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(Highly Divided) Federal Circuit Opinion Finds Many Software Patents Ineligible

Posted by Soulskill on from the system-and-method-for-bits-and-stuff dept.

ais523 writes "The Federal Circuit has divided CLS Bank vs. Alice Corp., a case about various sorts of patents, including software patents. Although the judges disagreed, to a lesser or greater extent, on the individual parts of the ruling, more than half decided that the patents in question — algorithms for hedging risk — were ineligible patent matter, and that merely adding an 'on a computer'-like clause to an abstract algorithm does not make it patentable. Further coverage is available at Groklaw, or you can read the opinion itself (PDF)."

35 of 116 comments (clear)

  1. about by NEDHead · · Score: 4, Insightful

    time

    1. Re:about by Jane+Q.+Public · · Score: 4, Informative

      "about time"

      Yes, about time this was RE-affirmed. Because some people seem to have forgotten their history.

      This all took place -- same subject, and in exactly the same way -- about 100 years ago. Musicians were concerned with other people "stealing" their music by copying player piano rolls using stock paper, some glue, and paper punches. (Sound familiar? Gill Gates started this whole software "protectionist" era by suing people for copying his Altair BASIC interpreter that was stored on paper tape.)

      John Philip Sousa, in fact was on the plaintiff end of some of these suits. And the courts decided that the form of the work doesn't matter. It can be on paper rolls, or in a book of sheet music, or whatever. AND, the courts also ruled that it doesn't matter whether it is in a form that controls machines, either. A written work is still nothing more than a written work!

      And so with software. Software is properly governed by copyright, not patents. Where the software represents novel business practices or formulae, those business practices and formulae may be patentable. But according to ages-old court precedent, software itself never should have been.

    2. Re:about by Jane+Q.+Public · · Score: 2

      "But we are not talking about software here

      Yes we are. Software is just an implementation of algorithms. And an algorithm that isn't implemented in software is... a manual process?

      we are talking about algorithms. Patents cover processes which are abstract entities. I agree with the point you are making but I think it is irrelevant to the current case."

      I only used player piano rolls as an example, but it's an important one. At issue was that courts have ruled that the form of the work, or the media in/on which it appears, is completely immaterial, as is whether it controls a machine.

      "On the internet" is simply a form of algorithm or software. Or a medium in which it appears. Therefore it should make absolutely no difference to patentability.

  2. Does that mean? by Anonymous Coward · · Score: 3, Interesting

    ianal, so all rampant speculation here...

    But, if that basically means that using a certain algorithm is not patentable, and doing the required calculations on a computer is not a bright enough idea to make it patentable, then where is the line that makes something patentable? There are so many patented algorithms, this could have gigantic financial implications for many large companies. Or will this be like most such court decisions, that the legal matters are so complicated that this particular decision won't really matter.

    1. Re:Does that mean? by Runaway1956 · · Score: 5, Interesting

      There is no line. Algorithms were never meant to be patented. If you're using an algorithm, and you don't want other people to know what you're using, then it's a TRADE SECRET. Funny thing though, is that anyone can decompile your software, and uncover your trade secret. So, what happened is, everyone tried to get their not-so-secret secrets to be covered by a patent.

      It's a corruption of the system. Nothing more, nothing less.

      --
      "Windows is like the faint smell of piss in a subway: it's there, and there's nothing you can do about it." - Charlie Br
    2. Re:Does that mean? by Karl+Cocknozzle · · Score: 3, Interesting

      Yes, but the next question is whether or not there should be some protection of trade secrets. Given a state actor aggressively hacking most major companies, and a distributed threat against smaller companies, there is a case to be made for some protection.

      I'm not sure what "protection" that would provide: China already is breaking the existing laws of the United States, what makes you think a regimen of laws to protect "trade secrets" will stop them? What it will be useful for, though, is hushing up whistle blowers.

      --
      Who did what now?
    3. Re:Does that mean? by Theaetetus · · Score: 5, Informative

      There is no line. Algorithms were never meant to be patented.

      35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

      Algorithm: A process or set of rules to be followed in calculations or other problem-solving operations, esp. by a computer.

      I'd say it's pretty clear that algorithms were meant to be patented, provided they were new and useful and met the other conditions of the patent act.

    4. Re:Does that mean? by gwolf · · Score: 4, Interesting

      Right — And nowadays, if you *really* want to protect your secret, you don't even have to ship it to your customer: Just offer it as a Web service. No way to decompile that (although it can, of course, be reverse-engineered).
      Given an enough-connected world, trade secret is again tenable for algorithms. Not everything can work depending on a Web service, but it pushes quite far the need.

