Software Patents Research Articles

Brief of Amici Curiae Law, Business, and Economics Scholars in Alice Corp. v. CLS Bank, No. 13-298

The Federal Circuit’s expansion of patentable subject matter in the 1990s led to a threefold increase in software patents, many of which contain abstract ideas merely tethered to a general-purpose computer. There is little evidence, however, to suggest this expansion has produced an increase in software innovation. The software industry was highly innovative in the decade immediately prior to this expansion, when the viability of software patentability was unclear and software patents were few. When surveyed, most software developers oppose software patenting, and, in practice, software innovators tend to rely on other tools to capture market share such as first-mover advantage, trade secrecy, copyright, goodwill, and economic network effects. If anything, the increase in software patenting has led to an increase in software litigation, which in turn has encouraged firms to acquire patents for strategic purposes unrelated to innovation, serving as either defensive stockpiles to deter legal threats or offensive leverage for rent-seeking patent assertion entities (PAEs).Moreover, abstract software patents do not function well within a property rights framework because they fail to define cognizable metes and bounds and fail to provide effective notice to third parties of when a particular practice or product might infringe. Due to their abstractness, these claims can often be construed to cover any of the particularized processes that result in the same outcome, including those never envisioned by the inventor. Accordingly, these metes and bounds are not concrete enough to be useful to those who wish to tread carefully around them. The mere application of the idea using general-purpose technological components, such as a general-purpose computer, does nothing to abate this problem. Similarly, abstract patents defy the attempts of software innovators, or general counsel at technology companies, to stay on notice of what is already protected. This leaves firms vulnerable to investing in software development with little to no assurance that they will be able to avoid infringing upon an abstract patent, even if they conduct diligent searches within patent databases. Again, this will be true even if there are general-purpose technological components tethered to the claims, as those components do nothing to help distinguish one abstract claim from another. Proliferation of such patents also contributes to the problem of patent thickets.A well-defined 35 U.S.C. § 101 ensures that abstract software patent claims and their attendant notice and patent thicket problems do not undermine the patent system and stymie innovation. It serves as a decisive gatekeeper that the Patent Office and trial courts can use early in administrative proceedings and litigation. Further, it avoids many of the systemic challenges prevalent with the use of 35 U.S.C. §§ 102, 103, and 112 in such cases – the speed of software innovation, the difficulty locating software prior art, and lax, broad claiming standards. Accordingly, this Court should affirm the invalidity of the patent claims at issue here and hold that abstract ideas in the form of software are unpatentable and that mere computer implementation of those ideas does not create patentability.* This brief was prepared with the help of NYU Law clinical students Megan Briskman, Philip Cernera, Ilyssa Coghlan, Rafael Reyeni, Peter Van Valkenburgh, and Shawn Soen under the supervision of Professor Jason Schultz.

Are Prior User Rights Good for Software?

The America Invents Act (“AIA”) gave modern patent law in the United States a general prior user rights defense. The patent right is enforced via infringement litigation, but enterprises sometimes obtain patents for defensive purposes. Alternately, an enterprise that does not pursue a patent for an invention may choose to use the invention under trade secrecy protection. However, trade secrecy protection leaves a prior user vulnerable because a later inventor may patent the innovation and enjoin the prior user from further use. Styled as an infringement defense for a “prior commercial use,” the AIA defense replaces a decade old “earlier inventor” defense that arose from a software system patent infringement case and applied only for business method patents. This article assesses the AIA’s prior use defense from the perspective of software technology in view of the contentious issues around software patenting. It concludes, first, that courts should interpret the defense, or congress should alter it, to ensure its efficacy for software. Facially, the defense suggests a manufacturing motif, although its applicability to commerce in software may be stronger than suggested at first glance. Second, this article assesses the potential impact of a prior use defense on intellectual property protection in software. Some have posited that, as a general matter, the defense may create an incentive to favor trade secrecy over patenting. Regardless of the strength of that logic for other technologies, it seems lacking for software. While the use of the defense for software patent infringement will depend on the defense’s efficacy, there is also the question as to the defense’s impact on software patenting. One potential impact is on defensive patenting. Will software firms engage in less defensive patenting if there is an efficacious prior use defense?

Software Obviousness: The Disconnect between Engineers and the Patent System

Software engineers overwhelmingly dislike software patents and consider nearly all of them obvious. Are they correct, or do they simply not understand the law? To answer this, we look at obviousness law in an industry whose practitioners generally accept and value patents: pharmaceuticals, and ask if there are legal principles there which should be applied to software more frequently. The author, a software engineer, argues that "obvious to try," a principle well understood in the context of pharmaceutical patents, is ripe for appropriation in the software patent context. Several cases are explored to illustrate how the concept of "obvious to try" could be applied to fit the reality of how computer science actually works.

