Is the SFLC Tilting at Windmills?

by on February 23, 2007 · 8 comments

I’ve got a new article up at Ars on AT&T v. Microsoft:

The Software Freedom Law Center filed an amicus brief urging the court to take this line of reasoning even further. The courts have long held that laws of nature, abstract ideas, and mathematical algorithms are not eligible for patent protection. Software is nothing more than a description of a mathematical algorithm. Therefore, the center asks the courts to declare that software is not eligible for patent protection on that basis.

The brief, written by SFLC counsel Eben Moglen, argues that the Court of Appeals for the Federal Circuit, which has had jurisdiction over all patent cases since it was created in the 1980s, has gone off the rails in recent years. Moglen claims that the federal circuit has misread the Supreme Court’s precedents on the patentability of software from the 1970s and early 1980s in a way that removes almost any limit on the scope of patentable subject matter.

During oral argument, several justices seemed sympathetic to this argument. Although none of them mentioned the SFLC brief specifically, Justice Breyer and Justice Stevens both asked Daryl Joseffer, who was arguing for Microsoft on behalf of the Bush administration, whether software is patentable. And Justice Scalia asked Theodore Olson, Microsoft’s lawyer, “You can’t patent on-off, on-off code in the abstract, can you?” Both Mr. Olson and Mr. Joseffer agreed that you could not do so.

But even if some of the justices are uncomfortable with the idea of patents on software, it seems unlikely that the court will vote to strike down software patents entirely. The legal status of software patents was not the focus of the arguments in the case, and the justices will be reluctant to issue a sweeping ruling on the patentability of software without giving the issue a thorough hearing. Moreover, companies now earn billions of dollars from their software patent portfolios, and the court will be reluctant to reverse legal principles on which companies have relied for a decade or more, even if those principles have never been endorsed by the Supreme Court.

It’s a shame, because even though I think the SFLC has a strong argument as a matter of law, the Supreme Court is likely to give considerable weight to stare decisis in this sort of situation. So even if the Supreme Court were to take a case to squarely consider the patentability of software, I think we’d have an uphill battle convincing the justices that it’s worth the upheaval that would result from invalidating hundreds of thousands of software patents.

The only way the court is likely to go for that is if it is convinced that the consequences of continuing to allow software patents would be even worse. Maybe a few more high-profile patent trolling cases with 8 zeros behind them will convince the court that this is a serious enough problem to overturn the Federal Circuit’s software patent jurisprudence despite firms’ reliance on those decisions over the last decade.

  • http://weblog.ipcentral.info/ Noel Le

    *** The courts have long held that laws of nature, abstract ideas, and mathematical algorithms are not eligible for patent protection. Software is nothing more than a description of a mathematical algorithm.***

    Doesn’t everyone agree that laws of nature, abstract ideas, and mathematical algorithms are not patentable, and that software patents entail more than these items? Is Moglen, or you, claiming that software cannot be an essential part of a patented invention?

    ***Moglen claims that the federal circuit has misread the Supreme Court’s precedents on the patentability of software from the 1970s and early 1980s in a way that removes almost any limit on the scope of patentable subject matter.***

    So, since State Street, what new subject matters besides business methods and software have inventors been granted patents for? I’m just curious.

    ***The only way the court is likely to go for that [eliminating software patents] is if it is convinced that the consequences of continuing to allow software patents would be even worse. Maybe a few more high-profile patent trolling cases…***

    Also, various litigation and administrative reforms would probably have to prove ineffective in improving the patent system.

  • http://weblog.ipcentral.info/ Noel Le

    *** The courts have long held that laws of nature, abstract ideas, and mathematical algorithms are not eligible for patent protection. Software is nothing more than a description of a mathematical algorithm.***

    Doesn’t everyone agree that laws of nature, abstract ideas, and mathematical algorithms are not patentable, and that software patents entail more than these items? Is Moglen, or you, claiming that software cannot be an essential part of a patented invention?

    ***Moglen claims that the federal circuit has misread the Supreme Court’s precedents on the patentability of software from the 1970s and early 1980s in a way that removes almost any limit on the scope of patentable subject matter.***

    So, since State Street, what new subject matters besides business methods and software have inventors been granted patents for? I’m just curious.