    5. Re:Does that mean? by K.+S.+Kyosuke · · Score: 5, Interesting

      35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

      Hm. Hmmm. There's this talk about "machine", "manufacture", and "matter" that makes me think whether "process" meant actually meant "technological process" (including, say, the chemical ones). When exactly was this law written? Before or after Turing? :-) Given the fact that algorithms are essentially very complex equations, one would expect that mathematics would have been mentioned if that were the case.

      --
      Ezekiel 23:20
    6. Re:Does that mean? by supertall · · Score: 2

      I'd argue that the spirit of 35 USC 101 refers to physical processes, not abstract ones; at most a practical implementation of an abstract algorithm is what is patentable, not the algorithm itself. The Juducial Exceptions explain this further. This was decided by Gottschalk_v._Benson, and seems to have been confirmed by the current case.

    7. Re:Does that mean? by Karl+Cocknozzle · · Score: 3, Interesting

      China already is breaking the existing laws of the United States

      How, by having Chinese people go visit US and commit crimes over there?

      By invading systems in the United States they are, in fact, violating US law. It doesn't matter where you are, when you commit a crime against someone (or a property crime against some thing) in the United States you are breaking United States laws. Now, they're doing so in a way that seems unlikely to lead to prosecution or conviction, but the laws have been broken. You can't come to the US, whether in physical or virtual form, and act with impunity. Laws do in fact apply to Chinese nationals, and if any of them showed up on US soil they could be arrested, tried, and jailed for their crime: Acting under state orders is not an affirmative defense that I've found.

      --
      Who did what now?
    8. Re:Does that mean? by ceoyoyo · · Score: 2

      Algorithms are not "complex equations" any more than a machine is. You're making the same mistake patent examiners have been making, except in the opposite direction. "On a computer" is irrelevant to the patentability of an algorithm. That means "on a computer" has nothing to do with whether an algorithm deserves a patent, and it also has nothing to do with whether it doesn't deserve a patent.

      Why should, say, the marching cubes algorithm, which transforms bitmap data into polygonal surface data, not be worthy of a patent when the set of instructions for turning bauxite into aluminum is? Because one uses a silicon chip and electricity and the other uses a pressure vessel and electricity?

    9. Re:Does that mean? by K.+S.+Kyosuke · · Score: 4, Interesting

      Algorithms are not "complex equations" any more than a machine is.

      Oh, but Alonzo Church says they are! And I'd prefer Alonzo Church's words to your words any day.

      Why should, say, the marching cubes algorithm, which transforms bitmap data into polygonal surface data, not be worthy of a patent when the set of instructions for turning bauxite into aluminum is? Because one uses a silicon chip and electricity and the other uses a pressure vessel and electricity?

      I think there are both practical differences (investment levels, for starters: it's quite expensive to experiment with chemical processes, drug manufacture, upscale them, AND comply with medical and industrial regulations, whereas algorithm design is hardly more expensive than any other kind of academic or applied mathematical work) and theoretical differences (example by contradiction: if algorithms indeed *are* patent-worthy, why not the rest of mathematics? And if the rest of mathematics is patent-worthy, why hasn't any country done that yet? Case in point: in my country, anything derivable from math is explicitly ruled out as unpatentable).

      --
      Ezekiel 23:20
    10. Re:Does that mean? by K.+S.+Kyosuke · · Score: 4, Funny

      By invading systems in the United States they are, in fact, violating US law.

      Unlike the US, which by invading systems in Iran doesn't violate any law at all! :-)))

      --
      Ezekiel 23:20
    11. Re:Does that mean? by the+eric+conspiracy · · Score: 2

      Patents cover implementations, not ideas, i.e. algorithms. This is why software patents are written "algorithm x run on a computer". This provides the implementation. The algorithm is NOT patented, you can still freely use the algorithm by hand, on an abacus, etc.

      The Bayer process is not presented as a formal mathematical statement. It's not possible to present it as such because the physics and chemistry behind it is not axiomized. The steps of building a machine to carry out the Bayer process do not involve abstract coding of a representation of the Bayer process which is then implemented on a general purpose chemical processor. Instead the process is implemented on a special purpose physical instrumentality. It is this special purpose physical instrumentality that is patented. Not the abstract laws of chemistry that the process is based on. And the result? The physical reality of a flow of molten metal.

      This is very different from the CS algorithms that are patented as formal mathematical steps that are coded in an abstract processing language and carried out on a general purpose Turing machine. No physically specialized machine is needed and no physical product results.

      In fact it is stunningly obvious that such an abstract algorithm be processed on a computer. This obviousness itself is a major problem with software patents.

