19
Jun
Us_supreme_court_seal

In one of his typically brief opinions, Justice Clarence Thomas of the US Supreme Court today wrote for a unanimous Court striking down a generic software patent using a long-known loophole in the patent system for protecting an abstract idea simply by linking it to implementation on a computer.

The case, Alice Corp. v. CLS Bank Int., is one of the relatively few software patent-related cases the court has ever heard, and anti-software patent advocates are, as a result, unlikely to come away from the decision fully satisfied. Today's ruling applies largely to a fringe element of business method and more troll-worthy software patents, rather than the murky world of software patents at large.

In short, the Court ruled that patents for what are known as "abstract ideas" (under the definition of US patent law) cannot become patentable in method, system, or process simply because a machine, specifically a generic computer, is included as a necessary but arbitrary part of the patented invention. Thomas, arguably the Court's most constitutionally minimalist member, gave his opinion in just over 16 pages, quite short by the modern Court's standards.

The specific case related to a patent for a method of settlement intermediation between financial institutions, and Thomas ruled that because the process described was a combination of long-standing concepts and methods well-known in the financial world, that simply applying them to a computer did not meet the transformative requirement (aka the "machine" step) the petitioners argued they did. Thomas fell short of ruling that the steps described were abstract in and of themselves, which would have proved a more impactful decision.

Instead, Thomas' opinion states that it is the alleged transformative step, applying the methods described in the patent to a computer, that is fatal. Taking a few conceptual steps to implement a well-known concept in the banking and business world along with some mathematical equations in order to implement an abstract idea (here, settlement intermediation) on a computer can never alone meet the bar for patent eligibility. Because the invention in no way substantially enhances the functionality of the computer or provides material advances in the art or science it is involved in (other than the benefit the generic computer itself provides), it cannot be patented. That is to say, simply because an idea or method is made better by using a computer is not enough to meet the bar for patentability. To say that would be to say that scanning the pages of a book into a computer could be patented as an invention (let's assume the scanner and communication standard were already invented), because the computer does not require paper, can increase the visible font size, and be used to enhance the contrast of the pages for better readability. Thomas is contending that things like this are inherent to applying the invention to a computer in the first place - the benefits are obvious to anyone skilled in the art or profession, and therefore not eligible for patent protection.

Thomas was also careful to state that at its heart, nearly every patent contains some level of abstraction. This, perhaps, is key to the more narrow ruling. A paragraph-long concurring opinion authored by one of the Court's more liberal justices, Sotomayor, joined by two others (Breyer and Ginsburg), takes issue with Thomas here. Whereas Thomas did not conclude that the method (steps) itself described in the petitioner's patent was abstract (nor did he explicitly say they were not abstract), the concurring justices did. This is something of a long-standing spat in patent law.

If the Court had taken the concurring opinion's view, this case would have had a decidedly stronger impact, most likely. Sotomayor would prefer that the Court state firmly that business method patents are null and void, a position that has seen strong support pretty much everywhere but the business world. Just what effect this would have on software patents, by relation, is unclear, though it would almost certainly be greater than today's decision.

As to the effect of the Court's judgment in the smartphone world? Don't expect Apple lawyers to start quivering any time soon. Today's ruling does put out some shockwaves in the software and tech patent world, but largely for true patent trolls, who tend to use business method or highly generic software patents (eg, patents upon the very concept of software using the "applied to a computer" loophole to hold water). So, bad news trolls, which is always good. You can read the full opinion via this link from The Verge, too.

Alice Corp. v. CLS Bank Int. via The Verge

David Ruddock
David's phone is whatever is currently sitting on his desk. He is an avid writer, and enjoys playing devil's advocate in editorials, and reviewing the latest phones and gadgets. He also doesn't usually write such boring sentences.

  • Defenestratus

    Just to clarify... just because Thomas wrote the majority opinion, didn't mean that he decided this all by his lonesome. He was consenting with the majority opinion of the 9 justices on the bench.

    Note also however that the brevity of the opinion might be in due part to the courts historic level of work its taken on recently, with 17 or so opinions due out this month.

    • http://www.androidpolice.com/ David Ruddock

      The authoring justice writes the opinion, all the other justices do is submit commentary and, eventually, sign off on a draft they approve. It's a collaborative process (often an arduous one), but it's still Thomas' opinion, and the other justices do respect the author's individuality greatly.

      As for case load, that may be a part of it, but Thomas is famous for his conciseness, even in person. He went 8 years without asking a single question in oral arguments before the Court.

  • archercc

    This should, in theory, negate things like the "slide to unlock" since the gate in my backyard as a kid could serve as "prior art."

    • Your Mother

      Slide to unlock was featured on the Neonode N1 so I don't understand how Apple was able to use it to sue Samsung--where's the prior art argument there?

      • nicotinic

        It hadn't been patented and the courts/jurors aaren't typically techperts... Unfortunately. :'

  • Daniel

    Screw Apple.

  • Droidfan

    I think this decision may have a broader use than is being argued. The Court spoke directly in terms of the case at hand, which to me may make it appear that this is a narrow decision. But, according to Jeff Roberts over at Gigaom........ "Thomas also cautioned against allowing patents that relied on the "the draftsman's art" to turn abstract notions into monopolies on ideas". Yes Apple we're talking about you.....and that slide to unlock crap.

  • lljktechnogeek

    I'm always vaguely disappointed whenever Thomas writes an opinion that other people join. I mean, yeah, obviously the opinion is a good one in this case, but the ones he stands alone on are almost always truly amazing reads.

  • Sir_Brizz

    I think this definitely has ramifications on patents like slide to unlock and maybe even several other Apple patents. Slide to unlock in particular is almost entirely abstract at this point.

  • nicotinic

    Finally, a common sense ruling.

  • mjku

    I was told to come in here, immediately scroll to the bottom, and say "Screw Apple". So...

    Screw Apple.

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