BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley



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Friday, September 20, 2013, 12:05 PM

A Case for Patentability of Software-based Inventions

The courts have gone back and forth in rulings about patentability of software-based inventions, sometimes ruling that a system that uses a computer and programming, a tangible media with computer instructions, or a method involving computers, software or processing, etc., is patentable subject matter under 35 USC §101, and sometimes that is not.  See, for example, Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011), CLS Bank International v. Alice Corp. (Fed. Cir. 2013) (en banc), and/or ULTRAMERCIAL v. HULU , LLC (Fed. Cir. 2013), all of which are discussed in our previous blog entries.  I’d like to set forth a thought experiment as an hypothetical case in favor of patentability of software-based inventions.  Mind you, in an actual case, patentability will depend on a multitude of factors, such as whether the claimed invention is: a member of a patentable class of subject matter (the present inquiry, under 35 USC §101), novel (under 35 USC §102), unobvious (under 35 USC §103), and distinctly claimed, i.e., not indefinite, and enabled in the specification (under 35 USC §112), among other requirements.

Suppose an inventor has invented two blackboxes, the first of which has inside a computer programmed with software, and the second of which is entirely mechanical.  The inventor discloses that these two inventions are based on an abstract idea, namely some equation or algorithm.  The mechanical blackbox has a series of buttons and dials, which the user sets to represent input information in answer to a set of questions.  The user then presses a large “start” button, and the machine hums, clanks and whirs.  Out from the slot, a printed message emerges, containing a printout of some useful result.  This is clearly a machine that is in the class of patentable subject matter under 35 USC §101.  This machine is a concrete reduction to actual practice of an embodiment of an invention based on an abstract idea.

The second blackbox has an identical series of buttons and dials, except perhaps these are implemented as soft buttons and images of dials on a touchscreen.  The user sets these buttons and dials in a similar manner, then presses a large “start” button (which could also be a soft button).  Next, the machine makes a different set of noises, perhaps from a speaker or maybe just the hum of a fan of a computer.  Out from a slot, a printed message emerges, or perhaps the message appears on a viewscreen, and the message includes the exact same useful result as seen from the first blackbox.
In first blackbox, the inventor tells us, a combination of gears, levers, cams, mechanical counters, forks and other beautifully machined parts implements the equation or the algorithm.  For example, one lever moves from left to center to right to implement an if/then/else logical construct, a series of gears reduce or multiply shaft speeds in accordance with a numerical ratio, a cam activates different portions of the machine in a sequence and so on.  These same gears, levers etc. in other combinations have been used in other machines, starting in the late 1800s.

In the second blackbox, the inventor tells us, a combination of program statements, i.e., a computer program in software, executing on a processor with memory, implements the exact same equation or algorithm.  Electrons are steered this way and that by transistors, and the whole thing implements the exact same if/then logical construct, the exact same numerical ratio, and progresses in the exact same sequence, and so on.

Why wouldn’t the second blackbox also be a machine that is in the class of patentable subject matter under 35 USC §101?  It took a comparable amount of cleverness to come up with each of these embodiments.  Yes, the machines required different skills to implement, but each of these two machines is a concrete reduction to actual practice of an embodiment of an invention based on an abstract idea.  The second blackbox is, in my mind, no less inventive than the first blackbox.  The two black boxes produce the exact same useful result.  They are, simply, two differing embodiments of the same invention.  Now, arguably, one could probably find something clever that the mechanical machine did in all of this that might be patentable in and of itself, and equally, one could possibly find something clever in what the software did in all of this that might be patentable in and of itself.  But, in the larger picture, I suggest, both machines should be considered eligible subject matter under 35 USC §101.  Hypothetically, if the first blackbox were ruled eligible subject matter under 35 USC §101, and the second blackbox were ruled ineligible subject matter under 35 USC §101, might the second ruling be appealable?  This is what the courts are wrestling over these days, for software-based inventions.  It would seem unusual for an entirely mechanical invention to have an issued patent invalidated for claiming ineligible subject matter under 35 USC §101.  Not so, apparently, for software-based inventions.  Why the dichotomy?  In a subsequent blog, we’ll tackle some of the questions the justices raise in the above cases, relative to these two hypothetical black boxes.

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Tuesday, September 17, 2013, 1:43 PM

Inquiries As to Patent Claims Possibly Preempting All Possible Uses of an Abstract Idea

In recent court cases, judges have expressed concerns that claims for software-based inventions might attempt to preempt all possible uses of an abstract idea (see, for example Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011), CLS Bank International v. Alice Corp. (Fed. Cir. 2013) (en banc), ULTRAMERCIAL v. HULU , LLC (Fed. Cir. 2013), all of which we have blogged about recently).  Generally, these inquiries have been directed to 35 USC §101, which governs patent eligibility of subject matter.  Even when software-based claims have recited tangible subject matter, such as a system (e.g., a computerized system or a specially programmed computer) or computer-readable media (e.g. a CD or a memory with instructions), or a method that executes on a computer, rulings have come down that sometimes these sorts of claims are ineligible subject matter for a patent, and sometimes these sorts of claims are patent eligible.  35 USC §101, as discussed previously, forbids patenting of an abstract idea.  Equations, and algorithms in isolation, are often considered abstract ideas.  In rulings where a claim reciting tangible subject matter is found ineligible under this statute, 35 USC §101 is interpreted as extending to forbidding some claims that are based on an abstract idea.  The question then becomes, how close to an abstract idea could a claim be, or how far away from an abstract idea should a claim be, in order for the claim to be found eligible under 35 USC §101.  Relative uncertainty in this area is unsettling for the patent community, I believe.

One possible approach as to whether a claim is attempting to preempt all possible uses of an abstract idea is to utilize 35 USC §112, which governs definiteness of a claim, and enablement in the specification.  A claim that truly is attempting to preempt all possible uses of an abstract idea should be rejected or overturned under 35 USC §112, because no specification could possibly enable “all possible uses of an abstract idea”.  No human being, no known book, library or database could ever disclose all possible uses of an abstract idea, present or future, because the future is not yet known.  And, inventors are so clever that, surely, it is possible some inventor will come up with a new use of whatever abstract idea is disclosed in a present patent application.

On the other hand, a claim that is properly enabled in the specification and that satisfies 35 USC §112 as to definiteness as well, and that recites tangible subject matter rather than solely an abstract idea, should go on to be tested against 35 USC §102 and 103 as to novelty and obviousness.  In this view, 35 USC §101 becomes a basic test.  Is the claim claiming an abstract idea itself?  Or, is the claim claiming a concrete reduction to actual practice, based upon an abstract idea?  Viewed this way, 35 USC §101 is very clear as to patent-eligible subject matter.

Testing a claim against 35 USC §101 then becomes straightforward.  If the claim is for an algorithm itself, or an equation, or an idea, in isolation, the claim is not patent-eligible subject matter under 35 USC §101.  If the claim is for a tangible article, including a specially programmed computer, a tangible media, a machine, or a method that operates on a specially programmed computer, the claim is patent-eligible subject matter under 35 USC §101, even though it be based in some manner on an abstract idea.  We then go on to test whether the claim is overbroad, and unsupported in the specification, such as when a claim attempts to preempt all possible uses of an abstract idea.  When the latter is the case, the claim is rejected or found invalid under 35 USC §112.  I believe this proposed set of interpretations and sequences of inquiries would satisfy the justices’ concerns seen in the above-referenced cases, and elsewhere, and would clarify the situation regarding patentability of software-based inventions.  In a subsequent blog, we will test this proposal against some blackbox machines, and see how rulings might go.  Meanwhile, any comments?

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