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.

This is of course false. It always could do them, it just wasn't told to. To view it otherwise is nuts.

Otherwise, I could argue that when you think about things, you are activating new pathways in your brain, forming neural connections that didn't exist, and otherwise changing and programming the state of your brain to know and do things it could not before.

"A board, spring and wires could always trap a mouse, they just weren't configured to do so."

How is programming a computer different from assembling existing components in a new arrangement to make a new machine?

> otherwise changing and programming the state of your brain to know and do things it could not before.

Not a neuroscientist, and this risks derailing the thread, but isn't that exactly how brains and learning work? This has also been observed at the macro level, e.g. that study where London cabbies' brains were found to have enlarged portions that dealt with spatial processing.

How is programming a computer different from assembling existing components in a new arrangement to make a new machine?"

You are not "assembling existing components in a new arrangement with a computer". Also, if I gave you a board, a spring, and wires, you could not trap a mouse with them.

You actually have to physically change them to accomplish anything. The spring won't stick to the board by itself, etc.

You are also taking things that were previously limited in some way (a board is not elastic, etc), and assembling them into a new thing that is not so limited.

When you program a computer, you are not changing the computer in any way, shape, or form.

It was never limited. By programming it, you are doing exactly what it was built to do: Be programmable.

You are simply picking a subset of the things it could already do, and saying "do this subset". The computer, no matter how hard you program it, will never trap a mouse. It is the building of the computer that was the hard part. You, on the other hand, are always operating entirely within the existing limits of the computer.

"Not a neuroscientist, and this risks derailing the thread, but isn't that exactly how brains and learning work? This has also been observed at the macro level, e.g. that study where London cabbies' brains were found to have enlarged portions that dealt with spatial processing. "

Yes, this is exactly how they work. That's my point. By your argument, you can replace "computer implemented" with brain implemented, and end up with the same patentable result. Given that, i'm arguing there is nothing special, at all, about computers, or implementing things using them, any more than thinking about things or learning to play guitar. Enlarging the center for spatial processing in cabbies is something the brain was meant to do. The cabbies did not create it out of whole cloth. They did nothing but exercise their normal skill in spatial reasoning, and their brain did all the actual work.

Programming a brain does not make them do new things they could not do. It simply tells them what task to perform.

IE There are a set of tasks they can both perform. That set of tasks is fixed at creation, both of brains, and computers. You cannot make lasers shoot of your eyes no matter how hard you try.

Much like a brain implemented invention, a computer one is just picking a certain task the computer already could do.

I think you have this part of it backwards. The fact that you can assemble a board and some metal into a mouse trap shows that the component parts weren't limited.

Computers are the opposite. They're extremely limited -- they can't physically do anything, they can only perform calculations. Software is capable of nothing but specifying what calculations to perform.

Here's a great example of the absurdity that occurs when you allow the narrow thing computers do to be the subject of a patent. Suppose that the text of a particular software patent consists of source code implementing the invention. If software can be patented then that patent would infringe itself. All you would need to constitute an embodiment of the "invention" would be a prior art general purpose computer and the patent's text. Imagine an infringement suit against the Patent Office (or Google Patents) for storing the patent's text on a computer capable of executing it.

People are not getting patents for some sequence of calculations, they're getting patents for producing a useful, new effect on the world. Yes all computers are universal in what they can compute, but I see no reason why coming up with a new, greatly improved and economically useful way of using such a restricted machine should not be patentable.

Furthermore, people seem to think that just because a computer program can be described as a sequence of mathematical steps that it is therefore a mathematical algorithm and shouldn't be patentable. Algorithms have no effect on the world, they do not improve anything in a tangible way, but software absolutely does (and it's why you can read this now!) and it is the processes that lead to producing these useful effects that is patentable. I can't patent an algorithm without specifying why it is useful to the population at large.

Finally, people seem to have got the bizarre notion that there are patents claiming computers which are capable of performing a certain task, which is just absurd and untrue. The claims are usually directed to a system which actually does perform the steps in the process, not one which is capable of it (therefore allowing them to exclude competitors who make their own implementation of some software process that has been patented and attempt to make money from it).

I think you missed the point, actually.

They have argued, and precedent until yesterday was: It is patentable because it is implemented on a computer, because it "transforms the computer" into a "specific device". IE that the computer, programmed, makes something unpatentable, patentable.

"Finally, people seem to have got the bizarre notion that there are patents claiming computers which are capable of performing a certain task, which is just absurd and untrue. "

As a patent attorney, having fought software patents for many many years now, i'm just going to say this is completely and totally false. People patent both computers capable of things, and computer implemented inventions. To think otherwise just means you've not read enough patents :)

The problem is software patents have long used the second approach. Rather than patenting a process they attempt to patent the result. And this is where the fundamental difference between software and physical reality shows up. If your building something then 'optimal' solutions are great, but if your building software anything that works is probably good enough.

