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US Supreme Court Invalidates Patent For Being Software Patent

Posted by timothy on from the arts-and-science-vs-arts-and-sausages dept.

ciaran_o_riordan (662132) writes The US Supreme Court has just invalidated a patent for being a software patent! To no fanfare, the Court has spent the past months reviewing a case, Alice v. CLS Bank, which posed the question of "Whether claims to computer-implemented inventions ... are directed to patent-eligible subject matter." Their ruling was just published, and what we can say already is that the court was unanimous in finding this particular software patent invalid, saying: "the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention," and go on to conclude that because "petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible." The End Software Patents wiki has a page for commenting the key extracts and listing third-party analyses. Analysis will appear there as the day(s) goes on. Careful reading is needed to get an idea of what is clearly invalidated (file formats?), and what areas are left for future rulings. If you can help, well, it's a wiki. Software Freedom Law Center's website will also be worth checking in the near future.

35 of 220 comments (clear)

  1. Oh please please please by gumbright · · Score: 5, Insightful

    Please let this lead somewhere good.

    1. Re:Oh please please please by johnnys · · Score: 4, Funny

      I think everyone else was paralyzed with the shock of seeing such "blinding common sense" come from a government institution. You were the first person to recover from the shock, so you get first post.

      --
      Sometimes the "writing on the wall" is blood spatter...
    2. Re:Oh please please please by msauve · · Score: 3, Insightful

      If you figure it out, patent it!

      --
      "National Security is the chief cause of national insecurity." - Celine's First Law
    3. Re:Oh please please please by Tx · · Score: 4, Insightful

      I wonder if this ought to invalidate crap like the infamous Amazon one-click patent. After all it was also just a generic software implementation of a long-established system, namely storing someone's payment and address details for use with future purchases.

      --
      Oh no... it's the future.
    4. Re:Oh please please please by CanHasDIY · · Score: 4, Funny

      The SCOTUS also ruled that citizens have a right to challenge an IRS summons.

      If that headline makes its way to Slashdot, this sudden outburst of common sense may cause the majority of the community to become catatonic.

      --
      An enigma, wrapped in a riddle, shrouded in bacon and cheese
    5. Re:Oh please please please by dcw3 · · Score: 4, Informative

      You got it backwards...

      WASHINGTON—The U.S. Supreme Court on Thursday ruled taxpayers aren't automatically entitled to court hearings to question the motives behind a summons issued by the Internal Revenue Service. The decision was a win for the government, which argued a lower-court ruling made it too easy for taxpayers to obtain court hearings to examine IRS motivations for seeking detailed taxpayer information.

      --
      Just another day in Paradise
    6. Re:Oh please please please by msauve · · Score: 4, Informative
      It's not so simple either way, it's more nuanced. They provided a clarification of the rules to be applied:

      In an extremely brief and unanimous opinion by Justice Elena Kagan, the Court held that a taxpayer who wants to question Internal Revenue Service (IRS) agents about their motives for issuing a summons may do so if he can point to "specific facts or circumstances plausibly raising an inference of bad faith."
      ...
      it "will ensure inquiry where the facts and circumstances make inquiry appropriate, without turning every summons dispute into a fishing expedition for official wrongdoing."

      - Scotusblog.com

      --
      "National Security is the chief cause of national insecurity." - Celine's First Law
    7. Re:Oh please please please by ColdWetDog · · Score: 4, Funny

      Nope. That was on the Internet. That is completely different.

      --
      Faster! Faster! Faster would be better!
    8. Re:Oh please please please by pepty · · Score: 4, Interesting

      SCOTUS has been limiting intellectual property rights for several years now. Prometheus (also unanimous), Myriad, and now Alice. It seems like one thing they can all get behind.

    9. Re:Oh please please please by Solandri · · Score: 3, Interesting

      I wonder if this ought to invalidate crap like the infamous Amazon one-click patent.

