The opinion has three parts:
1) The Court identifies the abstract idea contained in the patent as the general concept of intermediated settlement. (Slip. Op. at 9) The key takeaway here is the discussion about whether an "abstract idea" has to be on the level of a "law of nature" in order to be excluded. The Court says that an abstract idea need not reduce to some fundamental truth that has always existed. It is sufficient for it to be a "fundamental economic practice" or "longstanding commercial practice," like the concept of "risk hedging" in Bilski. (Slip. Op. at 10)
2) The Court looks to see if the patent adds anything more to the abstract idea, and concludes that all it does is describe how to implement the idea in a general computer, in the generic and conventional way. (Slip. Op. at 12, 15) The Court analogizes to Mayo, in which it decided that the claimed method amounted to no more than instructing doctors as to how to use a well-known process for measuring metabolite levels to diagnose their patients. (Slip. Op. at 11) The Court states that the claimed method simply describes how to instruct a computer to perform the abstract idea of intermediating settlement. The Court makes a point of noting that the computer implementation described here is "wholly generic" and that "[i]n short, each step does no more than require a generic computer to perform generic computer functions." (Slip. Op. at 13, 15)
3) The Court concludes that the "system" claims are no different in substance from the method claims: "But what petitioner characterizes as specific hardware—a 'data processing system' with a 'communications controller' and 'data storage unit,' for example, see App. 954, 958, 1257—is purely functional and generic. Nearly every computer will include a 'communications controller' and 'data storage unit' capable of performing the basic calculation, storage, and transmission functions required by the method claims." (Slip. Op. at 16)
> The Court says that an abstract idea need not reduce to some fundamental truth that has always existed. It is sufficient for it to be a "fundamental economic practice" or "longstanding commercial practice," like the concept of "risk hedging" in Bilski. (Slip. Op. at 10)
If your quote is accurate, and they applied the same logic as Bilski, this sounds like they're conflating patent eligibility (101) and patentability (102, 103 etc.) again. To understand the difference between "patent-eligible" and "patentable", if you invent a car colored red [1], it's patent-eligible because a car is an articles of manufacture i.e. it satisfies 101. But it's not patentable because red cars have been around forever, i.e. it fails 102.
For those of you following along at home, 101, 102 and 103, etc. are bars that patent claims must clear to be valid. 101 is "patent eligibility", i.e. it excludes things like laws of nature and "abstract" ideas. 102 is novelty, i.e. it excludes things found in the prior art. 103 is non-obviousness, i.e. it excludes things that are obvious (note: not "trivial") combinations of existing prior art. These are long-standing principles for judging patents, each providing a distinct criteria for judging and invalidating a patent, and this arrangement has a long, well-known and mostly consistent history behind it.
Now essentially, the SC is saying "prior art" can sometimes make something an "abstract idea". You don't have to be a patent lawyer to see that this does not really make sense.
This patent is obviously invalid, but we already have the tool for invalidating it, and that's section 102: a "longstanding commercial practice" or "fundamental economic practice" clearly falls under the umbrella of prior art -- things we already knew.
By mixing 102 analysis with 101 analysis, they're just "muddying the water" even more. I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent.
1. Whether a "car" is an abstract concept is not relevant to the analogy.
But, invalidating this patent on 101 grounds versus 103 grounds is not the same. Subject matter eligibility is something that can be ruled on in a motion to dismiss, In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), while obviousness will generally need to wait after claim construction. It should be possible to knock out patents that claim a fundamental practice in any field as early as possible.
You can make other distinctions between "a fundamental practice" and "prior art," too. In the field of cooking, do we have to point out prior art for making a roux, or do we just accept that someone, perhaps many someones independently, did it sometime long ago, but it's so established now that it might as well be a fundamental law of the field?
Over time, the Supreme Court has been beefing up 101 as a bar to patent eligibility. Is the interpretation in CLS v. Alice the one that's most faithful to the text of the statute? Probably not. But interpretation in the name of controlling the flow of litigation in lower federal courts is one of the key roles of the Supreme Court.