      The courts are starting to realize this. Hopefully it will become widely accepted and this era of abstract process patents that really have no distinct implementation will come to an end.

    12. Re:Does that mean? by Artifakt · · Score: 2

      No, no there isn't. Using a patent MEANS you agree to disclose a secret, period. A trade secret MEANS you are going to take care of protecting that secret yourself without the taxpayer having to meet the costs, as we do for patents. Your question MEANS 'Is there some way I can keep all the benfits for me while getting someone else to shoulder more of the costs?'

      --
      Who is John Cabal?
    13. Re:Does that mean? by the+eric+conspiracy · · Score: 3, Informative

      Decisions have determined the limits of the statutory classes. Examples of subject matter not patentable under the statute follow:

      A. Printed Matter
      For example, a mere arrangement of printed matter, though seemingly a "manufacture," is rejected as not being within the statutory classes. See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).

      B. Naturally Occurring Article
      Similarly, a thing occurring in nature, which is substantially unaltered, is not a "manufacture." A shrimp with the head and digestive tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941).

      C. Scientific Principle
      A scientific principle, divorced from any tangible structure, can be rejected as not within the statutory classes. O"Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).

      Section C disallows abstract mathematics from being the subject of patents.

    14. Re: Does that mean? by ustolemyname · · Score: 4, Informative

      No, the US knows full well they are violating Iranian law. They, like most, just don't care about Iranian law.

    15. Re:Does that mean? by LateArthurDent · · Score: 2

      Why should, say, the marching cubes algorithm, which transforms bitmap data into polygonal surface data, not be worthy of a patent when the set of instructions for turning bauxite into aluminum is? Because one uses a silicon chip and electricity and the other uses a pressure vessel and electricity?

      The computer is a general purpose machine that will run whatever program you write for it. That program is copyrightable, and thus already protected. It doens't need any more protection than that.

      The machine you build for processing bauxite has one function. And instructions to build the processing plant are not copyrightable (in the same way recipes are not copyrightable). Therefore, the process is patentable.

    16. Re:Does that mean? by rmstar · · Score: 2

      Why should, say, the marching cubes algorithm, which transforms bitmap data into polygonal surface data, not be worthy of a patent when the set of instructions for turning bauxite into aluminum is? Because one uses a silicon chip and electricity and the other uses a pressure vessel and electricity?

      Because I don't want it to be patentable. I find patents ugly, inhuman, and perverse. They make thinking dangerous. When it is about software, particularily so.

      I have a say in this matter, however small it may be, and I don't want algorithms to be patentable.

    17. Re:Does that mean? by dgatwood · · Score: 2

      In fact it is stunningly obvious that such an abstract algorithm be processed on a computer. This obviousness itself is a major problem with software patents.

      That's not really the problem. It was stunningly obvious that the assembly line (Olds patent) would involve people doing the assembly. That, in itself, does not make the patent obvious.

      What makes software algorithms problematic is that there is usually exactly one way to do something, or very nearly so. Therefore, a patent on "a means to do X" usually translates to a patent on "doing X". Given a mathematical data compression algorithm, for example, apart from performance optimizations by vectorization and other tricks, there's usually exactly one way to implement it that doesn't result in precision loss.

      The intent of patent law has always been that the obviousness test is not on the problem to be solved or the implementation of the steps to solve it, but rather on whether the steps would be obvious to someone who had not seen them, given the task it is supposed to concern. If there is exactly one way to do it, or exactly one way to do it without performing extra steps, or exactly one way to do it that isn't utterly idiotic, then the steps are obvious, and do not deserve a process patent.

      For this reason, any patent in which the supposedly inventive step is "on a computer" is bogus, not because the concept of doing it on a computer is obvious, but because it is begging the question. The problem can be stated as "How would I do this on a computer?" and the answer is "On a computer." The obviousness test fails because the obvious way to do things on a computer is to approximate the way it is done in the real world. Therefore, the steps are obvious. If the steps are substantially unusual in some way that does not occur in the real world, then there's something non-obvious, and it might be worthy of a patent.

      --

      Check out my sci-fi/humor trilogy at PatriotsBooks.

  3. A small first step. by wulfmans · · Score: 3, Interesting

    Now how about fixing the rest of the patent system?

  4. Bilski by Etherwalk · · Score: 4, Interesting

    It is worth noting that despite the difficulty garnering a majority, this was a case with particularly good reasons to expect patent invalidation. First, it is conceptually similar to the hedging risk patent struck down in Bilski--i.e. in broad brushstrokes, the closest thing to it that the Federal Circuit would have thought about first was struck down. Second, and the real crux of it, is that the computer just wasn't that important. Third, although not addressed by the concurring opinion, it was about as obvious as one can imagine.

