Software Patents Will Survive: How Section 101 Law Is Settling Down

By Matt Levy
November 30, 2016

“Yes, software can be patentable, but it has to provide a technical solution to a technical problem.”

Survive definitionSoftware patents have been controversial for decades. The discussion generally centers around whether software is patent-eligible subject matter. Since the Supreme Court’s decisions in Bilski v. Kappos, 130 S.Ct. 3218 (2010); Mayo Collaborative Servs. v. Prometheus Labs, 132 S.Ct. 1289 (2012); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013); and Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), much of the argument in the debate has taken one of two sides: 1) the Supreme Court has expanded the judicial exceptions to § 101 so far that nearly everything is abstract; 2) despite the Supreme Court’s decisions, way too many bad patents are getting past § 101.

I think the reality is that software patents in some form are here to stay for the foreseeable future; it is also true that things that used to be considered patent-eligible no longer are. Assuming that’s right, we need a way to identify which claims are patent-eligible.

The Supreme Court has mainly given guidance as to what isn’t patent-eligible. In Alice, for example, the Court said that simply adding conventional computer components to an otherwise conventional method or system is not patent-eligible. Put another way, if there is no “inventive concept” in the claim, it isn’t patent-eligible. But the Court’s formulation isn’t necessarily helpful in drawing the line.

Drawing the line between patent-eligible and patent-ineligible software inventions requires looking at the Supreme Court’s words a little differently. Instead of looking at what they said isn’t patent-eligible, let’s see what they said about what software claims are patent-eligible. Flipping the formulation around, if a claim is patent-eligible, then there must be either an unconventional method or system or an unconventional computer component in the claim. In theory, this leaves a little room where it’s possible to have something be patent-ineligible despite being “unconventional,” but I don’t think that matters much in practice.

The first situation (i.e., unconventional method or system) is Diamond v. Diehr; in Diehr the claim was directed to an otherwise patent-eligible method for curing rubber, so the software didn’t matter for eligibility. So what is an unconventional computer component?

Basically, it’s a computer component, either software or hardware, that has been technically improved in an unconventional way. After all, if there were no technical improvement, it would just be a conventional computer component. In other words, if a claim is directed to a technical improvement of the performance of a computer (or a particular component(s)), then it is (or at least it should be) patent-eligible.

And the Federal Circuit seems to be moving towards a sort of “technical improvement” test for patent eligibility. Gene did a nice summary of recent 101 cases, so I won’t recap them here. If you read the decisions, you’ll see that a common thread that flows through them is the search for a technical improvement to a technical problem.

The Enfish, BASCOM, and McRO decisions (which found the claims patent-eligible) all found technical improvements in the claims at issue. TLI Communications and Electric Power Group (which found the claims ineligible) could not find technical improvements. The reasoning in Amdocs isn’t very clear, although the opinion does discuss the presence of a technical improvement.

Over all, the Federal Circuit has begun to find its way on software patents and patent eligibility. It’s focusing, correctly in my opinion, on the technical innovation (or lack thereof) in claims. That means that, yes, software can be patentable, but it has to provide a technical solution to a technical problem.

The reality is that the law needs to settle down and provide some form of predictability. Software can be just as work-intensive and innovative as any other field, so it’s hard to justify some sort of complete patenting exception for software. The problem hasn’t been software patents per se; it’s been bad software patents that overclaim and block others from innovating.

It’s still early, but I think that the Federal Circuit is on the right track.

The Author

Matt Levy

Matt Levy is the former Patent Counsel at the Computer and Communications Industry Association (CCIA), where he handled legal, policy advocacy, and regulatory matters related to patents and wrote the Patent Progress blog. He is now a consultant on patent policy issues and patent litigation.

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 54 Comments comments.

  1. DownSouth November 30, 2016 11:52 am

    When I read this earnestly-written article by a competent attorney, I wonder how I might possibly live in the same universe as he does. Hopefully, I’ll invent something to get there.

    §101 has evolved quickly, unless you consider that Article III judges are blowing away hundreds of patents, with a 90% death rate at the Federal Circus Court of Appeals. Alice has given the Article III courts the ability to regulate innovation itself, to pick economic winners and losers, and use the rules as tools to hide their real work.

    They really are redirecting the money flows to the infringers. That means that the true innovators never gain the economic traction to build the economic engines that drive global success a generation from now. Essentially, The Federal Circuit is in danger of becoming a kangaroo court.

