When the U.S. Supreme Court finishes hearing arguments in the upcoming case Alice Corporation v. CLS Bank International, it will be asked to judge whether or not software and computer-implemented inventions are eligible to receive patent protections through the U.S. Patent and Trademark Office. Should the Supreme Court uphold the original decision and declares that the Alice’s patents on computer-implemented systems for managing risk in financial transactions are patent ineligible, thousands upon thousands of software patents could become invalidated.
We discussed some of the issues in play with this major case in our previous look at amicus briefs filed with the U.S. Supreme Court for this case. We have also profiled the IBM amicus briefthat argued that the abstract idea doctrine was unworkable. These parties, though largely neutral, had a number of disdain for how the judiciary has handled the issue of software’s patent eligibility under Section 101 of Title 35 of the United States Code. Today, we’re taking a look at briefs filed for either side of this historic case to get a broader sense of the viewpoints involved in this issue. A number of major corporations, non-profit organizations in technological fields and renowned scholars have lent their ideas to these briefs, and readers may find their views on the patent eligibility of software programs to be enlightening.
A quick perusal of the amicus briefs published online by the American Bar Association shows that only a few of the briefs filed are supporting the petitioner, Alice Corporation, in this case. In fact, only three briefs in support of the petitioner are shown on the ABA’s official site listing amicus briefs for this case; there are a total of 40 amicus curiae briefs shown on that site, as of this writing.
Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.
In this new article I intend to provide facts about software and the software industry to debunk these misnomers, myths, misconceptions, and just pure misunderstandings about “software patents”.
Former CAFC Chief Judge Paul Michel filed an amicus brief in Alice v. CLS Bank.
In a few weeks, the Supreme Court of the United States will begin to hear arguments in Alice Corp. v. CLS Bank International. This case involves the very basics of U.S. patent law, namely what is considered patent eligible, and will have wide-reaching effects in the American technological sector. The case before the Court will ask it to decide upon the patent eligibility of software based on the most foundational aspects of patent law: Section 101 of U.S. Code Title 35. If a category of innovation is not patent eligible under Section 101 it does not matter whether the invention is highly useful, new and non-obvious. In fact, an invention can even be pioneering and revolutionary and not deserve a patent if it is deemed patent ineligible under Section 101. Because a determination that an entire area of technological pursuit can be deemed patent ineligible under Section 101 historically that has been only infrequently used so as to not unnecessarily kill innovative developments in their infancy.
In recent years, however, the Supreme Court has shown far more willingness to find things patent ineligible, which is a disturbing trend. In fact, In Mayo v. Prometheus, the Supreme Court conflated Section 101 with 102 to say that something that a patent claim that does not related to a law of nature was still nevertheless patent ineligible as a law of nature because the additional steps added that made it different than a law of nature were merely conventional. Up until Mayo such an analysis had been mandated by the Supreme Court to occur under Section 102. Indeed, the statute the Supreme Court ostensibly must follow requires novelty and conventionality to be addressed under 102. Thus, as the result of Mayo, and the Supreme Court’s decision in Myriad, there is great concern about the future of patent eligibility because it seems the Supreme Court now seems to prefer to find inventions patent ineligible without the mandated statutory analysis under 102, 103 and 112.
Software innovations are ubiquitous in our country, in use by machines and systems from consumer devices on to basic utility grids. There are numerous individuals who are keenly interested in the outcome of this case, and many have volunteered to participate and provide their insight, opinions and arguments to the Supreme Court. With this in mind we wanted to share some of the most informative amicus curiae briefs that have been filed with the U.S. Supreme Court. We have already published articles about the IBM amicus brief, the brief filed by the Solicitor General and the Trading Technologies amici brief joined by another 45 companies. Now as a part of our ongoing coverage of this case, we’ll look at what several other interested parties have to say about the patentability of software, and how our country’s patent system should be treating this issue.
EDITORIAL NOTE: A diverse group of 46 amici, spearheaded by Trading Technologies International, filed an excellent amici brief worth reading in Alice v. CLS Bank at the United States Supreme Court. The Summary of the Argument is republished here with permission. Charles J. Cooper is the Counsel of Record, but is joined on the brief by Vincent J. Colatriano and William C. Marra (both of Cooper & Kirk), as well as Steven Borsand and Jay Knobloch (both of Trading Technologies)
In keeping with the Constitution’s expansive grant to Congress of power to secure for “Inventors” exclusive patent rights to “promote the Progress of Science and useful Arts,” U.S. CONST. art. I, § 8, cl. 8, Congress has since 1790 broadly defined the subject matter of inventions eligible for patent protection. For nearly as long, this Court has applied exceptions, of its own making, to Congress’s designation of these “broad patent-eligibility principles.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). This case focuses on one of those judicial exceptions – the “abstract ideas” exception.
