

US Supreme Court Will Hear Case Re: Standards for Software Patent Eligibility - jakewalker
http://www.scotusblog.com/case-files/cases/alice-corporation-pty-ltd-v-cls-bank-international/

======
leeoniya
can you imagine if every RFC had been turned into a patent where we would be
today?

i think this alone should be telling of how every software patent rides on the
goodwill of a culture of open source and standardization that has existed for
decades (when true innovation was taking place).

it's complete insanity that patents can be granted for inventions which rely
so fundamentally on an infrastructure which could have only been built so
successfully - and explicitly - without them.

~~~
rayiner
A substantial part of the work that resulted in the RFCs happened pursuant to
federal funding before December 1980. This is significant because prior to
December 1980, the enactment of the Bayh-Dole Act, inventions developed in
federally funded programs had to be assigned to the government. Therefore,
there was little incentive to patent those inventions.

If the developments had happened today, at MIT, BBN, etc, they would be
patented.

~~~
malandrew
Are there any studies that do a deep analysis of the impact of the Bayh-Dole
Act? Were there any benefits? If not, is this an act that we should lobby to
undo?

------
twoodfin
IANAL, but I'm surprised by the EFF's amicus brief. A large portion of it is
an enumeration of the deleterious effects of NPE "trolls", but from my
understanding of the case, it's purely about establishing better guidance on
what is or isn't patentable under section 101. SCOTUS seems unlikely to be
moved by the pain caused by NPE's, when Congress could readily change how
patent infringement or licensing works for PE's vs. NPE's if they considered
it a serious problem.

Obviously they still got the cert, though not of the particular case they
wanted.

I'm interested to hear how some of the much brighter legal minds on hn would
handicap this case. My uneducated guess is that the patentability of software
will largely survive, but the Court will try to formulate a test designed to
exclude claims that would be clearly too abstract were they not "instantiated"
on a computer. Something like the Amazon 1-click patent would probably
survive, while the _Alice_ patents would not.

~~~
WildUtah
Last time the patentability of business methods came around was 2010's Bilski
v. Kappos case [0]. Software was discussed as a related matter.

The Supreme Court rejected any specific test as dispositive for patentability.
The Court of Appeals for the Federal Circuit [1] had advanced a "machine or
transformation" test as the standard for abstraction and unpatentability. That
test would have required that a patent specify a specific machine or a
transformation of a form or state of matter somehow in order to be
sufficiently concrete. It was a vague test that would have allowed almost
anything not as awful as Bilsky's application, which essentially claimed
various century old hedging strategies whenever implemented on a computer.

The Supreme Court ruled 9-0 that the test was an indicator of abstraction but
not definitive. It also ruled 9-0 that Bilsky's patent was garbage.

The patentability of business methods in general was discussed in the
opinions. The great John Paul Stevens [2] wrote the dissent in Diamond v.
Diehr [3] thirty years prior explaining why and how software patents were
terrible and should never be allowed, but only gained four votes. He wrote an
opinion explaining again why software patents should not be allowed and gained
four votes again in Bilsky in a court where every member but him had been
replaced in the interim.

Unfortunately Stevens is retired (it's well earned -- he's 93) and the leading
intellectual property expert on the court is now Breyer. Breyer wrote the
dissent against effectively permanent copyright terms in Eldred v. Ashcroft.
Sotomayor and Ginsberg have also been in the Stevens camp on patentability.
New Justice Elena Kagan usually votes with those three. So we can hope for
four votes for software freedom once again.

There were also four votes in Bilsky for patenting software, though not with
any visible enthusiasm. They were Roberts, Alito, Kennedy, and Thomas.

Finally Scalia refused to join just one opinion and split between the two
without addressing the serious ongoing questions of patentable subject matter.
So the final tally was 4-1-4.

The CAFC split 5-5 on the Alice [4] case the Supreme Court just decided to
hear. The split was similar to the Supreme Court in Bilsky and did not resolve
any simmering issues because of the even split.

Note that even the Google and EFF briefs on the Alice case didn't suggest
outright abolition of software patents at the CAFC. Justice Stevens may have
seemed like a lonely crusader by 2010. It may be that the enemies of our
industry have gained so much power in Washington and the patent bar that the
best we can hope for is a slow, slow rollback. Certainly there are a lot of
people making billions without the trouble of actually building anything who
can spend their efforts to keep the racket going. Without the need to make
things, they can lobby full time to continue getting rich at the expense of
innovators and startups and the public through software patents.

The most likely result here is a 4-1-4 split again, unless a new way to appeal
to Scalia can be found. Real progress from the Supreme Court probably requires
a new justice; the current pattern indicates that pragmatic Democratic
appointee is much more likely to abolish software patents and a movement
Republican appointee is most likely to definitively endorse them, but
individual justices can always assert their own visions once appointed.

[0]
[http://en.wikipedia.org/wiki/Bilski_v._Kappos](http://en.wikipedia.org/wiki/Bilski_v._Kappos)

[1]
[http://en.wikipedia.org/wiki/John_Paul_Stevens](http://en.wikipedia.org/wiki/John_Paul_Stevens)

[2]
[http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_...](http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Federal_Circuit)

[3]
[http://en.wikipedia.org/wiki/Diamond_v._Diehr](http://en.wikipedia.org/wiki/Diamond_v._Diehr)

[4]
[http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA)](http://en.swpat.org/wiki/CLS_Bank_v._Alice_\(2012,_USA\))