  2. Easwaran November 30, 2016 12:52 pm

    “That means that, yes, software can be patentable, but it has to provide a technical solution to a technical problem.”

    So what makes one software improvement “technical” and another not? The problem with your proposed test is it is essentially as arbitrary as the overarching question of when something is directed to an abstract idea in the first place.

    I think you were correct at the outset of your article to focus on conventionality, as that’s the terminology the Court (and the Federal Circuit) has spoken in most clearly.

    And just so we see your position more clearly, where are you seeing a “technical problem” requirement from the cases? Are you suggesting that a technical solution to a non-technical problem is not eligible for patenting? That would be an odd conclusion.

  3. Roz November 30, 2016 3:30 pm

    “Gene did a nice summary of recent 101 cases, so I won’t recap them here. ”

    The link to Gene’s summary appears to be broken.

  4. Curious November 30, 2016 3:55 pm

    When I read this earnestly-written article by a competent attorney, I wonder how I might possibly live in the same universe as he does
    You assume that this ‘competent attorney’ doesn’t have any inherent biases. As you may know, this attorney is employed by an industry group that could be entitled Infringers-R-Us.

    He writes “software can be patentable, but it has to provide a technical solution to a technical problem” — unfortunately, there is no textual support for this assertion either in 35 USC 101 or the Supreme Court’s dalliances into the topic. The Federal Circuit has dipped its toes into this area, but what is a “technical solution to a technical problem”?

    At one time, all we had to know was whether the invention was process, machine, manufacture, or composition of matter, or any improvement thereof. These were pretty easy concepts to figure out and few argued over what they meant. However, we are have added to this concepts like “substantially more,” “directed to,” “data gathering,” “idea of itself,” “fundamental economic practice,” “organizing human activities,” “insignificant extra solution activities” just to name a few. Now the proposal is to add “technical solution” and “technical problem.” Where (and when) is going to end?

    The upshot is that no one knows, with any reasonable certainty, whether a claim is directed to patentable subject matter unless the Federal Circuit looks at it. Consequently, because of the great uncertainty of any claim’s patentability, the usefulness of these claims (and hence patents as a whole) has been greatly diminished. Even the most ardent supporters of the AIA and the expansion of 35 USC 101 in rejection claims cannot argue otherwise.

    The patent system in the United States has been greatly diminished by both the AIA and the Supreme Court’s decisions of Bilski and Alice. This is great news for Infringers-R-Us but not good news if you want to make America great again by encouraging the development and disclosure of new technologies.

  5. Gene Quinn November 30, 2016 4:04 pm

    Roz-

    Thanks for bringing that to my attention. The link is fixed. The article is at:

    http://www.ipwatchdog.com/2016/11/20/guide-software-patent-eligibility-federal-circuit/id=74760/

    -Gene

  6. Anon November 30, 2016 6:51 pm

    Mr Levy,

    Your view and take-away from Diehr is not only incorrect, it is 180 degrees so (it was known and performed to have had perfect cures prior to Diehr, and the only true “Point of Novelty” for 101 purposes was computer software.

    I dare say that if heard with today’s judicial re-writing of the statutory law, Diehr would have been found NOT eligible.

  7. Benny December 1, 2016 6:53 am

    Easwaran @ 2,
    Perhaps the answer to your question is that the software provides a technical solution if it does not merely automate a pencil and paper solution which could be carried out by meatware. For example, digital signal compression is a “technical solution”. Correlation of names and addresses across 2 databases, not so much. The other extreme would be software which solves a mathematical equation – definitely unpatentable. Still, there will always be a grey area.

  8. Anon December 1, 2016 9:18 am

    Benny, your “meatware” fails for most mechanical inventions.

  9. Anon December 1, 2016 9:24 am

    As to “The other extreme would be software which solves a mathematical equation – definitely unpatentable.” see post 6 and Diehr.

  10. Benny December 1, 2016 9:31 am

    Anon at 8,
    Why? Your response makes no sense.

  11. Ternary December 1, 2016 11:15 am

    The “technical solution” and “paper and pencil” approach all sound reasonable, until one looks under-the-hood of many extremely useful software applications. Digital filters are basically calculating machines that can solve equations that can be performed manually. Image segmentation in medical imaging, to extract an organ like a heart from its surroundings in an image, is often a mathematical optimization routine. Cryptography performed in RSA is a simple mathematical operation, being modular exponentiation.

