Key Case About Software Patents May Hinge On How You Define 'Significantly More'

from the who-did-what-now dept

Last year, we wrote about the next important lawsuit concerning software patents, the CLS Bank v. Alice case, which the full Federal Circuit appeals court (CAFC) heard today. Our last post on the case provided the background, but the short version was that it involves some software concerning doing a "shadow transaction" to see if there are really enough funds to complete a transaction, before completing the actual transaction. The district court found that this was just a representation of an abstract idea, and thus not patentable. CAFC, using a typical three judge panel, reversed that decision, saying that it was patentable subject matter. However, CAFC agreed to rehear "en banc" with the entire 10 judges, because there was some concern about the original ruling (which was split 2 against 1).

I've spoken to two people who were at the hearing this morning, and some other reports are trickling out as well. As always, what gets covered in the oral hearings is not always as indicative of how the court will rule as many people hope. Often times, what is discussed in the hearing may end up being a side item in the eventual decision, which considers a lot more information, usually from the various briefs filed by the key parties and amicis (friends of the court). And this case had a lot of "friends" on all sides. If you'd like to understand the full arguments, the Patent Progress blog has a good summary of the arguments.

Either way, lots of folks recognize that this is a key case for software patents and apparently there was a packed house, with lots of patent lawyers and Patent Office folks in attendance. There was plenty of discussion concerning what makes something an abstract idea vs. a specific implementation of an idea. Alice Corp. (the patent holder) argued that its patent was really on just a "specific way" of doing such net settlement transactions, but had trouble answering the question of whether or not it was possible to do a net settlement transaction without violating the patent.

One of the key questions that CAFC is supposed to answer in the case is:
What test should the court adopt to determine whether a computer implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
Here, apparently, the parties actually seemed to more or less agree that the "test" is a "significantly more" test -- and whether or not the computers are doing "significantly more" than just speeding up a process that could be done in one's head or with pencil and paper. A lot of this test is built on last year's ruling in the Prometheus Labs. v. Mayo Labs case concerning medical diagnostics patents, and that case was discussed a fair amount during the hearing (though that case involved doing "significantly more" than laws of nature, rather than general computing).

Lawyer Bob Sachs, a patent lawyer from Fenwick and West who was at the hearing today, told me that the "significantly more" test worries him, in that it's not an "objective test" and effectively leaves too much to chance. "It's a way of saying 'we can't figure this out.'" He also noted that the "significantly more" test may favor the idea that this particular patent is legitimate, since the patent in question was much more detailed and involved than your average software patent. That said, in his early handicapping of the field, he comes up with a 5 judge to 5 judge tie, based on their perceived opinions and the sorts of questions they were asking, so he's wondering if it'll end up that way or if any of the judges will swing to the other side.

While Sachs was disappointed that there wasn't a clear attempt to define what constitutes an "abstract idea," I'm not as sure that's an issue. In fact, it almost seems oxymoronic to say that you need a strict definition of an abstract idea. The reason an idea is abstract is just that: it's abstract. But, at the same time, I can understand why patent lawyers would generally prefer a brightline, objective rule that can demarcate what is and what is not patentable. Either way, lots of patent lawyers will be waiting eagerly for this ruling.


Reader Comments (rss)

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  1.  
    identicon
    Anonymous Coward, Feb 8th, 2013 @ 3:43pm

    Who, What, Where, When and How?

    Someone writing code has an abstract idea, does the code bring up the idea, the coding process or the writer processing code?

     

    reply to this | link to this | view in thread ]

  2.  
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    Anonymous Coward, Feb 9th, 2013 @ 11:58am

    "What test should the court adopt to determine whether a computer implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea? "

    the test is simple, if it is IMPLEMENTED on a COMPUTER it is no longer "abstract". by definition.

    even masnick's limited knowledge of 'something' should be able to work that out..

    Or a dictionary:

    1.
    thought of apart from concrete realities, specific objects, or actual instances: an abstract idea.

    2.
    expressing a quality or characteristic apart from any specific object or instance, as justice, poverty, and speed.

