Since the United States Supreme Court issued its decision in Alice v. CLS Bank, I have been arguing that the decision would have far reaching implications for software patents. Initially, many were skeptical, and surprisingly many still are, even with the Patent Office issuing Alice rejections like they are candy at Halloween, with the Federal Circuit invalidating software claims in case after case citing Alice, and with the PTAB likewise finding software patent claims of all types invalid. There is no doubt that things are different and a great many issued software patents and pending software applications will be worthless. Sure, moving forward, we have ideas about what needs to be in the disclosure, but you cannot add new matter to an application or issued patent, and software patents are now all about the technical disclosure.
Against this backdrop of disbelief and denial, I spoke with Professor Mark Lemley on August 28, 2014. Lemley shares my view, for the most part. I published our entire interview on IPWatchdog.com, The Ramifications of Alice: A Conversation with Mark Lemley. What follows are some of the highlights of our conversation.
Lemley on how significant a change Alice represents:
Well, I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software,” so it doesn’t really change anything, but I honestly think that’s wishful thinking. Here’s what it seems to me Alice does that’s significant: The first thing it does is it makes it clear that Mayo wasn’t a one-off thing, but rather is the fundamental test going forward for all kinds of patentable subject matter issues. I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea, we want proof of an inventive concept beyond that idea before we’ll grant you a patent. You’ve got to add new steps or new hardware, not just conventional hardware or conventional steps. Not just computer technology that is generic or functionally described. And if you can’t do that, not only your method claims but also your article of manufacture claims are going to be invalid.
Lemley says he doesn’t think all software patents previously issued are in jeopardy, but many are:
LEMLEY: Yeah. I don’t think it’s all software patents, but I guess what I would say is a majority of the software patents being litigated right now, I think, are invalid under Alice. And certainly the claims that are being asserted. If you look at the actual claim in Alice, it’s got a long series of steps. But that doesn’t prevent it in the Court’s mind from being an abstract idea. It’s got hardware implementation and computer technology, but that’s not enough. The Court seems to think if I’ve actually got improvements in the operation of the computer itself, if I have a claim that is to an improved computer program or way of programming, maybe that’s patentable. But a lot of the claims that were written particularly during the 1998 to 2008 period when there was no patentable subject matter restriction, I think are vulnerable under this test. And I think you’re starting to see the confirmation of that if you look at the Federal Circuit decisions in Digitech, their most recent decision in Planet Bingo and the Board’s decision in the US Bank Corp. case. There are a bunch of claims that I think we would have looked at five years ago and said, well, these are run-of-the-mill claims in the software industry. And the Court said, yeah, that’s just an idea implemented in a computer and that’s not sufficient.
Our discussion about the importance of means-plus-function claiming moving forward:
LEMLEY: I think that’s exactly right. I argued in a paper last year that we were going to run into a problem with functional claiming, with claiming the idea or the outcome achieved in any way. And that the right thing to do was to look at those claims as means-plus-function claims and to go in and look for the specific technology. It may be that whether we do it through the route I argued, or whether you explicitly write a means-plus-function claim, that the safest thing to do in the wake of Alice is actually including means-plus-function claiming to get some of that technology into the claim. That may be the way to survive 101. Now, that is going to mean that your claims are narrower. And that’s why people never liked these claims in the past, but it may be as the future of software claims. If you really did do some programming, that will survive, but will survive in narrowed form, because they’re more specifically targeted to the algorithms than the general approaches you actually took. And as you said, that’s still speculation. We don’t know for sure.
QUINN: Yeah, I understand and appreciate you speculating with me. I’m intrigued to hear you talk about means-plus-function claims because I’ve thought now for a little while that means-plus-function claiming will come back in vogue as the result of Alice. But you know the minute that you suggest that patent practitioners write means-plus-function claims, they look at you like you’ve got three heads and that you obviously don’t know what you’re talking about, because the perception is that means-plus-function claims are so limited and they’re garbage. And yeah, I’m not going to dispute the fact that they are limited. But you might as well have a couple of them, right? The near universal reality is that the client is going to run out of money long before you as a patent attorney run out of the ability to write more claims. So why not have a couple means-plus-function claims? At least that way you have coverage for the full disclosure and equivalents in the specification. But when I teach means-plus-function claiming, I always tell students they have to treat them like a real heavy garlic – a little bit gets you a long way. And I’ve never been afraid to include some, and I think it forces you to have a real robust disclosure, if you are even going to consider such a claiming technique. So I’m starting to hear more and more people make that argument you just made and, boy, what a change that represents from where we were a few years ago.
LEMLEY: Oh, that’s absolutely right. Although it’s funny how these things kind of go in waves. I went back and looked at the first edition of the Rob Merges patent casebook, which was published in 1992. Rob had been a patent practitioner in the 80s and he had a statement in the book that said something like “make sure you include some means plus function claims because those are really broad.” And I went to Rob and I said, well, what are you talking about? Everybody tells me exactly the opposite. But I think, in the 1980s, before we were expressly doing claim construction, having that “equivalents thereof” safety net made some people think this is a claim that’s going to protect me better than trying to specify all of the components of the claim itself. We may be going back to the world of the 1980s…not only the patentable subject matter world, but maybe also in claiming and means-plus-function claims.
I still remain convinced that Alice will continue to be a thorn in the side of the industry for some time to come. Between the Supreme Court’s jurisprudence in Mayo and Myriad, and the decision in Alice, the software industry and biotechnology sector will take a significant hit. This will create problems for the U.S. economy because the availability of patent rights is a prerequisite for a high-tech economy.
Tags: Alice v. CLS Bank, computer software patents, Mark Lemley, patent, Patent eligibility, patentability, patentability requirements, patents, software patent, software patentability, software patents
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