Patenting Software: Obama Administration Argues “Sometimes”

By Dennis Crouch

CLS Bank Int'l v. Alice Corp (Fed. Cir. 2012)

The US Government has filed its amicus brief in the pending en banc CLS Bank case that focuses on the patentability of software systems. Download CLS-Bank_v_Alice_USA-amicus-ISO-Neither-Party. The brief generally rejects the idea that software per se represents patentable subject matter but is favorable toward the patenting of computerized applications that either improve computer performance, use technology in a unique technological way, or transform the local environment.

Unlike some recent briefs, this has been filed with the support of both the USPTO and the DOJ. The brief suggests a claim-by-claim subject matter analysis that begins with claim construction and only then asks "whether the challenged claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself." The brief then lists a set of factors that the government sees as important in making that determination:

  • Is the computer only nominally or tangentially related to the performance of the invention?
  • Is the computer generically recited or, instead are specific, unconventional computer equipment or tools required?
  • Is the invention focused primarily on non-technological fields or does the invention improve the ability of a computer to function as a computer?
  • Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways?
  • Is the abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment.
  • Are the computer related elements merely conventional steps described at a high level of generality in a way that would be employed by anyone wanting to apply the abstract idea.

Each of these determinations is riddled with problems as is the potential weighting in an overall abstract-idea analysis. However, the overall approach adds substantially to the the

The brief suggests that all claimed features can contribute to subject matter eligibility, but some caution should be used to not allow "mere 'drafting effort designed to monopolize [an abstract idea] itself'" (quoting Mayo). Regarding the product/process divide, the government writes that the form of the claim should not impact subject matter eligibility because those differences come from the "draftsman's art" rather than the invention itself.

Perhaps attempting to endear itself to the Federal Circuit, the brief implicitly criticizes Supreme Court patent decisions by arguing that "the §101 inquiry should focus on the actual language of each challenged claim, properly construed, not a paraphrase or parody of the claims. Unfortunately, the government does not have any Supreme Court precedent to back-up this argument.

As a final point, the government brief argues that the presumption of validity associated with patent rights lead to a conclusion that a patent can only be invalidated on subject matter eligibility grounds based upon "clear and convincing evidence." Reading between the lines, this seems to mean that any conclusions draw from the factors above must be proven with clear and convincing evidence. While §101 eligibility may be a question of law, the government additionally argues that it is a factual question as to whether "limitations recited in a claim do not, in practice, impose any meaningful limitations on their claim scope." Of course, prior to issuance or during post-grant review there is no presumption of validity.

60 thoughts on “Patenting Software: Obama Administration Argues “Sometimes”

  1. Night, in essence you are saying that the algorithm was patentable per se. In other words, mathematical formulas are eligible.

    I hope you understand that your viewpoint is not only beyond the pale, but beyond reason.

  2. Sadly that is the way it is and there is little that can be done about it. Get use to 8 to 9 years to Final OA’s, PTAB briefs for every application, and non stop Certs at the Supreme Court! Meanwhile innovation suffers in the information process arts, and anyone filing a business method patent might as well go out of business the day they mail off the app.

  3. “How about this — if the claims are directed to a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” then the claim is directed to stautory subject matter.”

    Well said!

    Look, the Office wants to ban software and business methods, or any claim that instructs how business is conducted. Why? Who really knows. Maybe because they are just too lazy and don’t want the extra work. Or maybe they have too many Examiners with an IQ 6, and their brains can’t handle all that complex information processing.

    However they do not have the statutory to basis to do so. And so far the Supremes have refused to rule that software or business methods for that matter are non statutory.

    They were hoping that Bilski would do the job, or at least be given free rein to use the MOT to wipe out all business methods and 99% of software. But the Court even failed to given them that!

    So rather than follow the Court and grant inventors that which the law allows they make up confusing abstract guidance with little to no basis in law and just clog up the whole system with RCES, Appeals and the like, while hoping in the long run the Court finally writes new law that says, okay, no software, no instructions for how to conduct business, period. Then the back log disappears overnight and maybe 6, can finally quit and go to lol school.

  4. “you will soon learn why claims cannot be distinguished based on limitations that do not appear in the claims but in the specification.”