101 does not (and much more does not only) require that something relate to "an articles of manufacture" to be patent-eligible, it requires it to be an invention of a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"
It is quite arguable that, assuming cars exist, a "red car" is, to the extent that it is new not useful, and to the extent that it is useful not new, and therefore patent ineligible.
So, no, while I agree that your analogy may be relevant, I don't think it illustrates that the Supreme Court is confusing patent eligibility with patentability. I think you are reading patent eligibility far too broadly.
> 102 is novelty
Its true that 102 has specific novelty requirements on top of the patent-eligibility requirements in 101, but that doesn't mean that things don't need to be "new and useful" under Section 101 before one even needs to consider whether they meet the specific novelty rules in Section 102.
You say each has a "well-known and mostly consistent history behind it"
None of these have a consistent history, being subject to the whims of changing panels and ideological en-banc fights every couple years when a new judge gets appointed.
You act as if they are well thought out, well applied doctrines, when they are completely hit-or-miss bullshit that has caused the MPEP to explode due to the inconsistencies.
"I'm guessing this is going to make the PTO's and Federal Circuit's job even harder and more inconsistent."
The federal circuit needs no help becoming more inconsistent, they do a great job on their own.
To rant a sec, how many times will the federal circuit need to be slapped upside the head on these issues before they get it through their skulls that their whole permissive approach to patent law is just fundamentally unconstitutional, and they need to adapt their philosophy, or the SC will continue to apply the boot to them? Is this a case of there just being a handful of particular incorrigible bad actors who we just have to wait to die?
The Federal Circuit is essentially immune to Supreme Court decisions of this type. Aside from occasionally judge Lourie, who wrote the plurality opinion for the CAFC, there are no apparent judges on the CAFC who care what the Supremes have to say. They don't have to; the Supreme Court can reverse on average one or two patent cases a year while the CAFC takes a thousand.
The CAFC will eventually overturn this case just as they have been making progress overturning KSR v. Teleflex, a much more important precedent. [0] Obviousness would have taken care of many more abusive troll cases than this one if it were taken seriously, but the Supreme Court cannot force the CAFC to do anything.
The CAFC judges are mostly chosen from organizations that depend maximizing the power and scope of patents, largely appointed to please that patent bar, esteemed and supported by the social and intellectual environment of the patent bar, invited to speak and surrounded by patent bar lobbyists, and promised their chances to make millions after retirement -- if they wish -- back in the patent bar.
The idea of a single subject court was a novel experiment in 1982 but it's a disaster and a failure from a judicial and technical perspective. It's even worse for innovative American businesses. Probably things won't change unless the CAFC is changed.
[0] final four paragraphs of http://www.ipwatchdog.com/2012/03/20/supreme-court-mayo-v-pr...
This is, fundamentally, Congress problem, and a problem with the breadth of the statutory text they've given the USPTO to work with.
That has been happening for a long time now in the patent field as armies of very bright lawyers have found clever ways to concoct patents out of what really should be unpatentable ideas through the art of clever drafting.
Well, this decision gives top-down guidance to judges to cut through such dissimulation in the area of patents and to look at the reality by asking, in effect, "is this really inventive or is it simply a product of the draftsman's craft parading as being somehow inventive." That is the right question to ask in such cases and it should go a long way towards reining in some of the more absurd abuses of recent times.
The case in nonetheless only an incremental step building on solid precedent (as well-assessed by rayiner) and not a radical shift by the Court.
Many had hoped, for example, that this case could be used as a means of delivering a death-blow to all software patents on the grounds that they could all be labeled nothing more than basic mathematical algorithms that happen to apply to a computer. Yet, in its decision, the Court not only did not address this sort of argument but it also carefully emphasized the idea that it was to "tread carefully" in how it might choose to exclude even fundamental "building blocks of human ingenuity" (i.e., laws of nature, natural phenomena, abstract ideas) from patent eligibility "lest this exclusionary principle . . . swallow up all of patent law." To me, this signifies that the cautious approach signaled in Bilski - that is, that of gradually cutting back on the excesses spawned in the past two decades in the area of patent-eligible subject matter - will continue. So don't hold your breath awaiting any court-driven abolition of software patents generally. That will have to await a legislative solution, if it is to come about at all.
