The Ramifications of Alice: A Conversation with Mark Lemley

By Gene Quinn
September 4, 2014

Mark Lemley

By now virtually everyone in the patent industry is aware of the Supreme Court’s decision in Alice v. CLS Bank. What is less universally understood is the full extent of the decision. My immediate reaction was that this would be extremely bad for software patents. Many others thought I was engaging in extreme exaggeration. Since then, however, the Patent Office has started issuing Alice rejections where no previous 101 patent eligibility rejection stood, they have been withdrawing notices of allowance after the issue fee has been paid in order to issue Alice rejections, and the Federal Circuit is strictly applying the nebulous “Alice standard” to find software patent claims patent ineligible.

It is now clear that the Supreme Court’s decision in Alice fundamentally changed the law and future of software patents, at least those already issued and applications already filed, which cannot be changed without adding new matter. Those applications were filed at a different time and under a substantially different regime.

After discussing the ramifications of Alice with computer software expert Bob Zeidman, I thought it would be interesting to discuss the same from a different perspective with one of the most decorated and published scholars on the topic — Professor Mark Lemley, the William H. Neukom Professor of Law at Stanford Law School and partner in Durie Tangri.

As you will read in this two-part interview, Lemley largely agrees with my assessment of the impact of Alice and has been telling patent attorneys in speeches and presentations that the landscape has significantly changed.

Without further ado, here is part 1 of my interview with Professor Mark Lemley. For our continuing coverage of the Alice decision please see our Alice archive.

QUINN: I appreciate you taking time to chat with me, Mark. And I wanted to talk to you about software patents in wake of the Alice decision. I understand you’ve been giving some talks around the country and I think our views are largely in sync and contrary to what a lot of people seem to think about the decision. So maybe we could start with an open ended question – now that you’ve had some time to reflect on the Alice decision and consider what we are calling the new Alice standard, where do you think software patents are?

LEMLEY: Well, I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking. Here’s what it seems to me Alice does that’s significant. The first thing it does is it makes it clear that Mayo wasn’t a one-off thing, but rather is the fundamental test going forward for all kinds of patentable subject matter issues. I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent. You’ve got to add new steps or new hardware, not just conventional hardware or conventional steps. Not just computer technology that is generic or functionally described. And if you can’t do that not only your method claims but also your article of manufacture claims are going to be invalid.

QUINN: I agree with you. I think that it is a real sad state of events because I’m left wondering whether any of the software patents that were granted prior to that decision and any of the software applications that were filed prior to the decision really can stand up to the new test. I think the answer is no.

LEMLEY: Yeah. I don’t think it’s all software patents, but I guess what I would say is a majority of the software patents being litigated right now, I think, are invalid under Alice. And certainly the claims that are being asserted. If you look at the actual claim in Alice it’s got a long series of steps. But that doesn’t prevent it in the Court’s mind from being an abstract idea. It’s got hardware implementation and computer technology, but that’s not enough. The Court seems to think if I’ve actually got improvements in the operation of the computer itself, if I have a claim that is to an improved computer program or way of programming, maybe that’s patentable. But a lot of the claims that were written particularly during the 1998 to 2008 period when there was no patentable subject matter restriction I think are vulnerable under this test. And I think you’re starting to see the confirmation of that if you look at the Federal Circuit decisions in Digitech, their most recent decision in Planet Bingo and the Board’s decision in the US Bank Corp. case. There are a bunch of claims that I think we would have looked at five years ago and said well these are run of the mill claims in the software industry. And the Court said, yeah that’s just an idea implemented in a computer and that’s not sufficient.

QUINN: I think you’re right. I think it’s going to be harder and harder for people to convince themselves that nothing has really changed as you see the Patent Office withdrawing notices of allowance issuing supplemental office actions at the Federal Circuit hearing these cases. I think little by little people are going to realize that this is a massive shift. And it’s bizarre in some ways – as you were just talking one of the things that jumped to mind is – do you remember back in the day when we had all the copyright litigation about whether or not it was an infringement to speed up the play of a video game? Do you remember those cases?

LEMLEY: Yes.

