said: “To pretend that software doesn’t benefit society is moronic. ”

    I never said any such thing. Software is an enormous benefit to society. Software *patents* are not.

    Gene, you’re a lawyer. You should know better than to pull a stunt like that. At least… I hope it was a stunt and doesn’t reflect your level of comprehension.

  20. Alex-

    I don’t know whether I agree. I certainly do see the distinction you are making, and it makes sense, but the way this decision is written I just don’t know that a transmitting step would have made any difference. The part of the decision where they list the steps and then in a conclusory way say the steps are ordinary is scary. I suspect with a transmitting step they would have just added that to the laundry list of not particularly important or unique steps.

    The types of distinctions you are making are what we are going to have to do, but I can’t imagine this is going to be enough to satisfy patent examiners, and the PTAB has taken a decidedly anti-patent turn I’m afraid.

    In short, I’m still not sure we have any useful definition of what constitutes an “abstract idea.” The claims at issue here did not preempt the entire area, had meaningful tangible limitations, and as such cannot be described as abstract in any intelligently honest way.

    -Gene

  21. I guess I have to disagree with Gene’s analysis to some extent. First, the case is not only about software, based on my reading of the patent. Second, some of the concepts described in the patent seem extraordinarily routine. I think it bears looking at claim 33 of the ’479 patent, the one discussed in detail by the Court. First, it’s not a software claim, or even a computer claim. To my reading, it only states the application of simple process of engaging in addition and subtraction. I have read through the language several times, and I think the Court’s description of it as a ledger is completely accurate. Basically, here is what I think the claim states: take a starting balance, record the changes in credits and debits throughout the day in chronological order, adjust the balance accordingly but ignore those adjustments that cause a negative balance, and then close out the balance at the end of the day. As I said, it reads as a patent on a simple math process. The only part of it that looks vaguely innovative is the idea that you use two separate records (credit and debit) and that the balance should never go negative. Further, no software required, everything can be done with paper and pencil.

    I am comfortable with the court finding that this claim is an abstract idea: using addition and subtraction to make sure that one party does not overpay its obligations.

  22. mmmkay –

    In reading the opinion I came to much the same conclusion as you. I repeatedly made notes in the margin such as “the inventive concept may need to be novel itself, certainly not conventional.” Section III B 1 is where this is all contained.

    The Court says that Mayo lacked an “inventive concept” because it recited “conventional steps.” Similarly that Benson and Flook lacked an “inventive concept” because the process could be carried out on “existing computers”

    Diehr however had an “inventive concept” because the use of a thermocouple to record temperature measurements was not something the industry had been able to obtain. I quickly parsed through Diehr again, but I couldn’t find my answer. Would a claim to using a thermocouple alone have been patentable in Diehr? That seems unlikely in 1981, maybe it was novel, but I doubt it was non-obvious.

    So I agree, this decision seems to merge at minimum 102 and maybe 103 into 101. One glimmer of hope is that maybe the novelty required by the Court is less than what 102 requires.

    Some software patents may also be saved in that they will not be determined to be “abstract ideas” at all.

    The decision certainly shook-up the snow globe on patent eligibility.

    Kevin

  23. “It also kills existing patent portfolios.”

    As a software engineer, I say “boo, hoo, hoo.” This is fantastic news! Expect an explosion of new products as the fear of patent litigation enables people like me to start new businesses and launch new products..

    “If investors are paying attention it should devalue publicly traded companies by in excess of $1 trillion.”

    Where do you get that number? This will not devalue the likes of Microsoft or Apple one bit. They produce actual products that generate actual profits and pay actual dividends, so the value of their stock remains the same. The people most affected by this are the patent trolls who produce no products and whose only income is extortion from their bogus and now invalid patents, and those are almost exclusively privately held and not publicly traded.

    No, your real problem with this is fear that your clients are no longer going to need your services. Well, fear not because every one of those bogus existing patents still exist and your services will still be needed to attack / defend them – at least until the patent holders see the writing on the wall and throw in the towel.

  24. Excuse me, the freedom from fear of patent litigation enables people like me to start new businesses and launch new products.

  25. Alex,

    The USSC seems to be strongly opposed to drafting around its theory of patent law. I suspect that the Court would simply quote the “patent eligibility does not depend on the draftsman’s art” line at you again.

    To some extent I agree with Gene, the conclusory manner in which the Court summarized the claims into an abstract concept is a little scary and somewhat at odds with my prior paragraph. The Court seems to discount the language chosen by patent drafters, but appears readily willing to accept the characterization of the claims made by patent litigators. This means that any claim which can be distilled into a one sentence description like “buy low sell high” or “third party escrow” is at risk.

    Kevin

  26. “That means we won’t get disclosures, information will be held as trade secrets, and those who follow will not be able to stand on the shoulders of those who come before them.”

    This is a ridiculous statement. I am a software developer. I *never* look at patent applications to do my job, in fact I am specficially discouraged from doing so. And, if there is the merest hint that we are doing something covered by a prior patent, we have to immediately redo all of that work in a different way.

    Patents on software in no way encourage innovation and technology in software. They are an active obstacle.

  27. Michael Brown writes: “if there is the merest hint that we are doing something covered by a prior patent, we have to immediately redo all of that work in a different way.”

    Exactly. The US patent system is broken with respect to software patents. Here’s an example: I am listed as inventor on US patent 6549222. Well guess what? I got the idea for that “invention” from a piece of software I’d seen more than 5 years *before* I made the “invention”. I even informed by employer of this.

    Never mind, ignore that, apply and *poof* patent granted, despite its obviousness and despite prior art. Conceivably, whoever owns patent 6549222 could go and sue the authors of the very software from which I got the idea in the first place. This is just madness.

  28. David Skoll-

    You say: “US patent 6549222. Well guess what? I got the idea for that “invention” from a piece of software I’d seen more than 5 years *before* I made the “invention”. I even informed by employer of this.”

    Did you sign an inventor’s oath or declaration? Did you inform the Patent Office yourself?

    Just wondering if you committed perjury or otherwise violated the duty of candor owed to the Patent Office in violation of 37 CFR 1.56.

    -Gene

  29. Michael Brown

    You say: “I *never* look at patent applications to do my job, in fact I am specficially discouraged from doing so.”

    Yes, many software developers are given this clearly erroneous legal advice. Usually not by lawyers. You can be infringing even if you don’t look, so failure to look is just an irresponsible business practice that opens one up to liability. Cheers to you for admitting you operate in a business irresponsible manner by keeping your head in the sand.

    You say: “Patents on software in no way encourage innovation and technology in software.”

    One of the more asinine statements I’ve ever heard. Clearly you are wrong. There are plenty of software innovations that contribute to innovation, such as CAD, for example. Such as IBM’s Watson. Such as the software you operate right now on this computer. Without software your computer is a paper weight.

    For a software developer you sure don’t know much, if anything, about software.

    -Gene

  30. Rick Downer-

    Excuse me for correctly noticing that the patent system is not set up to encourage copycats to set up new businesses. The patent system has until the last few years been about innovation. You setting up a business and launching products that are new only to you but not new to the industry is NOT innovative. It is copying.

    -Gene

  31. Rick Downer @ 23-

    You say: “This will not devalue the likes of Microsoft or Apple one bit.”

    That is funny. So Microsoft and Apple lose huge portions of their patent portfolios today with this ruling and you say they won’t be devalued? That is breathtakingly naive, and so clearly wrong it defies logic. At the very least all of the money companies of spent to obtain invalid software patents was wasted. Further, patents have a value. The value of the patent portfolios takes a huge hit when the patents are lost, that is so obvious it is almost ridiculous that it needs to be said. Finally, patents provide an exclusive right. With no right to exclude remaining due to invalid patent claims that means competitors can simply rush in and copy without fear. The value lost from companies today is enormous, and if these companies follow the requirements of Sarbanes Oxley and accurately inform shareholders it will affect stock prices too.

    You also say: “your real problem with this is fear that your clients are no longer going to need your services.”

    Spoke like a real neophyte! When the law gets more complicated lawyers always make more money. So thank you for your concern, but all this ruling does moving forward is create more business. Software will still be patented and protected, it will just become far more difficult and time consuming to protect it, which means lawyers will make more, clients will need us more, and those who continue to want to copy will still get sued for infringement.

    -Gene

  32. Gene, I don’t see anything in Alice that changes anything from Bilski. The decision just shines a spotlight into the void of jurisprudence about patentability issues that Bilski created.

    The overwhelming size of this void is demonstrated by applying Alice to Diamond v. Diehr: the very aspect of Diehr’s claims that Alice cites as imparting patentability – “recalculating the cure time by using a mathematical equation” – can just as easily be dismissed by the rationale of Alice as the “conventional activity” of a computer in “performing math.” The only reason why any court, presented today with Diehr’s claims, would not invalidate Diehr’s patent is that the Supreme Court has repeatedly upheld that particular claim. Nothing more concrete can be stated than that.

  33. @Gene: I did not sign an inventor’s oath. My employer asked me about the software I’d seen and was satisfied that my “invention” was sufficiently different from the earlier software as to be patentable. I disagree, but I was not about to push back at my employer.

    “There are plenty of software innovations that contribute to innovation, such as CAD, for example.”

    You have yet to demonstrate that such innovations would not happen without patents. You’re assuming that, but you need to prove it.

    The first US software patent was granted around the early 1970′s. There was plenty of software innovation before that: Both UNIX and ARPAnet (aka the Internet) predate the first US software patent.

    “So Microsoft and Apple lose huge portions of their patent portfolios today with this ruling and you say they won’t be devalued?”

    The patent system should be designed to protect the interests of society as a whole, not the narrow interests of Microsoft or Apple shareholders. The fact that they may lose value if software is rendered unpatentable is no more of a problem than the fact that blacksmithing became an unattractive profession with the advent of automobiles. Times change and old business models become obsolete. The sooner we can obsolete the business model of holding back competition through abuse of patent law, the better.

  34. @Gene: “Software will still be patented and protected, it will just become far more difficult and time consuming to protect it,”

    That’s a good thing! It should make people think twice about trying to patent obvious or non-novel things. Raising the bar is a baby step on the road to true patent reform, but it’s a good baby step.

  35. Yes, indeed, the sky is falling.

    I have been writing code since 1979 and will continue to write code into the foreseeable future. This decision will change nothing except that I will cease looking over my shoulder to see if a patent attorney is eyeballing my work.

    Sorry, but I am unimpressed by the fact that code is now un-patentable. Will it stop innovation? Check with the open source developers. They seem to have been working diligently without having to worry about patents for two decades. (With the exception of the fictional threat of enforcement by Microsoft for inclusion of idioms in the Linux codebase; idioms that were developed decades before the founding of the company)

    Would anyone like some cheese with their whine?

    Best,

    Mark Sweeney
    Research Engineer

  36. David Stein at 32 – fully agree.

    The Court simply has failed to take a hold of this moment and deliver anything useful for jurisprudence on the subject. An amplification of an already amorphous “abstract” and a refusal to provide any meaningful illumination of that term for the next case and its set of facts is not what the en banc Court of Appeals Federal Circuit asked for in its decision.

    We have a non-answer that is at best nonsense.

    It is perhaps time for Congress to try again with constraining the Court from making up definitions of “invention” or “inventive gist” or any of the myriad other concepts that proved too much for the judiciary and prompted the creation of 35 USC 103 (and the constraining of the judiciary in its pre-1952 101 equivalents) back in 1952.

    Anyone who understands law and the respect for the rule of law surely weeps with this decision.

  37. I’m not an attorney, however, I’ve been in the programming business, including several of my own companies for the last 30+ years. All I can say is Hallelujah!!!!! This has been a LONG time coming.

    As for those who say it will stop innovation you are completely wrong. The patent process has been what’s been stopping innovation. This is the greatest news possible. My birthday in next Monday. If I didn’t know better I’d say this is a present from SCOTUS to me!

    Thank you!

  38. It strikes me that this decision (arguably incorrectly) places the determination of whether an idea is abstract or not simply in the field of the invention. It looks to me like any invention deemed to be directed towards “settlement risk” would be considered abstract. Don’t like this decision one bit, as we’re going to end up with fields of invention falling into the abstract idea column and others that don’t. How these will fall won’t be determined for a long time.

    I slightly disagree with Gene – claims directed to file system arrangements, data security, etc. are clearly software related and I doubt they would meet the abstract idea (lack of) definition presented here. These could be deemed to be directed towards “operating a computer” which would on their face be patentable.

  39. David Skoll,

    I am not sure how you can criticize the patent system, when you have admitted to egregious bad conduct and possibly fraud.

    All patent applications require all inventors to sign an oath or declaration, this is not an optional thing. At the time the application was filed, you would have been required to attest among other things that:

    (i) you were the first inventor of the claimed invention; and
    (ii) that the application filing is made without deceptive intent;

    My recollection is that committing perjury caries with it fines or imprisonment of not more than five years.

    Your later comments seem to smartly back away from your initial assertion that your issued patent would read on an invention predating your conception.

    You and you alone are the reason for your “bad patent.” It had nothing to do with the patent being related to software and everything to do with you concealing the existence of prior art.

    Based on your anecdote, the best way to clean up the patent system would be to aggressively prosecute those who commit perjury.

    Kevin

  40. Dear Gene,

    “There is no dispute . . . that many computer-implemented claims are formally addressed to patent-eligible subject matter.” Pages 13 and 14 of the opinion.

    1. Your reading of the opinion is probably more pessimistic than Justice Thomas would like. If a majority of the Court were casually commenting on your blog, how do you think they would define the scope of patent-eligible software claims? Surely they don’t expect us to provide the definition of in terms of gates. What’s next? A distinction between software implemented on a general-purpose CPU versus code implemented in FPGA?

    2. When do you expect this ruling to have an effect on the content of the patent bar exam?

    Thank you!

  41. Software is valuable; software patents are not. The attorneys who seek out patents for software are not innovators, but parasites.

  42. This is the flash of genius redux. There is a presumption the patent is invalid as in what more than the abstract idea do you have to try to get to validity. And, 102, 103, and 112 have all been rolled into 101 and the judge gets to decide everything absent any factual evidence. Just like the flash of genius. Sickening.

  43. EDITORIAL NOTE: Comment deleted and user banned for erroneously asserting as a matter of fact that software is just math.