    3.
    theoretical; not applied or practical: abstract science.

    If something is implemented on a REAL COMPUTER, it is NOT "apart from any specific object or instance"

    it is NOT "thought of apart from concrete realities, specific objects, or actual instances: an abstract idea.


    "What test should the court adopt to determine whether a computer implemented invention is a patent ineligible “abstract idea”;

    1.
    thought of apart from concrete realities


    So according to the super brain masnick a computer and software is NOT a "concrete reality" !!!!

     

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  3.  
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    Anonymous Coward, Feb 9th, 2013 @ 12:01pm

    Re: Who, What, Where, When and How?

    the moment you implement that abstract idea, into reality it is by definition no longer 'abstract'..

    simple test of that, is 'has it been implemented in the real world... yes. then it's not abstract.

     

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  4.  
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    Anonymous Coward, Feb 9th, 2013 @ 1:06pm

    Re:

    A description of how to find the lowest common factor of two numbers describes an abstract algorithm. That is a procedure that could be carried out by mental arithmetic. While carrying out this algorithm for very large numbers by mental arithmetic, or even with the aid of pen and paper, is not very practical, the algorithm is still abstract when implemented on a computer.
    A description of how to make a cup os coffe describes a concrete process, that is a manipulation of physical matter. To implement this on a computer would reuire the robotic devices to carry ouit the necessary real world operations.
    Does that help in telling the difference between abstract and concrete.
    Also not most algorithms, that is computer programs are abstract, and any real world manipulation is a replacement for pen and paper. That is use of keyboard, mouse, screen and printer.

     

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  5.  
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    Anonymous Coward, Feb 9th, 2013 @ 4:10pm

    Re: Re: Who, What, Where, When and How?

    True, in one sense of the meaning of abstract ="Abstract science", from the theoretical to the actual.

    Webster's has many definitions for Abstract that might be applied to code.

    Disassociated from any specific instance (an abstract entity)

    Difficult to understand : abstruse (abstract problems)

    Expressing a quality apart from an object (the word poem is concrete, poetry is abstract)


    A patent applied to a piece of code is something that could fall closer to one of the alternate meanings (other than abstract science), to bring about “Significantly More”.

     

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  6.  
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    Anonymous Coward, Feb 10th, 2013 @ 1:16am

    Re: Re:

    That is a procedure that could be carried out by mental arithmetic.

    It could also be carried out by writing it on a bit of paper, in that form it is no longer abstract and lives in the real world.

    I could carve it into a length of wood and hit you over the head with it, it's THAT REAL.

    an algorithm that can be implemented is by definition NOT abstract. Just because you say it is does not change that fact.

     

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  7.  
    identicon
    Anonymous Coward, Feb 10th, 2013 @ 1:27am

    Re: Re:

    A description of how to find the lowest common factor of two numbers describes an abstract algorithm

    firstly, it is not abstract by any definition, it is real you can apply it in the real world.

    That is a procedure that could be carried out by mental arithmetic.

    So are you saying that what happens in your brain is not a 'concrete reality' and apart from the real world ??

    regardless of what runs the algorithm, a computer or your brain, does not mean it is in any way "apart from reality".

     

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  8.  
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    Anonymous Coward, Feb 10th, 2013 @ 5:36am

    Re: Re: Re:

    Actually using pen and paper is an aide mémoire, all the actual calculations are still mental processes.

     

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  9.  
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    Anonymous Coward, Feb 10th, 2013 @ 5:42am

    Re: Re: Re:

    So thought is concrete because it happens in the brain, therefore it can be patented and you can infringe patent by simply thinking. You had better hand all your money over th patent holders to pay for your infringement of patents.

     

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  10.  
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    FairGlow (profile), Feb 10th, 2013 @ 5:49am

    Re: Re: Re:

    > It could also be carried out by writing it on a bit of paper, in that form it is no longer abstract and lives in the real world.
    The idea is still abstract. All you have is an instance of the idea applied on paper.

