[A2k] CLS Bank v Alice May Signal Turning Point in Software Patents

"Gérald Sédrati-Dinet (Gibus)" gibus at april.org
Sat Feb 9 01:02:18 PST 2013

Le 08/02/2013 21:32, Seth Johnson a écrit :
> https://www.infoworld.com/d/open-source-software/federal-hearing-today-marks-turning-point-in-war-software-patents-212445

> Speaking up for open source and the digital society, we find the
> Electronic Frontier Foundation (EFF) and Public Knowledge. Their brief
> is significant because it offers the approach devised by Stanford's
> Professor Mark Lemley as a solution. As I wrote here in September,
> Lemley suggests that the patent statute of 1952 has been incorrectly
> interpreted concerning software.

I disagree strongly, Lemley's proposal is taking us back ten years ago
when we wondered whether disclosing an algorithm would solve the
software patent problem. The answer we've reached was clearly NO.

Groklaw has rightfully identified that Lemley's solution is not
sufficient, the most important point in their answer to USPTO
consultation is section C) :

This is what I've written some months ago to Julie Samuels from EFF:

* CLS Bank v. Alice Amicus Brief

I fully support the first amicus brief from September 2012 requiring a
re-hearing. The problem is with the December amicus brief where EFF
endorses, too much IMHO, Professor Lemley's solution based on means-plus

First, there is some kind of a contradiction between insisting on the
"use of Section 112(f) as a vehicle to analyze and resolve potentially
abstract claims" and the refusal to "substitute §§ 102, 103, and 112
inquiries for the better established inquiry under § 101", as expressed
in Mayo v. Prometheus, which is underlined in EFF amicus brief from
September. This may be important for what CAFC may conclude from amicus
briefs, but this is not the main point (and anyway I really doubt that
anything good can come from CAFC).

The main point is that Lemley's proposal would be going in the right
direction if it was not based on a false assumption: that some software
can be patented. Reducing the number of granted software patents and the
unclear boundaries thereof by forcing to disclose algorithm implementing
the claimed function is not THE solution to the software patents
problem, contrary to what Mark Lemley voices in his paper. There are
software patents with clear boundaries and disclosed algorithm which
nevertheless impede innovation and economy. Just think about infamous
GIF/LZW patents. They actually included quite defined algorithms, IMHO
with enough details to pass Section 112(f). Nevertheless, there is no
need to recall harms caused by these patents.

This is really worrying because, we've already had these discussions in
Europe in the beginning of the century. We have identified that
disclosure of algorithm was only a partial solution which don't really
help with the bigger problem of software patents.

Here again I'm worried that the momentum in US could be wasted by bad
partial solutions. Just read 2011 Federal Register notice
on "Computer-Implemented Means-Plus-Function Limitations". They are
advising disclosure of algorithm "in any understandable terms including
as a mathematical formula […]". Hey, don't you have a Supreme Court
having ruled that mathematical formula cannot be patented, as being an
abstract idea?

I think this is the way to go: exclude software patent for the inherent
abstractness of software. This is the way that was debated and chosen in
Europe (with "non-technical" as European counterpart for "abstract").
And this is  actually what you seemed to support in EFF amicus brief
from September. And even in the final December amicus brief, you've
realized that § 112(f) test is eventually defined as a coarse filter to
determine abstractness under § 101. So go for abstractness!

Gérald Sédrati-Dinet
http://www.unitary-patent.eu/      http://www.april.org/
http://www.brevet-unitaire.eu/     http://laquadrature.net/

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