  44. Gene, I saw this on the old article you linked to: “Software is not math and anyone who tells you otherwise is simply being intellectually dishonest, trying to fool themselves or simply ignorant with respect to what is really going on fundamentally inside a computer.”

    How exactly do you explain the Curry-Howard correspondence which describes an equivalence relation between math and software? Or how do you account for the fact that the program equivalent to ZFC (an axiom system the math you were taught in school is based on) is actually available at http://us.metamath.org/ Do lawyers use a different definition of ‘math’ than mathematicians do? For the record, I have designed a computer from individual logic gates, so I have some idea of what goes on.

    I’m also not sure why I would bother fooling myself here. I don’t make any money off of patents one way or the other. But that’s just my perspective and perhaps you could share yours. I’ve seen some very interesting arguments based on this, such as an IEEE amicus brief where their expert attempted to explain that something equivalent to the successor function (a basic mathematical function used in the construction of the integers) was only meaningful in programming, rather than math. So I know there are some… interesting… perspectives out there.

    P.S. I like the math-based captcha here, but have you ever considered one more advanced? Try the first one listed here, for example… http://www.elie.net/blog/security/five-surprising-captcha-schemes

  45. Math Guy-

    Here is the explanation about how software is not math:

    http://www.ipwatchdog.com/2008/12/15/computer-software-is-not-math/id=1040/

    The simple answer is that software directs a machine how to operate. Math does not direct, but rather is descriptive.

    In terms of the captcha, we have been experiencing a lot of server problems, hacks, instability, denial of service, etc. etc. Which is really rather ironic leading up to a decision by SCOTUS that mistakenly seems to assert that software is merely the ministerial implementation of an abstract idea. If that is true software really should work more often, it shouldn’t have bugs or require fixes, and it should easily communicate between and among other software. That doesn’t happen because software is not the ministerial embodiment of an idea. In any event, we have been chasing our tail a bit with various plugins that both work for the intended purpose and work with the server and other coding.

    -Gene

  46. Mark Sweeney @35-

    I’m unimpressed with your lack of knowledge of patent law. Software code has never been patentable. Software code is copyrightable, not patentable.

    In terms of open source developers, yes, let’s look at them. Sun was a multi-billion dollar company until they embraced open source, which caused them to become a $600 million company. Obviously, going open source is in the best interest of the business… NOT… laughable really.

    Finally, I’m not whining. At the end of the day as the law becomes more complicated it is always better for lawyers. I’m just correctly pointing out several things. First, you don’t know what you are talking about. Second, the Supreme Court doesn’t know what they are talking about. Third, it is going to be much more expensive to protect software with a patent.

    I find folks like you extremely interesting. How you, or anyone, who claims to be so familiar with technology, software and computers can champion decision making by Justices who don’t even use e-mail is rather amazing.

    -Gene

  47. “We don’t know how to define ‘abstract,’ but we know it when we see it.”

    “We don’t know the difference between 101 and 102/103, but when has that ever stopped us before?”

    SCOTUS

    Alice in wonderland indeed.

  48. David Skoll @34-

    You say: “It should make people think twice about trying to patent obvious or non-novel things.”

    That wasn’t what the case is about. This case is not about patenting things that are known or obvious. This case was about whether despite something being novel and non-obvious it is still nevertheless patent ineligible. That is the only question under 35 USC 101 to ask and answer. The Supreme Court is clearly conflating 101 with 102/103. That is in direct violation of the requirements of the Patent Statute. So you can celebrate the decision, but the decision is clearly and unambiguously contrary to the law. Of course, at the end of the day the Supreme Court gets the final say, but that doesn’t mean they are right. So now we have a mess. They say one thing and the law says another thing. Under our system of government the law is supposed to be primary unless it is unconstitutional. Since the Supreme Court has not declared the Patent Act unconstitutional it is their duty under our system of government to correctly interpret Acts of Congress. Today they failed. They also failed in Mayo and Myriad as well.

    -Gene

  49. David Skoll @33-

    You say: “I was not about to push back at my employer.”

    You really shouldn’t be saying this. You are admitting to violating 37 CFR 1.56. You as an inventor had a duty to disclose to the Patent Office.

    You say: “You have yet to demonstrate that such innovations would not happen without patents.”

    No, not really. That isn’t the standard. I will also notice that since I called you out on something you said that was clearly false you are retreating. You erroneously said that software does nothing to contribute to innovation. That is ridiculously false. I will also point out, that the patent system does foster innovation and encourages earlier disclosure. You might try reading:

    http://www.ipwatchdog.com/2014/05/08/reality-check-patents-foster-innovation-and-economic-activity/id=49452/

    You say: “The patent system should be designed to protect the interests of society as a whole…”

    True… and it does. Patents undeniably foster innovation, which is a benefit to society. I will also point out that you are retreating once again. You said that this ruling will not have any impact on the valuation of Apple, Microsoft or other companies that have extensive software patent portfolios. That was a ridiculous statement, and is simply not true.

    -Gene

  50. John B @41-

    Attorneys don’t seek patents, attorneys represent clients. Clients who are innovators have a right to obtain patents, and they have a right to representation. The fact that you think attorneys are parasites speaks volumes about you and your objectivity (or lack thereof).

    -Gene

  51. I have recently re-read my “House Divided” post from 2012. It is reassuring how closely the predictions in that post and in the ensuing comments matched the eventual outcome. The case would never have got near the Supreme Court but for the fragmented opinions in the Federal Circuit, and all that the Supremes have done is to clear up the mess somewhat. No new law appears to have been created, which is a blessing.

  52. direction @40-

    The patent bar exam won’t test this anytime soon. The USPTO is still working on finalizing Myriad rule making, so this case won’t get tested likely for many months, perhaps a year or more. The USPTO always gives at least 60 days notice before they start testing new material.

    In terms of how the Court would comment, I can’t really start to understand what they must think. They say things in the decision that are just false and show that they don’t really understand what is going on here. They say that the claims cover fundamental aspects, but the claims contain many specifics that narrow the claims and prevent the claims from preempting an entire area.

    Frankly, I think it is convenient that they don’t use the term “software”. But the reality is that these claims are not patentable and virtually all software patents are constructed in exactly the same way, frequently with even less tangible matter specifically recited. So they can, and certainly would say, that the case does not say software is patent ineligible, but what they said is the claiming techniques used here lead to patent ineligible claims. It seems an inescapable conclusion that software claims that are similarly written are patent ineligible. That is why I think we are going to need to open up the computer logic texts from our engineering days and start to describe what is going on from a logical standpoint on the micro level.

    -Gene

  53. John H @38-

    I understand what you mean about file system arrangements, data security, etc. The question I have is whether that distinction will be persuasive? I can’t imagine it will be persuasive at the USPTO.

    It seems to me that with Mayo, Myriad and Alice the Supreme Court is systematically expanding patent ineligibility with every new case. Ironically the only recent decision that doesn’t restrict patent ineligibility is Bilksi, which says business methods are patent eligible.

    In any event, I am very worried because the march of the last 3 patent eligibility cases seems to clearly stand for the proposition that the claims don’t matter. The Court will look through the claims to determine what the drafter is trying to patent and then decide whether that is something that is patent eligible. This level of subjective evaluation has heretofore explicitly been prohibited.

    I also feel certain that district courts, PTAB members, examiners and some (perhaps many) CAFC Judges will notice the expansion of patent exclusion in SCOTUS 101 jurisprudence, which will lead them to err on the side of patent ineligibility. Sure, there are plenty of fine distinctions that are real and legitimate that can be made, but will it make any difference? I hope so, but I don’t feel that it will.

    -Gene

  54. How is something abstract, when it is implemented in a tangible, real-world result? This decision seems to be completely confuse abstract ideas (101) for originality (102/103). Implementing an age old idea in a solid, real-world form can present an originality problem, but not a tangibility problem. They are two different things, and now we have this “hard case” making bad law – even destroying the basic meaning of words.

    If the S.Ct. wants to kill patents, because they have heard a lot of grief from people getting sued by NPEs, and are sympathetic, I will just say that that’s not their job. Their job is to apply the law as written, and let Congress fix it if there’s something to be fixed. That’s why lady liberty wears the blindfold.

  55. If this weren’t so sad, it would be funny. What a toxic mixture of ignorance and arrogance it is that makes up the SCOTUS. If they knew the first thing about patent law, they would know that they have merged 101, 102, 103, and 112 all into their 101 analysis. The presumption of validity? Well, to break that what you need is to be such a clever little judge that you can come up with an abstract concept that sums up the invention. Any invention can be summed up as an abstract concept as the justices said themselves. So, presto, no more presumption of validity. 103: well, now since it is all wrapped into 101 with de nova review and with everything being a question of law, the judge just says whatever they think and that is the law. So, their own jurisprudence on 103 is all down the toilet. Where exactly was the determination of the PHOSITA in Alice? Oh since they threw 103 into 101 I guess they decided they didn’t need to determine the level of skill in the art for determining their something more over their abstract concept.

    A joke of jurisprudence. A joke. Third world country. There is no doubt that Rader knew about this and said he is heading off to foreign countries to teach patent law. Probably can’t stand the stench of this country.

  56. > The simple answer is that software directs a machine how to operate. Math does not direct, but rather is descriptive.

    But this isn’t quite true. The instruction loop, the universal algorithm at the heart of your average CPU, actually directs the hardware on what to do. All other algorithms are emulated by that universal algorithm baked into the chip. Naturally, it’s called a “universal” algorithm precisely because it can do that. So your software is just data for a universal algorithm.

    Also, your distinction is drawn in a curious place, as it seems to imply that performing calculations–something ordinary mathematicians do regularly–isn’t really math, and only things like equations are. I can assure you that there aren’t any calculations performed inside a computer that an ordinary mathematician given an inordinate amount of time and paper could not perform. I know this quite directly, having personally solved many such problems asking which flags are set and what the contents of the registers will be after a CPU in this state performs this instruction, not to mention all the manual hex and binary arithmetic. So I must say that my training has not informed me of any useful distinction between performing calculations and the rest of mathematics.

    Good luck with your captcha, BTW. Spammers are a scourge. I’m surprised you haven’t made one based on patent law, frankly. E.G. “A section __ rejection is issued for obvious patents.” Don’t worry, I won’t patent that idea :)

  57. @Gene
    LOL… You’re calling me a liar?
    Section 101 of title 35, United States Code, provides:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    OF MATTER
    Notice that? The patented “thing” must be made of matter. You can patent a process, a way to machine, manufacture or compose MATTER.

    Software is not, nor will it ever be, matter.

    I’d like to point out that this entire website is based on wordpress, quantcast, and OpenTracker. Which are all open source with the latter 2 being based on closed source packages. YOU YOURSELF are avoiding software patents. If Software patents are so damned great, why don’t you walk the walk? Why don’t you buy patented software instead of going with this “intellectually bankrupt” FOSS junk?

  58. This entire website is based on wordpress, quantcast, and OpenTracker. Which are all open source with the latter 2 being based on closed source packages. YOU YOURSELF are avoiding software patents. If Software patents are so damned great, why don’t you walk the walk? Why don’t you buy patented software instead of going with this “intellectually bankrupt” FOSS junk?

  59. @Math Guy

    What makes you think we don’t understand ZFC set theory or computer arithmetic? Do you know how many of the attorneys commenting here have technical degrees?

  60. Math Guy-

    I’m not saying performing calculations isn’t math, but a software does more than just perform calculations. Software directs the machine to perform the calculation. It directs a machine. Software is a method.

    Yes, you could perform the calculations if you have forever, but that isn’t relevant. Methods have been patentable for hundreds of years and most methods do things better, faster, more reliable. And no person or group of people could ever in a lifetime, or series of lifetimes, do the calculations that IBM’s Watson can do in a single second.

    Thanks for the captcha suggestion. I like it!

    Cheers.

    -Gene

  61. In today’s Alice decision, Justice Thomas explicitly declines to define what an “abstract idea” is, but reading through the opinion, it seems reasonable to conclude that an “abstract idea” is something well known and already in use. That interpretation could save a lot of patents, but given no explicit definition of the term, SCOTUS, once again, invite us to use the “it just seems wrong to me test” that they suggested in obviousness determination in the KSR case. In any event, SCOTUS, like most other courts and practitioners, can’t stop blurring the difference between §101 and §§102/103.

  62. Gene Quinn wrote: “You erroneously said that software does nothing to contribute to innovation.”

    You lie. I said no such thing. Software *patents* do nothing to contribute to innovation. I challenge you to find *any* post in which I say software itself does not contribute to innovation.

    Gene Quinn wrote: “You said that this ruling will not have any impact on the valuation of Apple, Microsoft or other companies that have extensive software patent portfolios.”

    You lie. I said no such thing. I said it is *irrelevant* to society as a whole that the ruling will have an impact on Apple or Microsoft.

    Gene Quinn wrote: “Obviously, going open source is in the best interest of the business… NOT… laughable really.”

    You are quite happy to run the open-source Web server Apache on http://www.ipwatchdog.com. And it’s quite logical that you would do so; it permits you to host your site more cost-effectively than proprietary software. Additionally, your mail server runs the open-source Exim software… far better for your business than if you had to pay mail server license fees.

    Do you have a Belkin consumer wireless router, or a D-Link or similar? Well guess what? You’re running open-source Linux because it provides consumer router developers a cheap development platform. Open-source has contributed to the profitability of Belkin, D-Link and countless other consumer electronics firms because they are not beholden to proprietary vendors for license fees. This increases competition and benefits consumers and therefore benefits the economy as a whole.

    Does your phone run Android? Do you have a Google Chromecast? All enabled by open-source.

    The amazing retailer Amazon? Infrastructure built on open-source. The incredible power and savings have allowed Amazon to grow into a juggernaut, benefiting consumers with low prices and therefore the economy as a whole.

    Because you, Gene, are fixated on the “property” part of the ridiculous phrase “intellectual property”, you lose sight of the “intellectual” part. Sometimes, building on the ideas of others benefits society as a whole far more than stupid legal battles over trying to maintain a misguidedly government-mandated monopoly over what is, in the end, simply an idea.

    I understand why you’re worried. You see a threat to your business model. Well, too bad. No business model is holy and untouchable; if a business model is rotten to the core with abuse, the government’s duty is not to enable the sustainability of that model.

