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Alice Is Killing Trolls But Patent Lawyers Will Strike Back 92

snydeq writes The wheels of justice spin slowly, but they seem finally to be running software patents out of town, writes Simon Phipps in his analysis of how Alice Corp. v CLS Bank is becoming a landmark decision for patent cases in the U.S. 'In case after case, the Court of Appeals is using Alice to resolve patent appeals. In each case so far, the Court of Appeals has found the software patents in question to be invalid. ... As PatentlyO points out, the Alice effect is even reaching to lower courts, saving the Court of Appeals from having to strike down patent findings on appeal.' Although the patent industry broadly speaking sees the Alice verdict as a death knell for many existing patents, some expect Alice to turn software patents into 'draftsmen's art because as you and I have seen over the years, every time there's a court ruling it just means that you have to word the patent claims differently.'
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Alice Is Killing Trolls But Patent Lawyers Will Strike Back

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  • by reebmmm ( 939463 ) on Thursday September 18, 2014 @12:28PM (#47937291)

    Alice is a big deal. It's already dealt tough blows to some patents in currently pending cases. This is mostly a good thing. And the patents that Alice affects most are sort of the worst of the worst.

    I want to address the last point:

    Alice to turn software patents into 'draftsmen's art because as you and I have seen over the years, every time there's a court ruling it just means that you have to word the patent claims differently.'

    This may well be the case. But I don't see that as a particularly bad issue. Among other things, the worst offenders were patents that issued between 1996 and 2006 where there is a huge number of "do such and such old thing on a [computer | web | network| mobile device]" as if the "such and such old thing" was suddenly now a patentable thing by virtue of a new platform. Alice will largely undo those patents.

    I also think that the "draftsman's exercise" is likely to bring added meat to claims. It might not sound like much, but every single word that gets added to a claim is one more point of possible differentiation.

    • I read the linked article, but it doesn't say why Alice is having this effect.

      Can you point to a article that explains Alice for us uninformed people?

      • by reebmmm ( 939463 ) on Thursday September 18, 2014 @01:09PM (#47937717)

        Joe Mullin at Arstechnica has a decent piece on the case: http://arstechnica.com/tech-po... [arstechnica.com]

        • Thanks for the help. That article is more useful than simply pointing someone to the court's ruling pdf. Not everyone speaks legalese, after all.

          • Not everyone speaks legalese, after all.

            ...and that is why the lawyers get to run things.

            • Not everyone speaks legalese, after all. ...and that is why the lawyers get to run things.

              Yep. Basically. That and the fact that we're comfortable going into Court and performing in front of a judge and client, putting our knowledge of the law out there and giving advice to people in the most stressful moments of their lives. Ever had a bad day specifically because you knew you had to go confront someone for being a jerk / doing something stupid? That's about 50% of my job. The other 50% is mostly research and writing.

              • There are, from my observation, two kinds of people who call themselves lawyers; there are those who believe in rule of law and understand that laws are meant to benefit the people and there are those who view the law as a tool for profit. From your postings, I am under the impression that you are one of the former. If so, then I congratulate you for maintaining ethics in a field where they are frequently counterproductive.

                The social problem is the same as many industries. A few high profile practitioners d
      • The basic decisions from the Supreme Court say: we think it is bad if patents cover fundamental building blocks of human ingenuity and innovation. The idea is that, rather than encouraging innovation (the purpose of patent law), such fundamental patents would discourage innovation by blocking progress by others. In order to implement this general theory, the court came up with a rule that you cannot patent an abstract idea, law of nature, or product of nature. We have recent cases on each of these: Alice
      • Along with the longer articles mentioned, here's a one sentence summary of the ruling:
        Adding the words "on a computer" doesn't change the patentability of a supposed invention.

        In Alice, someone basically tried to patent "do escrow on a computer". The court ruled that "do escrow" isn't new or patentable, and adding the words "on a computer" doesn't change anything.

