Software patents under United States patent law
|Computer programs, software and
Neither software nor computer programs are explicitly mentioned in United States patent law. Patent law changed to address new technologies and decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit (CAFC) in the latter part of the 20th century sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software.
The status eligibility of software for patent protection per se has not been directly addressed by either the courts or the legislature. In fact, in the recent Supreme Court decision in Alice v. CLS Bank, the Court painstakingly avoided the issue, and one Justice in the oral argument repeatedly insisted that it was unnecessary to reach the issue. The expression "software patent" itself has not been clearly defined. The United States Patent and Trademark Office (USPTO) has permitted patents to be issued whose description included nothing but the steps of involved in the execution of software on a general purpose computer. Courts have both upheld such patents as valid and struck down such patents as invalid.
On June 19, 2014 the United States Supreme Court ruled in Alice Corp. v. CLS Bank International that "merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention." 
The ruling continued
[...] the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’”. Stating an abstract idea while adding the words“apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to“implemen[t]” an abstract idea “on . . . a computer,”  that addition cannot impart patent eligibility.
Article 1, section 8 of the United States Constitution establishes that the purpose of intellectual property is to serve a broader societal good, the promotion of "the Progress of Science and the useful Arts" :
Article 1, section 8 United States Constitution:
- To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;
Section 101 of title 35, United States Code, provides:
- Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
However, there are restrictions on subject matter eligibility under Section 101 and in general the line between what is deemed patent eligible under Section 101 and what is ineligible changes is a matter of ongoing judicial activity.
In the late 1960s and early 1970s, the USPTO and the United States Court of Customs and Patent Appeals (CCPA) were at odds over the patent-eligibility of technical advances whose departure from the prior art was only in the use of a software algorithm. The USPTO rejected such claims and declined to patent them, but the CCPA repeatedly reversed the USPTO's rulings and ordered the issuance of patents. The USPTO's position was hampered during the 1960s by the uncertainty over whether the Supreme Court could review decisions of the CCPA, because it was unclear whether it was an Article III court. That question was resolved, however, in Brenner v. Manson, in which the Court held that it had certiorari jurisdiction to review CCPA decisions. That decision also began a string of decisions in which the Supreme Court reversed decisions of the CCPA, and then its successor court the United States Court of Appeals for the Federal Circuit (CAFC), which had reversed decisions of the USPTO denying a patent to an applicant.
In the first of the Supreme Court's computer software decisions (the "patent-eligibility trilogy"), Gottschalk v. Benson, the Court reversed the CCPA's reversal of a USPTO decision, thus denying a patent on an algorithm for converting binary-coded decimal numbers into pure binary numbers. In so ruling, the Court looked back to 19th century decisions such as O’Reilly v. Morse, which held that abstract ideas could not be made the subject of patents. The Court's 1978 ruling in Parker v. Flook, was similar in principle. These cases also established that the "clue" to whether a patent might be granted on a process was whether the process was carried out with a particular apparatus or else effectuated a transformation of an article from one state or thing to another state or thing. In Flook, where the sole departure from the prior art was concededly the formula or algorithm, no transformation was alleged, and it was conceded that the implementing apparatus was old or conventional, the process was simply not the kind of process that could be patented.
In the 1981 case of Diamond v. Diehr, the United States Supreme Court upheld the CCPA's reversal of the USPTO, and ordered the grant of a patent on an invention, a substantial part of which involved use of a computer program which used a well-known formula (the Arrhenius Equation) for calculating the time when rubber was cured and the mold could therefore be opened. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but a process for molding rubber, which was therefore patentable. In the Diehr case, there was no concession that the implementation was conventional, and the process did effectuate a transformation of substances (from uncured rubber to cured rubber).
After this point, more patents on software began to be granted, albeit with conflicting and confusing results. After its creation in 1982, the CAFC charted a course that tried to follow the Diehr precedent. Patents were allowed only if the claim included some sort of apparatus, even rather nominal apparatus at times, such as an analog-to-digital converter front end, or in one case a scratch-pad memory for storing intermediate data. A representative decision from this period is In re Schrader, in which the CAFC set forth probably its best and most detailed formulation of the rule it was attempting to follow.