    Confusion about what is “real” or technical and “abstract” or of the mind is nothing new. Long discussions in the past were held about the existence of a signal spectrum. (a spectrum is fundamentally a Fourier transform on a description of a signal).

    A device that generates an output signal is technical and patentable subject matter. This was confirmed in re: Nuijten. It really doesn’t matter if the output signal is generated by analog or digital circuitry.

    Many businesses will be formed based on novel and useful software and will need to be able to protect IP with strong and enforceable patents. Right now, the system is a mess caused by the courts and the PTO not having sufficient guidance from the statute. Solutions proposed in the current article by focusing on “unconventional and technical improvements” without defining what those terms actually mean, only perpetuate the uncertainty. Software implemented on a processor to me is a technical solution. Congress should define it as such and specifically make it patentable subject matter or reject it as such and let us watch how that works out in the digital economy.

  12. Paul F. Morgan December 1, 2016 1:24 pm

    I’m afraid the Alice mess is not as simple as “software can be patentable, but it has to provide a technical solution to a technical problem.”
    However, there is some partial support along that line in recent Fed. Cir. software related cases:
    From Apple Inc. v. Ameranth, Inc.15-1703 — On Tuesday in an opinion by Judge REYNA:
    “Generally, a claim that merely describes an “effect or result dissociated from any method by which [it] is accomplished” is not directed to patent-eligible subject matter. Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015).”

  13. Curious December 1, 2016 1:35 pm

    “Generally, a claim that merely describes an “effect or result dissociated from any method by which [it] is accomplished” is not directed to patent-eligible subject matter
    … all while ignoring the distinction between distinctive claiming under the 2nd paragraph of 35 USC 112 and enablement under the 1st paragraph of 35 USC 112.

    The Federal Circuit seems fond of asking things from claims that they were not designed to do.

  14. Paul F. Morgan December 1, 2016 1:54 pm

    Curious, a problem with a claim that claims an end result with no limitations at all as to how that end result is achieved is a classic “preemptive” claim that covers any and all [including future] ways of achieving that end result. That kind of claim has been invalidated since at least as far back as the old Sup. Ct. Morse decision. That is not confusing claims with specifications.

  15. Curious December 1, 2016 4:04 pm

    Claim 1 of USP 6,384,850, which was one of the patents in Apple v. Ameranth:
    1. An information management and synchronous communications system for generating and transmitting menus comprising:
    a. a central processing unit,
    b. a data storage device connected to said central processing unit,
    c. an operating system including a graphical user interface,
    d. a first menu consisting of menu categories, said menu categories consisting of menu items, said first menu stored on said data storage device and displayable in a window of said graphical user interface in a hierarchical tree format,
    e. a modifier menu stored on said data storage device and displayable in a window of said graphical user interface,
    f. a sub-modifier menu stored on said data storage device and displayable in a window of said graphical user interface, and
    g. application software for generating a second menu from said first menu and transmitting said second menu to a wireless handheld computing device or Web page,
    wherein the application software facilitates the generation of the second menu by allowing selection of catagories and items from the first menu, addition of menu categories to the second menu, addition of menu items to the second menu and assignment of parameters to items in the second menu using the graphical user interface of said operating system, said parameters being selected from the modifier and sub-modifier menus.

    What is the “end result” being claimed here? Moreover, does this claim cover any and all ways of achieving that end result?

  16. Benny December 1, 2016 4:10 pm

    Curious,
    More to the point, is the specification enabling? The claim reads like a wish list, it could have been drafted without a single line of actual code written. (Probably was, too — I’ve seen this sort of thing first hand)

  17. Curious December 1, 2016 4:28 pm

    This is what Reyna wrote:
    They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting
    systems. Id. Essentially, the claims are directed to certain functionality—here, the ability to generate menus with certain features.

    To say that Reyna was disingenuously describing the invention is being kind. Then again, you wouldn’t expect anybody whose law practice was based focused on international trade to understand what is being claimed. I’m sure he is an excellent jurist but him dismissing this patent as simply being directed to “the ability to generate menus with certain features” evidences a complete lack of understanding as to what is being claimed.