      Unfortunately, you have to (1) be sued by Amazon for violating the patent (else you have no standing to challenge it), and (2) pay the expense of multi-year court battles with practically no hope of recouping your costs even if you win.

      OTOH, I actually like the one-click patent even though I think it's a stupid and invalid patent. It prevents other online stores from putting in a button which can cause you to instantly buy something if you accidentally click it (this has happened to me on Amazon).

    10. Re:Oh please please please by Rob+Riggs · · Score: 4, Funny

      Nope. That was on the Internet. That is completely different.

      How about "on a smartphone"? Surely I'm the first person to ever think of that.

      Or "on a plane", "in a car", "just like that, but yellow", "at the beach", "indoors", "during a snowstorm", or "while watching Pigs in Space"?

      --
      the growth in cynicism and rebellion has not been without cause
    11. Re:Oh please please please by mysidia · · Score: 3, Insightful

      I worry that the stupid FAT32 patent will still be around (since it deals with how a HDD is formatted),

      The fact that you can format a RAMDISK or an image file as FAT32; shows that the FAT filesystem actually an abstraction and claims about the abstract mathematical datastructures and parameters of the FAT filesystem really have nothing to do directly with the way the disk (or 'block' device) is formatted.

    12. Re:Oh please please please by mrchaotica · · Score: 4, Funny

      I do not like green eggs and ham!

      --

      "[Regarding the 'cloud,'] ownership was what made America different than Russia." -- Woz

    13. Re:Oh please please please by mysidia · · Score: 3, Insightful

      Unfortunately, you have to (1) be sued by Amazon for violating the patent (else you have no standing to challenge it)

      If your business was damaged by their enforcement activities in the past, regarding their claims about their patent -- such as cease and decist letters, or you were required to license the patent, OR you had an offer to license the patent and refused to license the patent, you might also have standing to pursue declaratory judgement.

      As far as we know; Amazon took action against Barnes and Noble once, and hasn't sued anyone since, so this isn't likely.

    14. Re:Oh please please please by omnichad · · Score: 3, Informative

      Exactly - it's not because it's software, it's because simply using a computer didn't make it a novel invention.

    15. Re:Oh please please please by dnavid · · Score: 4, Informative

      I wonder if this ought to invalidate crap like the infamous Amazon one-click patent. After all it was also just a generic software implementation of a long-established system, namely storing someone's payment and address details for use with future purchases.

      I don't think so. My read of the opinion is that what the court found to be lacking in the Alice patents was specificity of invention. In other words, the patent claimed the idea of doing something, but not an actual specific implementation of doing something; the actual invention itself. The court held that you cannot patent an idea, and just saying in the patent application "a computer that implements the idea" is not enough. You have to be very specific and claim something that is not obvious and automatic. Its possible Amazon's one-click patent is sufficiently specific that its still patentable. But what might happen is that Amazon could lose the ability to challenge all forms of one-click, and could only protect its own very specific implementation of it. Its possible the *idea* of one-click purchase could be held unpatentable, and open the door to non-trivial alternate implementations of the same idea. For example, the Amazon patent specifies pre-registering payment information and assigning the customer a unique identifier than binds their electronic shopping cart with that payment information, such that using a single HTML button the purchase can be executed by referencing the payment information bound to the shopping cart's identification number. A one-click system that didn't specifically do that, but say used a single sign-on system that simultaneously authenticated against the payment database and the shopping cart system and triggered a third system to perform the payment process with both systems could be theoretically held to be a different invention to implement the same (unpatentable on its own) idea.

      I don't think the ruling directly invalidates the idea of a software patent. But I could see it limiting the claims of software patents enough to allow people to work around them more reasonably, by only requiring software implementers avoid using the exact, precise methods claimed within a patent, and not the entire idea the software patent implements.

    16. Re:Oh please please please by Darinbob · · Score: 3, Insightful

      It's hard to say. On the surface though it seems to at least invalidate one large class of software patents. That is, taking an existing idea and then doing it in software is not enough to make a new patentable idea. Which is exactly what so many companies encourage their employees to do when coming up with patents for the portfolio, and similar concept about reusing old ideas with new touch up paint.