~~~
twoodfin
From the tilt of your comment, I assume you think that a properly constituted,
wise SCOTUS would rule software patents unconstitutional, or more likely in
violation of statute. What's the short case for that? I don't see how my black
box with some novel capability becomes un-patent-worthy as soon as I replace
the gears and levers inside with a digital computer.

~~~
WildUtah
There are so many conclusive arguments against software patents that the
result is overdetermined. Nevertheless, lining the pockets of the patent bar
is likely to overcome any quality of argument as long as computer programmers
have even less Washington influence than illegal alien terrorists.

I'll give a few arguments, but first let's consider yours. Black boxes are
never patentable. The concept of patents is that you reveal exactly how your
process works and you get a limited monopoly on the totally new and non-
obvious bits of your process for the public benefit. It always matters how the
process works inside. That's the theory anyway; the patent bar loves to rob
the public by cheating the bargain.

1\. Computer programmers are overwhelmingly against software patents. For the
first time in my life I see educated people advocating the abolition of the
entire patent system, even at the cost of life saving drugs, just to get
patents out of computer software (John Siracusa, to cite a public personality,
but there are many, many more who agree). Programmers hate patents in their
industry by something like ten or twenty to one.

2\. Software patents are harmful to innovation. They created almost all the
modern patent trolling crisis. They shutdown startups and innovative projects
and block open source. They promote vendor lock-in and empower giants over
small companies with new ideas.

3\. Software is math and both math and mental processes are SCOTUS identified
ineligible subject matter.

4\. The quality of software patents we see is uniformly bad. None of Apple's,
Motorola's, Oracle's, Samsung's, or Microsoft's recent patents in litigation
or threats thereof have contributed anything to the public. The billion dollar
patents from Eolas and NTP were pure garbage. None of the troll patents we
hear about all the time ever contributed anything to our art or even
constitute inventions at all. Bilsky, Ultramercial, and Alice are all
ludicrously abusive. Whole teams of programmers could work for decades
searching without finding a single plausibly valid and useful patent in their
field.

5\. When we bought our computers, ever since the first general purpose
computers in the 1940s, we have done so expecting to run programs on them.
Using a machine for its expected and customary use is not subject to any
patents beyond the patents on the machine itself. Running any program at all
is the expected use of a computer, at least for programmers who write their
own programs, so any program running on a computer is automatically in the
prior art. In fact, we already have a list of every program our computers are
expected to run and it includes every program any computer can run. We haven't
printed the list out (not enough paper), but we know exactly how to produce
any part of the list for your pleasure on demand.

Now the patent bar wants to tell us that programs we expected to run, that are
the conventional use of our machines, and that have been on our list since the
1940s are their brilliant inventions and they are going to prohibit us from
running them. No thanks.

~~~
DannyBee
" lining the pockets of the patent bar is likely to overcome any quality of
argument as long as computer programmers have even less Washington influence
than illegal alien terrorists."

1\. The patent bar[1] itself has little to no influence in Washington. Nobody
cares what they think. Congress cares about what the companies some of these
folks work for think, but AIPLA, for example, has never had any real lobbying
impact. They've complained about every rule change, every bill, every
everything that has ever "hurt" their members. As far as i'm aware, there has
never been any changes that have resulted from their comments.

2\. The influence of computer programmers in Washington is mostly due to the
fact that they spend time posting here instead of doing anything about
anything. This is an entirely self inflicted wound, and the sooner programmers
stop convincing themselves this isn't true, the better off they will be.
Watching this happen without fail since _1997_ is one of the reasons i became
a lawyer.

I would wager a large amount of money if even 1% of the local user groups of
programmers of various sorts that still exist, each appointed a
representative, and had that person go to their local congressperson/senator,
and said "I represent a concerned group of local small business people and
programmers, and software patents are destroying our ability to make a living
and causing us to lose jobs", that software patents would have been a solved
problems years ago.