I think you missed the point, actually.

They have argued, and precedent until yesterday was: It is patentable because it is implemented on a computer, because it "transforms the computer" into a "specific device". IE that the computer, programmed, makes something unpatentable, patentable.

"Finally, people seem to have got the bizarre notion that there are patents claiming computers which are capable of performing a certain task, which is just absurd and untrue. "

As a patent attorney, having fought software patents for many many years now, i'm just going to say this is completely and totally false.

I think this is the heart of your argument here. (Correct me if I'm wrong.)

The problem is that in terms of calculation, computers are not limited. In fact, that was proven not once, but twice, in 1939. Any computation that can be performed can be done with any general-purpose computer. The Church-Turing Thesis proves that that computer need not even be specialized: it only requires the ability to manipulate symbols deterministically in some general manner.

What these patents cover is, in fact, only those computations with the aid of a general-purpose computer, and the only reason those patents have been allowed is by this fallacious argument that a general-purpose computer somehow becomes a special-purpose computer when it is programmed. This is not how computers work. A general-purpose computer does not become special-purpose merely by assigning some numbers to a pool of memory any more than an FPGA becomes an ASIC by uploading a ROM image. It is still a general-purpose computer, and its nature does not change.

If, perhaps, by programming a computer, the program magically became a new, immutable physical wiring, your argument might have merit. But we do not live in a world of magic.

>If software can be patented then that patent would infringe itself.

To infringe a patent, you must make, use or sell a product incorporating the invention. A patent by itself does none of those and hence cannot infringe anything.

How are you intending to distinguish program source code in an interpreted language incorporated into the body of a patent specification from a software product consisting entirely of that same code?

So I still don't see how you're trying to refute the conclusion that a software patent containing code covered by its claims would infringe itself. You couldn't reproduce or distribute the patent without reproducing or distributing the program.

Obviously a patent sitting on a desk doesn't self-execute, but neither does a program on a disk sitting on the same desk. I see no relevant difference between one and the other any more than there is between a USB stick and a CD.

Let me take a stab, though. Keep in mind that the text of the code does absolutely nothing until it is interpreted or compiled. Now, say your code implements a way to detect porn in an image, which is what your patent claims. By publishing the code in the patent, is Google Patents, or heck even the USPTO, making, using or selling "porn detection in images"?

A simple answer to this question is the answer to the question, "Can I submit an image to USPTO/Google Patents and get a determination of whether the image contains porn?"

But that is untrue, on two levels! Firstly, at the physical level: by programming the computer you are physically changing it. You are changing the electronic charges on a multitude of molecules arranged at very specific locations in a very specific manner. This, in turn, when activated by other specifically applied charges, controls changes to yet other charges on other molecules at other very specific locations as these charges are evaluated by the laws of physics and the arrangements of various conducting materials connecting these molecules.

Secondly, at the functional level: these patterns of charges can be evaluated, by humans or other machines, to represent useful information, and hence the exact same circuit with different patterns of charges can be used as a word processor, a gaming machine, a media player, a database...

Consider the converse: without any such charges lighting up any of its circuits, the computer can do literally nothing. It is wholly limited.

I completely agree that the computer's potential utility is never limited -- except maybe by our imaginations. However, that could be said for a hunk of metal or a slab of wood too.

> By programming it, you are doing exactly what it was built to do: Be programmable.

By fashioning steel into various shapes, I'm doing exactly what steel was created to do: be malleable when very hot but very rigid at room temperatures. Yet every new shape given to steel, from rods to blades to ball bearings to I-beams to frying pans, has enabled a new use.

By combining various atoms of elements in different configurations, I'm doing exactly what they were meant to do: bond with each other. Yet every new combination could result in a brand new compound.

What something could do has no bearing on what is inventive. Inanimate things do precisely nothing until we invent a use for them. All technological development is the creative use of things doing what they are meant to do, arranged to achieve things that we want them to do.

> Enlarging the center for spatial processing in cabbies is something the brain was meant to do. ... They did nothing but exercise their normal skill in spatial reasoning, and their brain did all the actual work.

True, but their brains have become physically different from ours, optimized for spatial reasoning. You could in fact say that, with the right programming, they became special-purpose brains.

If you want something physically-grounded you'd have to say: I want to implement this idea on that specific computer with these specific physical manifestations. And even if you got that patent, it would be effectively worthless. Changing what we view as trivial details of the implementation (e.g. swapping a Pentium for a Pentium Pro) would totally change the physical manifestations at the level of electrons and molecules. In other words, that would completely avoid any claims in the patent that are described at the physical level.

