Three Things from SCOTUS Oral Argument in Alice v. CLS Bank
On Monday, March 31, 2014, the United States Supreme Court held oral arguments in the much-anticipated software battle between patentee Alice Corporation, the petitioner, and CLS Bank, the respondent who was victorious below thanks to an equally divided Federal Circuit.
Oral arguments are but one piece of the overall puzzle, so we can easily make too much of their importance, but they are the only way the concerned public can see behind the curtain at the Supreme Court. By many accounts, oral arguments are the least significant piece of the puzzle with many, if not most, Justices relying most heavily on the briefs. Indeed, during oral argument, Justice Breyer specifically stated that he had read each of the amici briefs, which seems a near herculean task given the number of other cases the Supreme Court considers and the sheer volume of briefs filed in this case.
Even with oral arguments being less important than they may seem, there will be all kinds of attempts to predict what the likely outcome will be based on this sneak peek. Of course, it is impossible to know how a Justice will decide based on the questions asked during oral argument. Case in point — did anyone think the Chief Justice would rule in favor of Obamacare? But for now, the oral argument transcript is all we have to rely on. So with that in mind, here are three things that piqued my interest during the oral arguments.
What’s the Harm in Allowing Software Patents?
As many of you undoubtedly already know, the United States Supreme Court will soon decide whether software is patent eligible in the United States. The fact that such a question needs to be addressed in the year 2014 would be comically funny if it were not so tragically sad. Software has been patented in the United States since 1968, which means software has been patentable in the United States for the last two generations. Yet the Supreme Court is poised to decide whether software is or should be patent eligible in Alice v. CLS Bank, which will be argued to the Court on March 31, 2014.
What is the harm in allowing software patents? Saying that software is not patentable subject matter is akin to saying that a car battery is not patentable subject matter. No one could seriously argue that a new and non-obvious car battery would not be patentable subject matter. In fact, that is exactly what many researchers are trying to find right now, albeit not the same type of car battery that we are used to inserting under the hood.
Any car is itself just a bunch of pieces of metal that sit there fastened together to create a tangible shell that has taken on an identifiable structure. The car has lots of potential, but without some kind of fuel it doesn’t even have potential energy. It merely has potential to move from place to place under appropriate conditions. A car without a battery isn’t something that is useful in any real world sense of the word.
03.17.14 | Patent Issues, software patents | Gene Quinn
Concrete and Tangible is the Right Test for Patent Eligibility
In 1998, the United States Court of Appeals for the Federal Circuit, in State Street Bank & Trust Co. v. Signature Financial Group, Inc., did away with what had previously been come to be known as the business method exception to patentability. The Federal Circuit, per Judge Giles Sutherland Rich (shown left), pointed out that the business method exception had never been invoked by either the Federal Circuit or its predecessor court, the CCPA. Judge Rich explained that “[s]ince the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”
Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. Simply stated, in order to have a patentable business method, it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patent eligible, it must produce a “useful, concrete and tangible result.” Judge Rich was correct to point this out and the Supreme Court has made a horrible mess of the law as it applies to business methods and computer-implemented innovations because it fails to understand what Judge Rich really meant.
If you really understand what Judge Rich meant by “useful, concrete and tangible result,” you come to the inescapable conclusion that it is the appropriate test. Indeed, those drafting patent application would do well to really target the description of the invention to satisfy the test.
02.3.14 | Business Method Patents, CAFC, Patent Issues, posts, software patents | Gene Quinn
Yahoo! Gets Fantasy Sports Software Patent
Online fantasy sports games, such as fantasy football, baseball, hockey, golf, and automobile racing, are extremely popular. In fact, this past weekend marks the start of the playoffs in my fantasy football league. Unfortunately, I did not make the playoffs this year. Darn injuries and under-performing “superstars”!!!
In any event, it is not at all uncommon to file fantasy sports related patents and patent applications. I myself have had occasion to draft a patent application (soon to be allowed) on a fantasy sports invention. So, a fantasy sports-related patent or application always grabs my attention.
If you are not familiar with fantasy sports, allow me to provide a bit of a primer. A user creates a fantasy team comprised of players that are associated with real-life players. The user’s fantasy team may compete against fantasy teams of other users, with specific scoring rules. When your player does something good, such as scores a touchdown or kicks a field goal, positive points are scored. When your player does something negative in real life, such as an fumble or throws an interception, points are subtracted.
12.2.13 | Patent Issues, posts, software patents | Gene Quinn
The Tangible, Mechanical Nature of Software
Recently U.S. Patent No. 8,515,829 (the ‘829 patent) came to my attention. It is a patent issued to Google, titled Tax-free gifting. See Google Patents Tax-Free Gifting. The invention is interesting in its own right, but as I reviewed the patent, Figure 14 really caught my attention.
Figure 14, together with the associated textual discussion, is interesting because it shows rather conclusively that “software” can be described in mechanical terms. That is something that those familiar with software have always known, but it’s a nuance missed by many of the critics and judges who believe software is wholly disassociated from anything in the tangible, mechanical world.
Figure 14 from the ‘829 patent is shown below.
09.26.13 | Patent Issues, posts, software patents | Gene Quinn
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04.8.14 | Patent Issues, software patents, Supreme Court Cases | Gene Quinn