  63. Gene Quinn wrote: “Patents undeniably foster innovation…”

    So you claim. How do you explain all the innovation in the software field prior to the first US software patent being granted? I’m talking about the development of the Von Neumann architecture, the invention of high-level languages like FORTRAN and LISP, the invention of MULTICS which ultimately led to UNIX, and the invention of ARPANET which led to the Internet.

    A good patent system fosters innovation. A broken one fosters litigation, and broken exactly describes the US patent system with respect to software patents.

  64. My take on this, for what it is worth (assuming something >0), is that the novelty/nonobviousness cannot reside in the abstract idea alone (e.g., if it can be carried out with pen and paper), but that you need to look to what technical effect it is being tied to, and the technical effect has to satisfy 102/103 to in turn satisfy 101, which appears to be some sort of circular reasoning. Reminds me of the EPO technical effect test a bit. I am not looking forward to prosecuting software cases here on out. It was already getting painful before this decision.

  65. Isn’t it telling that the lawyers posting here favour software patents and the software developers posting here are against? It shows who really benefits from software patents.

    The gist of this decision seems to me that if X is not patent-eligible then “doing X on a computer” is also not patent-eligible. That seems sensible, and does not rule out software patents (much as I’d like that).

    The argument “company X spent $$$ building a patent portfolio, so invalidating those patents destroys that value” is invalid. Many companies, including mine, build patent portfolios for defensive reasons. Broad invalidation of software patents would be a blessing to such companies, and allow resources to be reallocated from unproductive activities into productive ones.

  66. like I said before: to hell with patents
    they are not worth anything anymore

  67. > Software directs the machine to perform the calculation. It directs a machine. Software is a method.

    I would say that the instruction loop directs the machine, the software is just data. The machine will always fetch, decode & execute. You can’t modify that fundamental part in software, it’s baked into the circuits that comprise the machine. The higher level algorithms are emulated by the universal algorithm at the heart, which treats your software as data. This is why, e.g., self-modifying code is possible.

    Whether that’s legally a ‘method’ is another argument entirely, but I do wonder how the law treats self modifying methods. Could you write a claim where one of the claims directed you to create a claim by modifying the language of the patent itself? Say, you attempt to claim that for any newly discovered communication medium X, we patent the aforementioned process communicating over X?

    > Yes, you could perform the calculations if you have forever, but that isn’t relevant. Methods have been patentable for hundreds of years and most methods do things better, faster, more reliable.

    For hundreds of years, the sort of methods people were concerned with modified something in the real world (e.g. vulcanizing rubber, smelting aluminum, etc.), not just data. Any method where the input and output is data is mathematical. Godel helped pave the way to that particular conclusion, incidentally.

    Glad you like the captcha idea, feel free to use it. Captchas usually work better when the more unique they are, unless your site is being specially targeted.

  68. “…companies like Apple, IBM, Microsoft, Google and others have had the value of their patent portfolios nearly completely erased today…”

    I wish it were true..
    but in actuality it’s more like raising entry level dollar barrier for shmucks like myself
    screw them all

  69. “Boy are those going to be fun to write, read, prosecute and litigate!”

    more like “software” patent prosecution part of your business will shrink to zero…

  70. So.. are those patents on MP3, MPEG, H.264 and other multimedia coding standards done ????
    Can I start coding my own implementation tomorrow morning ?

  71. freedom to code:
    “Software is nothing more than a mathematical formula that achieves a goal. Simply making that formula more efficient is not innovation. A/B=C is the same statement as C*B=A…”

    Have you ever accidentally coded something like this ???

    c = m^e \mod{n}
    m = c^d \mod{n}

    (famous groundbreaking and patented RSA public key encryption algorithm used in each and every secure internet transaction in the world today)

  72. >>I’m unimpressed with your lack of knowledge of patent law.

    I never claimed any specific knowledge of patent law. Enjoy beating your strawman.

    >>In terms of open source developers, yes, let’s look at them. Sun was a multi-billion dollar company until >>they embraced open source, which caused them to become a $600 million company. Obviously, going >>open source is in the best interest of the business… NOT… laughable really.

    Yet Google and Apple seem to be making considerable profits from open source software. So does the rest of the software industry. Your analysis of Sun is, in short, laughable.

    >>Finally, I’m not whining.

    No, of couse not.

  73. Gene,

    A follow up article with your suggestions/insights as to how to prepare and prosecute “software/business method” claims in view of this decision would be appreciated.

    Thanks

  74. Gene, you stated that Sun was a multi-billion dollar company until they embraced open source. Sun’s peak happened in 2000 during the original dot.com boom, and had been spiraling since then. During that same time, Red Hat Software, which makes almost purely open source software, has drastically increased in market cap. So your insinuation that closed IP was the only generator of Sun’s value is a complete and utter lie.

  75. The USPTO favors “broadest reasonable interpretation.” But that is in the special circumstances of a pending patent application where problems of interpretation can be resolved by amendment. How about “narrowest reasonable interpretation”. In view of the comments some people have made about constitutional issues, that may be the preferable interpretation.

    In a recent posting in Patent Docs I argued that the Myriad decision concerns reasons not technical differences and that the words “solely” and “merely” should be given the weight that their deliberate inclusion demands. If that is done, then mere isolation of a natural product does not confer eligibility, but isolation + new utility should do so. That interpretation leaves a lot of natural product and biotech products still valid and is, arguably, more in line with the Court’s intentions than the broader interpretation currently proposed in USPTO guidance.

    There are many references in Alice to caution and limitation. If we look for the narrowest reasonable interpretation of the decision it may turn out to be consistent with the caution expressed by the Court and more correct than some of the more fanciful and despairing interpretations currently being put forward.

  76. Sorry, Gene, but I think you’ve way overblown the impact of this decision. I read the relevant independent claims in the patent at issue, back when the CAFC threw up its collective lunch and called it a decision, and they were “escrow, but on a computer!!!” Doing the same old thing, but on a computer, isn’t inventive, isn’t novel, and isn’t nonobvious, no matter how one slices it.

    I wish that patent practitioners would tell clients who insisted on filing such claims to STFU, because neither such patents nor the resulting caselaw helps when public opinion is being inflamed by stupid “journalists” and paid shills about the evils of patents and the current patent system. We don’t need to feed the real trolls, such as Timothy B. Lee, with such easy low-hanging meat.

    In contrast, serious software inventions, such as graphics processing of fractal backgrounds, or Koza’s famous genetic algorithm, won’t be affected by the SCOTUS decision — but will still be tarnished by their association with the likes of “escrow, but on a computer!!!” that Bilski and Alice Corp. pretend should be protectable.

  77. Thought provoking as always Gene. I tend to agree with you that the reasoning is not particularly great, but am unsure of the widespread impact on current patents. The Court continues to mix its novelty analysis into its subject matter analysis. This mix is clear in the Court’s statement that taking a known concept and generically implementing it on a computer is “well understood, routine, [and] conventional” and “one of the most basic functions of a computer.…In short, each step does no more than require a generic computer to perform generic computer functions.”

    But then the Court hints at what kinds of abstract ideas will remain patentable subject matter (relying on its own precedent). “At some level, ‘all inventions…embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’…Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.’ [Applications] of such concepts ‘to a new and useful end,’ we have said, remain eligible for patent protection.”

    Claims that take a KNOWN concept and merely apply the known concept using a generic computer, however, are dead. And yes, there might be lots of those. Curious to see if anyone can analyze how many.

    Shoot me now if I start seeing gate claims.

  78. Thanks for the review Gene. What a disaster.

  79. back in the day when my colleagues and I wondered what disclosure is required to support computer-implemented inventions, we would just insert 20,000 lines of code into a patent application to avoid an accusation of lack of enablement. we have become much more skillfull over the years in disclosing the algorithm without having to reprint the actual computer program.

    nonetheless, over time patent practitioners, including examiners, have become increasingly lazy and software patents over the last twenty years have devolved into crap disclosures. they don’t dislcose anything of the actual invention. a software invention must disclose something of the programmer’s craft. using functionally broad labels such as “memory” or “processor” (oooh, you must be a PhD) programmed, adapted, or configured to do something discloses nothing of the invention. hooray for SCOTUS in this decision!

    unfortunately for some patent attorneys the “inventors” of computer-implemented inventions do not know about the implemented algorithm either because typically, in a software company, the inventor researchers delegate the actual coding to grunt workers (the programmers) and the patent attorney will have to do some investigating and prodding to obtain access to the programmers in order to talk with them and find the actual algorithms they have implemented.

    the fact that Gene Quinn leaps from one extrreme to the other (if labels are not OK then we have to describe gates and switches) merely indicates that there is a vast middle ground that he is unaware of—the programmer’s craft.

  80. “What makes you think we don’t understand ZFC set theory or computer arithmetic?”

    because you said “computer arithmetic”.

  81. Stephen Schott wrote: “Curious to see if anyone can analyze how many.”

    I’ve seen many, many surveys from Professor Crouch, of Patently-O. I see a summer project for a 2L here. . . . . . .

  82. Software is math to programmers downstream who have a problem identified for them and a road map of how to get there. Patent applications aren’t meant to protect this “math”. They protect the road map itself independently of the math behind it, which only serves to enable, or in the old days maybe a best mode.

    Gene @53 – I’m hopeful district courts, the PTAB and the PTO will see this distinction. Some software inventions occur within and are altogether based in a context of the computer. Not only do these require a computer to function, but these types of inventions simply don’t exist without the existence of a computer so should be deemed to make the computer run better. That has to be persuasive, right? If not, the industry truly is doomed.

    Agree wholeheartedly with your comments on the expansion of what is patent ineligible. I don’t think congress or any piece of legislation previously intended for an open-ended list to which you could add a type of subject matter as being patent ineligible. This decision legitimizes such a list, which is truly unfortunate.

  83. It is often said that software is an improvement to a machine and therefore patent eligible.

    What other patent eligible improvements to machines are as temporary as software can be? ie can be installed or deleted at the click of a mouse.

  84. Good decision that basically said implementing a bare idea in a generic computer doesn’t save the bare idea from being patent-ineligible subject matter. Any existing “software” patents that are directed to solving specific problems in a specific application should be fine.

  85. I have to side with the gist of Comment 63. While I do not like the apparent conflation of the various patent statue sections in this decision, I also try to sit back to take a more holistic view of the outcome. I wish the CAFC and the US SC would be more precise in their statutory analysis and application, and I fault them for failing that task. But I do think they are, imprecisely, pointing us as practitioners where we instinctively know we need to go anyway. If there is a long known physical or mechanical process that has never been able to be embodied in software, despite numerous attempts and failures, then I do not see Alice getting in the way of that embodiment being patented. The path to the arguments for patentablity seem pretty clear. In the same way I felt KSR did not break a lot of new ground but really captured the way many of us practiced and dealt with examiners out of habit.

    While I would prefer better, read CLEARER, guidance from the judges and justices, I am willing to put my professional’s hat on a figure out a way to deal with the ambiguity they create. I did not go to a school (for engineering or for law) that focused on Black Letter. The basic teaching was to find opportunity in the ambiguity, not shy away from it.

    The sky is not falling. The sky is still blue. Well, maybe outside the Midwestern US these days the sky is blue and staying where it needs to be. Once we are rid of the tornadoes and flooding rains, I can make that statement from my home with a straight face.

  86. Why does everyone have such a difficult time understanding software? Once programmed, a computer is a machine that performs a function. It is not like math, it is more like cooking or assembling ikea furniture.

    All software could be replaced by a gate array wired together in a particular way.

    The software itself without the computer is nothing, but a programmed computer is a machine that performs a process.

    What’s the big deal? It is certainly fair to say that an unpatentable process is not made patentable because it is performed by a computer, but wtf is an “abstract idea”?

  87. Anyone care to speculate why software engineering “workers” are more vocal against patents than civil engineers, industrial, automotive, aerospace, communications or any other kind of engineer workers? or why worker practitioner software engineers are more vocal that their innovative and inventive colleagues?

    Certainly every industry has its innovators and its worker practitioners. But I don’t recall, for example, Nortel practitioner engineers, rising up against the patent system and their innovative co-workers as apparently software worker/ practitioner engineers do.

    Is it that there are fewer innovators per capita in software engineering? Is it that software companies do not provide the same kind of encouragement and bonuses for developing inventions?

    It also seem that the grunt workers of the population of software coders are far more vocal about patents than their innovative and inventive colleagues.

    Any software innovators and inventors care to weigh in?

  88. As always, Thomas doesn’t have much to say. One troubling thing about this opinion is:

    “These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”

    This dicta may be used by the USPTO to reject what was previously considered statutory by the USPTO. “Abstact idea” has referred to two things: 1) a “fundamental principle” (whatever that is), of the kind in Bilski and Alice, or 2) a disembodied concept. Until now, type #2 (excluding #1) would be statutory once it was embodied in electronics. For example, an improved GPS locating technology (based in software) should not (hopefully) fall under #1, but could be considered an abstract idea of the #2 type if claimed in the abstract (disembodied). Adding electronics to this type of “abstract idea” embodies it and since it is not a #1 type abstract idea, has always then become statutory.

    The USPTO (or other courts) now may use the quoted dicta above (erroneously) to apply to the type #2 abstract idea, rending virtually all software inventions unpatentable. I really don’t think this is what the Supreme Court intended. Careless opinion by Thomas.

  89. Sadly, a machine is no longer a machine under US patent law, a manufacture no longer a manufacture. We have returned to some (unknowable) gist of an invention, because “scriviners” were claiming the things explicitly set out by Congress as being patent eligible.

    Careless? More sinister minds would disagree.

  90. Freedom from code @57-

    I didn’t call you a liar, what I pointed out is that you are dead wrong. I then tried to explain that if you want to comment here you need to be correct. Making factual statements that are incorrect is not the type of commentary that is deemed acceptable. If you want to make erroneous statements there are plenty of places on the Internet where that is not only tolerated but encouraged.

    The truth is that software code is NOT patentable. It never was and never will be. Software code is copyrighted. The system and architecture of the software is what is patentable. There is a difference. That is why programmers are not inventors. They merely translate the invention into code. Their work does not make them an inventor.

    Thanks for taking the time to notice that we use WordPress. I would LOVE to no longer use WordPress. It is an absolute nightmare because it is open source. So if you have any suggestions on proprietary content management systems I will migrate away from WordPress instantly! Open source software is just a cesspool of security vulnerabilities and inoperability. That you don’t know that suggests you are extraordinarily naive.