And the minute you retreat to considering claims at the functional level (i.e. what our collections of electrons and molecules mean) you're no longer talking about doing something physical to achieve a useful result: you're talking about combining abstract ideas with a wide range of possible physical implementations to achieve a useful result, which is something entirely different.

Let's try this another way. You understand that it is possible to build a computer out of anything. Let's build a computer out of nothing. We want to perform a calculation without building anything whatsoever, so all we are going do is observe nature. There are any number of ways to represent a calculation. If there are three pigeons and five more arrive then you have only to observe the resulting number of pigeons to learn the sum of three and five, etc. Nature is going to do lots of calculations we don't care about the answers to, so we ignore those and only pay attention to the ones necessary according to the algorithm to be executed.

By doing this you can execute any algorithm. Doing strictly nothing but observing natural phenomena. There is no machine. Because the result you are trying to obtain is not a thing, it is a representation of information. And information can be encoded into anything and the representation is defined by the context. By changing the context -- an entirely intellectual undertaking -- you determine what information is represented by the physical state. What the machine (or the birds or the stars) do is comprehensively irrelevant, as long as things are happening you can use them to represent the execution of computer software.

I'd like you to show me a granted software patent that cannot be implemented on any computer. If you can find one, I'll show you one that should be chucked in with perpetual motion machines.

> You understand that it is possible to build a computer out of anything. Let's build a computer out of nothing. We want to perform a calculation without building anything whatsoever, so all we are going do is observe nature.

It's amazing that each of these three consecutive statements are inter-contradictory. ("build a computer out of anything" != "build a computer out of nothing"; "nothing" != "observing nature"; "build a computer out of anything" != "without building anything whatsoever".) I have no idea how to proceed.

Oh sorry, let me clarify. I'm taking it as a given that you accept a computer can be built out of anything, i.e. that you can have electrical computers, mechanical computers, biological computers, etc. and they're all computationally equivalent and can execute all the same algorithms. The whole Church-Turing thing. My point was that you don't even have to build anything. So you can completely ignore the "build a computer out of anything" statement if you think it's contradicting anything.

And observing is not building. It seems exceedingly obvious that you can't patent squirrels gathering nuts, or leaves growing on trees, or raindrops falling from the sky, etc. But you can map desired calculations onto the occurrence of things in nature in much the same way as you map them onto electrical signals in a PC, wait until they enter the state required by a given algorithm, observe the result, and thereby execute any algorithm you can execute on a computer. The machine is a completely abstract concept. Trying to patent an algorithm because you can execute it on a computer is exactly the same thing as trying to patent a formula because you can compute it with a calculator. The calculator doesn't become a new type of machine based on which buttons you press.

> > I'd like you to show me a granted software patent that cannot be implemented on any computer. If you can find one, I'll show you one that should be chucked in with perpetual motion machines.

Obviously a patent on a solution to the halting problem is fraudulent, but you have the issue reversed. It isn't that you can't use a machine to execute an algorithm, it's that you can execute an algorithm without a machine. The machine isn't a necessary component, it's just a convenient and efficient way to do it.

The problem with this type of argument is that it essentially says everything is an unlimited physical process that could be patented through competent drafting, because everything always affects change at some level. Heck, even the process of observation affects things at a physical level. Allowing things to be patented, simply because they can be described as a physical process, without anything more, is ridiculous.

This was not was anyone had in mind when they created the patent system, nor was it even allowed until recently.

That difference ruins your mousetrap analogy.

I don't think that analogy goes where you want it to go. Suppose that a kitchen knife exists in the prior art and you want to get a patent on "homicide weapon with hand grip and pointed edge." That which infringes if later anticipates if earlier. So if the kitchen knife would infringe that patent then it's also novelty destroying.

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.

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.

Is this approach ever tried in these cases? It seems to me that the more convoluted and abstract the patent (which seems to be the point of many of these patents explicitly written to try and reach as broad as possible), the more juries will tend to identify with the expert saying "I can't make heads or tails of this thing" and invalidate bad patents as simply failing to adequately teach the construction of the infringement claim.

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.

Edit: however, my original point regarding the opinion was, the SC did not just say this fails 101 because it's not new, but they went on to say that "long prevalent" practices (i.e. prior art) can make something "abstract". This, to me, simply makes no sense.

In what I've seen of the Supreme Court jurisprudence on patent-eligibility, "abstract idea" seems to have (based on the way it is used, not any explicit statement) evolved into a sort of a term of art for things that fail both the "new and useful" and "process, machine, manufacture, or composition of matter" requirements of Section 101.

I would say that this is one of the ways in which case law gets unnecessarily and confusingly self-referential and loses its visible connection to the underlying enactments that it is interpreting, which makes it less accessible and avoidably opaque. But good luck getting people on the Supreme Court that see that as something important to minimize.

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.

