Supreme Court to rule on software patents

SCOTUS steps in where the Federal circuit fears to tread and could make patent trolling a much less attractive action

In a week where the intellectual property stories have kept coming like winter storms, we heard today that the Supreme Court has agreed to hear the question referred to it from an en banc (all the judges together) hearing of the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., which specializes in patent cases and is known to be biased in favor of patent holders.

The question that left the judges divided arose from the important dispute between Alice Corporation and CLS Bank that has formed a cornerstone of case law validating software patents. Software patents appear on the surface to be impossible under U.S. patent law, where laws of nature, natural phenomena, and abstract ideas are all explicitly excluded from patentability.

By attaching an abstract idea to a physical device ("a computer that ...") Alice Corporation attempted to convert unpatentable abstract methods into a patentable modified device. As the EFF put it, "In a thoughtful opinion by Judge Lourie, five members of the federal circuit's appeals court held that merely 'appending generic computer functionality' to an otherwise abstract concept is not enough to make it non-abstract, or somehow patentable." But the court as a whole could not agree on a foolproof test for whether a patent ought to be valid if it combines a computer and a method like this. Thus, the Supreme Court is now on the case.

It's possible the Supreme Court could find an idea promoted by Professor Mark Lemley compelling. As I wrote last year, Lemley believes this dubious word game is another instance of the "functional claiming" loophole to patent law that was previously used to game the pharmaceutical industry. The whole problem could be solved, he asserts, by the Supreme Court finding that "a computer" is not a device per se and that such functional claims can only be patented in conjunction with a specific computer rather than with the general idea of the Turing Machine. That charge would also trigger special handling for software patents under existing patent law that would make them much less appealing as an instrument of mischief.

Given the predilection of the federal circuit's appeals court to protect patent holders over programmers, this is a problem that can only be solved by the Supreme Court or Congress. Congress is hopefully on the case; like the EFF, I'm delighted that SCOTUS is now, too. Let's hope they have the determination to make a broad ruling and don't fail us all with a narrow decision that leaves software patents possible.

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