Dissatisfaction with the perceived artificiality of this rule erupted, however, in rulings beginning with the en banc 1994 decision in In re Alappat, in which the CAFC majority held that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a "new machine", which is patentable. This ruling was immediately preceded by In re Lowry, which held that a data structure representing information on a computer's hard drive or memory is similarly to be treated as a patent-eligible physical device, and in which the Solicitor General's Office declined the PTO's request to seek certiorari. As a result, the PTO did not even request that the Solicitor General's Office seek certiorari in the Alappat case. Finally, in State Street Bank v. Signature Financial Group, the CAFC ruled that a numerical calculation that produces a "useful, concrete and tangible result", such as a price, is patent-eligible.
The USPTO's reaction to this change was, for the time being at least, to "throw in the towel." The Clinton administration appointed Bruce Lehman as Commissioner of the USPTO in 1994. Unlike his predecessors, Lehman was not a patent lawyer but the chief lobbyist for the Software Publishing Industry. In 1995, the USPTO established some broad guidelines for examining and issuing software patents. The USPTO interpreted the courts as requiring the USPTO to grant software patents in a broad variety of circumstances. Although the U.S. Congress has never legislated specifically that software is patentable, the broad description of patentable subject in the Patent Act of 1952 and the failure of Congress to change the law after the CAFC decisions allowing software patents, was interpreted as an indication of Congressional intent. The reaction of the defeated-feeling USPTO was characterized in the cartoon shown at right, which appeared in IEEE Micro at this time.
The United States Supreme Court remained silent on these decisions and developments for years. The first response appeared in a dissenting opinion in LabCorp v. Metabolite, Inc (2006). Although certiorari had been granted, the Court dismissed it as improvidently granted; the minority argued that the question of statutory subject matter in patent law should be addressed. Justice Breyer's dissent stated:
"[State Street] does say that a process is patentable if it produces a 'useful, concrete, and tangible result.' But this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary."
He continues to directly address the claim that software loaded onto a computer is a physical device:
"...And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes, decimal figures into binary figures-even though the result would seem useful, concrete, and at least arguably (within the computer's wiring system) tangible."
At about the same time, in a concurring opinion in eBay Inc. v. MercExchange, L.L.C., Justice Kennedy (joined by Justices Stevens, Souter, and Breyer) questioned the wisdom of permitting injunctions in support of "the burgeoning number of patents over business methods," because of their "potential vagueness and suspect validity" in some cases.
This was followed by the decision of the CAFC in In re Bilski, which has opened a new chapter in this history. In Bilski, as the article on that case explains, the CAFC superseded State Street and related decisions with a return to the tests of the patent-eligibility trilogy, although while those decisions had merely treated the machine-or-transformation test as the clue to past decisions the CAFC attempted to make that test dispositive. However, in 2009 the Supreme Court overturned the CAFC's decision in Bilski, stating that the machine-or-transformation test is not the exclusive test of patentability. At the same time, the Court (per Justice Kennedy) held, 5-4, that Bilski's software, business-method patent application was patent ineligible because it was directed to an abstract idea, largely preempting hedging as a business expedient. But the majority declined to rule all business-method patents ineligible. Justice Stevens, in one of his last opinions before retiring from the Court, concurred in the judgment but disagreed with the majority's rationale. Joined by Justices Ginsberg, Breyer, and Sotomayor, he argued that the claimed invention was patent ineligible because it was a business method (advancing much the same analysis as that in Judge Dyk's opinion in the Federal Circuit) and therefore outside the reach of the patent system.
Bilski was followed by the Court's unanimous opinion in Mayo Collaborative Services v. Prometheus Labs, Inc. Although it did not involve a software patent (it concerned a medical assay implementing a natural principle), it stated a methodology for determining patent eligibility that is currently dominant in software cases. It revived the approach of the Flook and Neilson cases, which is to treat the underlying principle, idea, or algorithm on which the claimed patent is based as if it were part of the prior art and to make patent eligibility turn on whether the implementation of it is inventive.
Shortly after that, the CAFC issued a very fragmented en banc decision in CLS Bank International v. Alice Corp. in which the judges were unable to reach a coherent decision on the patentability of the business-method, software claims at issue. The case went to the Supreme Court, which decided it on June 19, 2014. As explained in greater detail in the article on that case, the Court, using the analysis set forth in the Mayo case, held Alice's patents invalid as directed to an abstract idea. As in Bilski, the Court declined to rule business-method patents categorically ineligible, but the Court's requirement for an "inventive concept" for the implementation of the principle underlying the claimed method and its insistence that "merely saying apply it with a computer" is not enough to confer patent eligibility may doom many or most business-method, software patents.