        Some in the Slashdot crowd may be tempted to, through wishful thinking, add meaning that the court rejected. The court did NOT rule that having th

    • Among other things, the worst offenders were patents that issued between 1996 and 2006 where there is a huge number of "do such and such old thing on a [computer | web | network| mobile device]" as if the "such and such old thing" was suddenly now a patentable thing by virtue of a new platform. Alice will largely undo those patents.

      Those patents - of which I've to actually see an example - would already be invalid under 103: [known method]+[known computer/network/device]=obvious combination of two prior art elements that, between them, teach or suggest each and every element in the claim.

      Sure, they're also invalid under Alice's interpretation of 101... but that's because Thomas' eligibility test is really just an obviousness test, hence his repeated references to "conventional techniques". Effectively, what Alice changed was to give

      • by reebmmm ( 939463 ) on Thursday September 18, 2014 @01:05PM (#47937673)

        Those patents - of which I've to actually see an example - would already be invalid under 103:

        I so hate this argument. Sure, they could be. The road to a 103 invalidity is an expensive and often arduous task that is often left to a jury. What's more, its met with a high burden and a presumption of validity. The Federal Circuit and patent lawyers have done a marvelous job making invalidity under 102/103 all but impossible except in the most extraordinary cases.

        The point is: they shouldn't have been patent eligible in the first place. You can't take something done previously, stick it on a platform that's used for it's conventional purpose and suddenly you're in patent-eligibility land.

        Now the burden, under 101, is for the inventor to show that which they did was actually inventive.

        Good patents shouldn't have this issue. 101 should be a very, very low hurdle.

        • Those patents - of which I've to actually see an example - would already be invalid under 103:

          I so hate this argument. Sure, they could be. The road to a 103 invalidity is an expensive and often arduous task that is often left to a jury. What's more, its met with a high burden and a presumption of validity.

          ... at trial, yes. Not at the USPTO or before the PTAB.

          The Federal Circuit and patent lawyers have done a marvelous job making invalidity under 102/103 all but impossible except in the most extraordinary cases.

          And in KSR, SCOTUS pushed that way back. Now it's actually quite easy, unless the claims recite an element that you just can't find a reference for, anywhere.

          The point is: they shouldn't have been patent eligible in the first place. You can't take something done previously, stick it on a platform that's used for it's conventional purpose and suddenly you're in patent-eligibility land.

          That'd be an easy 103 rejection: you can prove it's been "done previously," right? You can prove that the platform existed previously, right? Where's the problem?

          Now the burden, under 101, is for the inventor to show that which they did was actually inventive.

          Good patents shouldn't have this issue. 101 should be a very, very low hurdle.

          How do you define "actually inventive"? Currently, we have the 102/103 tests of novelty and nonobviousness, but if you're saying we shoul

          • by reebmmm ( 939463 )

            ... at trial, yes. Not at the USPTO or before the PTAB.

            I rarely care about non-issued patents, other than my own. Patent examiners can do their thing. Alice gives them a tool now too.

            IPRs are a possible strategy. But people don't willy-nilly file those either. They're more part and parcel of modern patent litigation now to get a stay and hopefully wreck claims. A good IPR is still 5 figures.

            And in KSR, SCOTUS pushed that way back. Now it's actually quite easy, unless the claims recite an element that y

            • Patent examiners can do their thing. Alice gives them a tool now too.

              Yes, and no... Patent Examiners are bound under the requirements of due process to present a prima facie case for why an application is not patentable, as the initial burden rests on the Office. How do you provide a prima facie case that an idea is abstract? It's a conclusion, not an argument supported by evidence, as the Courts have admitted when their evidence is "I know it when I see it".

              How do you define "actually inventive"?

              Here are the questions I ask when contemplating patent filings, post-Alice, for a software method (or computer implemented method):
              * Can I reasonably determine the bits and pieces you put together a specific solution to a specific problem based on your claims? should avoid a 101 issue.
              * Do the claims give me all of the pieces of the puzzle or does it give me a flowchart?
              * And, to entirely avoid an Alice question, are you using generic bits of technology for their ordinary purpose to solve an old problem the old way?

