No, Judge Mayer Did Not Just Put an End to Software Patents

No, Judge Mayer Did Not Just Put an End to Software Patents

The last post on this blog ended optimistically, reading “[i]t’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software”. It appears that the first half of that sentence is correct; the Federal Circuit, the court with exclusive jurisdiction over appeals from trial court judgments in patent cases, has gotten much more involved in conducting § 101 analyses. However, the hope that these cases would shed light on what is required to patent business methods and software appears to have been a longshot. For the past few months, the Federal Circuit’s opinion in Intellectual Ventures I LLC, v. Symantec Corp. has been making its way around the internet (even Reddit appears to have gotten a slice of this action), and at a glance it doesn’t look good for software patents.

Three decisions were mentioned in our last blog post, Enfish, Bascom, and McRO. Enfish was heard by Judges Moore, Taranto and Hughes; Bascom by Judges Newman, O’Malley and Chen; and McRO by Judges Reyna Taranto, and Stoll. Some of you may already see a problem forming here in that these three cases, which we’ve previously identified as being important recent cases for elaborating on the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, were all heard by different three-judge panels, the only overlap being Judge Taranto’s involvement in McRO and Enfish. A split among judges on a panel can create confusing, and often contradictory, rulings issued by the Federal Circuit in matters of nuance such as patentable subject matter.

So what’s got the internet so flustered? A concurring opinion written by Senior Federal Circuit Judge Mayer in Intellectual Ventures I took the position that Alice was the death of software patents and that it’s time to recognize it as such. Judge Mayer made “two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent”. A number of blogs and legal news websites have posted excerpts from Judge Mayer’s concurring opinion to highlight its finer points. But what is often not mentioned explicitly in the commentaries is that Judge Mayer’s concurring opinion is not binding precedent. The binding precedent in Intellectual Ventures I is the majority opinion written by Judge Dyk, which concluded that all three patents-in-suit were invalid under § 101 as claiming patent-ineligible subject matter. The third judge on the case, Judge Stoll, who also heard and joined the majority opinion in Enfish, issued a partial dissent arguing that one of the three patents-in-suit claimed patent-eligible subject matter under § 101. In the majority opinion in Intellectual Ventures I, The opinions of Judge Dyk and Judge Stoll relied on precedent from Bascom, although they reached remarkably different conclusions when it came to one of the patents. Only Judge Mayer’s opinion, which again is not binding precedent, contained this broad assertion that software patents in generally are patent-ineligible.

Why has this opinion in Intellectual Ventures I gained so much attention then, if no court actually has to follow it? The plainest reason is that software patents are a hot topic in IP law, and no judge on the Federal Circuit has expressed such a strong opinion against their patent eligibility. Judge Mayer has a long history on the Federal Circuit, and was even the court’s chief judge from 1997-2004. Coincidentally, this period is when the Federal Circuit first began to tackle software patents, and those patents were given broad support by the Federal Circuit. Judge Mayer’s opinion was also noteworthy because of its assertion that the First Amendment precludes the right to patent anything “constricting the essential channels of online communication”. This First Amendment assertion presents an entirely new aspect of the § 101 analysis.

Although Judge Mayer’s concurring opinion in Intellectual Ventures I is interesting on an academic level, it perhaps unintentionally highlights the problem with the Federal Circuit’s interpretation of the Alice decision to date, namely, the judges do not, and maybe cannot, agree on how Alice should be applied or even how to apply their own precedent to questions involving patent eligibility. So depending on which three-judge panel hear a case, the outcome is based more upon the judge’s individual inclinations regarding patent-eligibility under § 101 rather than the reliable application of the court’s precedents. This leaves the lower courts with two options: (1) struggle to follow the Federal Circuit’s inconsistent precedent and apply a loosely defined framework of the two-step Alice analysis, or (2) encourage the Supreme Court to explicitly define what constitutes an “abstract idea” and what constitutes the “something more” to establish patent eligibility, so that in future cases the Federal Circuit can actually do its job. We can only hope that the Supreme Court will agree to hear a § 101 case again soon and clarify how software and business method patents should be analyzed for patent-eligibility. For now, Judge Mayer’s opinion in Intellectual Ventures I should be considered a catalyst for resolving the confusion and inconsistencies brought about by the Supreme Court’s ruling in Alice.

Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

35 U.S.C. §101 is the statute that addresses the basic question of “is this invention the type that is patentable.” Lately the USPTO and the courts have had trouble answering this question consistently. We’ve discussed the decision in Alice repeatedly, and why its lack of clarity on what constitutes an “abstract idea” has made the prosecution of patents for software, business methods and other less tangible inventions a challenge. However, a series of recent court decisions have shed some much needed light on Alice’s two-prong test and how to avoid and fight §101 rejections.

The first case, Enfish, LLC. v Microsoft Corp., dealt with the first prong of the Alice test: namely whether the claims are directed towards an abstract idea. In Enfish, the Federal Circuit reversed a district court ruling that the claims in a patent about data organization were “invalid as ineligible under §101”. Enfish had sued Microsoft for infringement of two U.S. patents, 6,151,604 and 6,163,775. These patents cover a “self-referential” data table model for storing information. In its reversal the court pointed to two features that made the invention distinct from traditional data systems. In particular, the court pointed out that the model in question “can store all entity types in a single table, and . . . can define the table’s columns using rows in that same table.” These features provide a number of advantages over traditional data structures from a technical standpoint and the net result is that data can be accessed and modified more quickly by a computer when it is organized this way. The Federal Circuit applied a test for patent eligible subject matter that asked “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” The Enfish patents were found to be “directed to a specific improvement to the way computers operate”, and thus were patent eligible. The improvements over the prior art made the computer operate more efficiently, improving the ability of the computer to perform a task, rather than the invention simply being improving the performance of a task by using a computer.

Another recent case, Bascom Global Internet Service, Inc. v. AT&T Mobility LLC, dealt with the second prong of the Alice analysis: if the invention involves an abstract idea, does it deal with “something more”.  In Bascom, the patent holder claimed infringement of Patent 5,987,606, which is directed to a means for filtering internet traffic. The district court had found the claims ineligible under §101. The Federal Circuit reversed, holding that while the invention involved an arrangement of known elements in internet filtering, the elements were arranged in a non-conventional way. The filtering tool was installed at a specific, upstream location for internet traffic. Although filtering “content on the Internet” is an abstract idea, the ‘606 patent recited more than simply implementing this idea on a generic computer with a predictable result.

In a third case, McRo, Inc. v. Bandai Namco Games America Inc., McRo sued for infringement of U.S. Patents 6,307,576 and 6,611,278 which are directed to a method for synchronizing animated lips and facial expressions. While facial expressions, audio, and animated lips have been synchronized by software for some time, animators often had to manually insert specialty frames into video sequences in order to make the final product more realistic. Again, the Federal Circuit overruled the district court’s conclusion that the claims of the patent were ineligible under §101, holding that the claimed method did not simply replace the manual process with an automated digital one. Instead, the method improved upon the prior art by proposing rules for altering animated frames in areas where only animators had previously been able to operate.

These rulings, while not a complete clarification of the Alice standards, are a promising start. They provide paths for overcoming §101 rejections, and give further clarification to the Alice analysis. Using this information, patents can be drafted with a better chance of avoiding, or least overcoming §101 rejections. It’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software.

Welcome Josh Denison!

Corridor Law Group is delighted to welcome its new technical specialist, Josh Denison. Originally from Duvall, Washington, Josh holds a Bachelor of Arts in Astrophysics from Ohio Wesleyan University and a Master of Science in Patent Law from University of Notre Dame, where he learned the fine points of the U.S. patent system and best practices in preparing and prosecuting patent applications to allowance and grant. Josh has experience in drafting and prosecuting patent applications in several technical disciplines, particularly in the electrical and mechanical arts. He also brings specialized knowledge in a variety of technical fields, including optical systems and internal combustion engines. Josh is passionate about delivering high quality services to our clients to assist them in protecting their valuable inventive concepts. Josh’s passions include anything with a V8 engine, playing his Stratocaster, brewing beer and long distance running. Josh can be reached at 425-773-5338 or via email at jdenison@corridorlaw.com.

Section §101: Abolish This Troubling Statute in Patent Law?

Section §101: Abolish This Troubling Statute in Patent Law?

