Supreme Court Rejects Software Patents On Performing Generic Functions; Pretends That Lots Of Other Software Must Be Patentable
from the a-step-in-the-right-direction dept
For a few years now we’ve been covering a key software patent case, Alice v. CLS Bank, which was another chance to show that pure software patents shouldn’t be granted. As you may recall, four years ago, the Supreme Court got to tackle the question of software patents in the Bilski case, but chose to punt instead, rejecting that particular patent, and arguing that the specific test that everyone relied on shouldn’t be the only test — but otherwise leaving a lot of confusion in its wake. It did help dump a few software patents, but left the wider question pretty open.
We had hoped that when the Supreme Court agreed to hear the Alice case it wouldn’t miss another chance to actually add some clarity to what is and what is not patentable. It seemed like the perfect opportunity. As you may recall, the original appeals court (CAFC) ruling was a complete disaster, with 135 pages of different opinions — with only one single paragraph having a majority view, rejecting the specific patent. But no one could agree on why or the larger questions.
It was as if CAFC were practically begging the Supreme Court to provide clarity and guidance.
Unfortunately, the Supreme Court didn’t really do that. It technically “upheld” the CAFC ruling (that one paragraph) rejecting the patent (which basically covered a computerized escrow service) as unpatentable subject matter. It further makes clear that merely taking an abstract idea and doing it “on a computer” doesn’t make it patentable. That’s all good… But, while three Justices (Sotomayor, Ginsburg and Breyer) hoped the court would go further and basically say that business methods weren’t patentable at all, the rest simply wouldn’t go along with that, saying that “many computer-implemented claims are formally addressed to patent-eligible subject matter,” but never giving any examples.
Instead, it notes that you can’t get a patent if each step claimed in the patent “does no more than require a generic computer to perform generic computer functions.” Except, uh, many people will point out that’s all that software does. That’s basically how software works, but the Justices don’t seem to recognize that. So, it’s a bit of a conundrum. The court says many software patents are perfectly good because they apply to patent-eligible subject matter, but that if the claims do no more than require a generic computer to perform generic computer functions, it’s not patentable. You could read that to mean that basically most software patents are no longer allowed, but… that’s going to involve an awful lot of wasted litigation to teach a bunch of courts, including the Supreme Court, that basically all software involves generic computer functions.
Part of the problem is that, like many non-technical people, many of the Justice seems to think that software is a lot more than it really is. They seem to think that there’s some magic in software that goes beyond just a bunch of instructions for a computer to follow. So, now they’re saying that just taking some ideas and telling a computer to follow instructions to implement that idea is not patentable… but they still argue that there’s plenty of software that is patentable. So it’s… still really punting on the issue, in part because the Justices don’t seem to understand software.
The court relies a lot on two other big recent rulings which we’ve covered — the Mayo ruling that rejected medical diagnostic patents and the Myriad Genetics ruling that struck down gene patents, but doesn’t quite go as far with software and business method patents. Instead, it sorta half rejects software patents, kinda, without going as far as it needs to go. As some folks are pointing out, the language used in the ruling is “going to tie folks in knots” as they try to figure out what it means.
In the long run, this may be a very important ruling. It’s easy to read this ruling to basically reject a very large number of software patents. But, because of the unfortunately all-too-common nature of the Supreme Court semi-punting on clear decisions on this particular issue, it’s not entirely clear where this ends up, meaning that there’s going to be a lot of patent litigation citing this ruling, with both sides seeking to tap dance around the language choices. And that just means a few years down the road, it’s quite likely that we’ll be back here again, with the Supreme Court asked to decide, once again, whether or not software and business methods are really patentable.