US Supreme Court Will Hear Case Re: Standards for Software Patent Eligibility

http://www.scotusblog.com/case-files/cases/alice-corporation-pty-ltd-v-cls-bank-international/

by jakewalker • 13 years ago

156 57 13 years ago

jakewalker• 13 years ago

Because it is not (yet) reflected on the SCOTUSblog page, here is the Order granting certiorari:

http://www.supremecourt.gov/orders/courtorders/120613.zr_4g1...

The actual link above links to a number of amicus briefs urging the court to grant (or not grant) review, and would be good reading to understand the issues in the case.

Links to Coverage:

http://www.scotusblog.com/2013/12/court-to-rule-on-patent-ri...

http://www.reuters.com/article/2013/12/06/us-usa-court-softw...

leeoniya• 13 years ago

can you imagine if every RFC had been turned into a patent where we would be today?

i think this alone should be telling of how every software patent rides on the goodwill of a culture of open source and standardization that has existed for decades (when true innovation was taking place).

it's complete insanity that patents can be granted for inventions which rely so fundamentally on an infrastructure which could have only been built so successfully - and explicitly - without them.

salient• 13 years ago

There were some interesting discussions about the abolition of patents in Europe in the 19th century, that speak to what you're saying:

http://www.techdirt.com/articles/20130503/17414322946/discus...

rayiner8• 13 years ago

A substantial part of the work that resulted in the RFCs happened pursuant to federal funding before December 1980. This is significant because prior to December 1980, the enactment of the Bayh-Dole Act, inventions developed in federally funded programs had to be assigned to the government. Therefore, there was little incentive to patent those inventions.

If the developments had happened today, at MIT, BBN, etc, they would be patented.

malandrew• 13 years ago

Are there any studies that do a deep analysis of the impact of the Bayh-Dole Act? Were there any benefits? If not, is this an act that we should lobby to undo?

baldfat• 13 years ago

There needs to be more money spent on staff at the US Patent Office so they don't just rubber stamp patents and let the courts decide.

1) Something needs to be a true innovation to be a patent 2) The process should take a lot of man hours.

I don't feel either of those things happen due to shortage of staffing and a wild everything is possibly patentable.

bzalasky• 13 years ago

I'm adamantly against software patents, however, when it comes to chemistry patents, I know it's not a rubber stamp process. It can take a couple years to get a patent, and lots of patents are rejected. A lot of the process involves the examiner stripping out claims that are invalid (the parties seeking the patents generally want them to be broader than they really should be).

danielweber• 13 years ago

I've seen software patents get both rejected and approved. It is by no means a rubber-stamp process.

rayiner8• 13 years ago

2) The process should take a lot of man hours.

The intellectual property laws generally reject this "sweat of the brow" doctrine.[1] The idea is, that someone should be able to get a patent for something that results from a flash of insight rather than years of expensive R&D.

I think rejection of this doctrine is a grave mistake as applied to patents. Essentially, it fundamentally misunderstands the nature of innovation in the 21st century. A new invention does not happen because someone has a clever idea one day while mulling over a problem during lunch. That may have been true in the early 20th century and earlier, but it's not true today. Today, invention is driven by research labs staffed by expensive PhDs using even more expensive capital equipment. The purpose of patents in the 21st century is to protect and be able to transact in the results of this capital-intensive R&D.

E.g. Adonit has a new iPad stylus that's 1.9 mm versus the 6 mm typical for iPad styluses (https://adonit.net/jot/script). The capacitive touch matrix on the iPad normally cannot pick up on such a narrow point, so they use some active sensing technology that relies on measuring the electronic field emitted by the capacitive matrix and feeding that back to special software over Bluetooth. For this they have a patent. This was not a flash of insight. This was the result of measuring EM field strength with expensive equipment, buying lots of iPads to test product variability, doing lots of experiments and iterating the design. The purpose of a patent here is to keep companies from free-riding on all that R&D, not to reward anyone for a flash of insight.

By rejecting sweat of the brow doctrine in the context of patents, patent law has become divorced from its underlying economic justification: the prevention of free-riding. The magnitude of the disincentive created by free-riding depends very much on the capital investment that went into the invention.