              "Good" answers to these questions should avoid a 101 issue.

              Quite possibly, though it fails to answer my question about your definition of "actually inventive". It also points to

      • by reebmmm ( 939463 )

        of which I've to actually see an example

        Let me quickly respond to that point too. One recent victim (at least at the lower courts) was this patent: http://www.google.com/patents/... [google.com]. The district court found the claims to upselling to an online buyer invalid under the Alice case. http://www.law360.com/articles... [law360.com]

        • of which I've to actually see an example

          Let me quickly respond to that point too. One recent victim (at least at the lower courts) was this patent: http://www.google.com/patents/... [google.com]. The district court found the claims to upselling to an online buyer invalid under the Alice case. http://www.law360.com/articles... [law360.com]

          Technically, one could easily argue that the District Court found the claims to be invalid under 35 USC 103 over an electronic device in view of Official Notice that "suggesting an additional good or service... based on certain information obtained about the customer and the initial purchase" is known in the art because "shrewd sales representatives have long made their living off of this basic practice" and it therefore is "purely conventional steps that are well-understood, routine, and previously known t

          • "suggesting an additional good or service... based on certain information obtained about the customer and the initial purchase" is not a 101 "process" as defined by the Supreme Court. The Supreme Court has defined "process" as "technological process". Therefor it falls outside the statute and 103 does not apply. Even non obvious improvements that are actually novel would not apply. Your patent has to target something in the list of things in 101.
      • I think this procedural aspect is critically important. Patent litigation is incredibly expensive. Defendants generally expect to spend >4 million dollars to defend against allegations of infringement. Post-Alice, judges have been ruling on the issues very early in litigation and cutting of those costs and timelines. As Theaeteus mentions, the problem with this approach is that it is generally done without full development of evidence. As a policy-matter, it remains unclear which approach is better (we
        • by Theaetetus ( 590071 ) <[theaetetus.slashdot] [at] [gmail.com]> on Thursday September 18, 2014 @02:51PM (#47938895) Homepage Journal

          I think this procedural aspect is critically important. Patent litigation is incredibly expensive. Defendants generally expect to spend >4 million dollars to defend against allegations of infringement. Post-Alice, judges have been ruling on the issues very early in litigation and cutting of those costs and timelines. As Theaeteus mentions, the problem with this approach is that it is generally done without full development of evidence. As a policy-matter, it remains unclear which approach is better (we don't know how good judges are at making the 101 determination (knowing it when they see it)).

          They've been great in the two major 101 cases, Bilski and Alice. Hardly anyone thought those claims were (or should have been) valid, as the methods were old and well known... But that's also like going back to the old obscenity cases and having your "test case" be Two Girls, One Cup. The old saying "bad facts make bad law" is true primarily because everyone agrees with the outcome based on those bad facts... but then it's used as precedent in cases where the facts aren't nearly so bad.

          As an aside, patents have a historic tie to property law, hence things like permanent injunctions and willful infringement damages... but maybe that's not such a good thing, as they're primarily economic instruments. It leads naturally to equity-based judgements rather than concrete tests and rules... people would be outraged if judges were routinely invalidating contracts as a matter of law on a "I know it when I see it" justification.
          If we did away with the property tie and abandoned permanent injunctions and what are effectively punitive damages, in exchange for compulsory licensing and reasonable royalties, a lot of the issues people have with trolls would go away, too.

      • Section 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.

        The supreme court has over the last century defined what the words in that statement mean.
        The word "abstract" is just shorthand for "not a process, machine, manufacture, or composition of matter or new and usefull improvement thereof"
        The supreme court has a very narrow and limited definition of "process" for this statute.

        • Section 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.

          The supreme court has over the last century defined what the words in that statement mean. The word "abstract" is just shorthand for "not a process, machine, manufacture, or composition of matter or new and usefull improvement thereof" The supreme court has a very narrow and limited definition of "process" for this statute.

          Which is a shame, because Congress has already defined it in Section 100:

          The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

          So, for example, a new use of a known machine - like, say, a new business method performed on a known computer - would fall under that statutory definition.