QUINN: It seems odd to me, but it almost seems like that the game itself that is embedded in software may not be patent eligible, but that piece that you would plug into the game to alter the play of the game may wind up being patent eligible under this test.

LEMLEY: I think that’s right. And the courts have long flirted with and always rejected some kind of a technological arts limitation. But I think part of what’s driving the Supreme Court here, though they don’t say it, they don’t make it part of the test, is this doesn’t look like technology to them. The novel bit of this invention is not a technological idea; it’s just an idea. And we just happen to have implemented it into a computer. And I think what they’re looking for is show me some real technology and they have in mind, I think, hardware. But if you really did have an improvement in software – some component within the computer system – my guess is that would survive. So I think there are claims out there that are patentable under this standard but a whole bunch of them written during this period don’t have that technology improvements piece at all. Or even if the invention had some technology improvement, that’s not how people were claiming it because you could get away with writing a claim more generally and so you had a better case against an infringement.

QUINN: Yes. The interesting part of what you just said, I think, is the part where you said “I think they’ll be allowable.” And that’s really where we’re at, isn’t it? We can take a look and say with great certainly I think now that a whole lot of these things are not patent eligible. But I don’t know that we’ve really gotten any kind of meaningful guidance on what it’s going to take to get a patent, so we really just don’t know. Yes, we can and should disclose all this technology in the specification, and I think that you really have to almost overwhelm the average lay reader so that they see that there really is thick technology disclosure, but at the end of the day we still don’t know.

LEMLEY: I think that’s exactly right. I argued in a paper last year that we were going to run into a problem with functional claiming, with claiming the idea or the outcome achieved in any way. And that the right thing to do was to look at those claims as means plus function claims and to go in and look for the specific technology. It may be that whether we do it through the route I argued or whether you explicitly write a means plus function claims that the safest thing to do in the wake of Alice is actually including means plus function claiming to get some of that technology into the claim. That may be the way to survive 101. Now that is going to mean that your claims are narrower. And that’s why people never liked these claims in the past, but it may be as the future of software claims. If you really did do some programming that will survive, but will survive in narrowed form because they’re more specifically targeted to the algorithms than the general approaches you actually took. And as you said that’s still speculation. We don’t know for sure.

QUINN: Yeah, I understand and appreciate you speculating with me. I’m intrigued to hear you talk about means plus function claims because I’ve thought now for a little while that means plus function claiming will come back in vogue as the result of Alice. But you know the minute that you suggest that patent practitioners write means plus function claims they look at you like you’ve got three heads and that you obviously don’t know what you’re talking about because the perception is that means plus function claims are so limited and they’re garbage. And yeah, I’m not going to dispute the fact that they are limited. But you might as well have a couple of them, right? The near universal reality is that the client is going to run out of money long before you as a patent attorney run out of the ability to write more claims. So why not have a couple means plus function claims? At least that way you have coverage for the full disclosure and equivalents in the specification. But when I teach means plus function claiming I always tell students they have to treat them like a real heavy garlic – a little bit gets you a long way. And I’ve never been afraid to include some, and I think it forces you to have a real robust disclosure if you are even going to consider such a claiming technique. So I’m starting to hear more and more people make that argument you just made and, boy, what a change that represents from where we were a few years ago.

LEMLEY: Oh, that’s absolutely right. Although it’s funny how these things kind of go in waves. I went back and looked at the first edition of the Rob Merges patent case book, which was published in 1992. Rob had been a patent practitioner in the 80s and he had a statement in the book that said something like “make sure you include some means plus function claims because those are really broad.” And I went to Rob and I said, well, what are you talking about? Everybody tells me exactly the opposite. But I think in the 1980s, before we were expressly doing claim construction, having that “equivalents thereof” safety net made some people think this is a claim that’s going to protect me better than trying to specify all of the components of the claim itself. We may be going back to the world of the 1980s; not only the patentable subject matter world but maybe also in claiming and means plus function claims.

QUINN: I agree with that. I think that in one regard you can talk about means plus function claims being very narrow and in another regard you can talk about them as being broad because they do cover the entirety of the spec. The only wrinkle is that now you have to have 100% of the algorithm in the spec in order to use means plus function claiming, which I don’t really see any support for that in the broader means plus function cases, but there’s certainly that explicit statement in the algorithm cases. The Federal Circuit won’t even consider whether someone who is skilled in the art would understand if you don’t have 100% of the algorithm. It just seems they don’t like these things very much.