  5. As an inventor of many patents by MLBs · · Score: 2

    Most of which are forced by my employer as means to "protect our IP"
    I agree that a lot of patents filed and issued I would not consider a legitimate invention.

  6. borked pdf link, or just for me? by girlinatrainingbra · · Score: 4, Insightful
    The pdf link gets me to an error message page: Error

    Error

    This page can't be displayed. Contact support for additional information. The incident ID is: 0.

    on the court's web page. Is it just for me, or a bad link?

    According to Groklaw, however, one of the judges said

    ``Let's be clear: if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents,'' Moore wrote.

    Let's hope that Judge Moore is right, and these patents and deemed ineligible for patenting at all.

    1. Re:borked pdf link, or just for me? by JakeBurn · · Score: 5, Insightful

      And I completely agree. Software should be treated like a recipes. People who put the time in to figure out how something is cooked can easily make a generic version. People still pay for the good versions of things because everything else that goes into the product is better.

  7. Good! by Murdoch5 · · Score: 3, Funny

    Patents are the worlds most ridiculous form of protection ever invented. If your a company and you make a great product that it doesn't matter if someone comes to the market with the same product, if your product is better it will win out. Patents are "But Mom", of the business and technology world. Right now some companies are more focused on getting the patents to market then the product they protect. Patents destroy open development and open collaboration and take everything to a closed tangled web of lawyers and judges instead of the open work bench of weekend builders.

    1. Re:Good! by leonardluen · · Score: 5, Insightful

      at least patents, unlike copyright, still have reasonable expiration dates.

    2. Re:Good! by Monty845 · · Score: 3, Interesting

      Suppose I invest $1B in researching a new drug, getting it through FDA approval, and bringing it to market. Then you immediately offer a generic version that is exactly the same composition. Our drugs are functionally identical, there is no way I can offer a superior version because when it comes right down to it, the composition is what valuable, and its easily replicated. How will I make my $1B back when you can offer the drug at a price that never needs to pay back the research investment. Don't get me wrong, the patent system is seriously messed up, but there is a need for patents in some cases.

    3. Re:Good! by Murdoch5 · · Score: 2

      In some cases yes, I'll agree that if you have 1B dollar investment.

    4. Re: Good! by msparker · · Score: 4, Interesting

      This is, of course, one of the main arguments for protection against copying, but on the other hand, the fashion industry does not have this kind of protection and there is a lot of innovation there. It is argued that this innovation is in large part a result of the lack of copy protection. The high end must have something new to sell after they are copied. Also, this copying frequently involves some degree of change itself.

    5. Re:Good! by greg1104 · · Score: 2

      It costs a lot of money to get a patent and take someone to court for violating it. It isn't a game for a small business to play. The odds your small business will be sued into oblivion by a larger company asserting frivolous patents are far higher than the odds you'll sue one successfully.

  8. Not really about software patents by meustrus · · Score: 5, Interesting

    It looks to me like the judges are finally deciding not against software patents in general, but patents of the type "doing X, but on a computer" or "doing X, but on a smartphone". The judgement is basically that you cannot patent something that's already patented, or is a natural law, or is an abstract concept not specific to any particular application, just because you describe it in an unusual way or put it in a new context, i.e. "turning a page, but on a touchscreen instead of an actual page" or in this particular case, "hedging risk, but by a computer algorithm instead of by bankers". Also not allowed would be "the browning of grain-based spongy material through local application of heat", also known as "making toast".

    --
    I sometimes ask revealing, often ignorant-seeming questions. Maybe they're harder to answer than you think.
  9. Pretty Vital Issue! by MarkvW · · Score: 4, Insightful

    Robotic manufacture is going to go crazy in the next decade and it's going to change everything.

    Software is needed to make that shit work. If software patents can make (profitable) roadblocks to 3d implementation, then robotic manufacture is going to go someplace besides the USA.

    This is so obvious that even the Supreme Court is going to see it. (Congress might need some 'lobbying' to understand it, though.)

  10. Re:should have an xkcd rule for patent application by dgatwood · · Score: 2

    Each application should be accompanied by an xkcd style cartoon (probably longer than 4 panels, but typically less than 30) describing the invention and why it's useful and novel. The typical format would be: this is the current situation; here's what we're adding that's new; here's some detail about our method. If the xkcd is terrible or opaque, that should be a red flag.

    They would always be #927.

    --

    Check out my sci-fi/humor trilogy at PatriotsBooks.