Debugging Software's Schemas

In computer terminology, a schema is a model to describe structures for containing and processing data. A flawed schema in the computer world is a bug; the result may be unexpected behavior or even system shutdown. In cognitive theory, a schema is a structure or framework that helps organize and interpret information. Incorrect schema in this realm can lead to flawed decision making or understanding. These two worlds – computer science and cognitive science – have collided at the intersection of eligibility for patent protection of software and computer-related inventions; unfortunately, the resulting system is in dire need of debugging. The frameworks that are currently influencing decision making about software patents include the analysis that software patents are generally bad (the bad patent schema) and that software patent holders are problematic (the troll schema). These schemas have been created and maintained through various cognitive biases, resulting in flaws that are negatively impacting the conversation about patent eligibility for software and computer-related inventions. With awareness of these biases, it is possible to minimize the negative impact. But even if we are able to eliminate the biases, there exists an even bigger bug in the system: the framework underlying the discussions about software patents is incorrect. Although the primary question affecting the patent eligibility of these inventions is whether they are abstract ideas, the framework has very little, if anything, to do with that question. With an incorrect structure driving the discussion, reaching a correct result is unlikely.

Brief of Amici Curiae: The Application Developers Alliance, Wild Tangent, Inc. v. Ultramercial, LLC, et al, No. 13-255 (S. Ct. 2013)

Brief amicus curiae urging the Supreme Court to grant certiorari, arguing that the Federal Circuit Court of Appeals has worsened critical flaws in the patent system that deeply affect amicus, an association of mobile application developers. Unlike other innovators, app developers work exclusively with software, and most are small businesses with little capital. As overly broad software patents have proliferated in recent years, non-practicing patent assertion entities have launched a wave of litigation and intimidation that has made it extremely difficult for many app developers to operate. The Federal Circuit’s decision in this case exacerbates these problems by adding to its deep internal divisions over the proper threshold for patent eligibility. Furthermore, by announcing an overly permissive standard for eligibility, the Federal Circuit has immeasurably worsened the patent litigation crisis for app developers and small innovators everywhere.

Current Proposals to Amend U.S. Patent Law

This Briefing Paper was produced in conjunction with the American University Washington College of Law Patent Policy Forum being held on Nov. 8, 2013. The Forum will explore current proposals to amend U.S. patent law to address issues surrounding non-practicing entity (PAE) litigation, software and business methods patents and standards-essential and FRAND-encumbered patents. The Briefing Paper summarizes the legislative and administrative proposals that are currently on the table in each of these areas, and is intended to be a springboard for informed policy discussion.

Non-Practical Entities: Business Method Patents and the Digitization of Culture

Business method patents are a special class of patents that allow companies to assert ownership over technologies and the ways in which those technologies are put to use. Looking at the history of business method patents in the United States and the recent resurgence of this type of patent activity in the mobile and handheld computing sectors, I argue that business method and related software patents act as quiet quests for control over information and cultural practices. Business method and software patents highlight how certain actors use moments of technological change to secure economic and cultural advantages through law and regulation. Instead of fostering innovation and rewarding inventors, these patents are an impractical form of intellectual property that seeks to mimic traditional conceptions of physical objects in an era of digital goods. This article serves as a call for scholars undertaking research on the migration of media and culture to new digital formats and devices to consider how patents act as protocols that pre-inscribe devices with certain features, gestures, and meanings. As an increasing variety of cultural goods such as music, movies, and books migrate into digital formats online, business method and software patents have significant implications for the production, circulation, and use of digital commodities.

A SURVEY ON SOFTWARE PATENTS AND THEIR LINKAGE TO PROMOTING INNOVATION: INDIA PERSPECTIVE

Personal computers (PC) have significantly increased demand for mass market software. Computer software has also now become an enabler for all fields of technology; innovation is inevitable for growth of this fast emerging industry. For economic viability for such innovations, there is an increased advocacy for incorporating software as a patentable subject matter forcing countries to make computer software patentable either completely or in limited form. However, patenting of computer software related inventions have not been without its own set of controversies. Not only software patents globally are being protected under vastly divergent legal perspectives, with varying interpretations of trade-related aspects of intellectual property rights (TRIPS) agreement, but are also still evolving through continued interventions from policy makers and federal courts. This has led to a very broad boundary between patentable and non-patentable subject matter and has resulted in a large number of trivial inventions being accepted as patents in this area. This paper analyzes these varying perceptions as regards to software patents in different jurisdictions like United States, Europe, Japan and India. Linkage between software patents and innovation has also been attempted by taking into account historical perspectives of technological arts and their effect on promoting innovation.