Since the Alice decision, the Federal Circuit and district courts have held a number of business-method patents to be patent ineligible as mere abstract ideas implemented in a conventional way without embodying any inventive concept.
In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., the Federal Circuit invalidated a patent on a “device profile” and methods for generating “device profiles.” The device profile was a collection of information about a graphic image, and it was generated by combining data sets containing such information. The court held that the device and method for generating it were abstract ideas and patent ineligible: “Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”
In buySAFE, Inc. v. Google, Inc., the Federal Circuit invalidated under section 101 a patent on a computerized surety system for online transactions. The court said the computer implementation of the underlying surety idea was “not even arguably inventive.” The court concluded: “In short, with the approach to this kind of section 101 issue clarified by Alice, it is a straightforward matter to conclude that the claims in this case are invalid.” The court remarked in passing, however, that if “enough extra is included in a claim, it passes muster under section 101 even if it amounts to a business method.” But the court did not explain or illustrate what would be “enough extra.”
The software cases after Alice adopt its method of legal analysis, based on the decision of the Supreme Court in the Mayo case. This calls for a two-step analysis. First, the court determines whether the claimed invention is based on an abstract idea or principle of some sort, often expressed at a high level of generality, such as a computerized escrow or surety arrangement, as in the Bilski and Alice cases. If the claimed invention is directed to an abstract idea, the court proceeds to the second step of analysis, which is to determine whether the patent adds "something extra" to the idea that embodies an "inventive concept." If there is no addition of an inventive element to the underlying abstract idea, the court will find the patent invalid under section 101. Few software patents have survived this analysis since the Alice decision, largely because they are written in purely functional language to claim a result rather than describe a structure for accomplishing a result. Thus, Federal Circuit Judge Bryson explained when sitting by designation as a trial judge in Loyalty v. American Airlines case:
In short, such patents, although frequently dressed up in the argot of invention, simply describe a problem, announce purely functional steps that purport to solve the problem, and recite standard computer operations to perform some of those steps. The principal flaw in these patents is that they do not contain an “inventive concept” that solves practical problems and ensures that the patent is directed to something “significantly more than” the ineligible abstract idea itself. See CLS Bank, 134 S. Ct. at 2355, 2357; Mayo, 132 S. Ct. at 1294. As such, they represent little more than functional descriptions of objectives, rather than inventive solutions. In addition, because they describe the claimed methods in functional terms, they preempt any subsequent specific solutions to the problem at issue. See CLS Bank, 134 S. Ct. at 2354; Mayo, 132 S. Ct. at 1301-02. It is for those reasons that the Supreme Court has characterized such patents as claiming “abstract ideas” and has held that they are not directed to patentable subject matter.
The question has been raised, therefore, what kinds of software-related patents will survive the analysis prescribed in Alice and Mayo. The question was considered during the oral argument of the Alice case, although not more than cursorily in the opinion. Counsel for CLS Bank suggested that data compression and data encryption were software technologies that are likely to be patent-eligible because they address "a business problem, a social problem, or a technological problem." The Solicitor General, as amicus curiae, said that it would be difficult to identify a patent-eligible business method unless it involved an improved technology, such as "a process for additional security point-of-sale credit card transactions using particular encryption technology" – "that might well be patent eligible."
At least one commentator has questioned that, however, because encryption, as explained in the Wikipedia article RSA (cryptosystem), largely consists of mathematical operations using modular arithmetic and theorems of Euler. Yet, as the commentator points out, in the Flook case the Supreme Court said: "As the CCPA has explained, 'if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.' " Furthermore, in July 2014, just after the Alice decision came down, a Federal Circuit panel held a patent ineligible, quoting Flook and adding: “Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible." Judge Bryson's comments, quoted above, may therefore be more predictive of the likely outcomes of future software-related patent cases, including encryption ones, than counsel's assurances during oral argument in the Alice case.
- Gottschalk v. Benson
- Parker v. Flook
- Diamond v. Diehr
- State Street Bank v. Signature Financial Group
- In re Bilski
- Alice Corp. v. CLS Bank International
- Machine-or-transformation test
- Software patent
- Software patent debate
- Software patents under the European Patent Convention
- Software patents under TRIPs Agreement
- Limitations on exclusive rights: Computer programs (United States copyright law)
- Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. ___ (2014). During oral argument, Justice Sotomayor repeatedly asked counsel whether Alice was a software case: "Why do we need to reach . . . software patents at all in this case?"; "What's the necessity for us to announce a general rule with respect to software? There is no software being patented in this case."; "Do you think we have to reach the patentability of software to answer this case?" The Court's opinion in Alice does not discuss the patent eligibility of software as such.