    -Gene

  91. Math Guy @56-

    When I say that software directs a machine that is 100% correct. When I say that math does not direct but rather is descriptive that is 100% correct as well. You and others can protest all you want, but the truth is that I am undeniably correct and anyone who says that software is math is just lying to themselves.

    1 + 1 = 2 is math

    Software that is designed to have a computer operate to calculate 1 + 1 and result in an answer that is always 2 is a process. The software is not math. That software instructions a machine how to perform functions, even calculations, does not make software math. In order for those who think software is math to be logically consistent then you MUST always believe that a calculator is math, which is asinine.

    I’m not going to allow the “software is math” idiots to take over this discussion. This is the final comment that will deal with this topic. Go elsewhere if you want to continue to perpetuate your fallacious and idiotic views.

    -Gene

  92. The FUD of litigation is offensive.

    Please reminded me again – even after the false bump up due to the AIA joinder rules, what excessively low percentage of all active patents are in litigation? Not just litigation per new patents released – as patent suits are enabled for all active patents (and even past damages of up to six years for recently expired patents).

    Words like “Troll” and the FUD of litigation – thrown about by “techies” who exhibit NO understanding nor appreciation for the law or the Rule of Law should be forcibly rejected for the pandering propaganda that they are.

    Alan Stewart – beware the koolaid. That large wooden horse left outside the gate should be looked in the mouth. It should not be wheeled into the citadel and left unattended while we “celebrate” some “holistic” view.

  93. You can now see why John Galt did not apply to patent his new motor. This SCOTUS decision is an anti-mind part of the “Anti-Industrial Revolution.”

  94. @anon2, 84

    Part of it is the quality of software patents in general. Every one I’ve seen in court cases basically involve things I do every day as a programmer. There is literally 0 novelty in them. This isn’t like someone is patenting the cure to cancer, or even a better treatment for it. They seem to be nothing more than ‘This thing you learned to do in college? Remember that? Well patent sucka!’ things. I get requirements all the time that are to do financial things. Pull the payable data from system A, map it to a common dataset, output it to fixed memory (hard drive for those who don’t recognize that term), load it into system B, remap it again, perform mathematical analysis of the data, drop it into different buckets based on the content.

    This is all stuff that a person used to do on a paper ledger. Just because the computer can do that faster does not mean that ‘on a computer’ makes it a wonderful new discovery. It’s not even an incremental improvement. A computer does things faster than a human does, that’s what computers do. Taking ‘double ledger entry’ and adding ‘on computer’ to it should not grant a patent.

    But that is what a lot of patents (that make the news) are, and as a programmer, I find it infuriating that people are gaming the system to take things that are every day things we do and trying to fence them off (and do it as generically as possible to cover as much as possible). It would be like a contractor trying to patent ‘make a wall that supports the ceiling… while using concrete as the base’ after concrete was invented. Walls had been made for years on dirt and stone bases. The fact concrete made the foundation better and more solid doesn’t make ‘create a wall’ any less obvious or standard just because it’s now on concrete.

    Now, ‘reinforce wall with rebar and concrete’ is a different thing, but that’s not what we see in court. We see ‘On a concrete floor’ instead.

  95. Gene @ 91,

    May I remind you that math – as math – is NOT copyrightable.

    The same people that protest patents for what patents cover (functionality) are often the same that offer copyright as adequate protection AND are often the same that claim that software is math”s”.

    For people who pride themselves as logical (the Vulcan Spock comes to mind), the utter failure in the logic of software and ANY form of intellectual property protection is startling.

    The logical conclusion (if the anti-software patent techies have their way) is that there would be ZERO protection for software. Software would lose BOTH its patent protection (for utility) and copyright protection (for creative expression). The over-the-top semanticists would translate all language into a pure math “equivalent,” and since math is expressly NOT covered under copyright law, their view would annihilate (daresay eviscerate) copyright law.

    Not only does this NOT serve the interests of “grunts,” it does NOT serve the interests of our country and the Foundational Aspect of why the power to even have patents was provided for in our (true) Supreme Law.

  96. Gene Quinn writes: “Open source software is just a cesspool of security vulnerabilities and inoperability.”

    OK, now you reveal your true colors. Gene Quinn: That statement is a complete lie. Please go to the CVE database (you do know that that is, right? You mentioned security?) and compare the track record of open-source vs proprietary software. Surprise: There’s not much difference. Proprietary software achieves a limited measure of security through obscurity, but this is very fragile and fraught with the dangers of zero-days. Open-source software does not have the luxury of security, so its vulnerabilities tend to be disclosed and fixed much more quickly.

    “inoperability”: Tell that to Google, Amazon, and Yahoo who run on open-source. Tell it to Apple that uses an open-source kernel as the heart of Mac OS. Tell that to all the producers of consumer routers, TVs, streaming media players, set-top boxes, and other gadgets who embed Linux or FreeBSD. Tell that to CERN which users open-source software in the Large Hardon Collider. Maybe those durn physicists are simply too dumb to realize they should be running Windows.

  97. Gene – a post has been caught in the buffer – and no moderation flag given – can you salvage and delete this post?

  98. Stephen Schott @77-

    I have a lot of issues with this decision and most of them are from a definitional standpoint. For example, what is a generic computer? Computers, smartphones and tablets of all shapes, sizes and levels of complexity can be loaded with a variety of software. Does the fact that a computer can do many different things make it a generic computer? The distinction between general use computer and specific use computer has always struck me as silly and forced. It is as if you have to claim a machine that provides a specific functionality, which is of course how software patents were drafted back in the 1970s after Gottschalk v. Benson.

    I also don’t know what an abstract idea is. It has always struck me as interesting that we have a doctrine that gets applied whenever we have a 101 case but we don’t have a definition for the terms or the doctrine. That makes the abstract idea doctrine a lot like obscenity.

    Another troubling aspect of the decision is how SCOTUS characterizes Diamond v. Diehr, essentially saying that the invention there was patentable despite being software because it made a machine operate differently. The problems there are many. That wasn’t what the invention in Diehr did at all, and it hasn’t been how the case has been interpreted for 30+ years. So there may not be any new law specifically, but narrowly and in my opinion incorrectly characterizing the invention and holding in Diehr essentially erases it and returns us to Gottschalk v. Benson.

    SCOTUS didn’t even say that at least some software is patentable like they said with business methods in Bilski, which I think speaks volumes about their feeling on the subject.

    I can’t wait to see the USPTO interpretation. Given that President Obama has been following anti-patent policies consistent with the Google view I can only imagine that the PTO will lock down on software in a response to this decision. The PTAB already isn’t in favor of patents, acting as a death squad, so I think it is clear how they will respond. At the end of the day there are ways forward, but I think those have to be claiming machines, if not going down to the lower levels of computer logic.

    -Gene

  99. Anon2@87 wrote: “Any software innovators and inventors care to weigh in?”

    Sure. I believe I’m qualified as a “software innovator and inventor” as I’m named as the inventor in 5 US patents. I’ve also owned and operated my own software business for the last 15 years; I and my employees owe our livelihoods to the software I have written.

    Here’s why the US patent system is broken when it comes to software patents:

    1) The test for “obviousness” is far too weak. In my opinion, there have been many software patents granted that should not have passed the “obviousness” test.

    2) The test for “novelty” is far too weak. The Amazon 1-click patent is a shining example of this.

    3) Patent examiners appear to ignore prior art in many cases. They lack either the skill or the time to conduct a proper search.

    4) The USPTO has incentives to grant patents and no incentive to reject them. See http://www.patentprogress.org/systemic-problems/how-we-got-here/

    5) Software is different from other types of inventions in that a lot of so-called software inventions are really discoveries. (One doesn’t “invent” a mathematical theorem; one “discovers” it.)

    6) In a lot of cases, there’s really only one feasible way to do something in software. US Patent 4197590 (specifically, the “XOR feature) should never have been granted; the tequnique was known and practiced since the dawn of computer science. The XOR patent is discussed in depth at http://nothings.org/computer/patents.html

    As a software developer for the last 25 years and as the owner of a software-development business for the last 15 years, I strongly disagree that software patents are useful or that they encourage innovation. All they do is encourage litigation and make the barrier for entry for new innovative players too high.

  100. David S-

    It is hard to argue with what you say about obviousness, novelty and examiners not considering the best prior art if you are talking about legacy software patents. There are many software patents that should not have issued from years ago, and many of those are in the hands of patent trolls, which is a real problem. I read software patents while doing searches and patentability assessments all the time and think there is no way this could be patented today. And that brings us to the real problem. Things are not as you say they are today and haven’t been that way for many years. The criticisms of software patents you voice are valid, but they are historically valid and do not represent current practice at the USPTO. Some Art Units at the USPTO have allowance rates under 10%, many (if not most) in the software space are under 35%. It is very difficult to get software patents today.

    -Gene

  101. David S -

    One more thing… you are absolutely wrong when you say that the USPTO doesn’t have incentive to reject patents. There is FAR more incentive to reject than to allow. There has always been a perception from examiners that what they allow gets far more scrutiny from quality reviewers than what they reject. Unfortunately, that is not just perception, it is truth. There are patent examiners that have never issued a patent, or only issue after the Board has ordered them to issue a patent.

    Furthermore, an examiner gets the same quota count toward production from a final rejection as they do from an allowance. Further still, if the examiner rejects you and you file an RCE then the examiner continues to get quota count after quota count dealing with a case they are familiar with. Thus, it is in the examiner’s own best interest to finally reject and force the applicant to file RCE after RCE. This is particularly true if the examiner knows that the applicant won’t appeal, and most applicants refuse to appeal.

    So whoever has told you that the PTO has no incentive to reject patents simply doesn’t know what they are talking about.

    -Gene

  102. Same David as Roaring Penguins?

  103. On behalf of penguins everywhere, I find your your use disparaging. Please cease and desist and turn over all profits to me.

    PUNK

    Penguins United Now with Knowledge

    **meant as a parody of current social events – no penguins were harmed in the making of this parody.

  104. Bottom line:

    Once again (after Ebay, Bilski etc) some stupid court decision on low quality business method patent completely screws the rest of us – electrical and software engineers working on purely technical things like wireless communications or software defined radio or ultrasound medical imaging or machine vision etc etc etc

    Thanks SCOTUS
    well done

  105. Anon @97-

    Still not completely sure why your claims are waiting for moderation or going to spam. Going to get things redesigned and updated. One line item is getting comments working better.

    For some, but not all, of your comments the filters are sorting out your comment and flagging it because of your IP address. I have check, rechecked and triple checked and your IP is not on a blacklist on the server or in WordPress, which makes me wonder whether your IP address has been added to a blacklist database that the filters use as a reference. Will continue to seek solutions.

    -Gene

  106. David Skoll-

    You say that it is lie for me to say that open source software, such as WordPress, is a cesspool of security vulnerabilities and inoperability.

    You are, of course, wrong. Why you would lie about something that is so easily verifiable is beyond me.

    You are banned for lying.

    -Gene

  107. <i? The disclosures issued patents contain will be inadequate unless Congress steps in and overrules this asinine decision.

    I think it is time for Congress to step in. The Supreme Court has clearly stated that “long prevalent” = “abstract idea” which is simply not true. But by definition however, they are “right” since they have the final word on interpreting the law, unless Congress amends the law the way they did in 1952 to override the Supreme Court’s “flash of genius” test.

  108. So-called Software Patents are not patenting the software, they are patenting what the software does. That’s why I never understood the composition of matter claims for software.

  109. Tom,

    I disagree fully – but let me explain.

    I look at software as a manufacture and not a composition of matter.

    I know Gene looks at software as “method,” and we have discussed our different viewpoint on that in the past (roughly, I think doing so invites confusion and is unhelpful given that methods themselves are often treated as second class patent “people”).

    To me, the most natural way of looking at “the thing” of software is not what it does but what it is. You may have heard this before, but software is a machine component. Without machines known as computers, there would be NO software. There would still be math, novels and the other ill-informed attempts to classify software, but the critical link and the thing to keep in mind is that software is MADE to go with the computer. the machine is its Razón de ser.

    What should be obvious [ouch] is that software is created for a purpose. Utility is an easy aspect of 101 to meet. We still need (of course) to verify that the utility is the proper utility – and some software may fall out of eligibility at this point. Those items lacking proper utility (the legal version if you will of music and dance and literature) would fall out – but careful here, as the aim for what the software is meant to do is the controlling factor and NOT that the programmer feels that his work is a symphony of artistic expression, masterfully composed. There is a separate intellectual property vehicle that expressly protects that ASPECT of software.

    So with Utility nicely understood and tucked away, let’s return to category. As anyone proficient in the arts can attest, what can be done in software can equally be done in hardware. This then is the key. All software is is a variant of hardware – and hardware components are called manufactures. Remember – the PURPOSE of software is to be a machine component – nothing more.

    Regardless of any “surface” category differences of opinion – I tend to view Chakrabarty more on point than the current Court alludes to. However, the current Court seems trapped in a form over substance paradigm. Patents cover more than one aspect of an invention. That is because an invention can show itself in more than one way. Our profession is again disparaged by the Court, but that disparagement is misplaced. It is not us “making things up” – it is us capturing the essence of what the invention is. Likewise the excessive hue and cry about functional language is sorely misplaced. Aligning a bit more with Gene’s view (without taking the category designation), talking about – describing – software is merely EASIER to do with functional language. Since language is the tool (the only tool) of our trade, we seek out and use the best of that tool. Yes, for the uninitiated, the language may remind some of “but that’s just what it does, not what it is;” but I would (correctly) reply – what it does IS what it is, given other aspects of software being captured in the invention. It should be understood that software IS an invention that covers a multitude of aspects, including both programmer’s code (wherein may lie a different aspect deserving of copyright protection, machine code, (which could – but not considered legally reasonable be read by a person) and even the “code in action.”

    So when you say “not patenting the software” I take it you are not using the full meaning of the term software. Perhaps you mean code – either machine or person programmed – or maybe even both.

  110. Jack June,

    Not only are you dead wrong – you are deeply offensive.

  111. Sorry to upset you, Gene. I believe I addressed the points you made in my previous reply and I have no reason to rehash it.

    That aside, I’m always interested by how adamantly some advocate, even in this thread, that subject matter and novelty analysis must forever be wholly separate. I recognize that this is the orthodox legal interpretation (or perhaps I should say ‘was’, given how the Supreme Court has ruled of late). The issue with that approach is that it permits a scenario where the new part of an invention isn’t useful and the useful part of the invention isn’t new. Most of the technical people I know believe that is something that should be fixed.