LEMLEY: Well, we’ll see. It’s definitely right that we’ve got that rule from the definiteness cases that seems to apply only to software means plus function claims. If you didn’t write an algorithm, if you didn’t actually code anything I think you’re out of luck. If you wrote it and you didn’t include it I suspect you’re going to be out of luck after Alice. But if you wrote it and you included it in the step I think you could survive the Aristocrat line of cases and then the question will become well what does equivalent thereof mean? Can I show you my algorithm and say, yeah, this is the approach I took but these other four approaches are equivalent and a computer programmer would look at those and say I don’t care which one of those you use. And if you can do that then you might end up with a claim that’s still pretty broad even though it’s in means plus function format.

QUINN: Well, that’s right. And I think the truth of the matter is that winding up with any claim is going to be broad compared to what else you might wind up with if you don’t do that.

LEMLEY: That’s right. Exactly. As I said in that functional claiming paper last year I understand why people want broader claims and not means plus function claims but the choice is not going to be between a broad functional claim and I narrower 112(f) claim, it’s going to be between a narrower 112(f) claim and invalidity under 101.

QUINN: Right.

LEMLEY: And I think that’s the world we’re moving to.

TO BE CONTINUED…

The Author

Gene Quinn

Gene Quinn is a patent attorney and the founder and Editor of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics. is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 26 Comments comments.

  1. patent leather September 4, 2014 4:05 pm

    Hi Mark,

    Just yesterday, a PTAB Opinion in 12/352,538 was issued which reversed a 103 rejection but sua sponte issued a 101 rejection on all claims (the invention is an improved lithography technique for making semiconductors). Claim 3 recites:

    3. A method of using clusters in electronic design automation, the method comprising:
    receiving data for a plurality of bins, each bin including a plurality of clusters, each cluster representing a plurality of shapes in an original layout, the plurality of shapes having a proximity to each other determined by a grow operation; and
    using a computer, preparing a phase shifting layout for the original layout by phase shifting each of the plurality of clusters independently of one another.

    The short Opinion stated, “The Appellants’ claims recite the abstract idea of independently phase shifting each of a plurality of clusters which each represent a plurality of shapes having a proximity to each other determined by a grow operation” and cited Alice.

    This is not a “fundamental economic practice” as set forth in Alice. Is this a proper “abstract idea” to base a 101 rejection on?

  2. Curious September 4, 2014 7:47 pm

    The issue of the term “software” not being found once in the decision is very interesting. Personally, I don’t see Alice as being the death knell of computer-implemented patents that both Mark and Gene think it to be. When this decision was being written, SCOTUS knew that the issue of the patentability of software was on the table. In fact, certain of the Amicus Briefs begged for that very thing.

    If, as you both suggest, that most software isn’t patentable, why didn’t the Supreme Court just go out and say it? This case was as good a vehicle as any to do it. Instead, they made the point of saying that these claims, like Bilski, were directed to “fundamental economic practice long prevalent in our system of commerce.” Why use that language if you are looking to foreclose a broader swath of patents? Why exclude the term “software” from the decision when this case was set up to for the very purpose of determining whether or not software was patentable?

    The issue that I have with interpreting Alice as signaling the end of software patents is that if that is truly what SCOTUS intended, IMHO, they would have used much different language to do so. They didn’t attack Alice with a sledge hammer, they used a scalpel — I think that is telling.

    As Mark’s “means plus function” argument, anything claimed that way can still be covered as a process. As such, treating device claims under 112 6th aren’t getting going to get you what you think you are getting.

  3. Gene Quinn September 4, 2014 8:18 pm

    Curious-

    How can you not see Alice as being the death knell of computer implemented patents? If you say there is a way forward that is correct, if you say that previously granted software patents and previously filed software patents will be fine that is simply not factually correct. I think you need to review what is actually happening at the USPTO in terms of rejections and how the Federal Circuit is applying Alice to find software patent claims patent ineligible. We are not crying wolf. It is really, factually, truthfully happening.