    This is not correct. The specification serves as the glossary of the claims. In fact, the claims must be given their broadest reasonable interpretation in light of the specification as one of ordinary skill in the art would interpret them. The terms in the claims can be determined by the description in the specification and any other lexiocographic definitions set forth by the inventor in the specification.

  5. “These 2 people were looking for a career field in which they could build wealth, in order to gaining an income.”

    Why didn’t they simply go into patent lawl and simply tell everyone that everything is patentable and then make a million dollars? That works out much better than the ol’ comp sci degree > patent lottery approach and is likely much easier.

  6. No, they are not. Leo, you can very easily draft up a claim which is generic to both categories in question where in some portions the computer is used generically for its automation or communication functions and then in other portions it manipulates particular data in particular, specific, and useful ways.

    It is very simple to draft such a claim, so you can put down your thesaurus.

  7. How a grown intelligent man such as MM can write such nonsense is beyond me. MM, if you were fair, you would try to apply the same reasoning to your field that you are trying to apply to information processing. Try it. Try to apply patent law consistently and stop this nonsense of a double standard with information processing.

    How can a machine not be eligible under 101. So, with molecules, let’s see what would this mean. It would mean that if the molecule was obvious over the prior art then it would not be eligible under 101. So, now you get all these new 101 rejections instead of 103 rejections with factions trying to limit chemical substances under 101 to only certain classes of molecules.

    This 101 nonsense is not patent law, but the continuation of a 40 year witch hunt which is now led by Lemley.

  8. Nice nonsequitor. Obvious my post is stating that I do not believe that the claim requires it be limited to a computer.

  9. (sigh) – we’ve covered this and you have made the admission that “programmed to” is structural language.

    No direct lying on the new Patently-O.

    (unless this is now the new new Patently-O…. Prof. Crouch can confirm if he so chooses)

  10. Night, if you prosecute patent applications, you will soon learn why claims cannot be distinguished based on limitations that do not appear in the claims but in the specification.

  11. What’s wrong with just using existing law: 35 USC 103 and “automating a manual process” is not patentable. Problem solved.

    Why should an otherwise unpatentable mental process be patentable just because a computer is generically recited?

    A “Prometheus problem” often arises with software methods that claim abstract processes of identifying, categorizing and “processing” information. The steps recited are novel and there is no Supreme-approved basis for ignoring any of them. That’s one of the primary reasons that the USPTO ends up granting so much s— in this area. Properly examined, most of the software methods should fall under 101 as abstract. The composition claims should fall under 112 or 103, depending on how you want to characterize the inevitable, miserable failure to recite any objectively discernable structure (other than the old “media”).

  12. Did a sockpuppet commenter here just assert that a “price” and a “particle” are equivalently tangible for patentability purposes?

    It sure looks that way. That’s pretty sad.

  13. So you’re arguing for the invalidity of the vast majority of software related patents? Curious position for a patent attorney.

    It’s not an uncommon position. There’s nothing “curious” about it.

  14. Not limited to use in the computer? So, if I claim a new type of hinge I better limit it to doors people can go through, eh?

    What bothers me so much about you Ned is that you do not even try to use patent law or make the law you want to apply to information processing consistent with other areas of patent law.

    What a joke. Limit it to computers? And, why is that necessary? And, please use the captures a natural law argument it is far better for a good belly laugh and later a cry as I watch our system go down the sewer.

  15. Of course, the claim but the shift register is a force of a different color.

    Just a (d_@mm good) theory, but the treatment in Benson of claim 8 (based on ourcome desired judicial activism) was the driver in Diehr for the emphasis on claims as a whole.

    Just another example of how bad a decision Benson was – and how we all should be clamoring for less intrusion by the Court in writing patent law, not more.

  16. Night, of course the problem is that the claim, claim 13, itself was not limited to its use in a computer. I just quoted the section of the Rich opinion that that said that any means could be used to calculate the algorithm.

  17. Mr. ha ha, you might be surprised that even Rich said the same thing about claim 13 as did Douglas. You might want to actually read his opinion in Application of Benson. Claim 13 was not limited to any particular means for performing the calculation. Rich himself said the same thing as Douglas said.

