Software Patents are Crumbling

The courts have been striking them down at a dizzying pace since June.

James Joyner · · 40 comments

Timothy B. Lee notes that, since the Supreme Court’s ruling in Alice v CLS Bank in June, a slew of patents on software have been struck down by lower courts.

In recent weeks, the courts have been following the Supreme Court’s lead and ruling that these patents are illegal: On July 6, a Delaware trial court rejected a Comcast patent that claimed the concept of a computerized telecommunications system checking with a user before deciding whether to establish a new connection. The court noted that the steps described in the patent could easily be performed by human beings making telephone calls.

On July 8, a New York court invalidated a patent on the concept of using a computer to help users plan meals while achieving dieting goals. The court was unimpressed with the patent holder’s argument that some of the details in the patent — such as the use of “picture menus” to choose meals — was sufficient to render it a patentable idea.

On July 17, the Federal Circuit Appeals Court (which is in charge of all patent cases) rejected a patent on the concept of keeping colors synchronized across devices by building a profile that describes the characteristics of each device. The court held that the creation and use of these profiles were merely mental steps that could be done by a human being and were therefore not eligible for patent protection.

On August 26, the Federal Circuit rejected a patent that claimed the concept of running a bingo game on a computer. “Managing the game of bingo consists solely of mental steps which can be carried out by a human using pen and paper,” the court ruled. Converting that process into a computer program doesn’t lead to a patentable invention.

On August 29, a California court struck down a patent on a method of linking a mortgage line of credit to a checking account. The court said that the generic computer functions mentioned in the patent were not enough to merit protection.

On September 3, a Texas trial court invalidated a patent on the concept of using a computer to convert reward points from one store to another. The court held that the “invention” claimed by the patent “not fundamentally different from the kinds of commonplace financial transactions that were the subjects of the Supreme Court’s recent decisions.”

In a second September 3 decision, a Delaware trial court rejected a patent on the concept of an intermediary selectively revealing information about two parties to each other — using a computer. The court noted that it has long been common for corporate headhunters to withhold certain information about an employer from potential employees (and vice versa) until both parties are ready to proceed.

On the same day, the same Delaware court invalidated a patent on the concept of using a computerized system to “upsell” customers who buy one product on other products that might interest them. The court pointed out that upselling is as old as commerce itself.

In a final decision the same day, the Federal Circuit appeals court struck down a patent that claimed the concept of using surety bonds to guarantee a transaction — using a computer. The court pointed out that surety bonds have been around since ancient times, and performing this well-known transaction with the help of a computer doesn’t turn it into a patentable invention.

On September 4, a California trial court rejected a patent on the concept of using a computer network to ask people to do tasks and then wait for them to do them. The court pointed out that people have done this with telephones for decades, and that doing the same thing over the internet doesn’t count as an invention.

On September 11, a Florida court invalidated a patent on the concept of subtracting a small amount of money from each of many payments in order to accumulate a larger sum of money — using a computer. The court noted, these kinds of schemes have been widely known for centuries. For example, the plot of Superman III involved a villain using this kind of scheme to steal from co-workers’ paychecks. These rulings might seem like common sense, but it’s important to remember that every single one of these patents was examined and approved by the patent office. That’s because until recently, this kind of “invention” was considered eligible for patent protection. The patent office has issued hundreds of thousands of software patents over the last two decades, and many of them look like this.

It’s not at all obvious why some of these rulings are “common sense.” Pretty much EVERYTHING done by computers was previously done by human beings using more laborious methods. For that matter, so was pretty much everything done by any patented device one can imagine. By this logic, a vastly improved can opener or corkscrew, to use two simple non-computer machines, would be unpatentable because we can already open cans and wine bottles. Indeed, even the very first can opener and corkscrew would be unpatentable because, well, rocks.

Beyond that, it strikes me as fundamentally not the job of courts to make these decisions. Judges are notorious morons when it comes to technology. The Constitution gives the power to award patents to Congress, which long ago delegated the day-to-day process of reviewing and issuing them to the Patent Office, which is staffed by technical experts. They’re Constitutionally entitled to substantial deference in applying their expertise, with Congressional oversight—and, yes, I know that it has been sorely lacking across the board in recent years—as the primary backstop. The courts have no obvious role here aside from litigating the enforcement of claims, which should be on the basis of similarity of the new device/software to the patent, not on the desirability of the patent in the first place.

Now, I’m sympathetic to the notion that we grant far too many patents and, especially, that the period of exclusivity is far, far too long. Maybe there should be some sliding scale based on the novelty of the idea and difficulty of implementation.

Lee references, for example, Amazon’s patent on 1-click shopping. It seems patently obvious (pun originally unintended) that others ought be able to copy that by now. At the same time, it’s a pretty big innovation and I have no problem with Amazon enjoying exclusive rights to it for some limited period of time. Given that the concept itself seems pretty obvious and was likely to be implemented by some other company reasonably soon, maybe Amazon ought to have enjoyed something like a 3-year head start on the competition. That’s enough to reward innovation yet not so long as to stifle the spread of good ideas.

Regardless, though, this is a job for Congress. I know the system is currently broken. That’s frustrating as hell. But it doesn’t invalidate the Constitution. Rather, it places the burden on the citizenry to demand better performance from their elected representatives or to elect better representatives.