Rethinking Software Patents

On April 20, 2007, the University of Colorado School of Law's Silicon Flatirons Program hosted a roundtable entitled, Rethinking Software Patents. This roundtable is the second in the Entrepreneurship, Innovation, and Public Policy Roundtable Series, co-sponsored by local venture capitalist Brad Feld, Managing Director of Foundry Group.

Alappat Redux: Support for Functional Language in Software Patent Claims

The Federal Circuit has suggested in some recent cases that any algorithm can serve as adequate structural support for a means-plus-function element in a software patent claim under § 112(f). A recent proposal by Mark Lemley fully endorses this proposition and seeks its broader application. The concept of an algorithm, however, is too slippery to serve as the basis for such a rule. In this Article, I argue that this overreliance on the algorithm concept originated in a revisionist gloss on the Federal Circuit’s 1994 Alappat decision. Informed by a closer reading of what Alappat actually has to say about claim construction under § 112(f), I propose a more stable “concrete causation” standard that is applicable to all technologies, but would be especially well-aligned with the reforms in the software field intended by Lemley’s proposal.

Strategic Purpose of Software Patents: An Exploratory Study of German Organizations

The growing importance of computer-related software patents awarded in the United States and around the world is a topic that continues to generate discussion. Given the global environment, the question of why organizations from one country seek patent protection from another country is of concern to both organizations and researchers. To better understand the strategic rationale motivating non-US firms to seek software patents in the US, an exploratory multi-case study involving three German firms was conducted. Results of this study suggest that, at a minimum, obtaining US software patents is a strategic necessity. Firms were also found to use software patents for protection against infringing activities, as well as providing a possible means for strengthening competitive advantage. We provide possible explanations for the patenting strategy of the firms in our study by employing a configuration approach using Miles and Snow's strategy topology. Recommendations for future research and integration with existing theories are also presented.

Functional Claiming and Software Patents

On Feb 12, 2013, the PTO held a roundtable about software patents at Stanford. Software patents have received a lot of attention and we don't believe it is undue: software patents are behind a disproportionate share of patent litigations -- more specifically, over half (55%) of all patent defendants and 82% of PAE (patent troll) defendants are there because of a software patent, applying the Graham-Vishnubhakat definition to data provided by RPX Corporation. In this presentation, we more rigorously apply 35 USC 112(f) in accordance with the proposal Mark Lemley outlines in his WIRED oped Let's Go Back to Claiming the Problem Not the Solution to 30 patents - 10 PAE and 20 control patents, provided by Patent Freedom. We find that 1) PAE patents are overwhelmingly functionally claimed (100%), but non-PAE patents are also functionally claimed (50%), 2) 40%-50% of the PAE patents were only supported by the highest levels of abstraction, but that 3) not all code is created equal - low-level code over generic elements does not necessarily promote technical progress. We provide 5 examples to support these findings, and discuss their implications.

Of Smart Phone Wars and Software Patents

Among the main criticisms currently confronting the US Patent and Trademark Office are concerns about software patents and what role they play in the web of litigation now proceeding in the smart phone industry. We will examine the evidence on the litigation and the treatment by the Patent Office of patents that include software elements. We present specific empirical evidence regarding the examination by the Patent Office of software patents, their validity, and their role in the smart phone wars. More broadly, this article discusses the competing values at work in the patent system and how the system has dealt with disputes that, like the smart phone wars, routinely erupt over time, in fact dating back to the very founding of the United States. The article concludes with an outlook for systematic policymaking within the patent system in the wake of major recent legislative and administrative reforms. Principally, the article highlights how the US Patent Office acts responsibly when it engages constructively with principled criticisms and calls for reform, as it has during the passage and now implementation of the landmark Leahy–Smith America Invents Act of 2011.

The Eye of the Storm: Software Patents and the Abstract Idea Doctrine in CLS Bank v. Alice

The Federal Circuit is sharply split on the criteria for determining whether a computer-implemented invention is patent-eligible or is an ineligible abstract idea. The reversals of Federal Circuit’s prior attempts to articulate a bright-line test for patentability and the tension between the Supreme Court's doctrine and the realities of the examination process have led to a storm over the validity of the vast number of software patents issued to date. This Note reviews the current controversy posed by CLS Bank v. Alice and describes the judicial philosophies behind the split. The Note further provides an overview of the abstract idea doctrine and questions raised by the Supreme Court's Prometheus ruling. The Note concludes with a review of the steps implemented by the Leahy-Smith America Invents Act of 2011 that will address the problem of overly broad computer method patents.