          • I won't argue with that. The Supreme Court clearly is defining it more narrowly than the statute. I agree with SCOTUS as policy. Not sure if they are protecting the law though.
          • I think they would of been better off ruling that performing a known process on a computer is not a new use of use of a known machine. It would of been much clearer ruling that would have had the same effect. Changing the process does not result in a new computer if the computer is a general use(turing complete) computer. They could do this without overturning prior precedent by explaining that the facts changed as software development matured. They could explain that programmers after some given date can b
          • by sjames ( 1099 )

            A *NEW* use. Not the same old use but online now.

    • by alen ( 225700 )

      at least in the Alice case these things were already being done on a computer before the patent was issued making it an easy patent to squash

      • by reebmmm ( 939463 )

        One of the important things to realize is that that actually doesn't matter. The fact that the practice had been done in the real world before did, though. Merely gussing-up the language with technological tools didn't make it patent eligible. The court never gets to the issues under Sections 102 (anticipation) or 103 (obviousness) of the patent laws.

    • The Alice decision itself has a strong admonition to the lower courts about avoiding the "draftsman's art problem". The Supremes are tired of getting cases that have no actual merit due to a subset of patent attorneys just playing language games.

  • "Although the patent industry broadly speaking sees the Alice verdict as a death knell for patents"

    OK, the only thing wrong with that little click-bait snipped is the lack of the words "nobody in" between "Although" and "the".

    • Yes, it looks like a typo in the original post: The Supreme Court's Alice Corp. decision is *not* the death knell for patents generally.
      • I read Patently-O regularly. Good to see someone who actually knows what is going on on Slashdot for a change...

  • because as you and I have seen over the years, every time there's a court ruling it just means that you have to word the patent claims differently.

    Good! Let 'em try to twist it into something still allowed but borderline, like business method patents - That knife cuts both ways, and for enduring a few more years of patent abuse, perhaps we can finally get those banned as well.
  • by tomhath ( 637240 ) on Thursday September 18, 2014 @12:36PM (#47937399)

    If they have to word the claim to actually claim something innovative instead of just a way of implementing a solution to a requirement that anyone can come up with they're in trouble.

  • by Dennis Crouch ( 3833581 ) on Thursday September 18, 2014 @12:47PM (#47937523)
    I'm the author of Patently-O where I write primarily to an audience of patent attorneys and others working in the area on a daily basis.

    My expectation is that Alice Corp will not be used to invalidate all software patents, but it will be the end of most business method patents. Moving forward patentable inventions will again need to be primarily based on technological advances rather than business benefit provided by the solution.

    Over the past 160 years, the Supreme Court has decided dozens of cases involving subject matter eligibility. This goes back to a time before Samuel Morse tried to broadly patent the telegraph. (He wanted a patent that covered any and all methods of using an electromagnetic signal to transmit at a distance a signal representing characters). I see the Alice Corp decision as part of that unbroken chain of decisions going back generations. In Alice Corp, the Supreme Court added only incrementally to those cases. The importance of the case, however, comes from the fact that the lower courts (namely, the Federal Circuit) had deviated significantly from that line over the past few decades. I wrote about this here: http://patentlyo.com/patent/20... [patentlyo.com]

    • by reebmmm ( 939463 ) on Thursday September 18, 2014 @12:59PM (#47937607)

      I read Patently-O. Thank you for all that you do. I'm also a patent attorney. I work in-house at a software company where I'm Chief IP counsel. I cannot help but think when reading patently-o (and PatentDocs and IPWatchdog and others) is that the readership is so skewed to patent attorneys who view the world as fundamentally formed around patents. When a patent attorney like myself makes any argument about the ludicrous nature by which the scope of patents has grown, either in comments or otherwise, it is mostly met with cries of being part of the anti-patent brigade.

      What Alice has shown to me is that the generalist legal world (e.g., the one in which the SCOTUS lives) view patents with much, much more skepticism. In my opinion, rightfully so. Patent attorneys get their undies in a bunch about Alice-like precedent "violating" the territories of 102 and 103. But that misses the forest for the trees.

