U.S. urges the Federal Circuit to determine patent eligibility of software based upon random factors

In a brief filed by the U.S. in CLS Bank on December 14, 2012, the United States urged the Fed. Cir. to decide patent eligibility of software on a case-by-case basis. “This Court should identify a non-exhaustive list of factors for district courts and examiners to consider in resolving that essential question [whether the claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself] on a case-by-case basis.”  Slip Op. 8

While true to the letter and spirit of Bilski and its progeny decisions, the U.S. approach to deciding patent eligibility of software hardly provides patent practitioners with any more guidance than was provided by the Fed. Cir. in Research Corp. Tech – towit, “I know it when I see it.” In Research Corp. Tech., the Fed. Cir. proposed a “functional and palpable applications” test in defining whether a claim preempts a fundamental idea.  As we noted in a blog January 2011, “palpable” is defined by Merriam-Webster dictionary to mean “capable of being touched or felt” and so the “functional and palpable applications” test provides little guidance on determining the preemption issue and is reminiscent of the phrase made famous by Justice Potter Stewart in the obscenity case of Jacobellis v. Ohio “I know it when I see it.”  For more, see Bilski 101 Double-Header – “I Know it When I See It.”

The list of factors identified by the U.S. as “will often bear” on the patent-eligibility of computer-implemented inventions are “at least the following factors”:

  • Nominal/Tangential: whether the computer is recited in a manner that is only nominally or tangentially related to the performance of the invention
  • Generic/Unconventional: whether the computer is generically recited in a manner that would encompass any machine capable of performing the claimed steps, or whether specific, unconventional, computer equipment, tools, or processing capabilities are required
  • Improved Function: whether the invention involves an improvement in the ability of the computer to function as a computer, or whether the invention relates principally to an unrelated, non-technological field
  • Particular Manipulation: whether the claim recites a computerized device that manipulates particular data in a particular, specific, and useful way or whether the computer is recited solely for its generic functions of automating tasks or communicating over a distance
  • Transformation of Matter: whether (as in Diehr) the abstract idea is bound up in an invention that effects a transformation of matter, or whether (as in Benson and Flook) the abstract idea is merely described in a particular environment; and
  • Explained Generally: whether the computer-related elements of the claim represent conventional steps, described at a high level of generality, that would have to be employed by any person who wished to apply the abstract

Id., at 13, 14. (bold-faced headings not part of opinion)   As the U.S. explained:

“These factors are meant to identify relevant considerations only, and are not intended to be exhaustive or talismanic. No particular factor or number of factors must weigh in favor of patent eligibility for a claim to satisfy § 101. Other factors might be identified over time, and different factors may be relevant in other technological contexts. Moreover, the factors will not carry equal probative weight in every case. Nevertheless, the government believes that this general approach to § 101 for computer-implemented inventions — a broad legal inquiry undertaken on a case-by-case basis with the aid of a non-exhaustive list of probative factors — represents the best way to bring a measure of structure and discipline to the case-specific, contextual inquiry that the Supreme Court’s recent decisions have demanded.

Id., at 14, 15. (Emphasis added)

While it attempts to follow Bilski and its progeny, the “list of factors” test proposed by the U.S. hardly provides the patent community with any more insight on the patent eligibility of software than was provided by the Fed. Cir. in Research Corp. Tech — towit, “I know it when I see it.”

Take, for example, the term Nominal/Tangential proposed by the U.S. When is a recited computer “nominally or tangentially” related to the performance of the invention? as called for by the first factor. (What does “nominally” or “tangentially” even mean?)

The same can be said about other factors  proposed by the U.S., for example, Generic/Unconventional. When is a computer “generically recited in a manner that would encompass any machine capable of performing the claimed steps?” as called for by the second factor. (What does “generically” or “would encompass any machine” even mean?)

The factor Improved Function. When does an invention recite an “improvement in the ability of the computer to function as a computer?  (What does “the ability of the computer to function as a computer” even mean.)

The factor Particular Manipulation. When does a computer “manipulate data in a particular, specific, and useful way?” (What does “particular, specific, and useful way” even mean?  Indeed, is not  this criteria part of the question to be answered – i.e., whether a computer-implemented invention is eligible for a patent?).

The factor Transformation of Matter. When is “the abstract idea merely described in a particular environment”?  (What does that even mean?)

The factor Explained Generally. When does a computer-related element represent “conventional steps, described at a high level of generality, that would have to be employed by any person who wished to apply the abstract”?  (What does “high level of generality” even mean?  How will the term “any person who wished to apply the abstract” even be construed?  What does “wish” mean and does that term invoke a scienter element?  Does the absolute term “any person” fail if one person “wished to apply the abstract?)

With all due respect to the U.S., the above factors are nonsensical and serve no one but the patent litigators. They are premised upon “abstract” criteria, obtuse in understanding, and will undoubtedly lead to subjective application and inconsistent decisions, just as has the Fed. Cir.’s “functional and palpable applications” test in Research Corp. Tech.

The challenge of defining the boundary line within which software is patentable, and outside of which it is not, could not become any murkier if the U.S. approach to deciding software patentability is adopted. And it would come as no surprise if the en banc Fed. Cir. hearing the CLS Bank appeal did just that. The approach urged by the U.S. provides a very safe haven for the Fed. Cir. to decide this important software patent case in a way that does not run afoul of the fundamental Supreme Court tenet that jurisprudence involves a balancing of competing factors.

It is difficult to refute that the U.S.’s proposal does not involve such a balance. But in seeking safe haven by adopting the “list of factors” test proposed by the U.S., instead of doing the patent community a service, the Fed. Cir. may simply be deferring the question when is software eligible for a patent to future courts to decide.  They will be left to decide what the various terms in the criteria proposed by the U.S. and articulated by other courts really mean and how to apply those terms in deciding the patent eligibility of software claims. Other than patent litigators who will undoubtedly reap many benefits from this kind of approach, the U.S. “list of factors” approach does the patent community an ill service. Hopefully, the Fed. Cir. does the right thing and rejects the U.S. “list of factors” approach as the test to determine whether a computer-implemented invention is a patent ineligible “abstract idea.” For if the Fed. Cir. were to adopt the U.S. “list of factors” approach, the jurisprudence of software patent eligibility would be taken back to the future.

One of several alternative approaches to deciding the issue of the patent eligibility of software is an approach devised by The Juhasz Law Firm in May 2011 and that the Firm urged the Fed. Cir. to adopt in its en banc decision in CLS Bank. See CLS Bank amicus brief. The approach is known as the “physical and virtual links” test. It is a simple test grounded in the Supreme Court’s Diehr and Morse precedent that remains true to the admonish of the S. Ct. against bright-line rules by recognizing that it is only one clue that may be used in deciding the subject matter patentability question; albeit a very good one at that. So far, the test as applied has lead to highly predictable results in § 101 decisions to date. For more on “physical and virtual links,” read about the “virtual link” patent claim defense.

It is hoped that whatever test the en banc Fed. Cir. may adopt in deciding CLS Bank, it will be one that will be clear, cogent, and compelling that is easy to explain, understandable to the client, and leads to substantially predictable results. And not like the one proposed by the U.S. which involves deciding the patent eligibility of software based upon “I know it when I see it.”

About Juhasz Law

The Juhasz Law Firm can help you to better understand the effect of these cases on your patents. For more information regarding how these cases may affect your patents, please contact The Juhasz Law Firm. Your patents may be your most important asset. To help you protect your patents, rely on Juhasz Law, the firm committed to Guiding Your Patent Beyond The Horizon (sm).

For more information on subject matter patentability, contact Paul R. Juhasz at +1 713-260-9651.