- 35 U.S.C. 101 Inventions patentable. - Patent Laws
- 383 U.S. 519 (1966).
- Almost invariably, the Supreme Court's grant of certiorari in a USPTO case has resulted in reversal of the decision of the court below and reinstatement of a USPTO decision denying a patent.
- 409 U.S. 63 (1972)
- 56 U.S. (15 How.) 62 (1853).
- 437 U.S. 584 (1978).
- Arrhythmia Research Tech. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
- See In re Iwahashi, 888 F.2d 1370 (Fed. Cir. 1989).
- 22 F.3d 290 (Fed. Cir. 1994).
- 33 F.3d 1526 (1994).
- 32 F.3d 1579, 1582 (Fed. Cir. 1994).
- 149 F.3d 1368 (Fed. Cir. 1998).
- See also AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999) (similar ruling, upholding patent based on Boolean ANDing).
- See Developments in the Economics of Copyright: Research and Analysis (eds. Lisa Takeyama, Wendy J. Gordon, Ruth Towse) at note 34 and accompanying text, available at http://books.google.com/books?id=ecPJSiHIi2kC&pg=PA17&lpg=PA17&dq=%22Business+Software+Alliance%22+%22bruce+lehman%22&source=bl&ots=AB0bhcvwJs&sig=-P1MAbCTwwXxVwDZcTWSN0-DvcU&hl=en&sa=X&ei=_EF6U9DrB6vMsQTZvYDYAg&ved=0CFUQ6AEwBw#v=onepage&q=%22Business%20Software%20Alliance%22%20%22bruce%20lehman%22&f=false .
- 547 U.S. 388 (2006).
- 132 S. Ct. 1289 (2012).
- See Richard H. Stern, Alice v CLS Bank: US Business Method and Software Patents Marching towards Oblivion?,  Eur. Intell. Prop. Rev. 619, 626, suggesting that "most business methods will fail to pass muster under the Flook-Mayo-Alice rationale." See also Richard H. Stern, Alice v. CLS Bank: Are US Business-Method and Software Patents Doomed? Part 1, IEEE Micro, Sept./Oct. 2014, at p. 68 ("A majority of the Court refused to address the patent eligibility of business methods as such. Yet, because of their typical abstractness, and because of the legal analysis that the Court prescribed for implementations of abstract ideas, business-method patents now seem like lemmings marching in the thousands toward oblivion. That is not equally so for all software patents, of which business-method patents are a major subset. The Court left some room for non-business-method software patents.").
- — F.3d —, 2014 WL 3377201 (July 11, 2014).
- — F.3d —, 2014 WL -- (Sept. 3, 2014).
- See, for example, Loyalty Conversion Sys. Corp. v. American Airlines, Inc., — F. Supp. 2d —, 2014 WL 4364848 (E.D. Tex. Sept. 3, 2014) ("At their core, the asserted claims of the two patents in suit are directed to the conversion of loyalty award points of one vendor into loyalty award points of another. That core idea plainly would not be patentable without more, as it is indistinguishable in principle from the simple and familiar financial or business operations that were at issue in Bilski and CLS Bank...."); Tuxis Technologies, LLC v. Amazon. com, Inc., — F. Supp. 2d —, 2014 WL 4382446 (D. Del. Sept. 3, 2014) (method of "upselling" or "cross-selling" -- "the basic idea of offering something to a customer based on his or her interest in something else,” a concept that “has been a cornerstone of commercial activity since time immemorial”); Walker Digital, LLC v. Google, Inc., — F. Supp. 2d —, 2014 WL 4365245 (D. Del. Sept. 3, 2014) ("The claim limitations essentially recite a generic headhunting or matchmaking request by two parties.").
- Note on Encryption Software, in Chapter 8-D of Intellectual Property Protection of Digital Information in the New Millennium: Cases and Materials on Intellectual Property Rights in Computer Programs and Related Subject Matter
- In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., --- F.3d ----, 2014 WL 3377201 (July 11, 2014).
- Ben Klemens, Math You Can't Use: Patents, Copyright, and Software. Brookings Institution Press, 2005.
- Manual of Patent Examining Procedure, Chapter 2100