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Software Patents Still Finding Their Way Out of Post-Alice Rabbit Hole

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Previous posts on this blog have discussed the potential impacts of the U.S. Supreme Court’s landmark 2014 decision in Alice v. CLS Bank. Several months after the ruling, it is becoming increasingly clear that Alice was, indeed, a landmark case for intellectual property patents. Precisely what type of landmark it was, though, remains a topic for spirited debate.

A Vox article headlined “Software patents are crumbling, thanks to the Supreme Court” was widely shared through social media, but the actual argument advanced by Vox technology editor Timothy B. Lee was somewhat less florid. Lee notes that despite a recent string of post-Alice defeats for erstwhile software patents, the ruling “doesn’t necessarily mean that all software patents are in danger.”

What the spike in patent invalidations for “inventions” such as using a computer to run a bingo game does mean, in Lee’s view, is that “the pendulum of patent law is now clearly swinging in an anti-patent direction.” The hundreds of thousands of software patents already in existence are not going to be invalidated overnight, but their holders may think twice about their post-Alice footing before paying to assert or defend their patent claims before a judge.

Simon Phipps of Infoworld called that shift “a welcome change” and cited a recent discussion on IP Watchdog between patent attorneys Gene Quinn and Mark Lemley in speculating that the majority of future software patents may have to limit their claims of invention to specific computational functions within their code.

For example, the “abstract idea” of using a computer to run a bingo game might not be patentable, but a particular algorithm used to simulate the activity of a bingo ball dispenser could be. That would allow for multiple computer bingo games to co-exist in patented harmony, provided each used its own code (or a public domain solution) to simulate the “random” bingo ball selection.

Attorneys Ling Cheung Hughes and James H. Morris provided an additional counterpoint in the National Law Journal. Chiding the “popular legal press” for “wringing its hands over the supposed death knell” of software patents, Hughes and Morris suggested such concerns were exaggerated.

In their view, courts evaluating the degree to which a particular patent is based on an “abstract idea” still enjoy a considerable amount of latitude in deciding whether the claimed invention comprises “an inventive concept,” with or without the implementation of the abstract idea, and remain free to find that “abstract idea” patents “otherwise amount to significantly more than the abstract idea itself.”

Hughes and Morris were echoed in part by IP lawyer David Soofian, who represented CLS Bank during earlier phases of the Alice case.  Soofian explained in TechCrunch how software companies can use the standard established by the Alice ruling to defend themselves from patent trolls. By extension, his guidelines also might serve as a basic checklist for companies seeking to craft their own software patents to make them less vulnerable to Alice-based post-grant challenges.

In Soofian’s view, software based on an abstract idea may still be patentable provided that the actual invention ascribed to the software portion of the patent is actually adding something “meaningful” to the implementation of that abstract idea.

How courts and other arbiters of patentability define “meaningful” is likely to vary widely as a more tangible legal consensus gradually emerges from the Alice ruling. In the meantime, subscribers to LexisNexis® PatentAdvisor® can use that platform’s ability to perform detailed searches of patent applications to see how the Alice ruling has impacted specific examiners.

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