    Words, by their very nature, are abstractions.
    Claims are comprised of words and abstractly describe inventions.
    The Federal Circuit, after white-washing away most of the limitations (i.e., words) in a claim, find an abstraction — go figure

    If I’m a Federal Circuit judge, using the current case law, I could come out anyway I want as to any particular claim depending upon what factors I just to consider, ignore, or obfuscate. With no hard and fast rules, the judges are free to come out any way they choose.

    The current jurisprudence surround 35 USC 101 is a complete mess because there is absolutely no way to predict whether a claim will be deemed patentable or not by the Federal Circuit. Well … you can bet that it won’t be deemed patentable and make a lot of money in the long run. Regardless, because of the AIA and Alice/Bilski/Mayo, our current patent system has little utility except for those large corporations with thousands of patents to assert and millions of dollars to defend themselves. This makes those like Matt Levy and Mark Lemley as happy as can be, but it does not promote the progress of science and the useful arts.

  18. Curious December 1, 2016 4:38 pm

    More to the point, is the specification enabling? The claim reads like a wish list, it could have been drafted without a single line of actual code written. (Probably was, too — I’ve seen this sort of thing first hand
    I’m not one having ordinary skill in the art at the time of the invention, so I wouldn’t know.

    As for writing code, it isn’t terribly difficult — I did it a VERY long time ago. After a quick scan of the drawings in the patent, I’m pretty sure that what was being claimed would not be difficult to code.

    A patent specification is not an operations sheet — I’ve seen those in a job I had as an engineer (also a very long time ago). If we wrote patent specifications to the level of detail apparently now desired by the Federal Circuit, they would be 100+ pages long — unnecessary in view of the law as it has stood for decades.

  19. Night Writer December 2, 2016 6:46 am

    Technical books say explicitly that functional language is used to represent a set of known solutions. I have quoted computer science textbooks used at the best universities that say just this. Reyna is the one that admitted at his confirmation hearings that he knew nothing about patent law nor about science. He was appointed by Google. He clearly unfit.

    The “technical” solution argument is ridiculous. The problem is what is technical? The EPO has a vast case repository that makes it clear that technical is whatever a judge decides is technical. And, how can using a computer to perform functions not be technical?

    Moreover, there really are not “software” inventions. There are information processing inventions that can be implemented with a general-purpose computer plus software or in another way such as a special purpose computer.

    All circuits can be implemented with A/D converters and “software.”

    I think any judge that makes any reference to Mark Lemley’s paper on functionality or makes any reference to a problem with functional claiming is clearly unfit. You see the rise of Trump is coming from the neo-liberals that believe it is OK (like Lemley) to be unethical to get your way. How about instead of trying to figure out what result you want and then back-tracking to generate a “truth” starting with principles and using them to analyze inventions.

  20. Night Writer December 2, 2016 6:53 am

    >>More to the point, is the specification enabling? The claim reads like a wish list, it could have been drafted without a single line of actual code written. (Probably was, too — I’ve seen this sort of thing first hand

    Comments like the above are the sort of ignorant sewage that we should flush. You see what the above does is play off the ignorant. Now you know who wrote that. Let’s see you defend your sewage. What I see first hand is all sorts of inventions made by skilled inventors without actually building the invention before they invent it—because they know what can be done. I’ve seen hydraulic systems designed, huge machines designed, biotech inventions with series of chemical reactions designed—all of these were worked out in the head of the inventor without actually being done.

    The key to all of this is that information processing inventions are just like all the other ones. The only difference is that one can rather than build a special purpose machine can utilize a general purpose computer, and that the representation of the invention is more formalized.

    It is really revolting that manipulative people have taken over our society. Please try to defend your statements–please.

  21. Night Writer December 2, 2016 7:00 am

    >This is what Reyna wrote:
    They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting
    systems. Id. Essentially, the claims are directed to certain functionality—here, the ability to generate menus with certain features.

    These sentences above offend everything that is decent in our society. These sentences above are from a witch burner. A corporate goon that admitted he was unfit to sit on the bench.

    A function Mr. Google Judge is used to represent known solutions that are too numerous to enumerate. Many textbooks say this explicitly and all areas of inventions use the functional language to represent the vast array of known solutions. Mr. Google Judge you could simply try to read a book on science and technology to learn this.