    The problem with your statement about means plus function still being covered as a process is correct, but it misunderstands the jurisprudence that has developed around functional claiming. Unlike with your typical method claim, using “means plus” language without any structure in the claims invokes treatment under 112(f), which means that full extent of the means specifically disclosed in the spec are read into the claim, as are the statutory equivalents. Whether it should be the way method claims are interpreted or not, that is not what happens with method claims.

    It is the lack of anything technical in the claim that is dooming these claims. Method claims that recite only tangible elements that are well known will not survive until the Alice test is no longer. A robust technical disclosure and means plus function claims provide that technical aspect to the claims. Could SCOTUS ignore that and change those rules? Sure. They are after all the high priests of the judicial world and they can and do make things up as they go along.

    -Gene

  4. eee eff September 4, 2014 11:57 pm

    Curious-

    Actually, the software patents are just one class of patents that attempt to enclose an abstract idea. So that perspective, to me, indicates why SCOTUS did not specifically callout software patents.

  5. Curious September 5, 2014 12:07 am

    “How can you not see Alice as being the death knell of computer implemented patents?”
    I just explained it — if SCOTUS wanted to do it, they could have done so with much clearer language than they did. SCOTUS took great pains to get as close to Bilski as they could. They didn’t have to but they did. That was no coincidence.

    “I think you need to review what is actually happening at the USPTO in terms of rejections and how the Federal Circuit is applying Alice to find software patent claims patent ineligible.”
    I’ve probably had a dozen notice of allowances on software applications since Alice. Given that this is “I need to make my yearly quota September,” I suspect that number will grow by at least 4 or 5 by the end of the month. As for the Federal Circuit, we’ve seen them nibble at the edges, but SCOTUS didn’t give them much to work with in Alice.

    “it misunderstands the jurisprudence that has developed around functional claiming.”
    What jurisprudence around functional claiming? The only recent case of import I know about is Nazomi v. Nokia, which had no problem with functional language. The PTAB (or should I say Allen MacDonald) tried to get cute with the “informative” decisions of Smith, Erol, and Lakkala back in March of 2013, but that never went anywhere (likely because their logic was inconsistent Nazomi and Typhoon Touch).

    “Method claims that recite only tangible elements that are well known will not survive until the Alice test is no longer”
    I cannot claim a new method of using an old device?

    “They are after all the high priests of the judicial world and they can and do make things up as they go along.
    That they do — in spades. They’ve made it perfectly clear that the actual language of 35 USC 101 and 35 USC 103 didn’t matter when they came up with Alice and KSR. Still, only 3 judges had stomach enough to go after all business methods. The 4 of Bilski is now 3, which is not 5 — to paraphrase Scalia.

    The anti-software crowd (of which our dear friend Mark is one) should be focusing — not on what Alice said — but what Alice could have said but didn’t.

  6. step back September 5, 2014 4:14 am

    Gene,

    I hope I am not alone in thinking your conversation above with the Hokum chair professor is something straight out of an episode of the Twilight Zone TV show. We’ve entered a realm where reality is distorted into mirrors and mere reflections of a smoke that might not even be there but all the same fools the eye into seeing mirrors and then the smoke inside the mirrors.

    What the F are you and Hokum talking about? “Techno Logical”? “A General and Lieutenant purpose computer”? The idea beyond the idea? I’m trying to pinch myself and slap meself hard upside on the head so as to convert real pain into the mere abstraction of the nontechnological idea of pain. They say that evil rises when good men fail to speak up. This whole 101 thing is evil rising. Did you see the news article where SCOTUS admits they don’t know what the F they are talking about and instead they just copy stuff out select ones of the amicus briefs?

  7. step back September 5, 2014 4:21 am

    Gene and Hokum professor,

    Please make sure to never never read the following NYT article:

    “Seeking Facts, Justices Settle for What Briefs Tell Them”

    http://www.nytimes.com/2014/09/02/us/politics/the-dubious-sources-of-some-supreme-court-facts.html?_r=1

  8. NWPA September 5, 2014 7:22 am

    >>The issue that I have with interpreting Alice as signaling the end of software patents

    Curious, in my view the reason Prof. Lemley is saying that it is the death knell of software patents is because that is what he wants. He is trying to use his influence to extend the influence of Alice as much as possible. Mark Lemley has been trying to get software excluded for a long, long time. I’ve read short messages from him about his functional claiming article with him saying this is the way to get rid of all the software patents.