  112. Math Guy,

    To your comment of “subject matter and novelty analysis must forever be wholly separate” – this is a product of history. You appear ignorant of that history (don’t worry, you are not alone). Have you ever heard the phrase “Those that do not remember history, are bound to repeat it”…? It does not have a good connotation.

    And yes, there are several professional deeply bothered by the fact that the Supreme Court’s ruling of late evidence that same ignorance – they are NOT supposed to forget those types of things!

    As to wanting a different set of rules, you (the royal you including “most of the technical people”) have a long established- and proper venue for pushing such change: the legislative process.Want 101 changed? Want 102 and 103 tightened? Want 112 to require applications to read like a technical manual? The answer is the same for each of these: contact your congressman. The answer is not convince a judge (or Justice) that the law ought to be something else and just rule that way.

  113. Math Guy-

    You say: “Sorry to upset you, Gene. I believe I addressed the points you made in my previous reply and I have no reason to rehash it.”

    Yes, you addressed what I said, but you were wrong. Just trying to explain things in a way that you could understand. Obviously you aren’t interested in being enlightened.

    -Gene

  114. Anon-

    FYI. Jack’s posts have been deleted and he has been banned.

    -Gene

  115. Gene Quinn @ 91 wherein you state that “1 + 1 = 2 is math”,

    Your statement is quite profound in that any machine that is capable of adding two 1-bit numbers to produce a 2-bit result is known to be “functionally complete” (AKA “expressively adequate”). This means that any logic operation, no matter how complex, can be realized as a combination comprised solely of these “machines” that take two binary inputs and produce a binary “sum” output and a binary “carry” output.

    In other words, given enough of these binary adders (it takes billions, even trillions) and nothing else, one can create a Turing complete computer in the von Neumann or Harvard architecture vein. In fact, this is how modern computers are designed, with several optimizations thrown in to reduce the number of “machines” and connections needed (generally speaking, these optimizations do not conceptually modify the nature of end result).

    So the question is: if what a binary adder does “is math”, does connecting the output of one such adder to the input of another such adder result in a circuit doing something that is “not math”? How about connecting eight adders together to produce a memory cell, is that memory cell no longer doing math? How about connecting twenty billion adders together to create a device that can, based on thousands of inputs and stored values of previous inputs, produce millions of outputs?

    In short, if one performs mathematical operations millions of times in combination to produce a result, at what point and with what justification should one conclude that the entirety of that combination is not mathematical?

  116. Saul-

    Nice try, but you clearly miss the point altogether.

    You say: “any logic operation, no matter how complex, can be realized as a combination comprised solely of these “machines” that take two binary inputs and produce a binary “sum” output and a binary “carry” output.”

    So your view is that because the machine is instructed to operate in this manner by the software then the software that commands the action is math because the action needs to be converted into binary code in order for the machine to perform? That is an extraordinarily strained way to get to the erroneous conclusion that software is math.

    You can say all you want that software is math and it will never be true. Software directs the machine to operate and directions are not math even when those directions boil down to binary code understandable by the machine.

    -Gene

  117. Frankly, it is amazing that anyone who knows anything about computers could ever say software is math. This shows an acute lack of understanding of the relationship between source code and machine readable code. The fact that the source code is translated into machine readable code doesn’t make software math. What is actually proves is that in order for the machine to understand the instructions it needs to be translated into a series of 1s and 0s that ultimately make the machine operate as instructed.

    I know this is hard for mathematicians to accept, but not everything is math. Sure, math can describe things, but that doesn’t make what it is describing math. For example, mathematic formulas can describe the curvature and physical structure of an ordinary item such as a glass, but that does not make the glass math, which is so self evident that it is embarrassing that it needs to be said.

  118. mmmkay, Gene, KRKeegan,

    I want to suggest an explanation, if not a defense, of why 102/103 are, or appear to be, conflated with 101 in this case. If you try to decide what counts as an “abstract idea” you might come to the conclusion that it has something to do with being general or broad. For example, http://dictionary.reference.com/browse/abstract provides the following definitions: “thought of apart from concrete realities, specific objects, or actual instances: an abstract idea” and “to consider as a general quality or characteristic apart from specific objects or instances.” But the next question is how broad, how general, how lacking in concrete realities? One answer is broad enough to be old or obvious.

    Graham

  119. This point may have been made, but computers don’t “do” math. Computers change state. We interpret what they do as math. This difference becomes very clear when you start to do intensive computations, such as solving differential equations. It takes a tremendous amount to inventiveness to get a computer to actually do something that reasonably simulates “math”. We just take it for granted due to the efforts of those who have engineered and built the systems so well that we don’t realize what it’s actually doing.

  120. System and Method for Transforming an Abstract Idea into Patent Eligible Subject Matter
    Inventor: Thomas et al.
    Wherein we claim:
    1. A method for transforming an abstract idea into patent eligible subject matter comprising the steps:
    • determine whether a claim is directed to a patent-ineligible concept;
    • if said claim is directed to a patent-ineligible concept, then ask whether said claim’s elements, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application; and
    • if said claims elements do not transform the nature of the claim into a patent-eligible application, then search for an inventive concept needed to make said transformation and then supply said inventive concept as one or more additional features to said claim
    wherein:
    • said supplying of an inventive concept integrates the building blocks of human ingenuity into something more;
    • said something more is more than merely requiring generic computer implementation; and
    • said one or more additional features are more than a drafting effort designed to monopolize said patent ineligible concept.
    2. The method of claim 1 wherein said additional features improve an existing technological process.

  121. Wow, 190 comments….is this the most commented article to date?

    Wow…

  122. correction: 120 not 190

    still deserves a wow…nonetheless..

  123. Having read the decision, my take is that the justices are setting/reiterating a standard that adding a computer will not change an ineligible process into an one that is, and that software that only implements an already ineligible process is likewise not considered to be an invention.

    Going down to describing logic gates won’t save those. That will simply be ruled to be “the draftsman’s art”.

    The impact on patents held by Apple or Microsoft should actually be minimal. There is limiting language that would help them out (“The method claims do not, for example, purport to improve the functioning of the computer itself.” and “Nor do they effect an improvement in any other technology or technical field.”). Rest assured that huge swaths of their patent portfolios do just that, as do patents on filesystems, image processing, and many others.

    How the claims are written appears to have been put in a back-seat compared to what they actually claim when the reader zooms-out and looks at the entire process as a whole. If it fits Bilski or Mayo’s exceptions then the computer won’t save it.

  124. > “mathematic formulas can describe the curvature and
    > physical structure of an ordinary item such as a
    > glass, but that does not make the glass math”

    But Gene, if you email me the math that describes the glass, I won’t have a replica of the glass.

    If you email me the math that describes what the computer program does, I’ll have a copy of the computer program because a program is just a big long formula that sometimes waits for inputs.

    I don’t see why you raise the distinction between source code and executable code. First, they correspond. Second, it’s not as if one is patentable and the other not.

    I’ve gathered links about the math topic here: http://en.swpat.org/wiki/Software_is_math

    (There are some good links there, but the page as a whole isn’t coherent. It was mostly written a few years ago when I was against the use of the “software is math” argument.)

  125. if you email me the math that describes the glass, I won’t have a replica of the glass.

    You will if you have a 3D printer.

  126. I hate to say it, but maybe we would have been better off (gasp) if Steven’s dissent in Bilski was really the majority opinion. There, at least non-business method software patents might still be eligible. But now we are stuck with this undefined, overbroad abstract idea doctrine which will engulf many non-business method software patents as well as all business method patents. Stevens did mention there was a problem with the majority’s lack of definition of “abstract idea.” What a mess.

  127. Software is not literally math but rather is a formal description of a
    mathematical process (like rearranging an array of numbers or encoding a sound
    wave as a string of 1′s and 0′s) in a language that a machine can understand.
    The machine simply automates a sequence of calculations that any human can
    perform using pencil and paper. For example, allocating a chunk of memory is
    simply the machine’s version of reserving space on your paper to record stuff.
    When a programmer steps through a program line by line in a debugger, he is
    slowing the computer down to human speed so that he can run the same
    instructions mentally alongside the computer.

    That no computer has previously executed a particular sequence of
    steps described in a software patent does not by itself justify the
    patent in any reasonable world. If that sequence of steps is well-known in
    other contexts, merely writing down those steps in a programming language takes
    little more than familiarity with the language. Indeed, the whole point of
    high-level programming languages is to let the programmer focus on finding
    methods for solving problems and minimize the effort required to describe those
    methods to the machine.

    This decision seems to merely state that a direct translation of a process into
    machine-readable instructions is only as novel, for patent purposes, as the
    process itself. Alice did not claim a new accounting algorithm, nor did they
    innovate on the methodology for translating said algorithm to machine
    instructions. They did not, for example, develop a new programming language
    with accounting-specific features. They did not invent compiler optimisations
    to let the programmer produce more efficient accounting code. Thus it’s hard to
    see injustice in this ruling.

  128. patent leather,

    I would have a major problem had Steven’s view in Bilski been successful in carrying that opinion as a holding. While comparatively you may like this decision less, allowing Steven’s to have succeeded in a naked re-writing of history and abrogating Congress direct words would have emboldened the Court to take even more drastic action (the results of the Alice case could have been far worse).

    Ciaran O’Riordan,

    Would you mind telling me your views on copyright protection? On any intellectual property protection? Have you seen the articles that expand the “It’s Math” concept to include all physical reality as actually “just being math?”

    Mark Nowotarski,

    Your cleverness will not be appreciated by the Court, who will simply move the goalposts on you and disparage you for trying to be just a scriviner. Did you really think that the Court, who so readily dismisses the actual words of Congress, would let you get away with using the words of the Court?

  129. >> if you email me the math that describes the glass, I won’t have a replica of the glass.

    > You will if you have a 3D printer.

    No, there will still be a few steps before I might have a glass. A second difference is that the math describing the glass might be wrong – the person who wrote the description might have made a mistake. Software is a mathematical description of what it (itself) will do, so sending the description means sending the software.

    3D printing will certainly change society’s relationship with patent law, but it’s not relevant to the current discussion.

  130. Gene, it’s good to see you admit to how much garbage has been patented over the last 30 years.

    On the other hand, it is patent lawyers who have written those patents. So, the fact that they are coming back to haunt the profession by hitting the press and ruining the reputation of the patent system is as much the fault of the patent profession as it is examiners or judges.

    It’s sort of like the stories about police who abuse their powers. Yes, they are a minority. Yes, the majority of cops are not abusing their powers.

    But the ‘good cops’ are not stopping the bad ones…. they are tacitly approving the activity by not trying to stop it.

    In the same way, a vast majority of the patent bar has allowed those who write and help file junk patents to tarnish the reputation of the entire patent system.

    If you want to fix public opinion of the patent system, and patent lawyers in general, start by fixing that. Until patent laywers stand up and say ‘This far and no more, no more will I help you file a patent for something I know is garbage’ and ‘This far, and no more, no more will I allow you to tarnish our profession by submitting garbage patents’, then there is no way you can recover your reputations. Too many garbage patents, which in turn have been bought by trolls (or given gleefully by companies performing economic warfare with each other at one remove to keep from getting in legal hot water) to clean that up.

    Karma, as they say, is a witch… and she’s riding her broom hard right now. Until all the garbage is swept out by that broom, the patent industry is going to have to weather a storm that is at least as much their own fault as it is lazy examiners. And yes, I know you say it happened years ago. You can stop smoking and still die of lung cancer if you haven’t smoked in 30 years. The seeds have been sewn, and the harvest has come. I’m not sure you can even get out from in front of the steamroller at this point. But until people try, there’s going to be more and more cry for reform, whether the system is currently working or not.

    In other words, if you want people to believe patent lawyers when they say it’s working, patent lawyers are going to have to start trying to clean up the mess the profession made over the last 30 years with those garbage patents you admit are garbage.

  131. Sorry, in that last post, the second ‘this far and no more’ should have been ‘This far, and no more, no more will I allow you to tarnish our profession by prosecuting garbage patents’.

  132. I had another thought. In software development, the programmer devises an
    algorithm, then implements the algorithm in a programming language. That code
    is then compiled into a sequence of hardware instructions. When those hardware
    instructions are loaded into the CPU, the computer performs said instructions.
    In other words, the path that an abstract process takes to a working software
    realization is as follows:

    (1) Come up with algorithm.
    (2) Translate algorithm to machine instructions.
    (3) Machine executes instructions.

    The particular programs executed on the machine are an individual
    expression of the programmer, hence are protected by copyright. Alice was in
    effect trying to get patent protection instead of copyright protection for
    programs by laying claim to a general description how the hardware would
    actually execute such programs, such as what data is stored in memory, what
    characters to write to the screen, etc. But the hardware only does what it does
    because it is issued a specific sequence of commands by the programmer, so Alice
    was effectively trying to patent not just a computer program, but all computer
    programs that compile to the same hardware instructions.

  133. “software will need to be described as it is a machine on a granular level, describing gates, switches and relays.”

    This is going to be an impossible undertaking for any inventor and attorney.

  134. john,

    Your view is not complete. See my post at 109.

  135. Lawyers and judges act like words don’t mean anything, it seems, except their instrumental value in getting what they want. ‘Abstract idea’ is a pleonasm, since all ideas are abstract. Abstracta are what Plato used to call the objects in the realm of ideals. Pi, for inhtance, or ‘justice’ … Concrete objects instantiate ideas. ’1+1=2′ is a concrete representation of the idea of addition. Of course software is never abstract when it is written or implemented, however as in all mathematics, the ideas or abstracta involved are universal, as are the axioms and laws that make it function universally. Indeed, a computer becomes a different machine from one moment to the next as software alters it, and the software running it is never abstract. The question is: is it efficient or fair to say that for each machine that a computer becomes as it instantiates code of any kind, should some sort of monopoly be applie? It seems unwieldy to do so. It is seriously frustrating in the meantime to see terms and concepts used without a basic understanding of their meanings. This is true on both sides of the argument, unfortunately.

  136. Your cleverness will not be appreciated by the Court,

    Oh I don’t know. Maybe they have an ironic sense of humor :-)

    More seriously, the USPTO will have to do essentially what I did, translate this decision into a process. For them, it will be a process for examination. Their process will rely heavily on the language of the decision to develop certain red flags and green flags. If examiners find red flags they will reject under 101. If they find green flags, they won’t.