[1] I'm also not sure why you keep saying "the patent bar".

The patent bar itself is not of one mind, and there is no real, single
organized patent bar that does anything, because the patent bar are those
attorneys and agents licensed to practice before the PTO, and since being a
lawyer is not a requirement, they come from a variety of walks of life, not
just a bunch of attorneys. The actual patent bar (IE as run by the PTO) offers
literally no opinions on anything, and certainly does not lobby, just like the
bar of the 9th circuit court of appeals doesn't lobby.

There are a number of outside organized collections of patent attorneys, like
AIPLA, but as mentioned, none are really "the patent bar". There is no single
mind among these folks, either, Most of the inside and outside litigators I
have met in the corporate realm rail against software patents. So even "the
patent bar" is not consistent here, it's more like you have the criminal
defense lawyers vs the prosecutors, rather than a single "criminal law bar".

~~~
throwawaykf
_> ... and said "I represent a concerned group of local small business people
and programmers, and software patents are destroying our ability to make a
living and causing us to lose jobs", that software patents would have been a
solved problems years ago._

That is very true, but my very strong hunch is that this hasn't happened
because software patents are _not really a problem_ \-- at least not anymore.
As I've said elsewhere, the vast majority of programmers barely even know what
a patent is, and tons more consider them a good thing. Those are also
overwhelmingly the people that don't spend time posting on places like this.

Another indirect piece of evidence is the current uproar in Congress about
patent trolls: A handful of trolls (that I'm aware of) -- like the WiFi guys,
the scan-to-email guys, the vehicle-tracking guys -- send out demand letters
to mom & pop businesses, and suddenly Congress is up in arms. It's possible,
but I find it unlikely that, if there are so many companies involved in
software patent litigation, there are not even a few that would reach out to
their representatives.

------
jakewalker
Because it is not (yet) reflected on the SCOTUSblog page, here is the Order
granting certiorari:

[http://www.supremecourt.gov/orders/courtorders/120613.zr_4g1...](http://www.supremecourt.gov/orders/courtorders/120613.zr_4g15.pdf)

The actual link above links to a number of amicus briefs urging the court to
grant (or not grant) review, and would be good reading to understand the
issues in the case.

Links to Coverage:

[http://www.scotusblog.com/2013/12/court-to-rule-on-patent-
ri...](http://www.scotusblog.com/2013/12/court-to-rule-on-patent-rights/)

[http://www.reuters.com/article/2013/12/06/us-usa-court-
softw...](http://www.reuters.com/article/2013/12/06/us-usa-court-software-
idUSBRE9B50QJ20131206)

------
baldfat
There needs to be more money spent on staff at the US Patent Office so they
don't just rubber stamp patents and let the courts decide.

1) Something needs to be a true innovation to be a patent 2) The process
should take a lot of man hours.

I don't feel either of those things happen due to shortage of staffing and a
wild everything is possibly patentable.

~~~
rayiner
> 2) The process should take a lot of man hours.

The intellectual property laws generally reject this "sweat of the brow"
doctrine.[1] The idea is, that someone should be able to get a patent for
something that results from a flash of insight rather than years of expensive
R&D.

I think rejection of this doctrine is a grave mistake as applied to patents.
Essentially, it fundamentally misunderstands the nature of innovation in the
21st century. A new invention does not happen because someone has a clever
idea one day while mulling over a problem during lunch. That may have been
true in the early 20th century and earlier, but it's not true today. Today,
invention is driven by research labs staffed by expensive PhDs using even more
expensive capital equipment. The purpose of patents in the 21st century is to
protect and be able to transact in the results of this capital-intensive R&D.

E.g. Adonit has a new iPad stylus that's 1.9 mm versus the 6 mm typical for
iPad styluses
([https://adonit.net/jot/script](https://adonit.net/jot/script)). The
capacitive touch matrix on the iPad normally cannot pick up on such a narrow
point, so they use some active sensing technology that relies on measuring the
electronic field emitted by the capacitive matrix and feeding that back to
special software over Bluetooth. For this they have a patent. This was not a
flash of insight. This was the result of measuring EM field strength with
expensive equipment, buying lots of iPads to test product variability, doing
lots of experiments and iterating the design. The purpose of a patent here is
to keep companies from free-riding on all that R&D, not to reward anyone for a
flash of insight.

By rejecting sweat of the brow doctrine in the context of patents, patent law
has become divorced from its underlying economic justification: the prevention
of free-riding. The magnitude of the disincentive created by free-riding
depends very much on the capital investment that went into the invention.