Intellectual Property Systems in Software

Support for research and development in information technology is considered today as critical by most governments in the industrially advanced countries. Traditionally the way of stimulating research has been to ensure to the investor the appropriability of the returns generated. Such appropriability is typically implemented by means of the Intellectual Property Rigths. Nevertheless the protection of such rights is heterogeneous worldwide. Today two different legal systems for the protection of software coexist: the system of patents and the system of author's copyrights. This paper explains these two main systems of ‘intellectual property’ to provide legal protection to a software, including the licenses to transfer rights on software. The end of the paper presents the most recent trends of the EU government to replace the current European software protection system, including a discussion onf the software patents and the legal initiatives on the subject. In addition, legal issues linked with new ways in software comercialization are presented.

A Proposal for a Defensive Patent License

This is a draft op-ed for Wired, for purposes of discussion at Santa Clara University's November 16, 2012 conference,“Solutions to the Software Patent Problem.”It is a very brief discussion of the argument presented in my paper with Jason Schultz, “Protecting Open Innovation: A New Approach to Patent Threats, Transaction Costs, and Tactical Disarmament,” forthcoming 26 Harvard Journal of Law and Technology __ (2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2040945.Please do not cite or quote this draft. I look forward to talking with everyone at the conference about this idea!

Tailoring the Patent System to Work for Software and Technology Patents

The problems with software patents are old and well-known. However it’s not for a lack of trying that they have persisted. Software and tech companies have been pushing Congress to fix things for years. Each time they do, however, industries that rely crucially on the patent system, like pharma, stop reform efforts in their tracks, saying that making things better for tech companies would make them worse for others.Viewed this way, the problem isn’t software patents. It’s our unitary patent system and seeming inability to tailor it to work well for different industries. This inability, in turn, stems from international law, which requires patents to “be available and patent rights enjoyable without discrimination as to the field of technology. (TRIPS Article 27) While this clause hasn’t attracted much attention, for years it has stymied popular proposals like abolishing software patents or putting a 5-year limit on them. “Because it’s illegal under TRIPS,” is a common refrain heard on Capitol Hill. However, this refrain is wrong. Because even though TRIPS says that patent law isn’t allowed to treat different inventions differently, our patent law does just that, in many ways, including 35 USC 287(c), 35 USC 271(e), 35 USC 271(c). By relying on the 3-step test of Article 30 in TRIPS, and reverse engineering these provisions, the path to industry-specific reform that fix the problems that confront technology patents without disrupting the sound incentives the patent system provides becomes clear. The courts have already done much to tailor protection but they cannot accomplish certain reforms. The possibility of tailored, meaningful legislative reform sends a signal to the courts, innovators, and the market that fixing the patent system, to work better for innovators, companies, and consumers, is a top priority and a question not of can, or will our patent system be improved, but only a matter of how and when.

Congress (In-) Action: Resolving a Court Created Gordian Knot on Software Patents

The possession of power does not assure its exercise. The Constitution makes clear that should Congress choose to grant patents Congress does not have to, but should they so choose, Congress is limited to implementations that 1) “promote the Progress of Science and useful Arts” 2) are “for limited times” 3) to “Authors and Inventors” solely for their “writings and discoveries” and 4) the right is “exclusive.” Yet, while the Congress has chosen to exercise the power to create a monopoly right and modified the law as recently as 2011 to balance the equities, the most basic notion of what should be eligible for consideration for patent has not been directly addressed by the Congress since the 1952 Patent Act. While Congress is the entity constitutionally charged with deciding what implementations promote the Progress of Science and the Useful Arts, this determination has been abdicated to the Courts and has been particularly problematic in the area of software patents. The following are four suggestions for immediate Congressional action to cut the Court created Gordian Knot.

How PTO Fees Could Decimate Patent Trolls

Citing empirical evidence that non-practicing entities assert relatively old patents that cover inventions in relatively fast-paced industries, this essay argues that the PTO should increase the number and magnitude of renewal (maintenance) fees in order to hasten the expiration of suspect software patents and reduce the prevalence of suits filed by so-called patent trolls.

Software Patents: Need for Abolishing the Patent Cover

The paper begins with a review of the legal rationale for non-protection of software by patents. This is followed by the analysis of the question whether problems may come up if software patents are categorically discriminated from patents in other fields of technology. Special emphasis is made on the post grant review under the new “America Invents Act” and whether it presents a problem against non-recognition of software patents. The paper critically analyses the landmark case laws against software patents, patentability and other scholarly writings with similar analysis and discussions and conclude with the strong observations that software patents produce more problems than they solve.