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The Courts Patents Software

US Supreme Court Invalidates Patent For Being Software Patent 220

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.
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US Supreme Court Invalidates Patent For Being Software Patent

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  • Huh? (Score:5, Informative)

    by bunratty ( 545641 ) on Thursday June 19, 2014 @11:42AM (#47272869)
    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."

  • by msauve ( 701917 ) on Thursday June 19, 2014 @11:54AM (#47273027)
    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.

  • You've got ESP (Score:5, Informative)

    by ciaran_o_riordan ( 662132 ) on Thursday June 19, 2014 @11:57AM (#47273045) Homepage

    Sorry, all you've got is me.

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

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

  • Re:Shock and Awe (Score:2, Informative)

    by Anonymous Coward on Thursday June 19, 2014 @12:00PM (#47273083)

    He regularly writes opinions. He just doesn't ask questions in oral arguments. Much the same as how I lurk and read others comments on Slashdot without asking questions myself, but there is still (often) interesting discussion here.

  • by dcw3 ( 649211 ) on Thursday June 19, 2014 @12:04PM (#47273121) Journal

    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.

  • Re:WTF (Score:5, Informative)

    by ShanghaiBill ( 739463 ) on Thursday June 19, 2014 @12:05PM (#47273135)

    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.

  • by msauve ( 701917 ) on Thursday June 19, 2014 @12:34PM (#47273471)
    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."

    - []

  • Summary of decision (Score:5, Informative)

    by Impy the Impiuos Imp ( 442658 ) on Thursday June 19, 2014 @12:37PM (#47273507) Journal

    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

  • by Warhawke ( 1312723 ) on Thursday June 19, 2014 @12:52PM (#47273661)
    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

  • by harperska ( 1376103 ) on Thursday June 19, 2014 @01:10PM (#47273845)

    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.

  • by gnasher719 ( 869701 ) on Thursday June 19, 2014 @02:30PM (#47274633)

    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.

  • by omnichad ( 1198475 ) on Thursday June 19, 2014 @04:02PM (#47275541) Homepage

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

  • by dnavid ( 2842431 ) on Thursday June 19, 2014 @05:22PM (#47276405)

    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.

Always leave room to add an explanation if it doesn't work out.