    Of course, the claim but the shift register is a force of a different color. But I don't know to what extent the government brief focused on that claim as opposed to claim 13.

    Regarding claim 13, Rich said in part,

    "Apparatus, machinery, "hardware" — whatever it may be called — is disclosed by which the steps can be carried out without human intervention but at the same time, since the claim does not itself call for any particular hardware, the method within the claim can be practiced either with apparatus other than that described or with the simplest of equipment which will enable one to provide and to manipulate "binary coded decimal representations" and convert them into "binary number representations." This could in theory be any kind of writing implement and any kind of recording medium — "pencil and paper" — or even, we suppose, red and blue poker chips and a surface to put them on or slots to put them in so that "0"s and "1"s can be represented."

  18. I am surprised (not) to not see Ned congratulating MM on the ‘effectiveness’ of MM’s ability to influence the ‘patent elite,’ as clearly the anti-patentist RMJ is adhering to MM’s worn canard of patenting should only be available to the ‘but-for’ situations.

    A fundamental lack of understanding on how non-linear innovation can be (and often is) is witnessed by the followers of such canards.

  19. You are generalizing too much. You ask for evidence of “any patent”, yet you speak of “drug patents in general”.

    You didn’t ask whether or not any drug would ever be invented, you asked for a specific example.

    Your rant doesn’t even answer your own question. Even if you were to take a particular compound, say sildenafil citrate, and show that it would have been invented absent any patent protection, that would not in any way demonstrate that every single drug that has been invented would have been invented absent any patent protection.

  20. Renee–

    Absolutely there are such cases, even among some of my clients.

    For instance, some of my clients have sat on inventions for years, because they didn’t exactly know how to patent them, and erroneously believed that there was nothing there worthy of patenting. They only disclosed their inventions when they believed that they were eligible for patenting.

    I also have clients who have inventions that do not, in my opinion, contain patentable subject-matter. These inventions have not yet been disclosed, as no suitable mechanism(s) for protection has/have yet been identified.

    Note that these are cases relying on the premise that an invention that has never been disclosed has never, for practical purposes, been “invented”.

    Addressing your question and using a more fundamental definition of “invented”, I personally know 2 people who made the conscious decision to work in programming (“software engineering”) based in part upon representations that were made to them that software was eligible for patent protection. These 2 people were looking for a career field in which they could build wealth, in order to gaining an income.

    They are now listed on several pending app’s.

    Of course, that is not to say that their “inventions” wouldn’t have been invented by someone else had they not entered the field, or that whatever they have done qualify as “true” inventions.

    Those would be specious arguments, however, as they are totally speculative. What I do know is that THEY would not have invented and disclosed what they did had they not entered the field, and they entered the field because of the perceived availability of patent protection on software that is currently legally understood as being an “invention”.

  21. By the way NWPA, I did get a B.A. degree (in chemistry) from a small liberal arts college. So I know how those “liberal arts majors” think (especially those in philosophy), and it’ll make your eyes roll.

  22. “I think that we have liberal arts majors trying to decide technological issues. I think that the SCOTUS is not qualified to judge these matters.”

    Completely agree with you, NWPA.

  23. What’s wrong with just using existing law: 35 USC 103 and “automating a manual process” is not patentable. Problem solved.

    This is a Rube Goldberg solution to a non-existant problem.

    … And it’s nearly 20 years late to boot LOL

  24. The thing that gets me about this is that all of this is essentially the same as the argument for claiming the function of a machine.

    What is happening here is rather than evolving and figuring out innovation we are going back to the way it was thought of 150 years ago.

  25. Good comment Just saying. What gets me about this too is that these issues are no different then they are in other arts. In the mechanical arts I claim methods of operation of mechanical parts.

    Let’s be honest: all of these factors are a way around real examination.

    So what is an abstract idea? Is the method for improving a furnace as discussed by the SCOTUS an abstract idea? I don’t think so. This is the nutshell of the entire problem. The furnace. Is figuring out if you heat the air and then blow it into another furnace not an invention? Just by telling someone to do that one skilled in the art can come up with hundreds of ways of doing it.

