Four weeks have passed since the Federal Circuit’s “decision” in CLS Bank v. Alice Corp. From my perspective as both an independent inventor and litigation expert witness in software and hardware user interface design, I believe this ruling takes the wrong tact. In the context of the PTO backlog and proliferation of high-profile patent infringement cases, it isn’t surprising that software patent-eligibility is being questioned, but the false distinctions being drawn between hardware and software are not the answer.
Perhaps the best place to start is with a real-world usability challenge that crosses the bounds of software and hardware functionality. We’ll look at the design of an aspect of computer mice to set the stage for a fresh look at software patentability.
Imagine that a leading manufacturer of computer peripherals asked you to establish a new bar for scrolling ease-of-use on a revolutionary new mouse with a work-in-progress scroll wheel. As a product designer, you have an obligation to envision and craft for end-users the best experiences possible. You may also have an obligation to provide your client competitive protectable intellectual property. It is best when those two goals don’t present a conflict of interest, but let’s table that issue for now.
Knowing something about hand biomechanics, one of the first things you might want to determine is users’ perceived difference between scrolling up and scrolling down. Then, you might look at what it would take to neutralize any deltas between perceived and actual human physical performance.
You go out and recruit a diverse sample of people from your target market (men and women of varied ages with varied hand-sizes and varied experiences with computer input devices) and bring them to the lab. You blindfold them and ask them to scroll up and down specific imagined distances – e.g. up three pages, down three pages, up ten pages, down ten pages, up one page, down one page. At the end of the study, you might find that people generally roll more to scroll down an imagined number of pages than to scroll up that same number of imagined pages.
We could address this perception differential by amplifying user roll-up input so that any application running on the computer gets 1.33x the actual roll-up input detected by the wheel, or by dampening user roll-down input by 0.75x. Either way, the end result would be that the computer scrolls documents the distance people believe they are rolling the wheel rather than the distance they’re actually rolling.
To accomplish this hypothetical user experience innovation, there are three possible implementation approaches. We could seek a hardware-only solution, such as asymmetrical gearing of a perforated light-shield attached to the wheel. We could try an integrated hardware/software solution, such as an algorithm in the firmware of the mouse that outputs normalized data to the computer via USB or Bluetooth. Or we could go with a software-only solution, such as an algorithm in the mouse driver installed on a user’s computer, which performs scroll up/down normalization on raw data provided to the computer by the mouse.
From an end-user’s perspective, it shouldn’t matter whether the normalization is done in hardware, in software or in a combination of hardware and software. And from the perspective of an interface designer, one would expect to be able to protect an invention that takes raw data from human input and causes a computer to scroll “intuitively” irrespective of whether implemented in hardware, software or a combination thereof.
But therein lies our current §101 case law predicament. Assuming the absence of any real prior art (because this is a hypothetical example), I’d expect prosecution counsel to file and fight for the broadest reasonable statutorily viable claims in each of method, apparatus and computer readable medium forms. This would give the patent(s)’ owner the ability to work with licensing and litigation counsel to address future hardware, software and combo infringements in turn (and with minimal divided infringement). A method claim might read something like…
A computer-implemented method of scrolling a document comprising:
a) receiving input based on a change in a user control device, wherein said change is measurable in evenly metered input increments;
b) automatically causing the computer to display a first change in scroll position of a document in a first scroll direction based on a number of input increments along a first user input direction; and
c) automatically causing the computer to display a second change in scroll position of the document in a second scroll direction based on said number of input increments along a second user input direction; wherein the second change in scroll position is greater than the first change in scroll position.
Now, none of this functionality is practically accomplishable by a human in lieu of a physical mouse, mouse firmware or mouse driver. And it certainly isn’t an “abstract idea” otherwise “clothed in computer language.” Here, those are the wrong validation tests.
We could ask if a software solution is alternately accomplishable as a hardware-only solution. In this grossly simplified example, the answer might be “yes.” But what if our user research revealed that the scroll up/down perception to performance ratio varied non-linearly based on a combination of the distance and speed scrolled? Clearly, the solution to that challenge would be reducible to practice in software while being practically prohibitive, if not impossible, in a hardware-only solution. Engineering approaches regularly drift back and forth between hardware and software in accordance with practicality constraints (i.e. trading off cost, performance, time to implementation). But should one fine-tuned user experience technology be less patentable than another because it is only performed in software and not bound to specific machine structure?
Of course not. There are many functions that can only be accomplished in software. So physicality isn’t the right comparative metric either. If it were, mechanical analog “calculators” (e.g. Charles Babbage’s 1820’s motor-driven Difference Engine, Vannevar Bush’s 1920’s shaft and gear Differential Analyzer and the mechanical brains behind World War II-era gun targeting systems) would be patentable subject matter while the software brains of modern spacecraft and guided missiles would not.
User experience designers are motivated to understand people’s needs and figure out the best ways to address those needs in real products (often without concern for engineering details under the hood). As inventors, we’re motivated to reduce to practice solutions that make a real difference in people’s lives. Once upon a time, inventors’ toolkits comprised of metal and wood and glass. Then came plastic and silicon. Today, software is a large percentage of our creative toolkit. It allows us to work independently from hardware platforms to achieve better user experiences and create products with a greater opportunity to change the world. In the case of our scrolling invention example, millions of people could be positively impacted by a downloadable software upgrade.
We all depend on software inventions to make it through the day – from telling time, making phone calls and sharing photographs to steering our cars, moving artificial limbs, reading mail and trading stocks. Everywhere you look, there are general purpose machines that have been transformed by software into new special purpose machines; and special purpose machines that have been transformed by software into improved machines that “did not previously exist.” (Moore Op. at 14)
Logically, those software inventions are what make all the difference and should – to encourage innovation – be claimable property. Not only is it counter-productive to incentivize mechanical arts over electronic arts, but drawing a patent-eligibility line in the sand between hardware and software simply doesn’t reflect the reality of what materially comprises technology innovation in our world today.
It’s time for the courts to join the rest of us here in the 21st century.