{"id":1265,"date":"2016-09-30T19:21:35","date_gmt":"2016-09-30T23:21:35","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1265"},"modified":"2016-10-03T23:46:20","modified_gmt":"2016-10-04T03:46:20","slug":"judge-mayer-finds-that-section-101-bars-patents-on-software","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1265","title":{"rendered":"Judge Mayer Finds that Section 101 Bars Patents on Software"},"content":{"rendered":"

In Intellectual Ventures v. Symantec,<\/em>\u00a0[2015-1769, 2015-1770, 2015-1771](September 30, 2016), the Federal Circuit affirmed summary judgment, that the asserted claims of the ‘050 and ‘142 patents were directed to ineligible subject matter, and reversed the finding that the asserted claim of the ‘610 patent covered eligible subject matter.<\/p>\n

At Step I of the Alice\/Mayo Test for the ‘050, the Federal Circuit agreed\u00a0that the ‘050 patent was directed to the abstract idea of filtering emails, noting that it it was long-prevalent practice for people receiving\u00a0paper mail to look at an envelope and discard certain\u00a0letters, without opening them, from sources from which\u00a0they did not wish to receive mail based on characteristics\u00a0of the mail. \u00a0At Step II of the Alice\/Mayo Test the Federal Circuit rejected the argument that because the jury determined that the prior art did not anticipate or make obvious the claimed invention, the claims necessarily met Step II, noting the fact that the claims may not have been\u00a0anticipated or obvious does
\nnot suggest that the idea of \u201cdetermining\u201d and \u201coutputting\u201d\u00a0is not abstract, much less that its implementation is\u00a0not routine and conventional.<\/p>\n

At Step I\u00a0of the Alice\/Mayo Test for the ‘142 patent, the Federal Circuit found that the ‘142 patent itself demonstrates that the\u00a0claims were directed to abstract ideas, analogizing the technology to post offices, and demonstrating that the concepts were well-known and abstract. \u00a0At Step II, again the ‘142 patent was its own undoing, the Federal Circuit finding that the\u00a0“specification thus\u00a0confirms that the implementation of the abstract idea is\u00a0routine and conventional.”<\/p>\n

At Step 1 of the Alice\/Mayo Test for the ‘601 patent, the Federal Circuit again found that patent was its own undoing,\u00a0acknowledging that virus screening was known prior to the invention. \u00a0As a result the Federal Circuit said that virus screening is both well-known and an abstract idea. \u00a0The Federal Circuit disagreed that the narrowness of the claim made it patent eligible, noting that a narrow claim directed to an abstract idea is not necessarily patent eligible. \u00a0The Federal Circuit said that the claims were\u00a0directed to the use of\u00a0conventional or generic technology in a nascent but wellknown\u00a0environment, without any claim that the invention\u00a0reflects an inventive solution to any problem presented by\u00a0combining the two.<\/p>\n

What is most notable about the case is Judge Mayer’ concurrence, where he makes to points:<\/p>\n

(1) patents constricting the essential channels of\u00a0online communication run afoul of the First Amendment;\u00a0and<\/p>\n

(2) claims directed to software implemented on a
\ngeneric computer are categorically not eligible for patent.<\/p><\/blockquote>\n

Mayer comments that\u00a0although the claims at issue here disclose no new\u00a0technology, they have the potential to disrupt, or even\u00a0derail, large swaths of online communication. \u00a0He further suggests that\u00a0Essential First\u00a0Amendment freedoms are abridged when the Patent and\u00a0Trademark Office (\u201cPTO\u201d) is permitted to balkanize the\u00a0Internet, granting patent owners the right to exact heavy\u00a0taxes on widely-used conduits for online expression. \u00a0Mayer points to\u00a0the distinction between\u00a0idea and expression in copyright law as\u00a0providing a\u00a0balance\u00a0between the First Amendment and the Copyright\u00a0Act by permitting free communication of facts while still\u00a0protecting an author\u2019s expression.\u201d \u00a0Mayer further points to\u00a0fair use, that even permits the use of the author’s expression. \u00a0He concludes that restrictions on patent eligibility\u00a0restrictions on subject matter eligibility\u00a0can be used to keep patent protection within constitutional\u00a0bounds. He states that:<\/p>\n

Section 101 creates a \u201cpatent-free zone\u201d\u00a0and places within it the indispensable instruments of\u00a0social, economic, and scientific endeavor.<\/p><\/blockquote>\n

He believes that\u00a0Section 101, if properly applied, can preserve\u00a0the Internet\u2019s open architecture and weed out those\u00a0patents that chill political expression and impermissibly obstruct the marketplace of ideas.<\/p>\n

Mayer goes on to state that “m]ost of the First Amendment concerns associated\u00a0with patent protection could be avoided if this court were\u00a0willing to acknowledge that Alice sounded the death knell\u00a0for software patents. \u00a0Arguing that software is a form of language, he states that it is It is inherently abstract because\u00a0it is merely an idea without physical embodiment, and concludes that\u00a0all software\u00a0implemented on a standard computer should be deemed\u00a0categorically outside the bounds of section 101.<\/p>\n

This is justified in Mayer’s mind because computer are indispensible, and a basic tool of modern life and thus not subject to the patent monopoly:<\/p>\n

In the section 101 calculus,\u00a0adding software (which is as abstract as language) to\u00a0a conventional computer (which rightfully resides in the\u00a0public domain) results in a patent eligibility score of zero.<\/p><\/blockquote>\n

Mayer goes on to identify four insurmountable problems with\u00a0patent protection for software:<\/p>\n

    \n
  1. Their\u00a0scope is generally vastly disproportionate to their technological
    \ndisclosure.<\/li>\n
  2. They\u00a0provide incentives at the wrong time.<\/li>\n
  3. Their sheer number.<\/li>\n
  4. Most fundamentally, generically implemented\u00a0software invariably lacks the concrete\u00a0borders the patent law demands.<\/li>\n<\/ol>\n

    He concludes that\u00a0eliminating\u00a0generically-implemented software patents would clear the
    \npatent thicket, ensuring that patent protection promotes,\u00a0rather than impedes, \u201cthe onward march of science,\u201d\u00a0and\u00a0allowing technological innovation to proceed apace.<\/p>\n","protected":false},"excerpt":{"rendered":"

    In Intellectual Ventures v. Symantec,\u00a0[2015-1769, 2015-1770, 2015-1771](September 30, 2016), the Federal Circuit affirmed summary judgment, that the asserted claims of the ‘050 and ‘142 patents were directed to ineligible subject matter, and reversed the finding that the asserted claim of … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15],"tags":[],"class_list":["post-1265","post","type-post","status-publish","format-standard","hentry","category-15"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1265","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1265"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1265\/revisions"}],"predecessor-version":[{"id":1266,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1265\/revisions\/1266"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1265"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1265"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1265"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}