      As you suggest, Alice is in but a long line of cases where the Supreme Court looks at the forest, not the trees. Recognizes the absurdity and attempts to restore some sanity.

    • by Anonymous Coward

      Everything on the internet would be patent free as it's all just sending characters over wires.

      • Re: (Score:3, Interesting)

        I think this raises a good point. I was in college back in the early 1990s when the Internet was really coming of age. Today, we are still using many of the fundamental internet parts that were created back then. Patents covering those innovations are now virtually all expired and free for all to use.

        One caveat to the "if morse had won comment" is that our system allows for multiple overlapping patents. Thus, although Morse had the general concept of transmitting characters, another person could still p

        • I think you mean the world wide web, web pages, and personal computers. The fundamental internet parts were invented much earlier when mainframes were connnected. For example email has its roots in the 70s. Many internet standards were first published in the 80s.
  • I don't understand why most techie people are blatantly against software patents. Sure, we can all be against ridiculously obvious patents that should not have been granted but why is software considered different than plastic for example? I can make a better mouse trap using bits of plastic and patent my newly designed mouse trap. Computer instructions are not different than bits of plastic that when strung together produce a working product. I think truly novel computer software should be patentable other
    • by wiredlogic ( 135348 ) on Thursday September 18, 2014 @02:44PM (#47938817)

      Many software patents fail the obviousness test or get by because of ignorant examiners. A disproportionate number of software patents are just doing something that is commonplace in the physical world but only now "with a computer" or "over the internet" as the innovative step. Then comes the standpoint that algorithms aren't patentable while many software patents are only describing an algorithmic process.

      The USPTO also has a massive conflict of interest in being dependent on funding from application and maintenance fees. They milk the gravy train of software patents for all it's worth even if it isn't in the public interest to do so as demonstrated by all the NPEs that collect patents for the sole purpose of litigation. It's easiest for the trolls to do this with software patents because it requires little expenditure of effort to come up with something "novel" that will get accepted by an examiner.

      • by Anonymous Coward

        The USPTO also has a massive conflict of interest in being dependent on funding from application and maintenance fees.

        Actually, like all other executive agencies, the USPTO is dependent on funding from Congress. The fact that it collects fees is irrelevant- to the extent that it collects any fees above its statutorily-authorized budget, it may not spend them. Indeed, prior to the passage of the Leahy-Smith America Invents Act, any excess was typically entirely withheld from the PTO. Now it just sits in a

    • by suutar ( 1860506 )

      Many folks are against software patents because in the end all software is mathematical manipulation, and math isn't supposed to be patentable. Others are against software patents because they feel that in the end even the most complex software is made up of obvious combinations of smaller pieces, and those smaller pieces are obvious combinations of still smaller pieces, and the very bottom pieces are either trivial math or otherwise obvious and therefore the whole thing is. Some feel that since software is

    • Patents don't disclose source code. So they don't teach a programmer how to "put the bits of plastic together". There is not enough utility in the patents. When creating a finanical application I am better off reading a textbook about finance than looking at patents. The textbook teaches the same thing but uses langauge a programmer can understand. If the patents disclosed souce code then there would be more fans. Patents could become an alternative to open source. The goverment could be using patents to bu
      • by gnupun ( 752725 )

        Patents don't disclose source code. So they don't teach a programmer how to "put the bits of plastic together".

        Those statements are quite wrong. Patents can and do include source code. However the claims (the IP the patent owner is claiming exclusive rights to) have to be written in a mixture of pseudo-code and legalese. Therefore, a competent programmer with just a little bit of legal knowledge can transform the patent pseudo-code into working code.

        The whole idea behind patents is to express secret methods

        • You dont' get it. I can get pseudo-code from the finance text book. Any detailed description of the process is pseudo-code. "put the bits of plastic together" is the transformation of that detailed description into actual code. A patent is just a poorly reworded description of that process. It is a description that I need some legalese to understand.
          • by gnupun ( 752725 )

            A patent is just a poorly reworded description of that process.