      For example I was once at a company that did ultrasound imaging, and we had been encouraged in the software group to apply for more patents. One manager said that it could be ok to just take an idea and add "in ultrasound" to the end of it. The example was from a competitor which held the patent for "field upgradable software ... in ultrasound", and the patent actually had drawings of an optical disk being delivered via airplane to a remote location and being inserted into a machine.

      That points out the big problem really: all these companies feel the need to create all the patents because all of their competitors are doing it. If you're the only company in the field that has to pay licensing fees while everyone else is cross licensing instead, then you're at a serious disadvantage. It's a bit like working in a corrupt country, you feel a bit dirty about paying bribes but maybe you have no choice if you want to do business there.

  2. I'm really missing Groklaw by DrJimbo · · Score: 5, Insightful

    We need someone who is familiar with the law to explain this to us techies. PJ we need you!

    --
    We don't see the world as it is, we see it as we are.
    -- Anais Nin
    1. Re:I'm really missing Groklaw by msauve · · Score: 4, Informative
      You know the oft-made complaints about issuing patents for "idea, but on a computer?" This is from the ruling:

      Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result.

      Seems that the Supremes unanimously agree with those complaints.

      --
      "National Security is the chief cause of national insecurity." - Celine's First Law
    2. Re:I'm really missing Groklaw by Warhawke · · Score: 5, Informative
      This ruling extends the basic rule of Bilski that you can't patent an idea to the computer. Essentially, Alice Corp. states that you can't patent a general idea simply by appending the term "on a computer." What the case doesn't say is that all software patents are invalidated. Rather, the software has to be more than just a generic business idea expressed "on a computer."

      Alice Corp. was the assignee of several patents for mitigating "settlement risk" via software. Software claims in patent law usually occur in two parts: a method of performing the claimed function and a system for performing the prior claimed method. This basically lets a patent holder guard against people manipulating their way around the system or method claims to perform the exact same function, such as by using a remote server instead of a local hard drive, or querying before step A as opposed to after step A. Alice Corp. had both a system and method patent for mitigating settlement risk. Specifically, the claim contemplated two parties using a third-party intermediary, in this case a computer, to create account ledgers (or "shadow accounts," as the patent called them) based on the accounts of both primary parties, determining available versus unavailable funds, calculating a risk for a given set of transactions, and then issuing instructions to the parties telling them what transactions are permitted and what transactions are too risky to engage in.

      The patent itself was to "facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary." If this sounds like an abstract business method, that's because it is. Alice Corp.'s patent was basically a claim to mitigating settlement risk by employing a third party on a computer. The intermediary was just the computer in this case. The district court found that the patent was too vague, because it really only contemplated an idea. The Federal Court on first hearing reversed, saying that it wasn't "manifestly evident" that the patent ideas were abstract, so the case should be litigated rather than dismissed on summary judgment. On second hearing en banc (i.e. with all the Federal Circuit judges present, the Federal Circuit changed its position and determined that the method claims were invalid. There was some internal dispute, however, as to whether the system claims -- i.e. a claim over a computer that performs the function -- was valid.

      The Supreme Court determined, in an opinion written by Justice Thomas, that both the method and system claims were abstract and therefore invalid. The rule under a cased called Mayo Collaborative Services v. Promethius Labs requires that an abstract idea, to be patentable, must have some practically beneficial application to either the computer system implementing it or to some other kind of technology. For example, it might be common knowledge that plucking a guitar string emanates a harmonic frequency, so I can't patent plucking a guitar string, but if I find a new, beneficial use for plucking a guitar string, such as a patent on plucking guitar strings to encourage the growth and development of plants (yes, it's nonsensical -- I can't invent good, patentable things on the spot!), then I could patent that. Here, though, the court asked "whether the claims at issue here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement in a generic computer." Laconically, the Court concluded, "They do not."