No, just armchair-lawyering :-) My experience in this field, while more extensive than most non-attorneys, has been as a hobbyist. What I lack in hands-on experience, however, I try to make up by reading empirical studies.

I would agree that the standards of 101, 102, etc. have not been evenly applied, to say the least. In fact, that's why the Federal Circuit was formed. There are studies evaluating to what extent they have been successful in harmonizing patent law. To your point, there is even a study on how consistent (or not) the CAFC is. (Will try to dig them up when I get a chance.)

However, what I'm trying to say is, regardless of how the statutes have been implemented, the theory is sound and rational: a patent has multiple, largely orthogonal, dimensions and it should be judged along those lines. To my engineering mind, anything that conflates those dimensions is an inelegant and problematic ruling.

Yeah, the problem with that idea is that rulings aren't intended to implement abstract theories independent of the controlling enactments (the statutes and the Constitution). The theory that patents have "multiple, largely orthogonal dimensions", at least as you seem to identify those dimensions -- and particularly the idea that newness is a consideration only for Section 102 patentability, and not Section 101 patent eligibility -- is inconsistent with the actual text of Section 101, which explicitly requires for eligibility that the thing sought to be protected is (a) an invention that is (b) new and (c) useful.

Your aesthetic preference for orthogonal considerations where newness would be a considered only for Section 102 patentability is, of course, a legitimate aesthetic preference -- but its not what the statute says, and I think it would a more "problematic ruling" for the court to ignore the statute simply out of aesthetic preference for orthogonal categories with a certain configuration.

1. "Promoting the Progress: Three Decades of Patent Jurisprudence in the Court of Appeals for the Federal Circuit", Damon C. Andrews" - http://law.missouri.edu/lawreview/files/2012/11/Andrews.pdf

2. "On the Causes of Unpredictability of Federal Circuit Decisions In Patent Cases", Paul M. Janicke - http://papers.ssrn.com/sol3/papers.cfm?abstract_id=960636

3. "How Federal Circuit Judges Vote in Patent Validity Cases", Mark Lemley and John R. Allison - http://papers.ssrn.com/sol3/papers.cfm?abstract_id=189512

Yes it's a terrible name. Yes it's easy to get confused. Just never use Samsung/Apple when talking about patents you'll be fine.

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...

Why would the CAFC, even assuming it could, want to overturn a case in which the Supreme Court affirmed both the judgment and the dominant reasoning of the CAFC? I mean, that would go beyond not caring what the Supreme Court does into active spite.

> The idea of a single subject court was a novel experiment in 1982

The CAFC isn't a single subject court, and both of its two immediate predecessors (the United States Court of Claims and the United States Court of Customs and Patent Appeals, 1929-1982) were more like single-subject courts than the CAFC is, so, insofar as the CAFC could even remotely be considered by such a court, it wasn't a "novel experiment" in that direction (and Court of Customs and Patent Appeals prior incarnation as the Court of Customs Appeals, 1909-1929, was a single subject court, and until 1914 was a single-subject court with no further avenue of appeal.)

The CAFC was part of an evolution away from narrow-subject courts, not a "novel expirement" to try a "single subject court".

Before the CAFC, patent appeals went to the regional circuits. Now they all -- every one in the nation -- run to the corrupt CAFC. Even non-patent cases like the case where CAFC ruled in favor of copyrights on APIs can be packaged off the the CAFC instead of regional circuits by including unrelated patent issues.

I started out at the very beginning of the Federal Circuit era. I think you might be thinking of the 8th Circuit (and the District of Minnesota) as implacably hostile to patents. And yes, forum-shopping could be really bad in those days.

This is a bullshit angle you're working. It is exceedingly rare for a federal court of appeals judge to return to private practice. The ones who do are usually appointed very young. 75% of former CAFC judges have died on the bench. The rest retired outright, or taught. Judge Rader isn't going to be making millions teaching IP law in China.

This is, fundamentally, Congress problem, and a problem with the breadth of the statutory text they've given the USPTO to work with.

That would be a compelling story, except that the CAFC and Supreme Court came to the same conclusion on this case, both on the judgement (that the patent was invalid), and largely on the rationale (the plurality of 5 out of 10 judges in the en banc rehearing found that all the claims were patent-ineligible as the Supreme Court found, and a majority of 7 found that at least some of the claims were patent-ineligible.)

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/

"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.

There is a difference, since unlike hedging (Bilski) and clearing house (Alice Corp) it is a novel abstract idea. But it is still an abstract idea, and logically, should not be patentable.

Stålmarck's algorithm is a similar case. Can't argue it is not novel, but 100% abstract. Parabix is another.

But your general point holds :)

"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."

"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).

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.

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".)

How does this differ from/alter existing law? Is this ruling just a clarification?