    Practitioners for their part will also have to develop a process. It will be a process for drafting a patent application that has only green flags.

    Therein is the irony. SCOTUS hates red and green flags, but every time they issue a decision tearing up red and green flags, that decision will be implemented using red and green flags .

  137. @Gene (not Quinn) in comment 80
    “because you said ‘computer arithmetic’.”

    I don’t know what you mean, but I have two guesses: either you slept through your education and don’t have any Hennessy / Patterson books on your shelf, or you think the phrase “computer arithmetic” is a hand-waving gesture to a complicated problem you would rather characterize with more than two words. Can you express your comment without using cryptic sarcasm (e.g. your comment 79 “oooh, you must be a PhD”)?

  138. Norbert,

    You have engaged in what is called a logical fallacy by attempting to draw an example using something outside of the Useful Arts. Anything outside of the Useful Arts does not even start in patent law – you do not apply any of the laws: 101, 102, 103, 112 etc.- You have “QED’d” far too prematurely.

    Can you think of an analogy within the Useful Arts?

    Mark,

    You have correctly (I think) picked up on the problem: the Court wants to aim at a moving target. Note the disparagement by the Court for “scriviners.” This is not the first time and surely will not be the last. All the Court has done – in effect – is create yet more “patent profanity” and the next generation of applications will just “hide the ball” even more so that all the proper “green flags” are hit while avoiding the “red flags.” The inventions that are software will not stop, nor will applications covering those inventions. To a certain extent, this is what I believe rudy is aiming at.

    Rudy,

    Unwieldy or not, these lowly scriviners have but the tools available to follow the laws as set to obtain the rights as provided by the law as written by Congress. Do you have an alternative?

  139. Anyone care to weigh in whether they think the claims in Ultramercial would be statutory post Alice?

  140. Can you link to the Ultramercial patent?

  141. “I don’t know what you mean, but I have two guesses: either you slept through your education and don’t have any Hennessy / Patterson books on your shelf, or you think the phrase “computer arithmetic” is a hand-waving gesture to a complicated problem you would rather characterize with more than two words. Can you express your comment without using cryptic sarcasm (e.g. your comment 79 “oooh, you must be a PhD”)?”

    sorry if i touched your wound. i was just trying to answer your question.

  142. “Figure 1 illustrates a black box 2 having a crank 3 attached to a first side 4 of the box 2. A slot 5 in a second side 6 is configured to receive a penny 7. Placing the penny 7 in the slot 5 while manually turning the crank 3 causes the penny 7 to be flattened into a planar configuration having the Declaration of Independence engraved thereon and delivered through the slot 8 in a third side 9 of the box 2. A series of interoperating standard gears, made preferably from steel, in the box 2 causes said flattening and engraving of the penny 7.”

    if this was the complete description supporting a patented claim for an engraving machine, we’d all argue that it was not enabled. yet, thousands of software patents “hide the invention”, most likely through ignorance, by non-enabling disclosures such as this.

    hence, i am in agreement that way too many software patents are crap. it is unfortunate that software engineers are introduced to my profession in this way, learning that patent lawyers puke up paragraph upon paragraph of irrelevant sputum, which becomes an obstacle via an issued patent (examiners without cohones are part of the problem).

    on the other hand, i am also confident that the many legitimate issued software patents are untouched by this Alice decision, and that software is, without doubt, recognized as patentable so long as what the software inventor has built is disclosed. IT’S NOT ABOUT WHAT IT DOES, IT’S ABOUT WHAT IT IS.

  143. Gene,

    Two comments: you are better off directly answering without snark and you are better off answering with a modicum of understanding the question. Snark has a more limited place on this blog, in case you have not noticed, and Gene’s moderation efforts to weed out deliberate misrepresentations makes the dialogue here to be a of a substantially higher level than other patent blogs. If you don’t know something, don’t use snark. If you do know something, try not to use snark, but if the person you are addressing refuses to learn, use snark heavily ;-)

  144. Mark, here is the opinion which contains the claim: http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1544.Opinion.6-19-2013.1.PDF
    I think it still might survive Alice, although many would disagree. I thought there was a petition for cert pending, anyone know what happened?

  145. Gene-

    You can be convinced that “legitimate issued software patents are untouched by this Alice decision,” but you would be wrong.

    Time will tell that everything I have said is 100% accurate.

  146. Patent Leather,

    I think Utramercurial claim 1 would be vulnerable to a 101 preemption argument under Alice. At first read, it looks like they are trying to preempt anyone offering a “watch my ad” per view business model, not matter how it was implemented. I skimmed through the patent, https://docs.google.com/viewer?url=patentimages.storage.googleapis.com/pdfs/US7346545.pdf and I didn’t find any discussion of a thorny technical problem that required some ingenuity to solve.

    I know it sounds ridiculous, but Ultramercurial would have to show that their claimed invention integrates “the building blocks of human ingenuity” into “something more”.

    Hopefully as PTAB decisions emerge over the next few months, they will give us some guidance as to what “something more” means, at least at the patent examination level.

  147. I don’t know Mark, of course we both hope that you are wrong. The Ultramercial opinion (to which, interestingly enough, Lourie joined) ends with, “Finally, the ’545 patent does not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract concept. It claims a particular method for collecting revenue from the distribution of media products over the Internet.” Risk hedging and settlement are economic concepts to which (admittedly) there is a preemption danger if someone really held a patent on these things. The method in Ultramercial is narrowly claimed and does not preempt the entire field. Rader’s opinion here was brilliantly written, but is probably all but forgotten now.

    Bad facts make bad law. Bilski, Mayo, and Alice were terrible test cases (overbroad claims). Ultramercial would have been a better case for the Supremes to hear before this trio.

  148. patent leather,

    Assuming cert is denied, it will be interesting to see what arguments are presented for invalidity on remand.

  149. Gene at 142,

    The “what is does/what it is” dichotomy is an overbroad and overused adage. As those in the art can attest, software is far less about “what it is” and far more about “what it does.” That is just the predominant aspect of the invention, and the easiest and most clear manner of describing the invention. Would you rather have claims written that you can read in English, or would you prefer a more exacting, but practically unintelligible, exhaustive compendium of page after page after page of “what it is” description of the physical equivalent of software? I will take it as known that any software invention can be created purely (albeit inefficiently) in hardware.

    This is why the mantra of “functional claiming” is such a boogeyman, a false scare tactic.

    This is also why I understand why Gene Quinn prefers to place software in the “method” patent eligibility category.

    But this is also why I shy away from that category, as I know many who -perhaps like you – do not take the time to understand the nuance of patent law and understand when an adage is applicable and when it is not. This is exactly why I prefer to treat the invention that can be called software as a manufacture (a thing), even though the limitations of human language mean that the easiest way to talk about that thing is through what that thing does. But make no mistake, even though the language sounds in action (or a sequence of action), the invention is still there and trying to place too much emphasis on which category only obscures the fact that an invention really is present.

  150. This is idiocy

    in my field of invention (signal processing for communications) things used to be analog first – vacuum tubes, resistors, capacitors… then transistors came along…
    At some point integrated semiconductor circuit came along and they started to build programmable dsp processors and inventing activity moved toward writing software codes for those digital signal processors (and now we have FPGAs and all kinds of System on a Chip devices combining everything in one tiny chip)
    And now we have “Software Defined Radio”
    How is this possible that merely moving from analog vacuum tubes to digital signal processors can potentially make the very same invention unpatentable in SCOTUS view ?
    Those SCOTUS judges have no clue and should be ashamed of what they’ve done

  151. angry dude,

    Your post solidifies the conversation concerning the fact that all software inventions can be captured in full hardware mode. I still doubt that the anti-software patent advocates understand that point. It often seems that such inconvenient facts that get in the way are far too easily ignored.

    Your “how” question is easily answered. The Court has moved the law back to before the Act of 1952. As I have hinted at, I do not think that this has been done in a “clueless” manner – I think the Justices very much know what they are doing and are making sure that their ability to write the law is maintained. They have stated as much in another recent 101 decision.

    The better question is “How should Congress react to this re-writing of the law?”

  152. Trying again:

    angry dude,

    Your post solidifies the conversation concerning the fact that all software inventions can be captured in full hardware mode. I still doubt that the anti-software patent advocates understand that point. It often seems that such inconvenient facts that get in the way are far too easily ignored.

    Your “how” question is easily answered. The Court has moved the law back to before the Act of 1952. As I have hinted at, I do not think that this has been done in a “clueless” manner – I think the Justices very much know what they are doing and are making sure that their ability to write the law is maintained. They have stated as much in another recent 101 decision.

    The better question is “How should Congress react to this re-writing of the law?”

  153. angry dude @149

    I understand your anger. I agree with your sentiments.

    As for your assertion the SCOTUS judges should be ashamed, it depends upon what standard. From the view supporting innovation, and protection of individual property rights thereto, i.e. intellectual property rights, “shame” would be correct.

    From the view of “social justice”, protecting the public (as if inventors were somehow not part of the public), and the public interest/public policy (collectivism), then there would be no shame, but pride, and small warm feeling of victory, that the crumbling edifice of private property can be dismantled a little more, even if only in the realm of intellectual property rights.

    Presumably the SCOTUS judges DO have a clue…as to whether they are ashamed, that would depend upon their political philosophy.

  154. It claims a particular method….

    Are you saying that making a method “particular” will transform an abstract idea into patentable subject matter under Alice? If so, then more than ever it seems to me that SCOTUS has merged 101 and 103.

  155. Any word from the USPTO on Alice? Usually they get something out in a day or two of a Supreme Court decision.

  156. Angry dude, I was thinking the same exact thing. Stevens commented much later on that in Diehr he wanted to make sure that software never became patentable. So if in Diehr, instead of using a digital computer to control the press, analog circuits were used, then there would be no 101 issue.. So Stevens (and the other Diehr dissenters) would have allowed the patent only on the analog version, thus letting an infringer avoid the patent by simply using digital technology. Absolutely absurd.

    I didn’t go to Harvard and don’t claim to be smart enough to be a candidate for the Supreme Court. But I (like many on this board) could do a way better job than the current motley crue.

  157. Mark @ 155
    Here is the first reaction:
    https://24.media.tumblr.com/tumblr_mcf1ixfprv1rocz98o1_500.gif

  158. Apparently the Supreme Court felt its rules from Mayo v. Prometheus and Bilski needed clarification. I am not sure why else they would have taken this case since they did not set out any new rule, choosing instead to “fit” the Alice Corp. business methods within the construct of the “abstract ideas” rule from Bilski pointing to ineligible subject matter for patenting. Further, the Court also applied the Mayo v. Prometheus two step rule to say that there was no “something else” or “inventive step” to the claims of Alice Corp. Overall, I don’t think there is much new here from the Court but rather an exclamation on its recent cases in this area. The trouble is if Section 101 is meant to be a “coarse filter” for determining patent eligible subject matter, why not leave the “inventive concept” analysis to the USPTO under Rule 103? This seems to me to be a more appropriate place to evaluate the patentability of these claims. After all, non-obviousness, i.e. “inventive concept” has traditionally been analyzed here rather than under Section 101. If Section 101 is to be more than a “coarse filter” for patent eligibility then why be so active to eliminate more computer implemented method patents? After all, the Flook, Benson, and Diehr line of cases did a nice job to outline the basics of patent eligible method claims. Although Bilski allegedly narrowed the application of the Fed Circuit’s machine or transformation test, it apparently lives as it was used in concept throughout this opinion. Not sure if a software or services has any more clear direction for protection of its method inventions after this opinion but at least we know what ineligible method claims look like once more. It seems that the safe approach is to patent functional features of methods where the machine/transformation, Bilski, and Mayo tests are met AND to copyright protect the creative expression of the software. It will be interesting to see what happens to the most recent Oracle v. Google Fed Circuit decision regarding API’s. Seems to have broader application if it survives further judicial review.

  159. In answer to Matlock at #157, does it help to suggest that the SCOTUS-specified 101 enquiry and 102/3 enquiry are not different levels of fineness of the same enquiry but, rather different but complementary, in much the same way as at the EPO, where the eligibility enquiry is about whether the claimed subject matter has “technical character” whereas the patentability enquiry is as to whether the claimed subject matter resorts to a technical feature to solve a technical problem?

  160. Ah. I see that what was #157 is now #158.

  161. In furtherance of your response, MaxDrei, I would agree with your EPO analogy that 101 and 103 are indeed, different but complementary concepts. That is just the problem. The Mayo v. Prometheus second step for “inventive concept” seems to “muddy the waters” between what the differences should in fact be between non-obviousness and ineligible subject matter under 101. With the expansion of the 101 inquiry, the exceptions to patent eligibility are in danger of swallowing more and more of patent law as it relates to computer implemented method inventions. Your citation of “technical character” versus “whether the claimed subject matter resorts to a technical feature to solve a technical problem” would seem on the surface to highlight differences between the two concepts but at the end of the day, I don’t believe SCOTUS hit the mark in the Alice opinion. The reasoning by the Court seems to be saying, for a claim to satisfy the 101 inquiry it now must meet 102/103. My understanding of EPO examination for such inventions is that “technical character” is also a bit of “quick look” analysis compared to the problem-solution approach. I fail to see how the new line of cases, “Myriad”, “Mayo v. Prometheus”, and “Bilski”, does anything more than boil down to “we know something that is patent eligible and non-obvious when we see it.” For now, it seems like I will advise my clients to strive for a “Diehr” level of computer implemented process protection scheme that meets the machine or transformation test where possible and I will continue to hedge all bets with an active copyright program to protect original expression in light of Oracle v. Google.

  162. Concerning Digital – Analog divide – there is no such thing

    Example: Brent Townshend’s patent(s) on 56K modem technology (subject of much litigation in late 90s) explicitly utilized this type of synergy in one device – telephone modem: analog modulation on sending side and digital signal processing on receiving side – an asymmetric approach to data transmission allowing to exceed theoretical (analog ) limit on data transmission rate via telephone wires.

