This is my third article, in a series, written to provide some useful aid for the Supreme Court and clerks in the wrapping of their minds and writing around the issues surrounding computers and software. I have already written two installments:  Help for the Supreme Court in CLS Bank; and, What is a Computer?  As predicted when I started, almost every patent person with a “dog” in the fight re software has written articles (or Amici) to be helpful. I only hope that what emerges from beneath the avalanche of writing is something that can get the patent system, and its relationship to computers/software, back to where it needs to be for the system to be an incentive and reward based enterprise as it was intended.

The object of this installment is not scholarly, in the sense that case citations are going to show up, but rather is another effort to give the lay person a chance to “get” what it is we in the patent community continue to babble about, in patent attorney code, when it comes to software. Of course, because, I am doing the writing, car analogies will be present because that is the only technology that I can readily relate to when characterizing computers/software/machines.

The story that begins the tale is me attending a small car show in Williamsburg, Virginia last summer. The selection of cars ranged from brass era to modern sports cars. As a part of the show, and to keep folks around, they had a schedule of “car starts” where a specific car would be fired up and the crowd would be given a short demo on the particular car. The one I waited for, specifically, was the Ford Model-T. It was the car that made modern America. It put thousands on the road and thousands to work. That “device” changed the course of our collective history. But, it was, none-the-less, a cantankerous beast. Henry Ford was quoted as saying, “I will give you the car for free if I can sell you the parts to keep it running!” (Hey, the first “freeware” sales model!) It was solid and, for its day, very reliable and capable. But the owner /operator had to be mechanically quite adept.

EDITORIAL NOTE: What follows is the Summary of the Argument from the AIPLA amicus brief in Limelight Networks, Inc. v. Akamai Technologies, Inc. The brief is filed by Wayne P. Sobon, who is the current President of the AIPLA, with Jeffrey I.D. Lewis listed as Counsel of Record. Lewis is himself a former AIPLA President. Also on the brief with Lewis is Scott B. Howard.

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The cornerstone of Petitioner’s argument is that it follows from the language and simple structure of Sections 271(a) and 271(b) of Title 35 “that § 271(b) proscribes conduct that induces actionable direct infringement of a patent as described in § 271(a).” Pet. Br. at 1 (emphasis added). In doing so, Petitioner focuses on the elements of a claim for induced infringement under 35 U.S.C. § 271(b), but hides the true issues of this case – what is the meaning of “infringement” and is there patent liability when someone causes all of the steps of a method patent to be performed but no single entity performs all of the steps of the method claim by him or herself?

Recent Federal Circuit law has, without any statutory basis, limited infringement under Section 271(a) to the actions of a single entity, and some amici have even mistakenly characterized the single entity rule as settled law, e.g., Brief of Amici Curiae Cargill, Inc. et al. at 4 (but it is not, as shown below and in district court cases in the accompanying footnote [2] ). It is that erroneous limitation that leads to confusion over whether or not direct infringement is necessary for a finding of indirect, induced infringement.

Once Chief Justice John Roberts said “[t]he case is submitted,” which occurred this morning at 11:05 a.m., the reading of the tea leaves began.

The Supreme Court was very hot Court, with a lot of questions on the mind of the Justices. After reviewing the transcript I am left believing the Court is likely wondering whether it is possible to find the Alice patent claims to be patent ineligible while also ruling that software patent claims are not all patent ineligible. Surprisingly, it seemed as if Justice Scalia was most persuaded by the patent eligibility of the claims, directly saying at one point that the issues circling the case seem to really be about 102, not 101.

While I support the patent eligibility of the patent claims, particularly the patent claims drawn to a system, it seems undeniable that Alice missed many opportunities to score easy points. Indirect arguments were made by Alice that didn’t seem very persuasive. Indeed, if one is to predict the outcome of the case based on oral arguments alone it did not go well for Alice today. Only three things give Alice supporters hope after this oral argument as far as I can tell. First, the government seems to be asking the Supreme Court to overrule precedent in Bilski that is not even four years old, which simply isn’t going to happen. Second, the egregious overreach and outright misleading nature of the CLS Bank argument should raise a legitimate question or two in the mind of the Justices.  Third, the reality simply is that at least the systems claims recite numerous specific, tangible elements such that it should be impossible to in any intellectually honest way find those claims to cover an abstract idea.

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

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

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

Eric Gould Bear knows software. He is a successful inventor, has spent over 25 years working with numerous Fortune 500 corporations and he is also a testifying expert witness for patent infringement cases. With the oral argument in Alice v. CLS Bank scheduled for Monday, March 31, 2014, we recently sat down to talk about the briefs filed and issues in the case. In part 1 of our conversation we discussed the false distinction that is erroneously made between hardware and software, as well as the ACLU amicus brief, which he called “embarrassing.”