    How is that just an idea and not an invention? This is the nutshell of the entire problem. The furance. The SCOTUS has it horribly wrong.

    I think that we have liberal arts majors trying to decide technological issues. I think that the SCOTUS is not qualified to judge these matters.

  26. And, there you go, Rich said it very well.

    Those factors above are outrageous and silly. They are not reflective of the computer arts and as such can only lead to more confusion and expense.

  27. All this abstract stuff is shear nonsense. It is scarey that Obama is buying into it, but not surprizing. Voting for Obama was tough for me because of this issue.

    You can have all this nonsense, or the USPTO could come up with meaning guidelines for 103. As in if it is a mere automation of a known process then it is obvious rather than having a factor to try to capture 103.

  28. “I don’t have a law dictionary in front of me, so pardon me if I sound ignorant, but exactly how could anyone ever imagine that it was possible to touch a price?”

    Apparently you don’t have a physics book in front of you either.

  29. “were not limited to their use in a computer to improve its operation.”

    BS — look up the term “shift register.” A shift register is a physical device. Thus, claim 8 of Benson passes the MOT test.

    When Douglas wrote “Here the ‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus,” he didn’t know the F as to what he was talking about.

    Douglas is merely babbling on that the claim is “too broad.” When Douglas writes that the end use may be performed “without any apparatus,” his statement clearly implicates doesn’t know jack S about the technology.

    When Douglas writes that “the ‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion,” this is pure unadulterated BS. The fact that a fastener (e.g., a nail, a staple, a screw) has applications both known and unknown doesn’t preclude the patenting of a new fastener. Douglas’s logic is ill-conceived.

  30. Benson was a case where the claims themselves were to a process that produced numbers and were not limited to their use in a computer to improve its operation.  Rich approved the claims because he essentially construed the claims to be limited to that use even thought the claims themselves were not so limited.

    We can argue about this 'til the cows come home.  But I still maintain that software claimed in a fashion to essentially be firmware is the stuff of patents because they define improved machines.  Rich was right in this, but wrong in the particular instance due to the lack of meaningful limitations in the claims, requiring their use to improve the internal operations of a computer.

  31. •Is the computer only nominally or tangentially related to the performance of the invention?
    •Is the computer generically recited or, instead are specific, unconventional computer equipment or tools required?
    •Is the invention focused primarily on non-technological fields or does the invention improve the ability of a computer to function as a computer?
    •Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways?
    •Is the abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment.
    •Are the computer related elements merely conventional steps described at a high level of generality in a way that would be employed by anyone wanting to apply the abstract idea.

    ******

    This is an argument to ensure high levels of USPTO employment. We’ll have 2 examiners per application decide the 101 issue and then have aother decide the 102/103 issues.

    How about this — if the claims are directed to a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” then the claim is directed to stautory subject matter. Oh wait, that’s too easy to apply. Besides, there is no basis for that test anyway. Oh well, it was worth a shot.

  32. Anon, I think Rich thought that claim 13 of Benson was eligible solely because it defined new computer functionality. Do you agree?

    link to scholar.google.com

    “Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines — the computers — are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts,” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? We conclude that the Patent Office has put forth no sound reason why the claims in this case should be held to be non-statutory.”

  33. “Benson and the other SC cases, to me, are to be respected.”

    Except that Benson was a poorly reasoned decision as has ever came out of the Supreme Court. Benson was wrong about the facts and didn’t have any law to go on so Douglas made it up.

    Every time you cite that decision, my opinion of you drops.

  34. > There price was deemed to be eligible because it was “concrete,” “tangible.”

    I don’t have a law dictionary in front of me, so pardon me if I sound ignorant, but exactly how could anyone ever imagine that it was possible to touch a price?

  35. Is there any case of *any* patent in *any* field where it can be shown that the invention would *only* have been created because patent protection was available? Don’t even try to use pharmaceuticals, it is a historical FACT that patents are NOT needed for new drugs to be created … unless you want to claim that penicillin does not exist.

  36. Mr. Examiner, you do raise a good point about the somewhat justified perception the public has of the patent bar.  They seem, often,  to put their own self interest above other considerations.