    ***The only way the court is likely to go for that [eliminating software patents] is if it is convinced that the consequences of continuing to allow software patents would be even worse. Maybe a few more high-profile patent trolling cases…***

    Also, various litigation and administrative reforms would probably have to prove ineffective in improving the patent system.

  • Ned Ulbricht

    So, since State Street, what new subject matters besides business methods and software have inventors been granted patents for? I’m just curious.

    For example, see the DOJ Amicus Brief in LabCorp v Metabolite:

    [...] In sum, the court of appeals held that anyone who thinks about the relationship between elevated total homocysteine and cobalamin or folate deficiency after obtaining the results of a total homocysteine assay infringes the patent claim.

    The claim’s breadth is further underscored by the jury’s findings and the relief awarded, which suggest that doctors infringe the patent claim whenever they review the results of total homocysteine assays, regard less of the purpose for which they ordered the assays. The district court instructed the jury that it should find petitioner liable for contributory infringement if, among other things, the total homocysteine assays performed by petitioner were not “capable of substantial noninfringing use.” By finding petitioner liable for contributory infringement, the jury necessarily concluded that no substantial non-infringing uses of the total homocysteine assays had been proven on the trial record.

    In so concluding, the jury implicitly rejected peti tioner’s contention that many of the assays did not in fringe because doctors ordered them for purposes other than diagnosing cobalamin or folate deficiency. Petitioner had argued that the assays were used primarily to diagnose other conditions, especially heart disease. Respondents’ witnesses countered that, whatever the motivation for the assay, it would be “malpractice” for a physician not to perform the correlation upon viewing a total homocysteine assay, and that the other conditions associated with elevated total homocysteine are treated with supplements of cobalamin or folate in any event. [...]

    (citations omitted)

    Also see Justice Breyer’s
    dissent (joined by Justices Stevens and Souter).

    So, roughly, a patent has been granted on a medical doctor’s diagnosis of a patient.

  • Ned Ulbricht

    So, since State Street, what new subject matters besides business methods and software have inventors been granted patents for? I’m just curious.

    For example, see the DOJ Amicus Brief in LabCorp v Metabolite:

    [...] In sum, the court of appeals held that anyone who thinks about the relationship between elevated total homocysteine and cobalamin or folate deficiency after obtaining the results of a total homocysteine assay infringes the patent claim.

    The claim’s breadth is further underscored by the jury’s findings and the relief awarded, which suggest that doctors infringe the patent claim whenever they review the results of total homocysteine assays, regard less of the purpose for which they ordered the assays. The district court instructed the jury that it should find petitioner liable for contributory infringement if, among other things, the total homocysteine assays performed by petitioner were not “capable of substantial noninfringing use.” By finding petitioner liable for contributory infringement, the jury necessarily concluded that no substantial non-infringing uses of the total homocysteine assays had been proven on the trial record.

    In so concluding, the jury implicitly rejected peti tioner’s contention that many of the assays did not in fringe because doctors ordered them for purposes other than diagnosing cobalamin or folate deficiency. Petitioner had argued that the assays were used primarily to diagnose other conditions, especially heart disease. Respondents’ witnesses countered that, whatever the motivation for the assay, it would be “malpractice” for a physician not to perform the correlation upon viewing a total homocysteine assay, and that the other conditions associated with elevated total homocysteine are treated with supplements of cobalamin or folate in any event. [...]

    (citations omitted)

    Also see Justice Breyer’s
    dissent (joined by Justices Stevens and Souter).

    So, roughly, a patent has been granted on a medical doctor’s diagnosis of a patient.

  • Ned Ulbricht

    Arggh, obvious (I hope) markup problem with my previous comment. Three (partial) paragraphs were quoted from the DOJ Amicus brief.

    It looked good in preview.

  • Ned Ulbricht

    Arggh, obvious (I hope) markup problem with my previous comment. Three (partial) paragraphs were quoted from the DOJ Amicus brief.

    It looked good in preview.

  • http://weblog.ipcentral.info/ Noel Le

    Thanks Ned. I’ll look at this to see if it arises from State Street.

  • http://weblog.ipcentral.info/ Noel Le

    Thanks Ned. I’ll look at this to see if it arises from State Street.

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