September 30, 2016

Judge Mayer Finds that Section 101 Bars Patents on Software

By Bryan K. Wheelock, Principal

In Intellectual Ventures v. Symantec, [2015-1769, 2015-1770, 2015-1771] (September 30, 2016), the Federal Circuit affirmed summary judgment that the asserted claims of the ‘050 and ‘142 patents were directed to ineligible subject matter and reversed the finding that the asserted claim of the ‘610 patent covered eligible subject matter.

At Step I of the Mayo/Alice Test for the ‘050, the Federal Circuit agreed that the ‘050 patent was directed to the abstract idea of filtering emails, noting that it it was long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.  At Step II of the Mayo/Alice Test, the Federal Circuit rejected the argument that because the jury determined that the prior art did not anticipate or make obvious the claimed invention, the claims necessarily met Step II, noting the fact that the claims may not have been anticipated or obvious does not suggest that the idea of “determining” and “outputting” is not abstract, much less that its implementation is not routine and conventional.

At Step I of the Mayo/Alice Test for the ‘142 patent, the Federal Circuit found that the ‘142 patent itself demonstrates that the claims were directed to abstract ideas, analogizing the technology to post offices, and demonstrating that the concepts were well-known and abstract.  At Step II, again the ‘142 patent was its own undoing, the Federal Circuit finding that the “specification thus confirms that the implementation of the abstract idea is routine and conventional.”

At Step I of the Mayo/Alice Test for the ‘601 patent, the Federal Circuit again found that patent was its own undoing, acknowledging that virus screening was known prior to the invention.  As a result, the Federal Circuit said that virus screening is both well-known and an abstract idea.  The Federal Circuit disagreed that the narrowness of the claim made it patent eligible, noting that a narrow claim directed to an abstract idea is not necessarily patent eligible.  The Federal Circuit said that the claims were directed to the use of conventional or generic technology in a nascent but well known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.

What is most notable about the case is Judge Mayer’ concurrence, where he makes two points:

  1. patents constricting the essential channels of online communication run afoul of the First Amendment; and
  2. claims directed to software implemented on a generic computer are categorically not eligible for patent.

Mayer comments that although the claims at issue here disclose no new technology, they have the potential to disrupt, or even derail, large swaths of online communication.  He further suggests that Essential First Amendment freedoms are abridged when the Patent and Trademark Office is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.  Mayer points to the distinction between idea and expression in copyright law as providing a balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression.  Mayer further points to fair use that even permits the use of the author’s expression.  He concludes that restrictions on patent eligibility and subject matter eligibility can be used to keep patent protection within constitutional bounds. He states that:

Section 101 creates a “patent-free zone” and places within it the indispensable instruments of social, economic, and scientific endeavor.

He believes that Section 101, if properly applied, can preserve the Internet’s open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas.

Mayer goes on to state that “most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.  Arguing that software is a form of language, he states that it is It is inherently abstract because it is merely an idea without physical embodiment, and concludes that all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.

This is justified in Mayer’s mind because computers are indispensable and are a basic tool of modern life, and are thus not subject to the patent monopoly:

In the section 101 calculus, adding software (which is as abstract as language) to a conventional computer (which rightfully resides in the public domain) results in a patent eligibility score of zero.

Mayer goes on to identify four insurmountable problems with patent protection for software:

  1. Their scope is generally vastly disproportionate to their technological
    disclosure.
  2. They provide incentives at the wrong time.
  3. Their sheer number.
  4. Most fundamentally, generically implemented software invariably lacks the concrete borders the patent law demands.

He concludes that eliminating generically-implemented software patents would clear the
patent thicket, ensuring that patent protection promotes, rather than impedes, “the onward march of science,” and allowing technological innovation to proceed apace.