    In short, Curious, he is a judicial activist and making a lot of money being the sword of the few companies in Silicon Valley that don’t want software patents.

  9. NWPA September 5, 2014 7:25 am

    Wow, patent leather. That is a great decision. It illustrates so much. That is a case to study for how not to write a claim under Alice. Also illustrates the PTO’s typical 103 jurisprudence where if you give them the words they will just parrot them back to you. As in if they can find any TSM in your specification there are some examiners that will just use those exact words for a 103.

    (By the way, Mark Lemley is NOT a patent attorney. At least he is not listed on the PTO and his background is non-science.)

  10. NWPA September 5, 2014 7:26 am

    It is too bad that so many comments are held back and not posted immediately. It makes it impossible for the real time exchanges that happen on other sites and probably accounts for the low number of comments on this site.

  11. NWPA September 5, 2014 7:28 am

    I would add for Mark Lemley that I wish you would lobby Congress and not keep trying to get your way via the judiciary. You have grown remarkably powerful and respected in your field, but you know you don’t have the respect of the scholars of the field and never will. I wonder if you could do the things you do if you understood computer science/EE.

  12. NWPA September 5, 2014 7:50 am

    GQ: How can you not see Alice as being the death knell of computer implemented patents? If you say there is a way forward that is correct, if you say that previously granted software patents and previously filed software patents will be fine that is simply not factually correct.

    I don’t know GQ. I know a lot of people that don’t think this is going to be so bad. I think Mark Lemley would like us all to roll over. It would make his quest to end all software patents easier. I just wish that Mark Lemley would go to Congress for legislation and not the courts. But, my guess is that the SCOTUS or Congress will put an end to this binge. Right now we have jurisprudence that is simply not reflective of reality and Mark’s functional claiming assertion are also not reflective of reality. Simple examples of real inventions illustrate this point well.

    I certainly have learned a lot. I see how obfuscation and money get you laws from the judiciary. You know, the big picture is that this issue was well debated in Congress during the AIA debates. Congress choose to keep the status quo. The courts decided to legislate. They have done so. It is bizarre that Mark takes the attitude that he has really just found the true nature of the law when there is no scholar that looks at this as anything but judicial activism and the development of new federal common law. That is not something to be proud of. That type of law is destabilizing and is just adding to all our troubles.

    In patent law: things are much worse. TSM was the way to go. That was a test that could be outsourced at the PTO and provided an objective basis for examination. Now the test is “how does it make me feel?” My typical conversation with examiners now is them telling me how they feel about it. Or whether or not they think the company I represent is a patent troll or not. I get asked about this believe it or not. So, rather than objective measures and a rational system that can be improved what we have is ’cause that is what I feel like doing.

    To my mind, Richard Stern and Mark Lemley have destroyed patent law in the US. And the sad thing is that it comes from two people that know very little about actual innovation and how patents actually do promote innovation. My guess is that other countries will become the new centers of innovation. That innovation will shift more to Germany and Korea and to China. China already has a plan to create new silicon valley and core to that is patents. There are a lot of winners here, but all of them are getting a pay day that will be at the expense of the future.

  13. Gene, but not Gene Q September 5, 2014 8:46 am

    “The Court seems to think if I’ve actually got improvements in the operation of the computer itself, if I have a claim that is to an improved computer program or way of programming, maybe that’s patentable.”

    a new algorithm improves the operation of the computer. disclose and claim the algorithm. only the “functionally minded” patent practitioners believe this will result in narrower claims.

    “Or even if the invention had some technology improvement, that’s not how people were claiming it because you could get away with writing a claim more generally and so you had a better case against an infringement.”

    that was a historical deviation from traditional claim drafting techniques (hurray for faber). you had patent practitioners from various technological backgrounds trying to describe computer implemented inventions (what technology didn’t increasingly depend on computers?) and they consistenly describe the invention from “the perspective of the computer user” (i see this happening on my computer monitor, therefore, the computer is doing this).