Historically, federal circuit precedent said exactly the opposite - that when a generic computer was programmed for a specific purpose, it was now a special purpose machine and patentable.
"For computer implemented processes, the “machine” is often disclosed as a general purpose computer. In these cases, the general purpose computer may be sufficiently “particular” when programmed to perform the process steps. Such programming creates a new machine because a general purpose computer, in effect, becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software."
This decision should, if the federal circuit actually follows it, knock out a large set of software patents.
Historically, federal circuit precedent said exactly the opposite - that when a generic computer was programmed for a specific purpose, it was now a special purpose machine and patentable.
1) Your argument does not refute the GP's statement. A "specific purpose" is not necessarily an "abstract idea", depending on how the claims are structured. A claim saying "presenting ads in such a way that it is unobtrusive on a computer" is an abstract idea[1]. A claim that specifies how a computer can, say, examine visual or DOM elements on a page to determine where to place ads such as not to be obtrusive, is much more concrete.
2) A generic computer running a program is a special purpose machine: it's now doing things it could not do before it was programmed to do so, and as such, it is performing potentially novel functionality. Otherwise, in my mind, you might as well argue "a kitchen knife could not be a murder weapon because it's a kitchen knife."
> This decision should, if the federal circuit actually follows it, knock out a large set of software patents.
I've looked only at a few particular areas, but all the "old idea, only on a computer / on the Internet" patents I've seen so far (like [1]) the one should have expired by now. However this is purely anecdotal, of course.
1. Such a claim (I only paraphrased it a bit) exists, and was referenced in one of Lemley's papers. On mobile so can't find it right away.
I think this is maybe overly harsh. The plaintiffs in CLS v. Alice weren't trying to obtain a result "divorced" from reality. Their argument was simply that 101 is written broadly and should be interpreted broadly (i.e. judicially created exceptions should be interpreted narrowly). There's no truth--just a statute of Congress that is amenable to differing interpretations. Some of those interpretations are favorable to some people, and others to other people. Who knows what Congress really intended. Indeed, there's 535 differing sets of intentions...
I'm very much against the software patent industry, but in general, judicial restraint is usually more good than bad. Sweeping redefinitions of law by the Supreme Court that go beyond the primary issue at hand in the case more often than not have very problematic unintended consequences. While it would be great to kill the software patent industry overnight, that kind of change is better left to the legislature, while courts deal with challenges to specific claims of patent trolls. It's a slow process, but it's much tougher to roll back a Supreme Court decision with unintended consequences than legislation.
If only we could create an office that could somehow, you know, examine the patent before granting it and do just this. These so called "examiners" could then prevent it from going all the way through a court to a judge before we decide if it was a good idea to grant the patent in the first place.
"In what can only be described as an intellectually bankrupt opinion..."
Wow.
He thinks it will invalidate lots of software patents - not by invalidating software patents per se, but the way they have been written to date. I'm not qualified to give an opinion, but I would be interested to know if that is a mainstream view.
He also asserts that increased difficulty of getting software patents "means we won’t get disclosures, information will be held as trade secrets, and those who follow will not be able to stand on the shoulders of those who come before them." As I have yet to hear of anyone ever getting a single useful idea from a software patent disclosure, I view this as a completely acceptable consequence.
Quinn's unique opinions are never the mainstream view. He's an energetic and smart advocate for anything, no matter how extreme, that would make the patent bar more money at the expense of actual innovation.
You can read his blog for a series of crazy overhyped claims for big new ideas in software whenever patents are issued. They're always bad or old or trivial or obvious ideas that some big company has just managed to get a right to monopolize. Canceling all the patents he loves so much would be very, very good for the industry.
As to whether this will affect many patents in the long run, we can only watch what the CAFC does in the next year or two.
"This doesn’t mean that moving forward software won’t be patentable, it just means that getting a software patent will be much more difficult than it ever has been. Software can be described by reference to a series of physical actions operating through gates. This type of micro level description of what happens is going to be required, which means getting a patent for software has just become much more expensive and time consuming."