The Court granted certiorari to decide “[w]hether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?” Importantly, the patent claims in this case do not recite “a scientific truth, or the mathematical expression of it,”  Mackay Radio & Tel. Co. v. Radio Co. of Am., 306 U.S. 86, 94 (1939), and no court below entertained any evidence relating to whether the claims are novel and non-obvious under Sections 102 and 103 of the Patent Act. Thus, the question here is whether computer-implemented inventions that are not directed to a scientific truth should be deemed ineligible even if such inventions are novel, non-obvious, and otherwise patentable. 
In a few weeks the United States Supreme Court will hold oral arguments in Alice v. CLS Bank. At stake in this case is the future of software patents. Half of the Federal Circuit de facto ruled that software is patent ineligible. Of course they could not come right out and say that because it would contradict both settled Supreme Court precedent and patent laws enacted by Congress and codified in Title 35 of the United States Code. Nevertheless, the undeniable position of half of the Federal Circuit was that software is not patent eligible because to these Judges none of the claiming techniques that are used to write software patent claims result in patent eligible subject matter being claimed.
In preparation for the oral arguments we are shifting through the briefs. I have already written about the IBM brief, see Supreme Court “Abstract Idea Doctrine” is Unworkable. We plan multiple articles leading up to the oral argument that discusses the various briefs filed, and complete coverage of the oral arguments. Today, however, I write about the brief of the United States Government filed by the Solicitor General, which is simply disingenuous.
Truthfully, to call the Solicitor’s brief disingenuous is being charitable. The logic, if you can call it that, necessary for the Solicitor’s arguments to be correct is extraordinarily tortured, not to mention circular and dependent upon itself for support. The premise of the argument made by the Government is simply false. The Solicitor tells the Supreme Court that the patent claims in question are to an abstract idea, which is flat wrong. But in a bizarre twist the Solicitor pivots to then say that what is covered is not an abstract idea but it is not necessary for there to be an abstract idea protected in order for the claim to be patent ineligible as an abstract idea. Sadly, I’m not making this up.
What follows is the Introduction and Summary of the Argument included in the IBM amicus brief filed at the United States Supreme Court in Alice Corporation Pty. Ltd. v. CLS Bank International. While many attorneys contributed to this brief, as you will see them listed on the front cover, former Solicitor General of the United States Paul D. Clement is the Counsel of Record.
I think it is fair to say that the theme that comes through the loudest in the IBM brief is this: The abstract idea doctrine is unworkable. To that I say a resounding AMEN! If the Supreme Court cannot or will not tell us what an abstract idea is how can we any longer pretend that the jurisprudential path the Court has taken will lead to predictability? At least insofar as software is concerned there is a complete and total lack of predictability. There is also no uniform application of the law, which at least conceptually should raise concerns of disparate treatment of those similarly situated.
Below I provide additional thoughts on the IBM Summary of the Argument in the format of comments from the peanut gallery, or perhaps as a patent law equivalent to Mystery Science Theater 3000. In order to differentiate my thoughts/comments from IBM amicus brief, my comments are italicized, colored, indented and tagged with the IPWatchdog logo.
The United States Supreme Court is poised this term to decide CLS Bank v. Alice Corporation, which could make meaningful strides toward settling once and for all the patent eligibility of software. The Supreme Court is known to like to dodge the most important questions we all need answered, and that trend is almost certainly going to continue in any decision in CLS Bank. But the Supreme Court won’t be able to dodge the fundamental question about whether software is patent eligible. The will likely, and unfortunately, dodge the question about what specifically must be recited in patent claims in order to properly define a software, or computer implemented invention.
Software is now and will remain patentable in the United States even after the Supreme Court’s decision in CLS Bank. The Patent Act is replete with references to software and computer implemented inventions. In fact, in 2011 Congress essentially said that tax strategies could not be patented in and of themselves, but this exclusion relating to tax strategies does not render an otherwise patent eligible software program patent ineligible. Thus, Congress has spoken, and on this particular issue Congress will be the final word because there is no chance the Supreme Court will rule software patents unconstitutional. That issue is not even before the Court.
Congress clearly has stated that at least some software is patent eligible, and so will the Supreme Court. That being said, the real question is how do you describe a software related invention to satisfy the patent requirements? The short answer is that it takes quite a bit more disclosure than you might otherwise think. Long gone are the days of cheap, easy software patents.
In the CLS Bank v. Alice Corp upcoming Supreme Court case, Alice poses the question… “Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…”
That’s absolutely the wrong way to phrase a question about inventions. Equally wrong is the same boiled down twin sister question “Is software patentable” which has now been debated around the world for almost 50 years.
As the recipient of the first software patent in 1968 and a founder of Applied Data Research (ADR), the first company to market software products, I have intensely followed and written about the software patent controversy for almost 50 years.
Here’s why the Alice question should not be answered by the Supreme Court in its present form.