  22. Night Writer December 2, 2016 7:19 am

    I think part of reclaiming patent law has to be to evaluate the record of each judge at the Fed. Cir. and transfer those that do not have science backgrounds to different duties.

  23. EG December 2, 2016 7:47 am

    “More to the point, is the specification enabling?”

    Benny,

    If that were true, then these claims should be rejected under 35 USC 112(a)/35 USC 112, 1st paragraph, not 35 USC 101. That’s the problem with the nonsensical and broken Mayo/Alice framework: it’s untethered to the express language in any of the patent statutes, including 35 USC 101.

  24. EG December 2, 2016 7:49 am

    “The current jurisprudence surround 35 USC 101 is a complete mess because there is absolutely no way to predict whether a claim will be deemed patentable or not by the Federal Circuit.”

    Curious,

    Couldn’t agree more. As I’ve suggested upthread, you would do better predicting patent-eligibility with a Ouija board.

  25. Night Writer December 2, 2016 8:56 am

    Paul>>>>Curious, a problem with a claim that claims an end result with no limitations at all as to how that end result is achieved is a classic “preemptive” claim that covers any and all [including future] ways of achieving that end result. That kind of claim has been invalidated since at least as far back as the old Sup. Ct. Morse decision. That is not confusing claims with specifications.

    The answer to all your confusion is scope of enablement. What you wrote above is simply nonsense. Inappropriate for a real patent attorney.

  26. Benny December 2, 2016 10:29 am

    Night at 20,
    A patent specificiation which merely tells me what can be done is useless and should, as EG says, be 112’ed. A specification should teach me how to do it. And yes, I am a software PHOSITA.

  27. Night Writer December 2, 2016 11:55 am

    @26: Benny: if the spec doesn’t enable you to build the claimed invention, then it should be rejected under 112. That is a different issue than saying functional language doesn’t enable a person skilled in the art to build the invention. Functional language is used for solutions that one skilled in the art may readily know or determine. Many textbooks say exactly this.

    I am software PHOSITA as well as a patent attorney.

  28. Curious December 2, 2016 12:07 pm

    A specification should teach me how to do it.
    A specification is not a hand-holding exercise. The case law requires that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. It doesn’t matter if it’ll take a lot of hard work by one skilled in the art to reproduce the claimed invention — just as long as one skilled in the art can do so without without undue experimentation.

    What Reyna is asking for is outside of what is required by 35 USC 112.

  29. Ternary December 2, 2016 1:12 pm

    Software specifications are usually drafted and provided to software development departments as functional requirements, which are then coded. In particular cases, such as defined optimization or other algorithmic routines, pseudocode is also provided and usually block diagrams. There is usually little doubt that software developers are able to code the requirements. Standards, such as for system interfaces, explicitly define the term “shall” to make sure the standard has mandatory items and is not a wish list, even when functionally defined.

    A PHOSITA in software cases is someone who can take functional specifications and turn it into executable code. This is beyond someone being familiar with grammar and syntax of a computer language. Knowledge of a computer language is a necessary requirement for a software developer, but not a sufficient one. The question that should be asked is if a PHOSITA software developer would have been able to create executable code from the specification in 1999 even though it lacks block diagrams, but it has clear description of the UIs. I see no reason why not. I probably could have done most of it as an amateur in Visual Basic in 1999 without much undue experimentation based on the specification and considering the “normal” steps an amateur software developer has to go through.

  30. Ternary December 2, 2016 1:16 pm

    Curious @28, you say it shorter and better.

  31. Night Writer December 4, 2016 6:49 am

    I think that any patent attorney or judge that does not accept and state that functional language is a way to capture ways of performing the function by a person skilled in the art without undue experimentation are unethical.

    I think that this intentional misrepresentation of what functional claiming is was formed by Mark Lemley and that it is highly unethical.

    I really think if we want to keep our patent system that we need a way to police the unethical participants like Mark Lemley.

  32. Benny December 4, 2016 7:03 am

    Night,
    I find your last sentence highly disturbing. Reading between the lines, it seems to me that you are suggesting exclusion from the system of anyone who thinks they have a better idea than you about how the system should work, and I’m saying this without being judgmental about who is and isn’t right.

  33. Anon December 4, 2016 8:31 am

    Benny,

    Your post about “without being judgmental” does not make it.

    Night Writer did not say “exclude” – he said “police for unethical behavior.”