The disconnect between how he (apparently) thinks software works and what really happens is mind-boggling. He seems to have absolutely no idea that the same program (even down to the same machine code) will create radically different "physical actions operating through gates" on processors with different micro-architectures (or with an emulator or ...). Even if you could get a patent based on a description of these "physical actions" in a specific execution context, such a patent would be practically worthless. It would be like having a patent on implementing your idea on a Pentium. Anyone could trivially get around that by choosing a Pentium Pro (or an Athlon or some random ARM core or whatever).
"claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention"
In other words, start with an idea that's not patentable because it's abstract. Merely specifying its implementation on a computer doesn't make the original idea more concrete or more patentable. Therefore the claim on the idea is invalid, therefore other claims based on that one are too. So what's left?
If the application to a computer is itself both novel enough and concrete enough, then that might still be considered patentable. Is that possible? Isn't the application to a generic computer still basically an abstract idea? Must it be an application to a specific type of computer to qualify? I think questions of this sort are going to be the new battleground. The war continues, but the front has moved in what seems to be a good direction.
Disclaimers: (1) IANAL, (2) I have a bunch of patents both granted and pending through my employer, so this decision might actually hurt me financially.
Computer implementations that are not "generic". A specific computer implementation of an abstract idea might be patentable. But a generic one (i.e., one that amounts to <abstract idea> + "on a computer") is not.
> If the application to a computer is itself both novel enough and concrete enough, then that might still be considered patentable. Is that possible?
Exactly, though, really, the nature of general purpose digital computers is such that, if its not calling for novel hardware, that is probably indistinguishable from a generic computer implementation of a more concrete version of the abstract idea, which concrete version would probably itself be patentable independent of the computer implementation.
So its really hard to paint this Supreme Court decision as essential because the "lower courts" are not getting things right, since both the trial court and the last panel before the Supreme Court to hear the case got it right (insofar as the Supreme Court decision defines "right".)
Part of my day job is figuring out how to go about automating or "electronifying" processes relating to financial trading and risk management. In other words, I look at things that people currently do manually (or decide in their heads) and I figure out how it can be codified into language or an algorithm that a developer can turn into code.
Patents like this (and plenty of similar patents that have been granted[1]) effectively try to claim ownership over the concept of automating what is usually (but not always) a pre-existing business process, using a computer. That's not invention. It's problem-solving. And it's not like the person filing the patent is even solving the problem - they're just patenting the concept of a solution to that problem.
In effect, they're trying to patent my work output. It's like someone filed a patent ten years ago on "Methods and apparatus relating to the matching of people seeking temporary accomodation and householders who are willing to rent out their spare rooms", without ever actually having built implemented it, then popped up when Airbnb came along, saying "Hey, we have a patent on that! Pay up!"
Good fucking riddance.
[1] For examples, see http://www.faqs.org/patents/assignee/goldman-sachs-co/
How does this differ from/alter existing law? Is this ruling just a clarification?
"The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. ('There is no specific or limiting recitation of... improved computer technology...'); Brief for United States as Amicus Curiae 28–30. Nor do they effect an improvement in any other technology or technical field. See, e.g., Diehr, 450 U. S., at 177–178. Instead, the claims at issue amount to 'nothing significantly more' than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer."
I don't see this decision as being too far removed from previous decisions. Regardless, this is a step in the right direction, and is a(nother) blow against the patentability of abstract ideas, and a blow against the patent trolls.
Separately, no decision on ABC vs. Aereo issued today. Aereo lives to see another day, then. Good.
"This Court has long warned against interpreting 101 in ways that make patent eligibility depend simply on the draftman's art."
http://www.vox.com/2014/6/19/5824130/7-thoughts-on-the-supre...
Shame they didn't abolish the business method patents at the very least, if not all software patents.
The hard part was balancing genuine innovation (from small inventors, pharma, etc.) vs. squashing trolls. This goes a long way toward whacking trolls while leaving in place what the patent system was meant for - the fostering of innovation for the benefit of society. Well played.