    “I argued in a paper last year that we were going to run into a problem with functional claiming, with claiming the idea or the outcome achieved in any way.”

    exactly right. “post-solution activity.” the algorithm is described from the point of view of the computer, not the user. a programmer does not tell a computer to “prepare a phase shifting layout”. that’s the persepctive of the user.

    “I argued or whether you explicitly write a means plus function claims that the safest thing to do in the wake of Alice is actually including means plus function claiming to get some of that technology into the claim. That may be the way to survive 101. Now that is going to mean that your claims are narrower.”

    functionally minded practitioners might write narrower claims because that’s the way they think about computer technology. a well claimed algorithm will protect computer implemented inventions because it will force competitors to write a different algorithm.

    “We may be going back to the world of the 1980s; not only the patentable subject matter world but maybe also in claiming and means plus function claims.”

    hurray for faber.

  14. Ron Hilton September 5, 2014 9:12 am

    The real problem in my opinion is the historic low quality of software patents and software patent examination by the USPTO, with computer science professionals having been excluded from the patent bar in general. Even though subject matter eligibility is not the right tool to invalidate such patents, it is the most convenient tool for the technologically unsophisticated courts to apply. Novelty and non-obviousness are much harder to prove/disprove. For a long time I have advocated a more rigorous examination process based on crowd-sourced prior art search as a prerequisite to litigation. By allowing low-quality patents to be litigated, we have endangered a whole class of technology in terms of legitimate patent protection. The patent bar has been shortsighted to resist a higher standard of patent examination, for software patents in particular where domain expertise has been sorely lacking in the profession.

  15. American Cowboy September 5, 2014 10:05 am

    Gene, in your comment you say: “Method claims that recite only tangible elements that are well known will not survive until the Alice test is no longer.”

    As I recall the rubber curing case (Diamond v. Diehr, 450 U.S. 175 (1981)) was deemed patent eligible because it did add tangible elements. Are you saying that Scotus would have decided it as patent ineligible today?

  16. Gene Quinn September 5, 2014 10:44 am

    American Cowboy-

    I don’t think the invention in Diehr would be considered unpatentable today, but that would have nothing to do with the tangible elements in the claim. What SCOTUS seems to be looking for is a real world analog. In Diehr the process cured rubber. Other processes that cured rubber could have been patentable, so the fact that this particular process employed a computer implemented method did not negate patentability.

    I’m not saying I agree with that “logic” but that seems to be the logic that SCOTUS would use.

  17. Gene Quinn September 5, 2014 10:49 am

    Step-

    I did see that NY Times article and I agree that SCOTUS selectively adopts facts from certain amicus briefs. That is completely inappropriate on every level because those facts are not vetted. An appellate court is supposed to confine their review to the record. SCOTUS never has done that. Bob Stoll and I talked about this very thing yesterday in our webinar. It is disturbing to say the least.

    I also agree this is all something out of the Twilight Zone. SCOTUS doesn’t understand patent law, they are techno-phobic and they play favorites. They want to be a legislative body. It is all quite disgusting really.

    That being said, I don’t think it serves any purpose to ignore the lay of the land. I don’t like where we are heading, but for those who don’t think SCOTUS is driving the patent system off the cliff I say you better wake up.

    -Gene

  18. Gene Quinn September 5, 2014 10:52 am

    NWPA-

    You say: ” I know a lot of people that don’t think this is going to be so bad.”

    And all those people are wrong. It really is that simple.

    All you have to do is open your eyes and look at the facts. Look at the rejections the Patent Office is issuing, look at the Federal Circuit cases, including Buysafe v. Google from just 2 days ago. Look at the PTAB. Only those who have not taken the time to inform themselves could possibly think that what Lemley and I describe is an exaggeration.

  19. American Cowboy September 5, 2014 11:32 am

    So folks. When and how do we get Congress to clean up the Scotus-droppings?

  20. NWPA September 5, 2014 12:13 pm

    GQ writes: All you have to do is open your eyes and look at the facts. Look at the rejections the Patent Office is issuing, look at the Federal Circuit cases, including Buysafe v. Google from just 2 days ago. Look at the PTAB. Only those who have not taken the time to inform themselves could possibly think that what Lemley and I describe is an exaggeration.