    On the other hand,  the real world sees (independent?) programmers largely against patent protection for software qua software, some companies in favor, some companies against.  The debate is old — actually a lot older than computers when many, long ago, did not see that business methods were directed to the Useful Arts.

    I personally think that a program that produces only number that is not required to be used for doing anything physical does not define patentable subject matter.  Benson is a good example.  Prometheus is a second, albeit, in the context of the output of a drug test.

    The Supreme Court was emphatic that the State Street Bank test was unacceptable.  There price was deemed to be eligible because it was "concrete," "tangible."  Really?  Bilski balanced risk.  In what way is risk physical?

    Benson and the other SC cases, to me, are to be respected.

     

  37. Just submit the claim to this site and let the usual chorus of the irrefutables chime in.

    LOL – careful AAA JJ, you might find some archers looking your way (but they are pretty harmless, so don’t sweat it).

  38. So you’re arguing for the invalidity of the vast majority of software related patents? Curious position for a patent attorney.

  39. The government brief struggles by trying to define something by the process of eliminating what it is not. Ugh.

    Why don’t we begin by clearly stating what is patent eligible?

    Something that does something physical that is new? Benson said the clue was physicality. If a claim does something new physically, it should be eligible. If it does not, then it is presumptively not eligible. The burden should shift to the proponent to prove eligibility.

    Thus a programmed computer that simply computes a new number without specifying any new physicality as an output, should normally fail.

  40. Anybody know what the deadline is for submitting an unsolicited brief supporting neither party? Is it still in reference to the date of submission of the appellant’s brief?

    The fed brief makes me want to submit.

  41. “”the §101 inquiry should focus on the actual language of each challenged claim, properly construed, not a paraphrase or parody of the claims.”

    Why? Isn’t it much easier to paraphrase the claim and then irrefutably conclude that it’s facially invalid? Why waste judicial resources on it? Just submit the claim to this site and let the usual chorus of the irrefutables chime in.

    “Unfortunately, the government does not have any Supreme Court precedent to back-up this argument.”

    The nine are never going to elaborate on their 101 jurisprudence. “It’s abstract because we say it is” is the perfect test.

    Fed. Cir. judges are no different. Wasn’t it J. Dyk who said he didn’t care what the claim said, he was going to “look to the application to see what the applicant actually invented”?

  42. Sure it is, the two situations mentioned are not mutually exclusive. Indeed, the satisfaction of the first does not even go so far as to imply that the second is not satisfied, and vice versa.

  43. Mere computer implementation should first be judged under Section 103. Unless the computer implementation itself is inventive or it would not have been obvious to computer implement whatever is being computer implemented, then the claim will fail under Section 103 — case closed.

  44. As my final note on this topic, I do believe that they should reformulate their thinking a bit. They need to move their thinking away from “factors” and move their thinking entirely and whole heartedly towards simply finding as they finally get around to saying “the [claim] is essentially a claim to the abstract idea itself”. That is literally all that matters, and no amount of factors will ever save such a claim. Furthermore, if you require “factors” to be able to recognize such a claim, you’re

    DOING IT WRONG.

    Although, for a beginner, some factors might assist in getting the hang of things. Even so, we need not build in mechanisms to help newbies straight into the law itself. Doing that kind of thing does nothing but confuse people once they do know what they’re doing.

  45. “While §101 eligibility may be a question of law, the government additionally argues that it is a factual question as to whether “limitations recited in a claim do not, in practice, impose any meaningful limitations on their claim scope.” ”

    Iirc that was my argument from years back. However, seeing it all written out by ta rds, in tar d language, it doesn’t seem quite as convincing. If they’re going to copy me, then they should just go ahead and plagerize with attribution.

  46. “Regarding the product/process divide, the government writes that the form of the claim should not impact subject matter eligibility because those differences come from the “draftsman’s art” rather than the invention itself.”

    I would say that it should not be able to save a claim, although it should still be able to kill a claim.

  47. “•Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways?

    If the answer is “yes” then you fail patent eligibility.

  48. “that either improve computer performance, use technology in a unique technological way, or transform the local environment. ”

    Meh, I guess I could live with that. Just so long as “transforming the local environment” isn’t about “transforming characters/shapes on a screen” I’m down.

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