[1] Sweat of the brow doctrine is more typically used in the context of
copyright, but is applicable to a degree for patents as well. The doctrine has
opposite effects in the two contexts. In copyright, it has been used to reject
copyright-ability for things like phone books that might take work to compile,
but aren't "original works." However in patents, it has been used to justify
granting patents for "inventions" that weren't a lot of work to invent.

~~~
nimble
> This was not a flash of insight. This was the result of measuring EM field
> strength with expensive equipment, buying lots of iPads to test product
> variability, doing lots of experiments and iterating the design.

So what do you think is going to happen if someone else takes the same flash
of insight ("use active sensing technology to achieve a smaller stylus"), puts
in their own brow sweat to work out the details, and deploys a competing
product? Adonit isn't going to sue for infringement, right? And if they do,
they won't win. Right?

~~~
rayiner
I'm talking about a hypothetical change to the patent system, so your question
about what would happen under the current system is pointless.

As for what _should_ happen, then under my proposal, proof of independent
invention should be a defense to infringement. This falls out of the first
principles (the economic concept of free-riding). The purpose of patent
protection, economically, is to protect some $(big number) capital R&D
investment from a competitor that trivially copies it for $(small number). If,
instead of trivially copying it for $(small number), the competitor instead
goes to the trouble of engaging in its own R&D for $(big number), then there
is no free-riding and no reason to find infringement.

~~~
nimble
I see what you meant.

Your proposal sounds more like copyright-for-ideas than patents. In such a
system, why would you need to apply for a patent? Samsung copied your phone
design? Sue them for that, holistically, rather than finding some arbitrary
set of "inventions" that they infringed on. It sounds like the jurors mostly
looked at things this way, anyway, when deciding who's morally right. Zynga
probably wouldn't like the change, though.

~~~
rayiner
Useful articles do not fall under copyright, except for the separable portion
that can be considered purely aesthetic.

E.g. if P&W disassembles a Rolls-Royce engine, and copies the shape of the
turbine blades (which are the result of very expensive R&D), Rolls-Royce can't
assert copyright because the shape of turbine blades is functional, not
aesthetic.

~~~
nimble
Now you're the one who's ignored that this was hypothetical.

My point was that if we go ahead with your proposal, such that patent
protection becomes about preventing copying work rather than (possibly
accidentally) duplicating an idea, then what's the point of filing for
patents? It could work just like copyright does now.

Rayiner: I can't respond to your next post for a while, but you didn't address
the main point I was attempting to make in comparison to copyright: You don't
need to file. There would be rules that you can't significantly copy someone
else's hard work. If someone copies your hard work, it will be evident from
the facts, just as it is evident with copyright violations, and you can sue
them. No patent required.

~~~
rayiner
It wouldn't work just like copyright does, even if you extended copyright to
functional designs.

Consider how patents and copyrights interact with respect to software. Say you
make a new audio encoder leveraging some psycho-acoustic property. Copyright
protects the literal source code only. It doesn't prevent someone from doing a
"clean room" reimplementation of your software, and in the process taking
advantage of all of the expensive testing you did to validate your psycho-
acoustic model.

Patents as they exist today might apply to any encoder leveraging that psycho-
acoustic property. I.e. a competitor couldn't hold up the fact that it
performed independent testing to build its own psycho-acoustic model as a
defense to patent infringement.

My proposal falls in-between. You can prevent someone from reverse-engineering
your program to copy the essential details, which is the fruit of your
expensive R&D. However, you can't prevent someone from using the same basic
idea when they go to the expense of deriving those essential details for
themselves from the basic idea. What patents as they exist now protect, and
what my proposal explicitly wouldn't, is the "flash of insight." The
realization that multiple people may have in response to some journal paper
that some newly-described psycho-acoustic phenomenon may be used to build
better audio encoders.

~~~
nimble
Implicit in my characterization "copyright for ideas" is that this proposal
will somehow _extend_ copyright, as it's currently understood, to cover ideas.
I understand your point that copyright as it exists today does not cover more
abstract ideas.

The main difference I was attempting to emphasize between copyrights and
patents is that copyrights are automatic whereas patents must be filed and
granted. And my point is that your proposal, which seems quite reasonable to
me, would seem to work just fine with the copyright model of automatic rights:
no patent filing required. And for that matter, the distinction between
elaborate designs, which cannot be copied, and "flashes of insight", which
can, looks a lot to me like a principle of fair use.

No?

------
shmerl
So this is about functional claiming in patents?

------
xutopia
That class action lawsuit is horrible... 23andme is awesome and I love having
it. I never felt cheated or any of that because I read it carefully.

~~~
dragonwriter
Reading it carefully doesn't help if the information provided isn't accurate.