    That such may be equivalent in result is only because much of what Lemley publishes does not meet the latter (a point that Lemley has full control over).

    Further, it is not a matter of “how a system should work” that brings the ire, it is “how a system is wanted to work” and the fallacies involved in paving the scenarios to obtain that “want.”

  34. Benny December 4, 2016 9:03 am

    Anon,
    How a system is wanted to work and how you want the system to work might be one and the same, but then again, it might not be.

  35. Anon December 4, 2016 9:41 am

    Thanks Benny – but that rather misses the point now, doesn’t it?

    Night Writer is commenting on how others want to change what is to what those others want.

    Further, I (nor Night Writer) have spoken to our collective “wants” – so you are implying a condition that does not exist, while ignoring actions that do exist (and exist in the state that I presented).

  36. Curious December 4, 2016 12:11 pm

    I think that any patent attorney or judge that does not accept and state that functional language is a way to capture ways of performing the function by a person skilled in the art without undue experimentation are unethical.
    Unethical — a little too much hyperbole for my taste. Remember, Gene’s blog is well-read by decision-makers in government. Over-the-top comments are easily dismissed — even if much of what is written is correct.

    Obviously you are free (within Gene’s discretion) to do whatever you want on this blog. However, I treat this blog as an opportunity to provide “testimony” (to Gene’s readership) as to important issues regarding patent law. In my opinion, there is nothing wrong with being passionate, partisan, and detailed — details do matter. However, once you cross the line from being partisan to foaming at the mouth, it becomes all too easy to tune you out.

    If you, Gene, Anon, myself and few of the other frequent posters were all sitting at a bar discussing this, then I would have no problem with the tone of your comments. However, remember who your most important audience is. Its not me or Gene, the occasion troll, or most people who comment — it is the policy makers (or the people who work for the policy makers) who have an interest in patent law and read this blog because they want to know more about it.

    Getting back to your comment. While there are instances in which a judge might take issue with functional language (e.g., when the manner by which the function is achieved is not knowable by those skilled in the art), this is not the situation with software. In software, the building blocks (or tools) for creating functions are very-well known. Consequently, when a “new” function is created, one skilled in the art would be able to know how to arrive at the new function.

    Ternary @29 provided a good explanation as to how software is developed.

  37. Curious December 4, 2016 12:28 pm

    I really think if we want to keep our patent system that we need a way to police the unethical participants like Mark Lemley.
    I overlooked this comment. I don’t think I have ever had a kind thing to say about Mark Lemley. However, I strongly disagree that we should “police” speech. The proper response for disagreeable speech in the United States should be more and better speech.

    If you want to criticize Lemley’s work — explain that as someone who writes a lot about patent law — a field you need a technical degree to be called a “patent attorney” — his degree is in political science. If you want to talk ethics, mention that he is on the Advisory Board of an organization (Electronic Frontier Foundation) whose goal is to eliminate all software patents (and patents in general) — as such, he has an ax to grind.

  38. SoftwareForTheWin December 4, 2016 4:18 pm

    The first part of the title of the post is “Software Patents Will Survive” is already false. They won’t survive because they haven’t been surviving. Minimal is spent on patents. The software industry is booming. No small software innovator is placing any faith in patents. Or should I say no *SMART* small software innovator. The smart ones recognize that software patents for small entities are a complete waste of time&money. Complete and utterly complete waste of time&money. Pay lawyer fees, then filing fees, then maintenance fees – easily $20k+ for a patent and in the end when it comes to sell, license, or stop an infringer – that patent is useless. eBay, PTAB, counter-suits, and the endless string of legal mechanisms that large infringers have at their disposal to squelch any small innovator.

    Forget the USPTO with their fees. Forget the lawyers. Small software entities have found their limited (no not “limited” – but rather “extremely limited”) resources are better spent in open source, outcoding the competitors, trade secrets, etc. All the zealots in this echo-chamber will attack me for this with irrelevant arguments like “you can’t compete with open source” and “China will outrace you” and “large corporations will put you out of business”. Bla bla bla bla. Look around – small software entities are killing it. Absolutely killing it. They’re getting funding and they’re minimizing spending it on patents.

    You folks really do not understand how much investment money has been diverted away from USPTO & Congress & patent firms.