In part 2, which follows below, we discuss why software start-up companies need patents. Bear also further analyzes the briefs filed, including the one filed by LinkedIn, Netflix, Twitter, Yelp and Rackspace, which he characterizes as taking “a fairly radical stance.”

Without further ado, here is part 2.

QUINN: I was hoping you might be able to give us an idea of how a software startup company uses patents as an asset to leverage building, growing, and further innovating?

BEAR: Sure.  Startups have to move with velocity and with a high level of excellence simultaneously.  And they’re fiscally challenged for the most part, so have to operate very lean.  There’s a challenge with regards to patent filing because the costs are hard to justify as having any immediate benefit.  And when you weigh your weekly or daily burn, it’s really hard to swallow the costs of investing in patents. That’s certainly the case for startups like the ones I advise at the Capital Factory incubator in Austin.  Most don’t know with certainty if they’re even going to survive to the next year.

In Part I, I addressed many of the issues that are being considered by the Supreme Court in the Alice v. CLS oral arguments, and continue the analysis here, looking at particular issues and what various amicus briefs argue, and whether those arguments hold up or not.

The Equivalence of Software and Hardware

There is a further gulf between those who view In re Alappat as sound logic and engineering (ABL, AIPLA, Alice, Mr. Ronald Benrey, BSA, CCIA, Mr. Dale Cook, Prof. of Computer Science Lee A. Hollaar, IEEE-USA, Microsoft) and those who it as mistaken (Electronic Frontier Foundation, Prof. Robin Feldman, Red Hat) and primarily responsible for an increase in such patents (Electronic Frontier Foundation, Google, “Law, Business and Economics Scholars”). The IEEE-USA provides an excellent analysis of the relationship between software and hardware, pointing out the incontrovertible principle of equivalency, that “special-purpose programming of general-purpose hardware” is “equivalent to special-purpose hardware,” though IEEE-USA fails to mention that this is a fundamental principle of computer science, as established by Alan Turing in the 1930s. To assert, as does the EFF, that the Federal Circuit “concocted” the equivalency of hardware and software goes beyond denying the foundational work of Turing and others.  The equivalency of software and hardware is what makes it possible for Java to run on any type of computer using the Java Virtual Machine, as well the electronic design automation industry, which enables complex electronic circuits to be entirely designed in software before being implemented in hardware.

Eric Gould Bear is an inventor on over 100 patents and patent applications in the software space. He has spent over 25 years working with numerous Fortune 500 corporations with respect to assisting them in the creation of new user experiences. He is also a founder of the design studio MONKEYmedia, who signed onto the Trading Technologies amici brief filed in Alice v. CLS Bank at the Supreme Court. Bear is also a testifying expert witness for patent infringement cases. He is an expert in the software/patent space, and has seen the industry from multiple different angles over the years.

With the oral argument in Alice v. CLS Bank scheduled for Monday, March 31, 2014, I reached out to Bear to see if he would go on the record to discuss the issues he saw in the various briefs filed, what was good, what was problematic, and how he as a software expert would try and convey the issues to a layperson, or scientifically untrained jurist such as the Justices on the Supreme Court. He agreed and we spoke on the record about the issues, using as our focal point several of the high profile amici briefs filed.

What appears below is part 1 of my 3 part substantive software converation with Bear. In part 1 we discuss the false distinction between hardware and software, and Bear goes into deal with examples, saying at one point that most of the innovation today relates to software. He also takes issue with the ACLU amicus brief, calling it “embarrassing.”

Reading the merits briefs of Alice Corp., CLS Bank and many amici induces the strange feeling that there are multiple, parallel universes operating, and it is hard to know which one you are in. Are you in a universe in which Alice’s claims are for a software invention or a business method? Where software has always been patent eligible or has never patent eligible? Where the Supreme Court’s jurisprudence is absolutely clear and consistent over the past 150 years or entirely murky and at odds with itself? Of course, it would be foolish to expect universal agreement on a topic that is controversial, and we expect nothing less than zealous advocacy from lawyers. Instead of summarizing the briefs individually, I’ve organized my analysis by topics, looking at particular issues and what various briefs argue, and whether those arguments hold up or not.

Framing the Debate: The Question Presented

The fractured views of the world begin with the question presented, and reflect how different parties frame the debate in very different terms. Alice’s merits brief presents the question before the Court as “whether claims to computer implemented inventions…are patent-eligible.” Putting the question this way allows Alice to place its inventions and claims in the larger context of all computer-implemented inventions, the subtext being that if the Supreme Court holds that computer-implemented inventions are patent eligible—which is a fair bet—then Alice’s patents should be valid. Further, phrasing it this way allows Alice to distance itself from pure business method claims from the invalid claims in Bilski v. Kappos.