      So what does this mean for software patents? Well they still are valid as more than just math. Though the Court didn't address the issue directly, it has been generally held that software is sufficiently transformative to warrant patentability. While not a favorite opinion here on Slashdot, that's not altogether nonsensical; if software is sufficiently artistic enough to be copyrightable, then it stands to reason that it has been sufficiently transformed from some

    3. Re:I'm really missing Groklaw by harperska · · Score: 4, Informative

      IANAL, but I am a software developer. One additional piece of the puzzle is that Thomas was very careful to use the term 'generic computer'. I.E. the system claims are invalid because the computer implementation at each step of the process does not need anything more than industry standard hardware, common APIs and algorithms/processes common and well known to the industry. Because the computer portion itself could be considered generic, it didn't make the unpatentable idea into a patentable process. That decision left the door open for software patents that require either specialized hardware, or truly novel algorithms not generally known to the industry to implement an otherwise unpatentable idea.

  3. Holy hell by GameboyRMH · · Score: 4, Funny

    There's no way this happened on purpose, something must be wrong.

    --
    "When information is power, privacy is freedom" - Jah-Wren Ryel
  4. Shock and Awe by Carcass666 · · Score: 5, Insightful

    A unanimous decision, authored by the most conservative voice on the court (Thomas) with a concurring opinion by one of the most liberal (Sotomayor). If this were the beginning of April, I would say this story was a prank. Yeah, it doesn't completely kill software patents, but it does seem to mortally wound the "business process + software = patent troll profit" problem that is plaguing software development. This is a good day for the judicial branch. It's a good day for the USA.

  5. Huh? by bunratty · · Score: 4, Informative
    It looks to me like the patent was invalidated because you can't patent an abstract idea. You can't patent the abstract idea of a vehicle with four wheels that uses an internal combustion engine to transport people and cargo. But you can patent the invention of a specific type of automobile, provided that you provide a concrete implementation of that idea by integrating building blocks into a new invention.

    Held : Because the claims are drawn to a patent-ineligible abstract idea, they are not patent eligible under 101. Pp. 5–17. (a) The Court has long held that 101, which defines the subject matter eligible for patent protecti on, contains an implicit exception for ‘ “[l]aws of nature, natural phen omena, and abstract ideas.’ ” As - sociation for Molecular Pathology v. Myriad Genetics, Inc. , 569 U. S. ___, ___. In applying the 101 except ion, this Court must distinguish patents that claim the “ ‘buildin[g ] block[s]’ ” of human ingenuity, which are ineligible for patent prot ection, from thos e that integrate the building blocks into something more, see Mayo Collaborative Ser - vices v. Prometheus Laboratories, Inc. , 566 U. S. ___, ___, thereby “transform[ing]” them into a patent-eligible invention, id., at ___. Pp. 5–6."

    --
    What a fool believes, he sees, no wise man has the power to reason away.
  6. You've got ESP by ciaran_o_riordan · · Score: 5, Informative

    Sorry, all you've got is me.

    If anyone can help, I've been building this wiki for five years now without a break:

    http://en.swpat.org/

    (And I'm working on campaigns against software patents since 2003.)

    --
    Expert in software patents or patent law? Contribute to the ESP wiki!
  7. Re:WTF by ShanghaiBill · · Score: 5, Informative

    the court was unanimous

    How did that happen?

    Most Supreme Court decisions are unanimous. In the last term, 52% of decisions were 9-0. Another 12% were 8-1.

  8. Yes, but for the wrong reason by Theaetetus · · Score: 3, Interesting

    It was invalidated because the process it describes is super super old. They only thing they added to the old process was using a computer. So if you invent something actually new. Then you can patent that. But "old idea + computer" is not patentable.

    If something's not new, it's invalid under 35 USC 102. If something is obvious, it's invalid under 35 USC 103. Both of these would apply to "old process + computer", and the patent should have been invalidated on those grounds...