[1] Sweat of the brow doctrine is more typically used in the context of copyright, but is applicable to a degree for patents as well. The doctrine has opposite effects in the two contexts. In copyright, it has been used to reject copyright-ability for things like phone books that might take work to compile, but aren't "original works." However in patents, it has been used to justify granting patents for "inventions" that weren't a lot of work to invent.

nimble4• 13 years ago

This was not a flash of insight. This was the result of measuring EM field strength with expensive equipment, buying lots of iPads to test product variability, doing lots of experiments and iterating the design.

So what do you think is going to happen if someone else takes the same flash of insight ("use active sensing technology to achieve a smaller stylus"), puts in their own brow sweat to work out the details, and deploys a competing product? Adonit isn't going to sue for infringement, right? And if they do, they won't win. Right?

netfire• 13 years ago

I agree that patents should be unique and novel (and that many patents are issued that are not novel). I disagree on the idea that innovation can only happen through expensive R&D and by experts in labs. Such innovation is useful and should be done and protected, but seems to be more evolutionary than revolutionary. Also, will companies take the time to do the R&D if they can't patent the idea and concept first?

Its important to protect more revolutionary ideas that may be developed by someone in a garage or starting a small company. Patents are supposed to also protect small businesses and individuals with great ideas that don't have the type of budgets you are talking about.

knome• 13 years ago

By rejecting sweat of the brow doctrine in the context of patents, patent law has become divorced from its underlying economic justification: the prevention of free-riding. The magnitude of the disincentive created by free-riding depends very much on the capital investment that went into the invention.

Odd, I had always understood the underlying justification to be the establishment of free-riding. In return for a temporary monopoly, everyone would be able to use the same superior technique.

AnthonyMouse4• 13 years ago

I agree that allowing independent invention to be a defense to patent infringement would solve almost all of the problems we see with software patents. But it seems to have some different trouble.

If you allow competitors to use the invention if they pay the cost of duplicating the research, you cap the value of the patent at the cost of doing the research rather than the value of the result in the market, because anything more than that and you cause competitors to [band together to] duplicate the research rather than paying you for a license. In general this is a good thing because monopoly rents are bad, and it allows the original party to recover their costs by licensing without allowing inefficient monopoly rents in excess of the original cost. The trouble seems to be that it doesn't provide an incentive to actually be the one who does the original research, because if the research pans out then you can only recover up to the cost of duplicating the research, but meanwhile you have to take the risk of the research not finding a solution.

The other trouble is, how do you prove or disprove independent invention after something is published?

asabjorn• 13 years ago

I think a bigger problem is that a well-funded entity can keep resubmitting rejected patent applications for re-examination. I think there needs to be a limit on how many "appeals" you can get.

From what I have heard, and this might be wrong since I am no expert on the matter, re-examinations creates a perverse incentive for patent-examiners to accept patents since their job-performance is rated on how many patents they process.

twoodfin3• 13 years ago

IANAL, but I'm surprised by the EFF's amicus brief. A large portion of it is an enumeration of the deleterious effects of NPE "trolls", but from my understanding of the case, it's purely about establishing better guidance on what is or isn't patentable under section 101. SCOTUS seems unlikely to be moved by the pain caused by NPE's, when Congress could readily change how patent infringement or licensing works for PE's vs. NPE's if they considered it a serious problem.

Obviously they still got the cert, though not of the particular case they wanted.

I'm interested to hear how some of the much brighter legal minds on hn would handicap this case. My uneducated guess is that the patentability of software will largely survive, but the Court will try to formulate a test designed to exclude claims that would be clearly too abstract were they not "instantiated" on a computer. Something like the Amazon 1-click patent would probably survive, while the Alice patents would not.

tesseractive• 13 years ago

Justices like Breyer often reference data about the positive or negative effects of an interpretation of the law in their decisions.

WildUtah2• 13 years ago

Last time the patentability of business methods came around was 2010's Bilski v. Kappos case [0]. Software was discussed as a related matter.

The Supreme Court rejected any specific test as dispositive for patentability. The Court of Appeals for the Federal Circuit [1] had advanced a "machine or transformation" test as the standard for abstraction and unpatentability. That test would have required that a patent specify a specific machine or a transformation of a form or state of matter somehow in order to be sufficiently concrete. It was a vague test that would have allowed almost anything not as awful as Bilsky's application, which essentially claimed various century old hedging strategies whenever implemented on a computer.