    Here’s my recommendation to any small software startup reading this: minimize how much you spend on and rely on patents. Spend $5k to file it yourself gets you pretty close to the same as $75k spend on 2 or 3 patents. Not exactly the same – but pretty darn close. Either way to enforce those patents you’ll need $millions down the road. This echo-chamber will attack me for a $5k patent but the reality is you’ll need just as many $millions to enforce the “high quality” as you do with a cheap patent. If you opt for no-patent – can’t blame you – at least you won’t fool yourself into thinking you have any protection.

  39. Curious December 5, 2016 10:57 am

    All the zealots in this echo-chamber will attack me for this with irrelevant arguments … at least you won’t fool yourself into thinking you have any protection.
    Dude — you apparently didn’t read what the “zealots” in this so-called “echo-chamber” wrote. I have already written here (and elsewhere on this blog) that patents are pretty much useless for small entities.

    BTW — the author of this article is the head of an organization whose members (aka “Infringers-R-Us”) would be more than than happy to get rid of all software patents. The whole premise of this article is to create the illusion that ‘everything is OK … nothing to see here … move along” when it comes to software patents.

    Unlike the author, the “zealots” commenting on this blog want to have software patents stronger so that small entities can rely upon them to protect their business. Your rant accurately reflects the thinking of many small entities — i.e., that patents don’t provide any protection. This reflects upon the current, BROKEN, patent system — intentionally broken by the likes that Mr. Levy represents.

    We want to make the patent system useful again to the people you are describing — e.g., the small software startup.

    If you actually took the time to read what was written in the comments, you would have realized that this is not the “echo-chamber” you made it out to be.

  40. Night Writer December 6, 2016 8:54 am

    @32 Benny: “I find your last sentence highly disturbing.”

    Actually, Benny, I find your post to be highly disturbing and sign of the lack of morals in this country. I have exhibited evidence repeatedly of Mark Lemley intentionally misrepresenting the law, history, cites, and science. Mark Lemley is unethical. He clearly has an anti-patent judicial activist agenda that he is pushing without regard to ethics.

    I am simply saying if a professor at Stanford write in a paper that software has no structure (as he did) in a paper in a law journal that he should be held accountable. I am simply saying that if a professor at Stanford misrepresents cites, the law, history, and science to promote his agenda against functional claiming that he should be held accountable. There is a remarkable amount of evidence that Mark Lemley is unethical.

    I find it deeply disturbing that you—or anyone–would not promote the enforcement of ethical conduct in law.

  41. Night Writer December 6, 2016 8:58 am

    In fact, Benny, I think your views are shameful. And it is not just Mark Lemley that is acting unethically. There are many law professors that should be disbarred.

    And, Benny, I have said repeatedly that I disagree with the position that “software” should be removed from 101, but that I respect those that take this position ethically and either present ethical legal arguments for this or advocate for legislation. Lemley is not such a person. Mark Lemley is a highly unethical person, and he is a professor at Stanford who –if you do research on the subject–will protect him no matter what he does short of a violent crime.

  42. Benny December 6, 2016 9:22 am

    Night,
    I write a lot of rubbish in the comments section of this blog, and I fully appreciate the freedom afforded me of doing so without being “policed” or held accountable. I’m not suggesting you agree with Lemley, nor am I suggesting that you refrain from criticism of his opinions. I do, however, believe that he – or anyone else – is entitled to air his views, or open them to debate, without fear of retribution. There are societies where criticism of the incumbent order is not encouraged – but neither you nor I live (or would want to live) in one.

  43. Night Writer December 6, 2016 10:50 am

    @42: Benny: that is ridiculous. You are saying that a professor of law at Stanford University should be able to say whatever he wants in law journals, radio shows, talks at universities, etc.? For example, he currently misrepresent sciences, misrepresent law cites, misrepresents the law, etc., all for his anti-patent purposes. Moreover, your opinion is at odds with the model rules.

    I am not talking about the comment section. I think the ethical standards are far looser for the comment section of a blog, and none of my comments regarding Lemley refer to comments he has written, but to law journal articles.

  44. Night Writer December 6, 2016 10:51 am

    And, Benny are you an attorney or an academic? Lemley is breaking the ethical rules for both. Not only that his unethical conduct is presented as scholarly work of a law professor.