    But, you have to prove that it's an old idea with some evidence in the form of prior art. And because SCOTUS can't do their own prior art searches, even though they knew it was an old idea, they couldn't invalidate it under 102 or 103... So, instead, they turned to 35 USC 101, and said that this was not a patent eligible method because it was directed to an "abstract idea"... But what's an abstract idea? According to Thomas, anything super super old, like you said. But that's what the other statutes are for.

    It's the right outcome - the patent was clearly invalid - but for the wrong reason.

  9. Please, stop posting sensationalist headlines by hydrofix · · Score: 3, Interesting

    At least according to Ars this is much less. It's just about killing specific kind of SW patents. Crucially, it still allows patents that "improve the functioning of the computer itself".

  10. Re:Goodbye 1Click by bluefoxlucid · · Score: 4, Insightful

    Yes.

    Similarly, assembling a wooden crate "with a nail gun" is not an inventive step over "the same way for thousands of years, but with a hammer."

    --
    Support my political activism on Patreon.
  11. Summary of decision by Impy+the+Impiuos+Imp · · Score: 5, Informative

    A summary of the decision:

    1. [We have long held that] Laws of nature, natural phenomena, and abstract ideas are “the basic tools of scientific and technological work.” and are not patentable.

    2. Restricting such an idea and applying it in a particular domain also is not patentable, long established.

    3. This is an abstract idea -- and a well-known one in your industry at that.

    4. Applying it "on a computer" is trying to patent it in a restricted domain, and thus not patentable.

    5. quo novus ordo et tu Brute seclorum GT 9-0 FO

    --
    (-1: Post disagrees with my already-settled worldview) is not a valid mod option.
  12. In other news... by dnaumov · · Score: 3, Interesting

    ... Supreme Court has upheld the patentability of software concepts, while setting limits: Companies can't patent a mere abstract idea on a computer, but can patent software ideas that advance or improve upon existing ideas.

    http://recode.net/2014/06/19/s...

  13. I wrote the headline, and it's correct by ciaran_o_riordan · · Score: 3, Insightful

    I know the headline is correct because Gene Quinn is hopping mad. Quinn makes a living by obtaining software patents and always says he can draft around any limits imposed by the courts, but here's what he's saying today:

    "an intellectually bankrupt opinion ... will render many hundreds of thousands of software patents completely useless ... On first read I donâ(TM)t see how any software patent claims written as method or systems claims can survive challenge."

    http://www.ipwatchdog.com/2014...

    I didn't want to trust my own reading, but I knew it was a big victory when I read Quinn's reaction.

    --
    Expert in software patents or patent law? Contribute to the ESP wiki!
  14. fun to be had by Charliemopps · · Score: 4, Funny

    For anyone that wants to troll a patent autorny that has his feelings hurt over this, go here: http://www.ipwatchdog.com/2014...

    In what can only be described as an intellectually bankrupt opinion, the Supreme Court never once used the word “software” in its decision.

    Hahahahahahaha... had tears in my eyes reading that.

  15. Re:Cryptographic and compression patents invalid? by gnasher719 · · Score: 3, Informative

    Since cryptographic and compression algorithms are mathematical in nature, would the "on a computer" apply to them so any cryptographic and compression related patent is invalid?

    You are looking at it from the wrong point of view. Here is an unpatentable idea: "We take messages, mash them up in a way so that only the intended receiver can put them back together, and then the intended receiver turns it back into the original message, while anybody else can't read it". No patent. In this case, there is a huge gap between the idea and actually making it work. If that gap is big enough and solving the problem is not obvious and therefore inventive, then it can be patented. And that's the case here. Cryptography and compression can be patented.

    The patent that this thread was about was an idea, and an implementation that didn't require any inventive step. No patent.

  16. Re:WTF by hubie · · Score: 3, Interesting

    Rehnquist wrote a very interesting book The Supreme Court that not only talks about the history of the court and some of its important cases (he did not include any cases that were decided by any judges that he served with), but he also described very nicely the day-to-day workings of a case moving through the system. I found it to be very interesting reading.