            Poorly worded patents don't get accepted and published by the USPTO. The patents have to be quite clear and complete.

            Detailed pseudo-code is enough for a competent programmer to convert to code. There are also sections in the patent which give description of the patent (and therefore the pseudo-code). You may stumble a bit due to the legalese, but it's not much and you can easily get past it once you know what to look for.

      • Patents don't disclose source code. So they don't teach a programmer how to "put the bits of plastic together".

        Pseudocode and detailed* flow charts should be enough for any skilled programmer. You shouldn't need C+ code - and if you do, what happens in 5 years when you say "I don't know C+, I only know Swift" or whatever the next language is? Conversely, what about art from the 60s or 70s - if it had COBOL code would you know how to use that? No, pseudocode and detailed* flow charts should be enough of a disclosure, because from them, you can implement the program in any language.

        *Many patent applications do not ha

        • A detailed description of a process in a textbook is also enough for any skilled programmer. For Alice and Bilski you can find the steps to perform the process in any finance book. Pseudocode and flow charts don't teach anything when the process is well known. Chances are finance books have charts in them as well. If your talking about a brand new process then your not talking about a software patent. Your patenting a new business method.
          • A detailed description of a process in a textbook is also enough for any skilled programmer. For Alice and Bilski you can find the steps to perform the process in any finance book. Pseudocode and flow charts don't teach anything when the process is well known. Chances are finance books have charts in them as well.

            Sure, and completely stipulated. The "do something well known and described in finance books" and "on a computer" stuff shouldn't be patentable... Rather, it's new processes (that are nonetheless, done on a computer):

            If your talking about a brand new process then your not talking about a software patent. Your patenting a new business method.

            What if it was a brand new process or business method, never been done before, on a computer. Like, say, calculating the value of some strange multidimensional factorial required to teleport yourself twenty feet to the left and six hours into the future? Certainly new, but let's assume it can b

    • Arguing from analogy is always fraught with peril, but I'll start there. Can you patent a specific ordering of words? No you can't; because that's copyright not patent. Software is the same way, it's an ordering of words that does the instructions of the programmer, for whatever is in his/her imagination. There is lots of creation, but little true innovation (to inspire true patents).

      Also, software is one of those things that moves very fast and comes about by building on the works of others. If you start
    • such that every software patent would be viewed by most programmers as describing something novel that advanced the state of the art...

      I wouldn't have a problem with that.

      But that seems unlikely. The system is out of control, and the societal costs of bad patents are both huge and unfairly distributed.

      Since lots of great software was written before it was patentable, there is no reason to believe that patents are necessary to help create good software.

      Since lots of great open source software is sti

  • by Anonymous Coward on Thursday September 18, 2014 @02:32PM (#47938711)

    I lost my faith in the patent system when I got the text corresponding to my first patent, as it had been redacted by the patent attorney based on my disclosure. It was so vague and wooly that I could not understand what the claim was all about. And I had written the disclosure myself.

    • by MobyDisk ( 75490 ) on Thursday September 18, 2014 @03:24PM (#47939181) Homepage

      I had the same experience. I can barely comprehend a patent that I am one of the inventors on!

    • It is because the legalese is deliberately made to be incomprehensible by anyone other than a lawyer. If you or I were able to understand what is written, then we would not need to pay lawyers.
      • by Anonymous Coward

        I am a patent attorney. Patents are difficult to read not because we want to milk more fees but because court cases incentivize us to obscure things. For instance, many court cases say that if the patent says "the invention is X," that the claims will be limited by that statement. Since inventors often invent multiple permutations of a single concept, I would never say that one of those permutations is "the invention" in a patent application. Instead, we say "it could be this" or "it could be that" to t

  • "Alice" is to LSD as "Molly" is to MDMA. I see the psychonaut segment of nerddom is underrepresented here...
  • If Alice is off killing trolls what is Bob doing? Looting their corpses before Eve gets there?

Mathematics is the only science where one never knows what one is talking about nor whether what is said is true. -- Russell

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