  45. Benny December 6, 2016 11:05 am

    Night,
    Where I come from, the combination of the words “lawyer” and “unethical behaviour ” in the same sentence surprises no one, nor is it held accountable. If it were, criminal and civil law cases would take up less valuable time, and criminal defence lawyers, in particular, would not be driving expensive cars. I’m not interested in what Lemley has to say, for the sake of argument I’ll assume he is talking from the wrong orifice – but, like all of us, he has the right to free speech, however distasteful it is to us, just as he has the right to attend music concerts by the Slants or Redskin games or watch TV evangelists (unethical, did we say?)

  46. Anon December 6, 2016 11:35 am

    I will agree with Benny – but only to the point of being able to express oneself.

    The point of disagreement comes when the expression is knowingly false and is intended to be more than an expression of one’s personal views.

    Attorneys are held to a higher ethical standard in their practice because of the effect we have on the law.

    Professors involved with both forming the minds of students who will be attorneys AND who use their position as academics in the guise of being knowledgeable about the law – explicitly seeking to change the law – should be held to an even higher ethical standard.

    You are just not comparing apples to apples with equating a blog post by just anybody with the writings intended to shape the law of someone intent on usage the “prestige” of their position in disregard to factual, legal, and historical understandings.

  47. Night Writer December 6, 2016 1:42 pm

    @45 Benny: your opinions are scary. The whole idea of academics and lawyers is to hold them to an ethical standard so that there is some fair fighting for sake of progress and the sake of constructive engagement. Your opinions are just bizarre. I suppose you think scientists should just be able to make up date for journal publications and claim work they didn’t do. Etc. I think you need a civics class.

  48. step back December 7, 2016 6:44 am

    Why are you guys bickering over one of the lower inhabitants at the bottom of the cesspool (bought and paid for ‘law’ professors) when the real damage is done by them that claim themselves as the Supreme arbiters of truth and science (a.k.a. Clarence the Clown and his 3 ring circus mates)?

    https://patentu.blogspot.com/2016/10/subject-to-legislative-whims-of-judges.html

  49. Anon December 7, 2016 7:15 am

    step back,

    I completely agree that the major source of problems in patent law is legislating from the bench.

  50. Night Writer December 10, 2016 8:15 am

    @36 & 37 : Curious.

    This is not about free speech with Lemley. This is about a professor of law publishing articles in law journals that intentionally misrepresent the law and science. It is highly unethical. Moreover, Lemley presents himself as a law professor on radio shows and presents his arguments as an analysis of the law. As such, he is supposed to be held to a higher ethical standard–this is blue book law.

    Nothing I am saying about Mark Lemley is over the top. Nothing. His paper on functional claiming is shameful. It includes bad cites. It intentionally leaves out important cases and scientific facts. Etc. It is highly, highly unethical.

    I am great free speech proponent, but lawyers and law journal articles are supposed to be held to a higher standard when presenting themselves as law professors that are interpreting law and science.

  51. Night Writer December 10, 2016 8:18 am

    And Curious and the rest, I can many, many examples of unethical behavior from Lemley. It is impossible read a paper from Lemley without feeling dirty.

    Moreover, Curious, consider that the SCOTUS cites to Lemley’s articles. It is our duty to point out that they are full of misrepresentations, omissions, bad cites, etc.

  52. Night Writer December 10, 2016 8:24 am

    Curious, I don’t think you understand our legal system. I have no problem with Mark Lemley advocating for the elimination of all patents or just software patents. Fine with me. I have a problem with a professor publishing papers that are unethical and should not be cited by any court and should not be tolerated by Stanford Law School. Moreover, I have a problem with an attorney getting on the radio and claiming to be interpreting the law (not advocating for change) and misrepresenting the facts and the law.

    I frankly am shocked that there is any controversy in my position. Shocked. It is like you are saying that plagiarizing in law journal articles is fine as long as you are doing it for a purpose. I remember in law school that the professor I was writing a paper for said that the penalty for misrepresenting the law or a cite was automatic expulsion from law school–no exceptions.

  53. Night Writer December 10, 2016 8:25 am

    A more productive dialogue would be to start going into Lemley’s vast breach of ethics and see if he would defend any of it.

    I have some great ones to get started with. What about it Lemley?

  54. Night Writer December 12, 2016 6:04 am

    @48: step back — I don’t agree with you. The SCOTUS does the damage but they couldn’t without the justifications from Lemley. Lemley is the root of the problem.