    I have read those cases. To my mind the situation is as follows. Prong 2 is the EPO technology test. If it is eligible under EPO test than it should pass prong 2. Prong 1 is the real issue. I don’t think prong 1 is really defined yet. It is clear that some on the fed. cir. would encompass all with prong 1, but I am not so sure. I think under the SCOTUS you need to be able to show that it well know (102). So, for example, can prong 1 swallow user interfaces? My guess is no.

  21. NWPA September 5, 2014 12:13 pm

    I do wish your comments were more interactive.

  22. Joachim Martillo September 5, 2014 12:19 pm

    Is Lemley saying that a new Diamond vs. Diehr is needed to clarify patent eligibility fully?

  23. Gene Quinn September 5, 2014 12:48 pm

    NWPA-

    First, I share your frustration with comments. We are going through a site redesign that will be unveiled at some point before the end of the year (hopefully). Better comment functionality is a top priority. We are somewhat limited unfortunately because in the past when I tried to require registration for commenting no one commented. The best functionality would be to incorporate a third party solution that lets people comment through a LinkedIn or Facebook interface, but that would remove anonymity. So we will do what we can. Our computer guy is on vacation this week but will look into our current comment problems next week.

    With respect to your substantive comment about there being no problem as long as you can pass prong 2 under the EPO. First, you are guessing, as we all are. Second, there is a problem with new matter. Those who think this won’t be a problem moving forward may or may not be correct, time will tell. But to pretend that this isn’t a problem for millions of issued patents and already filed patent application is simply false. Many of those inventions could be patented under a technical requirement from Alice (assuming that is what it is and SCOTUS would interpret it as such the next time they invalidate whatever software claims they see). But you cannot add matter, so there will be no saving many (if not most) software patents and patent applications that were filed prior to the SCOTUS decision. They were simply written to satisfy a different standard and the rules of the game have changed mid stream.

    A compelling argument could be made that every time SCOTUS gets a patent eligibility case they change the rules of the game and apply those rules retroactively. So expecting that trend to no longer continue seems questionable. There is no evidence to suggest that this SCOTUS will ever be patent friendly. Starting with at least eBay they have been openly hostile to patents not owned by Monsanto.

    -Gene

  24. step back September 5, 2014 3:24 pm

    GQ @ 17

    Thank you for agreeing that your conversation with the Hokum chair professor is something out of the Twilight Zone, Bizarro World or from beyond The Outer Limits. I was beginning to worry that all sanity has left the land.

    ( *** Bizarro World was a place that comic book Superman would sometimes visit to discover everything was backwards from what it should be. The Outer Limits was a TV show similar to Twilight Zone in which aliens would come in and take over the horizontal and vertical stability controls of one’s vacuum tube TV set. In today’s TV jargon it’s probably called Pee Wee Herman wins over The Bachelorette on Paradise Reality Island.)

    It sounds to me like you are ready to roll over and cede to SCOTUS control over the horizontal and vertical stability controls of modern science. THEY will tell you what is real and what is abstract. THEY will determine what a coffee shop full of Silicon Valley geeks can “code” over a weekend’s span on the golden “generic” computer thingy. THEY will decide what is “significantly more” and what is not. After all, they are the SUPREMEs. Is that the new lay of this land of the free and the home of the not so brave? Maybe it’s time to move to Australia.

  25. Steve September 5, 2014 5:57 pm

    See. This is what happens when we allow the SCOTUS judges to … telework from home.

  26. Edwin Starr November 18, 2014 5:23 pm

    “The Court seems to think if I’ve actually got improvements in the operation of the computer itself, if I have a claim that is to an improved computer program or way of programming, maybe that’s patentable.”

    This is nonsensical as a filter. ALL software improves the functioning of the computer into which it is loaded. That is the freakin’ point of software. In the absence of a piece of software, the computer would be unable to do what it is capable of doing with the software installed. But for the software, the computer would not be able to perform those functions.

    Viola! ALL software improves the operation of the computer. The test is disingenuous: the true test of eligibility is: I know it when I see it.