    To add to this:
    first modems were purely hardware units (quite expensive) but at some point industry moved toward “software modems” where most of the processing is done in software on the same general purpose cpu doing many other tasks as well

  163. #162 — “first modems were purely hardware units (quite expensive) but at some point
    industry moved toward “software modems” where most of the processing is done in
    software on the same general purpose cpu doing many other tasks as well”

    You mean they went from technology to non-technology. /sarcasm off/

  164. To BM at # 161:

    For eligibility, the EPO takes an “absolute” (as opposed to a “relative”) approach. Thus, one of the following two claims is EPO eligible, the other not:

    A. A digital computer.

    B. A method of hedging, comprising the steps of A-ing, B-ing and C-ing.

    However, adjudicating the very same EPC, the English Courts would dismiss both as ineligible. They think the EPO “intellectually dishonest” to ignore the Prior art and so find Claim A to be eligible.

    I suspect SCOTUS procured a briefing on English eligibility law, from somebody like Robin Jacob. That would have brought it to the same attitude as England, that it is “intectually dishonest” to ignore the prior art when assessing eligibility.

    Whatever. England and the USA now do eligibility relative to the art as it is on the specific date of the claim, rather than absolutely as in the EPO. In so doing, there is a degree of elision between eligibility and patentability.

    Got it now? Care to add anything?

  165. step @157

    “laughed to hard I thought my pants would never dry”

  166. To add to this:

    Nowadays they digitally simulate old days vacuum tube audio amplifiers and effect processors e.g. in VST software plugins running on general purpose desktop computers having exact same look and feel (e.g. on touchscreen monitor) as old days hardware knobs and switches

    How is that for intellectual honesty, SCOTUS ?

  167. @Kevin Keegan:

    >>My recollection is that committing perjury caries with it fines or imprisonment of not more than five years.

    Well, you may wish to talk to all the patent lawyers in the USA who cloak perjury with legalese every time they write a software patent application.

    ALL software is a transformation function. ALL. Period. If you do not understand that, you may wish to enroll for basic math lessons and focus specifically on transformation functions. Once you get your head around that, it might be worth reading up on automata.

    Now, if you’re saying math is patentable, you’re already committing perjury. Math is fact. Fact is not patentable. Period.

    This is a GOOD ruling. Making it hard to cloak math in legalese in a patent application is an extremely good outcome.

  168. nuance is not in the writer, it’s in the reader. the “what it does/what it is” adage is plenty nuanced in practice, and that recognition comes with experience (e.g. dave kappos repeated it often at ibm). to say that software is a manufacture makes a similar point.

    if a more exacting, exhaustive compendium is unintelligible to you, that’s your problem. it’s also the main reason why software patents have devolved over the last twenty years into functional crap (i.e. laziness – what is the easiest way to talk about it doesn’t matter, accuracy and enablement matters).

  169. *****************************************
    Gene-

    You can be convinced that “legitimate issued software patents are untouched by this Alice decision,” but you would be wrong.

    Time will tell that everything I have said is 100% accurate.
    ******************************************
    chisum got it right in his paper on Alice. a technological improvement is a legitimate software.

  170. gfernadas,

    Can you copyright math?

  171. @167
    “Math is fact. Fact is not patentable. Period.”

    :):):)

    And math grows on trees and sometimes even on t-shirts

    I used to have RSA t-shirt – an entire RSA cryptography algorithm in few lines of Perl on your back, is that cool or not ?
    nice way to start conversation with chicks btw

  172. To Max at 164, extolling the virtues of the English way of looking at prior art when determining the threshold question of whether the claimed invention is the right kind of subject matter to consider as potentially patentable.

    Note that ending phrase: “potentially patentable.” Those of us contending for the stepwise analysis of patentability do not intend to let old things get patented, simply because we say they are eligible under the American section 101. They still have to pass muster under section 102 and 103, both of which are intended to weed out old things or things too similar to old things. Max, as I understand it, you and the English font-of-wisdom would subject the subject matter to three rounds of weeding out old stuff (like Scotus’s Mayo/Alice jurisprudence).

    I still have not heard a reason to justify needing to go through this analysis three times.

  173. anon @ 149

    this whole functional language stuff is nonsense. If taken literally, it would mean, if we were describing a cell phone, we would have to describe resistors, capacitors, transistors that make up a super heterodyne receiver. and of course, we would then need to describe how to make these components. and then, we would have to process the materials they are made out of. It is a well-settled principle of patent law that you do not have to describe those things already known to those skilled in the art. SCOTUS is showing their ignorance by bringing this all up again.

  174. Dale @172,

    The good news is that I’m near finished with my provisional application, including claims to an abstract Java machine that abstractly determines if supplied text includes a claim drawn to a concept where the concept can be reduced to simplified absurdness and then combined with the prime directive, make it so on a generic computer.

    The bad news is that I’m having some enablement issues.
    Can you join in as a co-inventor and help with this?
    How about we meet up at the Gulch Cafe? (Location known only to those who are friends of J. Galt)

    p.s. Did you give your speech yet and if so how did it go?

  175. I have to say, I’m pretty surprised at all of the hand-wringing over this decision. It’s pretty clear from the mercifully short decision that the Court believes that writing software to carry out a known function is not patentable. I think it’s fair to question why this is handled under 101; while reading the opinion, the question kept going through my head as to why, if the applicant was merely claiming the use of a computer to implement a known process, the claims weren’t rejected under 103. “Abstract idea” as Justice Thomas was explaining it seemed to me to be an old, well-known process carried out electronically. Maybe in the Court’s mind, that doesn’t necessarily make it obvious in light of the prior art, and that’s why it falls under 101 instead of 103.

    You can howl all you want, but if there had been a court decision 20 years ago stating that “Doing X known process with a computer” or “Carrying out Y known process over a network” was not patentable subject matter, it would have made a huge positive impact on the quality of patents issued by the Office in the 1990s. To this day there are plenty of applications filed for trying to do known things over the network, and of course the attorneys always argue that it’s non-obvious given prior art that teaches doing the same things, and other prior art teaching communication over a network. Even a flawed decision that articulates this in favor of invalidating patents on the “digitizing” of known methods is a good thing.

  176. Cowboy, at # 171:

    Thanks for the feed. But may I ask, what leads you to suppose that I am “extolling” the (relative) way the courts in England do eligibility? Don’t you know that I’m a fan of the (absolute) EPO way which the English courts condemn as “intellectually dishonest”?

    As you say, the absolute way used by the EPO ignores the prior art when doing eligibility. Conversely, in England and SCOTUS, eligibility is tested relative to the art.

    Of course, the EPO can do this only because its approach to obviousness is a no-nonsense one, well able to handle without stress the issue whether the contribution which is made by the subject matter of the claim falls within the ambit of the useful arts. Such a robust (aggressive?) approach is signally lacking, in England and the USA, and this is what necessitates their relative approach to eligibility.

  177. gfernandes-

    You say: “ALL software is a transformation function.”

    That is 100% wrong. The law is uniformly clear. Software and computer processes are NOT considered transformational under U.S. patent law.

    If you are suggesting that software is math or the equivalent of math you are similarly wrong. Only one who is completely ignorant and uninformed could ever possibly utter such nonsense.

    If you want to comment here on IPWatchdog.com please keep posts accurate and intellectually honest. We do not tolerate factual misrepresentations masquerading as fact.

    -Gene

  178. K-

    You say: “It’s pretty clear from the mercifully short decision that the Court believes that writing software to carry out a known function is not patentable.”

    So it is your belief that the USPTO will moderate this decision and limit it tightly to its facts despite the Obama Administration’s positions on patents? Do you think the PTAB, which is already killing patent claims at a rate of 95% will find cause in this decision to go in a different direction? Do you think those on the CAFC that signed onto the Lourie opinion will believe that SCOTUS disagrees with the sweeping comments they made?

    I think it is foolish to think this decision will be limited. I think the way it will be interpreted is that similarly drafted method, computer readable medium and systems claims will be patent ineligible. Given that all software claims use these constructs that spells doom for existing software patents and many applications pending.

    -Gene

  179. Gene-

    You say: “chisum got it right in his paper on Alice. a technological improvement is a legitimate software.”

    After time passes I will gladly accept your apology. The decision makers involved here at the USPTO, PTAB, District Courts and CAFC will not be making fine line distinctions. The test is now a subjective one at best. At worst, and far more likely, similarly drafted claims will be patent ineligible.

  180. Gene,

    Now is not the time to let your emotions run away from the constraints of your rational head.
    Don’t chomp at the hook of those who try to bait you.

    The big picture is that of a SCOTUS buying into the bovinal stuff of the so-called “frenemies of the court”.
    Claims are not “drawn” and “directed” to the North Pole or to the westerly winds.
    Claims do not need to have “elements” that set forth an “inventive concept” (are we back to gist days?).

    This is all stuff spouted by the “frenemies of the court” and purchased hook, line and sinker by the clueless nine.

    It’s just that simple.

  181. Step back,

    The talk went well. I only ran into one anarcho-libertarian type. The audience seemed a lot less skeptical than you initially were about the impact of patents on creating the industrial Revolution and growth in real per capita incomes.

  182. Dale,
    Looking forward to seeing update at your site. :-)

  183. Gene @178. I think the takeaway is that the Supreme Court will not uphold patents for financial products, particularly those using software. If you look at the Courts recent opinions, it appears they are skeptical about patents in any new technology. The PTO will use this to make the whole patent process more expensive and arbitrary.

  184. Gene @178. I think the takeaway is that the Supreme Court will not uphold patents for financial products, particularly those using software. If you look at the Courts recent opinions, it appears they are skeptical about patents in any new technology. The PTO will use this to make the whole patent process more expensive and arbitrary.

  185. Gene, Max/Drei: If you look at the patent claims at issue, the specification, AND the file history, you will see that the examiner considered obviousness and decided there were in fact features not obvious to posita. How is that for “technical character” or “inventive step”? More in spec that could have been claimed. I guess SCOTUS feels it knows more about 103 than uspto. Doubt that. The approach is moving dangerously closer to epc 52(2) and (3) in abolishing all business methods. Yikes! Will claims that implement a Diehr process that presumably meets machine or transformation test still be patentable? It seems like yes but making 101 into an initial 103 seems like two bites at Apple seeking to get patents thrown out.

  186. Brian,

    Not one of the Supreme Court justices is factually or legally competent to practice patent law. Not one would make it as a first year patent law associate. It is time to revoke their jurisdiction over patents.

  187. “Like electricity, nuclear power, or biotechnology before it, data will shape the next age of innovation and invention. With a bright new IDEA, Rensselaer is positioned at the forefront of this technological revolution.”

    http://www.nxtbook.com/nxtbooks/rpi/2014winter/#/18

    data will shape the next age of innovation and invention?

    this technological revolution?

    did Justice Thomas major in a technological discipline in college or was it English literature?

  188. Dale @184-

    You say: “The PTO will use this to make the whole patent process more expensive and arbitrary.”

    I couldn’t agree more. I suspect that many examiners, whether they are told to or not, will also use this to clear their dockets and make their numbers. Many Art Units in this space already have abysmally low allowance rates. This will only make things worse.

    -Gene

  189. step back,

    My talk will be up on the Atlas Summit site at some point. When it is I will try to post a link.

  190. Brian at # 185. Don’t panic. The EPC Art 52 exclusion of methods of doing business and of programs for computers is construed narrowly and the EPO grants tons of claims that can be legitimately designated as business method claims. As another contributor correctly points out, you have to draft these days with eligibility in mind. If you conform to EPC eligibility standards, do you doubt that the USPTO will issue your claims? Surely it cannot be tolerated, can it, in the USA, that the Euro’s habitually issue patents on business methods (the field of special expertise of the USA) but the USPTO not?

  191. MaxDrei keenly asks “Surely it cannot be tolerated, can it,” and I am reminded of Leslie Nielsen and a reply of “The Supreme Court tolerates anything it wants to, and stop calling me Shirley.”

  192. I have the impression that patent examiners have gone wild with using Mayo vs. Prometheus to reject patents. This decision seems to put some limits on Mayo — something that seems good for the patent process.

  193. Joachim,

    I don’t see how this puts limits on Mayo. Could you explain?

    If you read either opinion logically you are left with nonsense at best. Of course us attorneys never take opinions completely serious. So in this case I think the ruling boils down we don’t like patents on software or financial services and really doesn’t like it when a patent crosses over to both – see Bilski. The Supremes are going to protect the entrenched interest of Wall Street.

  194. Gene Quinn @178 –

    That appears to be exactly what the USPTO has done. Now of course, this is only preliminary guidance, but I think it’s fairly straightforward. A claim with an “abstract idea” is still considered patentable subject matter if it contains “[m]eaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.” In other words, I can’t take an old idea, say I’m doing it using new technology, and expect that alone to be proper basis for a patent.

    After all, it’s a bit tenuous for an examiner to take the old idea, Officially notice the existence of computers, and call it a proper 103 – which is pretty much exactly what Justice Thomas did in the opinion, the fact that he did so using 101 notwithstanding. Placing this form of “abstract idea” rejection under 101 is probematic, but probably necessary given the difficulty of properly supporting such a rejection under 103. Nevertheless, this should increase the strength and quality of patents going forward, despite the fact that it’s 20 or 30 years late in coming.

  195. ALICE IS DEAD
    THE US SUPREME COURT KILLED HER BUT MAY HAVE USED THE WRONG WEAPON

    SUPREME COURT OF THE UNITED STATES
    ALICE CORPORATION PTY. LTD. v. CLS BANK INTERNATIONAL ET AL.
    CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
    No. 13–298. Argued March 31, 2014—Decided June 19, 2014

    1) “It follows from these cases, and Bilski in particular, that the claims at issue are directed to an abstract idea. On their face, they are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce,’ ” ibid., and the use of a third-party intermediary (or “clearing house”) is a building block of the modern economy. Thus, intermediated settle¬ment, like hedging, is an “abstract idea” beyond §101’s scope.”

    2) “(ii) Here, the representative method claim does no more than simply instruct the practitioner to implement the abstract idea of in¬termediated settlement on a generic computer.”

    Given statements 1 and 2 above from the Supreme Court decision ALICE appears to be an open and shut case of obviousness:
    1) “intermediate third party” is well known;
    2) applying a computer to a task which is understood by a PHOSITA as amenable to computer execution is well known, and ALICE’s intermediation is such a task;
    3) ergo: ALICE’s method claim is obvious

    BUT
    The Supreme Court seems to have difficulty separating non-patentability under US 101 from obviousness and appears to be conflating the two.
    Patentability of ALICE’s method claims may, and should?, have been battled out in the theater of whether or not it is obvious to a PHOSITA that the intermediary task in ALICE is programmable for execution by a computer – which I believe it assuredly is.

