My Patent Wish for 2015

My patent-related wish for 2015 is that the “mess” of patent subject matter eligibility for software (and computer-implemented) inventions is cleaned up by Congress or an en banc CAFC.

No matter what side of the software patentability debate you favor, we can all agree that the State Street, Bilski, CLS Bank and Bancorp journey of decisions has left us all wanting for more. That is, a clear, repeatable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none,” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948), does not exist. This is perhaps why former Chief Judge Rader has called the CAFC en banc decision in CLS Bank “the greatest failure of my judicial career.” The May 10, 2013, fragmented, 125-page decision failed to provide the patent bar and the lower courts adequate guidance on the patentability of software.

This failure was not rectified by the Supreme Court in their June 19, 2014, unanimous Alice decision. The Alice Court’s utilization of the Mayo two-step framework for distinguishing patents that claim laws of nature, natural phenomena and abstract ideas from those that claim patent-eligible applications of those concepts – while seeming sound on its face – is turning out to be intellectually disingenuous in practice. This is because the application of the framework clearly involves considerations of novelty and obviousness under 35 U.S.C. Sections 102 and 103, respectively, rather than what should be a 35 U.S.C. Section 101 threshold determination. Even a now deleted portion of the MPEP was more intellectually honest when it fashioned what is today’s Alice 101 inquiry as an obviousness consideration: “merely using a computer to automate a known process does not by itself impart nonobviousness to the invention.” MPEP § 2106 (8th ed., Rev. 4)).

It seems to me that the post-Alice 101 test is something nothing more than a “how cool is it?” test, and is no more objective (nor predictable) than the legendary “I know it when I see it” test. See Jacobellis v. Ohio, 378 U.S. 184, 197 (1964) (Stewart, J. concurring) (describing his threshold test for obscenity). So we are left with a 101 landscape where for every DDR Holdings v. Hotels.com and U.S. Bancorp v. Solutran decision upholding patent eligibility, there is a Ultramercial v. Hulu or Buysafe v. Google decision where patent eligibility is denied.

This mess has resulted in the USPTO issuing a 58-page, second set of Interim Guidelines on Patent Subject Matter Eligibility, dated December 16, 2014 – the period for comments ending 74 days after New Year’s Day! While admirable, these guidelines do not have the force or effect of law. Congress should take action to clarify Section 101 (and thus clarify and reconcile Mayo, Alice and Myriad). In the alternative, the CAFC should step up – hopefully with an en banc decision with a clear majority opinion. The CAFC was created in 1982 to bring about uniformity, and thus predictability, to U.S. patent law:

"Prior to enactment of the Federal Courts Improvement Act of 1982 … there was considerable variation in the [circuit] courts’ interpretation of the patent law. Because some circuits were seen as favoring the patent infringer and others as favoring the patentee, these variations led to forum shopping and intense litigation over the choice of forum. More detrimental than the battles over the forum, however, was that the different interpretations of patent law discouraged innovation and made business planning difficult and investment uncertain. Because the validity of a patent could depend entirely on the circuit in which it was litigated, the value of the patent was impossible to gauge. The need for uniformity in patent law thus led to the most important jurisdictional provision in the Act-the grant of exclusive jurisdiction over appeals from the district courts in section 1338 patent cases to the Federal Circuit."

– E. Sward & R. Page, 33 Am. U. L. Rev. 385 at 387-88 (1984) (citations omitted).

Let’s hope 33 years later it achieves its purpose with respect to software (and computer-implemented) inventions as it has in other technological fields of endeavor!

This posting originally appeared on IPWatchdog.com and reflects my current personal views and should not necessarily be attributed to my current or former employers, or their respective clients or customers.