    > I could carve it into a length of wood and hit you over the head with it, it's THAT REAL.
    You are hitting with a piece wood, whether carved or not.

    > an algorithm that can be implemented is by definition NOT abstract. Just because you say it is does not change that fact.
    The implementation is just an instance of the idea. The idea may be implemented in many different forms due to the different physical limitations of the operating environment.

    The patent is typically on the idea and not on the implementation, because the latter is much more narrow and easily circumvented.

     

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  11.  
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    FairGlow (profile), Feb 10th, 2013 @ 5:56am

    Re: Re: Re:

    So are you saying that what happens in your brain is not a 'concrete reality' and apart from the real world ??

    What is happening in your brain is only concrete to you, and only the conscious parts at that. It is not "concrete reality" to the rest of the world.

     

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  12.  
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    Anonymous Coward, Feb 10th, 2013 @ 6:19am

    Re: Re: Re: Re:

    does that also apply if you are pressing the buttons on a calculator ?

     

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  13.  
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    Anonymous Coward, Feb 10th, 2013 @ 6:29am

    Re: Re: Re: Re:

    The patent is typically on the idea and not on the implementation, because the latter is much more narrow and easily circumvented.

    It's amazing how little understanding of what a patent is being displayed here on TD. Masnick has conditioned you well.

    A patent is ON THE SPECIFIC IMPLEMENTION, NOT THE IDEA

    You have it completely ass about.

    I idea might be "to catch a mouse", the patent is a specific method of achieving the idea, it is clearly NOT the ONLY method, it is simply A METHOD.

    You do not submit a patent for 'catching mice', you submit a patent for a SPECIFIC METHOD that will achieve the goal of catching a mouse.

    There might be 1000 different ways to catch a mouse, and therefore 1000 different patents on methods for catching mice.

    All based on the 'idea' of catching a mouse.

    So, (sorry to say) it is stupid to even be under the misunderstanding that it's the idea, it is the specific implementation of that idea.

    as there can by any number of specific implementations to achieve THE SAME EXACT GOAL.

    The 'obviousness' of a desire to catch mice is apparent, we all know the goal. It is the specific implementation of that obvious idea that is not necessarily obvious.

    So saying "catching mice is obvious" therefore cannot be patented, is stupid, and Masnick should hang his head in shame for displaying such stupidity.

    No wonder Masnick does not work in law, or anything that is important. His basic level of knowledge appears lacking.

     

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  14.  
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    Anonymous Coward, Feb 10th, 2013 @ 7:09am

    Re: Re: Re: Re: Re:

    Pressing buttons should not be patentable, nor should mathematics. However a new form of calculating device may be patentable, which applies to making device with the new technology which has nothing to do with any algorithms that may run on the device.

     

    reply to this | link to this | view in thread ]

  15.  
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    FairGlow (profile), Feb 10th, 2013 @ 7:50am

    Re: Re: Re: Re: Re:

    The specific method is the idea and the implementation is the source code.

    I've never heard of anyone including the source code in the patent. The text typically generalize the idea (specific method) into uselessness to cover as much ground as possible.

     

    reply to this | link to this | view in thread ]

  16.  
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    Anonymous Coward, Feb 11th, 2013 @ 12:25pm

    An method similar to those for other patent industries should have specific data structures and control flow marked out. In other words, patents should include the software design document.


    You are independent of the source code, and still cover something that is merely a translation to another language, but are restricted such that a given operation can still be done through other implementations.

    As to the question of what is obvious, if the problem can be expressed mathematically, it is obvious. Additionally, if the design has less than X components, it is obvious (deciding X then becomes a concrete problem for the court). Anyone stretching to meet X will open sufficient alternatives to their patent for it to be completely dodged, including the in-patent-able simpler version.



    This is all rendered moot unless the patent process can be substantially sped up though (with the appropriate decrease in how long a patent lasts), as the innovation cycle for software is currently moving too fast for patents to be relevant. The current cycle time causes patents to be only able to stifle innovation as they must be used retroactively on things that have become standards by the time the patent is granted.

     

    reply to this | link to this | view in thread ]


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