Alice is killing the trolls -- but expect patent lawyers to strike back

The wheels of justice spin slowly, but they seem finally to be running software patents out of town

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Open source software developers rejoice: Alice Corp. v CLS Bank is fast becoming a landmark decision for patent cases in the United States.

The Court of Appeals for the Federal Circuit, which handles all appeals for patent cases in the United States, has often been criticized for its handling of these cases -- Techdirt describes it as "the rogue patent court, captured by the patent bar." But following the Alice decision, the Court of Appeals seems to have changed.

[ See which open source projects are off to a great start in InfoWorld's top 10 new open source projects of the year. ]

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. Some examples:

  • A huge case involving digital camera manufacturers, retailers, laptop manufacturers, and more was summarily dismissed. The patent troll involved, Digitech, lost use of the patent it was using to shake down multiple victims.
  • Another case involving online Bingo was resolved via the Alice decision.
  • Google won an appeal over patents held by BuySafe on vendor reliability ratings.

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. For example, Google successfully challenged patents wielded by would-be troll Walker Digital, having them declared invalid because of unpatentable subject matter.

Alice, and the earlier Mayo decision it draws from, is turning out to be the considerable weapon against trolls I predicted it would be in 2013 when I commented on the federal circuit court's problems coming to a decision and this spring during the Supreme Court's early discussions.

But what does the "patent industry" think of all this?

Broadly speaking, patent insiders see Alice as curtains for many existing software patents. Well-known patent advocate Gene Quinn says at IPWatchdog:

My immediate reaction was that this would be extremely bad for software patents. ... It is now clear that the Supreme Court's decision in Alice fundamentally changed the law and future of software patents, at least those already issued and applications already filed, which cannot be changed without adding new matter.

In a discussion with Quinn that's worth reading in full, lawyer and patent law scholar Professor Mark Lemley agrees:

I think Alice is a real sea change on the patentable subject matter issue. I've heard a lot of folks talk about how Alice doesn't really use the word "software," so it doesn't really change anything, but I honestly think that's wishful thinking. ... I don't think it's all software patents, but I guess what I would say is a majority of the software patents being litigated right now, I think, are invalid under Alice.

All the same, the comments Techdirt makes about the need for the Court of Appeals to be reformed (or, better, to lose jurisdiction of patent appeals to the circuit courts) ring true. Sooner or later patent lawyers will work out how to draft patents that don't get struck down because they added "on a computer" or "on the Internet" to otherwise inadmissible topics. That's what software patent consultant Bob Zeidman told Quinn:

I think they've opened the door for making software patents exactly dependent on the 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.

Indeed, Lemley has posited that patent lawyers will return to the previously deprecated practice of explicit functional claiming as a route around the sea change. That would yield a legal landscape similar to the one that the current software giants grew from, according to Lemley: "We may be going back to the world of the 1980s; not only the patentable subject matter world but maybe also in claiming and means plus function claims."

Using functional claims significantly limits the power of a patent, according to Quinn, who calls it "garbage," so perhaps this is a compromise developers could live with. But whatever happens, it's clear that Alice having a much larger impact on software patents than many thought it would. In fact, it's looking, if only for the present, to be cleaning house. That's a welcome change.

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