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 101 (Section §101)

As we’ve discussed before, Section 101 is one of the most basic and yet has become one of the most troubling statutes in patent law. While at first glance §101 appears broad, the “judicial exceptions” established in Bilski and expanded upon in Mayo, Myriad, and Alice have greatly limited what judges, (and as a result examiners) regard as patentable subject matter and not simply as “abstract ideas”. Determining what counts as “abstract ideas” has become so exceedingly difficult that some commentator have argued that the patent system is now broken.

Recognizing the predicament that many patent lawyers and patent owners now find themselves in, Dave Kappos, the former director of the USPTO, has proposed a rather eloquent solution to the §101 conundrum: simply drop §101 from the books. Speaking at a Federal Circuit Judicial Conference, Kappos called for Congress to “to abolish Section §101.” Kappos pointed out that many countries, including countries in Asia and Europe, do not have parallel provisions and yet “seem to be doing just fine in constraining patent-eligible subject matter”. To be fair, Kappos is not the first to suggest that §101 be abolished. Similar arguments were made by Eli Lily Co. in an Amicus brief for Ariosa v. Sequenom.

Supporters of abolishing §101 point out that it would help alleviate the mess the Supreme Court has made of software patents.  Furthermore, there is the argument that it makes economic sense. Much of the subject matter deemed unpatentable under Alice is still protected in many foreign countries, which may lead many companies to move their research and development departments out of the U.S. By removing §101 and allowing patent protection in the United States for inventions which are protected abroad, the U.S. would be signaling to companies that the country still values innovation.

However, the abolishment of §101 would not be without its own challenges. Foremost being what becomes of all the patents which were recently invalidated under §101. Would/could these patents be reinstated? If they are reinstated, what becomes of the businesses that moved forward believing the patents would remain invalid? Could owners of the now reinstated patents shut down these business or would the courts force compulsory licenses? As one can see, even fixing an arguably bad law is not without unforeseen consequences.

In summary, Kappos’ proposal is a possible, although unconventional, solution to the legal challenges now faced under §101. With many other statutory provisions acting as hurdles to obtaining a patent, perhaps §101 is causing more harm than good.  Nevertheless, lawmakers (and judges) need to tread lightly when making any modifications to the legal framework that governs patents.  Creating stability in patent law is often as important drafting good statutes.  Companies can and will adapt to consistent laws (even if the laws are consistently bad). What companies cannot prepare for, and what would cause them to abandon the patent system, is unpredictability.

April Fools Day

Welcome to April 1, the internet’s unofficial celebration of click bait titles and hoax articles. Over the years we’ve come across some interesting patents, and in the spirit of April Fools Day, thought we’d share some of the funnier ones.

 

Santa Claus Detector

The “useful” hurdle of 35 U.S.C. 101 isn’t all that difficult to clear when you consider U.S. Patent 5,523,741, for a “Santa Claus Detector” which describes “a children’s Christmas Stocking device for visually signaling the arrival of Santa Claus by illuminating an externally visible light source”. Our initial impression was that this device was a stocking that employed a pressure sensitive switch, remotely setting off a light to alert that child that Santa was actually present. Instead, there is a chord attached to a switch in the stocking, which “Santa” “accidentally” pulls on his way out. This lets the child know that Santa had arrived during the previous night. Perhaps some children need lights (in addition to the myriad of oddly shaped objects stuffing the stocking) to signal the arrival of Santa Claus, though we have yet to meet one.

Anti–Eating Face Mask

Our next contestant is 4,344,424, the “Anti–Eating Face Mask.” Patented in 1982, this head restraint with a grill over the mouth looks like a medieval torture device that’s been anachronistically repurposed. The grill is designed to prevent the user from eating, however the design disclosed in the drawings would tend to indicate that a dedicated user could simply eat foods with a narrow cross section. Maybe this where they got the idea for Hannibal Lecter’s famous mask in Silence of the Lambs.

User-Operated-Amusement-Apparatus-for-Kicking-the-Users-Buttocks

User-Operated Amusement Apparatus for Kicking the User’s Buttocks

Finally, and definitely our favorite, is the “User-Operated Amusement Apparatus for Kicking the User’s Buttocks” (6,293,874). Essentially, this is a self–powered “kick in the butt” machine, which we can only assume is a masochistic substitute for morning coffee.

Bottom line, the patent office doesn’t have an “absurdity” standard you have to overcome. No matter how unusual or insane your idea is, we can help you protect it.