The Supreme Court ruled 9-0 that the test was an indicator of abstraction but not definitive. It also ruled 9-0 that Bilsky's patent was garbage.

The patentability of business methods in general was discussed in the opinions. The great John Paul Stevens [2] wrote the dissent in Diamond v. Diehr [3] thirty years prior explaining why and how software patents were terrible and should never be allowed, but only gained four votes. He wrote an opinion explaining again why software patents should not be allowed and gained four votes again in Bilsky in a court where every member but him had been replaced in the interim.

Unfortunately Stevens is retired (it's well earned -- he's 93) and the leading intellectual property expert on the court is now Breyer. Breyer wrote the dissent against effectively permanent copyright terms in Eldred v. Ashcroft. Sotomayor and Ginsberg have also been in the Stevens camp on patentability. New Justice Elena Kagan usually votes with those three. So we can hope for four votes for software freedom once again.

There were also four votes in Bilsky for patenting software, though not with any visible enthusiasm. They were Roberts, Alito, Kennedy, and Thomas.

Finally Scalia refused to join just one opinion and split between the two without addressing the serious ongoing questions of patentable subject matter. So the final tally was 4-1-4.

The CAFC split 5-5 on the Alice [4] case the Supreme Court just decided to hear. The split was similar to the Supreme Court in Bilsky and did not resolve any simmering issues because of the even split.

Note that even the Google and EFF briefs on the Alice case didn't suggest outright abolition of software patents at the CAFC. Justice Stevens may have seemed like a lonely crusader by 2010. It may be that the enemies of our industry have gained so much power in Washington and the patent bar that the best we can hope for is a slow, slow rollback. Certainly there are a lot of people making billions without the trouble of actually building anything who can spend their efforts to keep the racket going. Without the need to make things, they can lobby full time to continue getting rich at the expense of innovators and startups and the public through software patents.

The most likely result here is a 4-1-4 split again, unless a new way to appeal to Scalia can be found. Real progress from the Supreme Court probably requires a new justice; the current pattern indicates that pragmatic Democratic appointee is much more likely to abolish software patents and a movement Republican appointee is most likely to definitively endorse them, but individual justices can always assert their own visions once appointed.

[0] http://en.wikipedia.org/wiki/Bilski_v._Kappos

[1] http://en.wikipedia.org/wiki/John_Paul_Stevens

[2] http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_...

[3] http://en.wikipedia.org/wiki/Diamond_v._Diehr

[4] http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA)

twoodfin3• 13 years ago

From the tilt of your comment, I assume you think that a properly constituted, wise SCOTUS would rule software patents unconstitutional, or more likely in violation of statute. What's the short case for that? I don't see how my black box with some novel capability becomes un-patent-worthy as soon as I replace the gears and levers inside with a digital computer.

not_that_noob• 13 years ago

I doubt they would even go that far. It would take a very strong overpowering argument why software is an abstract idea, one that has not been argued before in the many cases that touched on software patents. I think they will make a modest attempt to make things more clear cut, but given the history of such cases in lower courts, there is a decent possibility that they will make it more cloudy in the attempt. And given the uncertainty and the absence of a strong new argument, the natural lean is not to upset the status quo of the thousands of issued software patents. So much ado about nothing in the end.

chalst• 13 years ago

The EFF said that the Federal court had been influenced by possible negative consequences of mass invalidation of patents [1]: Warning of a 'free fall of the patent system,' Judge Moore wrote: 'Let’s be clear: if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.'

Clearly they are concerned to reduce the force of this kind of argument on SCOTUS.

[1] https://www.eff.org/deeplinks/2013/05/whats-stake-cls-bank-s...

shmerl• 13 years ago

So this is about functional claiming in patents?

xutopia• 13 years ago

That class action lawsuit is horrible... 23andme is awesome and I love having it. I never felt cheated or any of that because I read it carefully.

dragonwriter• 13 years ago

Reading it carefully doesn't help if the information provided isn't accurate.

US Supreme Court Will Hear Case Re: Standards for Software Patent Eligibility

Related Stories