Court Ruling Opens The Door To Rejecting Many Software Patents As Being Mere 'Mental Processes'

from the nice-to-see dept

Well, this is getting interesting. Last year, when the Supreme Court ruled very narrowly in the Bilski case, without making any explicit statement (as precedent) on overall software or business model patents, many people were frustrated. Here was a situation where the Supreme Court could have drawn a much clearer map, but it declined to do so. Of course, we wondered if this would just mean that another case would have to make its way to the Supreme Court to get a clearer ruling on software patents. In effect, with Bilski, the Supreme Court basically said "this one test you use is fine, but it's not the only test." It didn't say what those other tests should be, but basically left it up to the courts to decide. However, it did reject the specific Bilski patent for being an "abstract" idea, saying that this was not patentable under Section 101 of the Patent Act.

What's been interesting is that this seems to have emboldened a few judges to apply new or different tests (with clear reasons and caselaw for why they do so)... and some of this is leading to more software patents getting rejected. In a new ruling at the Federal Circuit appeals court (CAFC), the court appears to open up a potentially broad path for rejecting all sorts of bad (mostly software) patents by deciding that the Supreme Court's Bilski ruling might not have been so narrow after all.

The specifics are pretty down in the patent law weeds, but the key thing is that the court, as the Supreme Court did in Bilski, uses Section 101 of the Patent Act to invalidate some patent claims. This gives the court pretty broad leeway in how patents can be evaluated under that section -- again by claiming that they're merely "abstract ideas," not patentable under Section 101. Most rulings on patent validity focus on obviousness, prior art or whether or not it meets the basic fundamental rules for how a patent is written. But by opening up Section 101 to wider scrutiny, the court is making it much easier for other courts to reject patent claims, and the court is suggesting that this is a reasonable approach as an alternative test under the Bilski ruling. Basically, CAFC is turning the narrow Supreme Court ruling into a much broader one, and saying to the USPTO and courts that patents on "abstract ideas," broadly defined, should be unpatentable... and then noting that many "software" ideas may be merely abstract ideas.

It seems like perhaps CAFC is getting the message that there are a ton of bad software patents out there, and using Section 101, it's just made it a lot easier for the USPTO and the courts to dump a lot of those patents. All the USPTO or courts have do now is show that the software claim is nothing more than an abstract idea. In this case, the claims in question concerned a patent from CyberSource about doing fraud prevention online by matching your transaction information to your IP address to see if that IP was an indication of potential fraud. As the court noted, there's nothing about doing such a comparison that is anything more than an abstract idea, and, in fact, you don't need a computer or anything to do this at all. It could just be done by a human being and thus, it's not patentable under Section 101. Specifically, the court is rejecting it as a mere "mental process."
It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind
The court further clarifies the ability to reject bogus software patents by dismantling the usual attempts to make a software patent seem legit by saying it happens "on a computer." Basically, it finds that taking a "mental process" or abstract idea and merely having it happen on a computer is not patentable.

This is potentially a big deal, though you have to imagine it will be appealed. When the Bilski ruling came out, we expected another software patent question would eventually reach the Supreme Court, and this could be an interesting one if the Court decides to take it. In the meantime, though, the USPTO and district court should be on alert that they have pretty broad leeway in rejecting software patents if they're really just "mental processes" not patentable under Section 101 (even if they're done on a computer).

Filed Under: abstract ideas, bilski, mental process, patents, software patents
Companies: cybersource

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  1. icon
    nasch (profile), 29 Aug 2011 @ 10:17am

    Re: Re: Re: Re:

    You're ignoring the possibility of research and development that wouldn't happen without the possibility of patents. That is the premise the entire system is based on. Whether patents have the net effect of holding back progress is a matter of fact, not a matter of definition. I believe that they do, but it can't be determined just by considering what a patent is.

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