    The Supreme Court (as well as the rest of us) seems to be having a tough time deciding which building blocks in the LEGO set of our universe belong to all of us to play with – free of charge.
    It appears that in ALICE the Supreme Court has decided that a “free building block” (FBB), alias “fundamental building block”, alias “abstract idea”, is something that is:
    “long prevalent” and ubiquitously appealed to, or perhaps “necessary for”, carrying out a human activity.
    I suggest that the Supreme Courts refuge is not satisfactory for the following reason:
    If the intermediary is an abstract idea, it is not dependent on whether it is “long prevalent” or has become “a building block of the modern economy”. The transistor is “long prevalent” and a “building block of the modern” technology – has the transistor become an abstract idea for the purposes of patentability? And would the Supreme Court accede to rejecting a claim because the transistor is not patentable subject matter?
    ALICE should have been done in with the weapon of obviousness – perhaps with some comment on what ALICE may shed on the difficult subject matter of the abstract idea to which we are all supposed to be given free access.

  196. K at 194. If the evidence is not there to support a 103 rejection, what guidelines are there for what evidence can be used to supportr an “it ain’t new enough” rejection under section 101?

    Don’t forget In re Lee, 277 F3d 1338, 1342-44, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002) (Objective evidence is required.)

  197. The whole Abstract Idea exception is nonsense. Every invention is an abstraction, it is not a specific instance. The Justice fail to define what they mean so they can invalidate any patent that they do not like emotionally. This case is about protecting Wall Street.

    Let’s examine what a reasonable definition of an abstract idea would be. Some of the potential definitions of “Abstract” from Dictionary.com are provided below:

    1. Considered apart from concrete existence: an abstract concept.

    2. Not applied or practical; theoretical. See Synonyms at theoretical.

    3. Difficult to understand; abstruse: abstract philosophical problems.

    4. Thought of or stated without reference to a specific instance: abstract words like truth and justice.

    5. Impersonal, as in attitude or views.

    6. Having an intellectual and affective artistic content that depends solely on intrinsic form rather than on narrative content or pictorial representation: abstract painting and sculpture.

    Clearly the first or second definitions appear to be the closest to what the Supreme Court means when speaking of patents.

    Now here are some of the definitions of “idea” from the same source.

    1. Something, such as a thought or conception, that potentially or actually exists in the mind as a product of mental activity.

    2. An opinion, conviction, or principle: has some strange political ideas.

    3. A plan, scheme, or method.

    4. The gist of a specific situation; significance: The idea is to finish the project under budget.

    5. A notion; a fancy.

    The first definition appears to be the most appropriate. So what we end up with is a thought or conception that is separate from concrete existence or not applied to the practical. In the broadest sense of the word, every patent defines an invention that has been abstracted. An invention by definition is an abstraction or a category of things. If this is what the judges mean, then the standard is complete nonsense, since it negates every patent.

    If we use the definition of an Abstract Idea given above “a thought or conception that is separate from concrete existence or not applied to the practical”, then every invention that meets the requirements of 35 USC 112 first paragraph is not an Abstract Idea, since this section requires that the invention be described in a manner so one skilled in the art can practice the invention. Something that can be built and used (practiced) is concrete and applied, therefore it is not an abstract idea. The ABSTRACT IDEA exclusion to 35 USC 101 should be dropped, because any logical definition of an abstract idea is excluded by 35 USC 112, first paragraph. It should also be dropped, because, Judges should not read into statutes things that are not there.

    A computer is not an abstract idea, it uses electrical power, generates heat, causes electrons to move. Those are all real world effects.

  198. @196

    Absolutely correct analysis

    Patent claims (at least independent claims) have to be abstract or patent cannot be enforced

    Patent specification, however, must include some “preferred” or “exemplary” embodiment of a claimed invention which should not be abstract (in addition to being novel and unobvious)

    “an object flat on one side with protruding parts on the opposite side” would be an abstract independent patent claim for a table

    “a flat piece of wood (e.g. a plywood) with 3 or 4 extensions of equal length perpenducularly attached to one side at different locations” would be preferred embodiment

    justice thomas and his buddies should not be touching patent law

  199. Dare I borrow from my namesake and point out that if all it takes to make things “abstract” is that they are “old,” “well known,” and “conventional,” then since the true building blocks of that is in the physical universe is “abstract,” as all physical items are made up of those “old,” and “well known” particles called electrons, neutrons and protons, and that these “old,” and “well known” building blocks use a law of nature that is surely “conventional” in the mechanics of configuring, well, anything?

    When you reach the end of a chain of logic that dictates that everything physical is “abstract,” what is left? What “more” is possibly out there?

    It appears that only God may have patents. Alas, even genius’s still start with – and end with – “abstractions.”

  200. American Cowboy @196 -

    My takeaway from the interim guidance document is that the key lies in the “meaningful distinction” language. If the examiner can point to a known process, and draw a direct parallel between that process and the claim limitations, then I think it’s pretty clear. It’s obviously not clear what the evidentiary burden here is, but I think there has to be some support for an assertion that the claims amount to an abstract idea of the type Justice Thomas was talking about, if such a rejection is to be allowed to stand. It is then incumbent on the applicant to point out how the invention is meaningfully distinct from that idea.

    I think novelty will rule the day, regardless. If an examiner says you are claiming an abstract idea, but has no reference that actually describes that idea, I really don’t see that rejection being allowed to stand. I’d be surprised if future guidance doesn’t make it clear that evidence is required, because that’s really the only way to be in line with what Justice Thomas seems to think an “abstract idea” is. My guess is that it will be akin to what an examiner has to show when challenged on Officially noticed fact. That would make the most sense.

  201. Dale @ 197:

    But in the land of the blind (a.k.a. the blunderland of English poetry majors who don’t know a “generic” computer from the aperture in their so-called heads), the one-eyed technical person is out of his mind. :-)

  202. I am a programmer, I have two patents to my name

    I think it would be great if software patents would be eliminated completely (including mine). This doesn’t mean that I am saying that there are no good software patents out there, but that the overwelming majority are bad, and they do not provide any value to the field of knowledge.

    As a practice, no programmers look at patents, in fact it’s been shown that it’s impossible to examine every software patent that’s issued each year, let alone catch up with past patents. Programmers are striongly discouraged from looking at patents because of the trebel damages from willful infrimgement that could be argued if there is any opening that they may have known about a patent. I’ve heard this instruction from both lawyers and upper management at fortune 100 companies.

    Programmers are encouraged by their employers to file for patents, because if you have a lot of patents you are less likely to have some other company come along and demand payments from you for their patents that you know nothing about.

    Software patents are written in such broad terms that they end up trying to claim every possible way to achieve a result rather than a specific way to achieve a result. In part, this is because once you know a way to do something in software, it’s easy to come up with other ways to get the same thing done, but also in large part because once you assign someone to achieve a particular result, figuring out a way to get that result tends to be a very easy thing to do.

    If there were far fewer patents, written in much clearer language (something understandable to people ‘ordinarily skilled in the art’ of programming instead of just patent lawyers), then there would possibly be some value to the field of programming in having software patents.

    But as it is today, patents are used by companies that cannot compete in the marketplace to extract tolls from other companies who developed (or purchased from others who developed) the software independantly. As a result, they inhibit innovation by requiring that companies invest time and effort to file as many patents as possible, and deal with patent litigation from companies and about patents that they have never heard of before.

    Here’s a dirty little secret of the programming field, 90% or more of programmers out there won’t willingly read and support code that someone else has written, instead they will try to throw it out and write a replacement themselves. In this sort of culture, the thought that these people (who, being the vast majority of programmers, must define those “ordinarily skilled in the art” of programming) would benefit from even good patents in laughable.

  203. While no doubt well-meaning, David Lang’s post exhibits many of the fallacies that exist from a “technical-only” viewpoint on patents.

    David, I wish you well, but you need to re-evaluate your entire outlook on what patents are for. They are not technical blueprints, and they are very much legal documents.

  204. David,

    Why would you want to look at every patent in software? Do you program in every area? It proves nothing that you cannot review every patent on software. Electrical engineers, physicists, doctors, lawyers also cannot review every article/patent in the broad area of their profession, so what.

  205. David Lang-

    You write: “today, patents are used by companies that cannot compete in the marketplace to extract tolls from other companies…”

    You make this broad, sweeping statement as if it is universally true. While it is not accurate to say the statement is false, it is far closer to being false than universally true. Only a very small percentage of patents are ever used in this manner. The overwhelming number of patents are used for other reasons, including raising capital for start-ups and small businesses. They are also used by larger corporations in order for them to say they have a huge patent portfolio, which tends to show their commitment to innovation.

    You say: “90% or more of programmers out there won’t willingly read and support code that someone else has written, instead they will try to throw it out and write a replacement themselves.”

    That isn’t true at all. A great many programmers just copy the work of others in part or in whole. Very little is written from scratch. This should be easily evident by how many programmers rely on open source.

    You say: “Programmers are striongly discouraged from looking at patents because of the trebel damages from willful infrimgement that could be argued…”

    There is no doubt that is the perception, but it is erroneous. Trebel damages are never awarded any more, so anyone who tells you this is a justification for not looking and then infringing really should be fired. It is flat out poor legal advice.

    -Gene

  206. @anon, 203

    Well, if the patent doesn’t have the technical details, what use is it?

    The purpose of a patent is supposed to be a short-term monopoly on the material in exchange for revealing the details so that people “oridnarily skilled in the art” can use the material after the patent expires.

    If the patent cannot be read and undersood by technical people, then it’s not achieving this trade-off, we would be better off with them keeping it a trade secret, because then people who develop the same thing independently would not be at risk.

    @dale, 204

    how do you know if a patent applies to the program you have written unless you read and understand what it does? Any single piece of significant software contains thousands of different algorithms, if someone is patenting something, you would need to make sure that you don’t already implement that same algorithm

    @Gene Quinn

    I will agree with you if we are talking patents in general, but if we are talking about software patents, they are used for lawsuits and threats of lawsuits overwelmingly. In practice they are almost never used for learning how to do things.

    While the majority of programmers do cut-n-paste of other code when writing their programs, that actually doesn’t disagree with what I’m saying in that they would far rather re-write some software their way (including their cut-n-pate selections) than take the time to try and figure out why the existing code does what it does and use it.

    Opensource software shows both of these, there are a lot of people who reinvent the wheel so that it can be there wheel, but a much smaller group of people who are willing to work with others and maintain code that they didn’t write.

    re: trebel damage, it may be poor advice, but it’s still what’s being sent out

  207. In 32 years of practicing patent law, I can count on one hand the number of times I was asked to give a “freedom to practice” opinion. It is just way too expensive for a small business and not really necessary for a large business with a hefty portfolio of patents.

  208. David,

    You are impossible to take seriously, since you think patents are monopoly. They are property rights
    Monopoly/patent posts

    Patents: Monopoly or Property Right a Testable Hypothesis http://hallingblog.com/patents-monopoly-or-property-right-a-testable-hypothesis/
    If patents are a monopoly, as some suggest, then it should led to certain outcomes. A close examination shows that none of the supposed monopoly effects result from granting patents.

    Monopoly/Rent Seeking vs. Property Rights/Intellectual Property http://hallingblog.com/monopolyrent-seeking-vs-property-rightsintellectual-property/.
    This post explains the characteristics of a monopoly and a property right and poses three questions to show the difference. Patents fit all the characteristics of a property right and none of a monopoly. Note that professional license, such as a law license has some of the characteristics of a monopoly.

    More on the Myth that Patents are Monopolies http://hallingblog.com/more-on-the-myth-that-patents-are-monopolies/.
    This post contains a number of quotes from philosophers explaining that patents are not monopolies.

    Property Rights, Possession and Objects http://hallingblog.com/property-rights-possession-and-objects/
    This post explains the difference in the concepts of property rights, possession, and objects. Most economists and patent detractors confuse these concepts. The origin, definition, and legal basis of property right are explained.

    The Myth That Patents are a Monopoly http://hallingblog.com/the-myth-that-patents-are-a-monopoly/
    This post compares the definition of a monopoly to the rights obtained with a patent. It shows that the rights obtained with a patent do not confer a monopoly.

    Patents are Natural Rights http://hallingblog.com/patents-are-natural-rights/
    This post traces the ideas of Locke and William Blackstone to show patents and copyrights are natural rights.

  209. @dale, 208

    Patents give the inventor the exclusive right to perform that patent (or to licence it being performed), isn’t an exclusive right over something the same as a monopoly of that something?

    and monopoly is a lot shorter to type than “exclusive right to perform” :-)

  210. @Tom,

    Your experience would also match the case of programmers not looking at patents

  211. “You write: “today, patents are used by companies that cannot compete in the marketplace to extract tolls from other companies…””

    Yes and that is why Samsung owes Apple about a billion dollars for “borrowing” Apple’s R&D for their copycat phone.

    You might want to read this if you are interested in “patent trolls”: https://www.dropbox.com/s/myzqi13y05hri6o/Patent%20Troll%20Article%20copy.pdf

  212. David,

    Like your car or your house, or computers? The essence of a property right is the right to exclude in the case of patents that does not give you even the right to sell your invention. It is impossible to have a monopoly when you do not have a right to sell or even practice your invention. Property rights are based on creation and a property right is never a monopoly.

  213. @tom, 211

    that was a nice headline, but there were several questionable things in that trial, the award has already been knocked down a lot and the apeals are continuing.

    And yes, from a technical capabilities point of view, apple is showing signs of struggling, so they are lashing out. Apple is a proud copier of other people’s work, and they are really good at adding polish to the resulting package, but in terms of actual inventions compared to other companies, they don’t end up looking that good.

    @dale, 212

    how would you not have the right to practice your own patented invention?

    or are you saying that because all the ‘inventions’ we are talking about here (software patents) are so intertwined that nothing can be done without violating someone’s patent. That’s a very strong indication that things are a huge mess. If nothing can be done because of patents, the obviousness test has not been applied or all the patents that cover the things that people do without ever hearing of the patents would not be covered.

  214. “how would you not have the right to practice your own patented invention?”

    That statement shows a basic misunderstanding of patent law.

  215. @tom,

    Ok, please educate me.

  216. A patent does not give you the right to practice the patented invention. It gives you the right to exclude others from making, using, or selling the patented invention.

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