Why the Supreme Court in the CLS Bank v. Alice Case Should Not Answer the Question on Computer-Implemented Invention

By Martin A. Goetz

An open letter to the Supreme Court…..

In the CLS Bank v. Alice Corp upcoming Supreme Court case, Alice poses the question… “Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…”

That’s absolutely the wrong way to phrase a question about inventions. Equally wrong is the same boiled down twin sister question “Is software patentable” which has now been debated around the world for almost 50 years.

As the recipient of the first software patent in 1968 and a founder of Applied Data Research (ADR), the first company to market software products, I have intensely followed and written about the software patent controversy for almost 50 years.

Here’s why the Alice question should not be answered by the Supreme Court in its present form.

How an invention could be implemented is given in the patent application specification (the disclosure). This USPTO guideline states that the application “shall set forth the best mode contemplated by the inventor of carrying out his invention.” But the best mode requirement is only a suggestion and failure to use the best mode does not invalidate the patent (See II Impact of Failure to Disclose the Best Mode).

So when Alice starts the question to the Supreme Court with the words “Whether claims to ‘computer-implemented’ inventions….” they are referring to the mode of the invention, rather than the invention itself. What if the Alice Corp patent application showed the specification of the invention in hardware (a computer circuit) instead of software?

Hardware circuits and software programs are logically equivalent. It is a fact that software and hardware circuitry are interchangeable. As noted in the article Hardware/Software Tradeoffs: A General Design Principle? the decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change. The abstract of the article concludes with the statement “Today’s software is tomorrow’s hardware, and vice versa.”

The USPTO is in complete agreement when in 1996 it published its Examination Guidelines for Computer-Related Inventions and stated in its Introduction (3rd paragraph) the following: “The Guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”

So if one accepts the fact that software (a computer program) and hardware (a digital circuit) are logically equivalent then a better question for the Supreme Court to answer would be

“Is an invention that is patentable when specified in hardware, equally patentable when specified in software?”

Over the years the term “software” has been terribly abused when a patent application has a computer in its specifications. We hear the terms abstract, ideas, laws of nature, mathematical algorithms when those against “software patents” argue their case. But true inventions — whether specified in hardware, software, solar power, gears, or what have you — must stand on their own two feet and meet the test of an invention as specified in the US Patent law. Additionally, the USPTO states that an invention is defined in its claims and not by its specification. (see Determine What is an Invention).

Unfortunately, many USPTO examiners have been issuing patents for very questionable inventions that only computerize (or automate) a manual process or computerize a new, but obvious, use of a computer.

This open letter also tries to distinguish “true inventions” from those very questionable inventions (like Amazon’s one-click patent) by giving four examples that could be classified as computer-implemented inventions. Let’s look at some of those examples.

Example 1 – An Artificial Retina Invention

In this example of the Argus II Retinal Visual Prosthesis  invention, the specification included a pair of glasses attached to a video camera unit and a computer and software   A miniature video camera housed in the patient’s glasses sends information to a small computer worn by the patient where it is processed and transformed into instructions transmitted wirelessly to a receiver that is surgically implanted in and around the eye. The signals are then sent to an electrode array, attached to the retina, which emits small pulses of electricity.  These electrical pulses are intended to bypass the damaged photoreceptors and stimulate the retina’s remaining cells to transmit the visual information along the optic nerve to the brain.  Photoreceptors are light-sensitive cells (neurons) in the retina that convert light energy to neural impulses. The photoreceptors are as far as light gets into the visual system. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013.

Is this patent one of those computer-implemented patents that is abstract and just an idea? And not being patentable subject matter? What if the inventor chose to disclose the entire invention using integrated circuit chips and not software? Would the Supreme Court ever want to deny patent protection for inventions like the artificial retina?  I doubt it. If such patents are ever challenged in the courts, the only questions should be in its claims, not whether a computer and software were in its application specifications.

Example 2 – A Potential Voice and Speech Recognition patent

Back in November 2012 Microsoft stated in a press release “Microsoft researchers have demonstrated software that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker’s voice—a trick that could make conversation more effective and personal.”

Certainly the way Microsoft’s researchers accomplished this complex translation is not obvious. And I have little doubt that Microsoft will try to protect its research investment with a patent application. But its patent claims could not be that it invented “speech recognition” or “language translation”, or even “voice to voice translations”.

Patents for voice and speech Recognition patents go back well over 30 years with IBM having over 200 speech recognition patents. And there have also been language translation patents for many years.

But Microsoft could invent a new way to do voice recognition and language translations and at the same time retain the cadence of the speaker’s voice. And, let’s imagine, the patent application would indicate software and a computer in its specification and use standard headphones to hear the translation. This patent application might be an all software specification. But what if the invention needed a special set of headphones (a device) that was integral to the invention and that was part of the specification? And what if the same invention was specified as an integrated circuit (a chip) in a special modified headphone in the patent application specification section?

Is a speech recognition/translation/cadence and special headphone invention any more innovative than a “speech recognition/translation/cadence” software only invention? What’s important is whether there was an invention, not how the invention was specified in the patent application. And that the specification is sufficient as an adequate disclosure for someone skilled in the art to carry out the invention.

Example 3 – A Reading Machine for the Blind Patent

In 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud From An Image Representation Of A Document. The patent specification shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.

The first sentence of the abstract in the patent stated “a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document.”

At that time, Ray Kurzweil’s company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. Their 2000 year patent protected this product from imitators. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system thru his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine (which is a software-only patent).

Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.

Example 4 – A Sorting System

As noted earlier, I have been involved in this software patent controversy for many years. It began when I and my small software company, Applied Data Research, applied for a patent in 1965 for a Sorting System. Basically, my invention was a faster way for sorting data on a general-purpose computer using tape drives that could read data only in a forward direction, which were early IBM tape drives.

There were many sorting patents using special-purpose hardware before mine, but none that used a general-purpose computer. The following sorting patents were referenced in my patent application and were described through circuit diagrams, and as methods and apparatus for sorting data: Sorting Device, Fillebrown, 5/1961 #2,985,864; Sorting Apparatus, Guerber, 5/1960 #2,935,732; Apparatus for sorting of Recorded Digital data, Dirks 3/1966 #3,242,466.

My patent was issued on 23 April, 1968, and a computer publication heralded my patent in a page 1 headline, ‘First Patent is Issued for Software, Full Implications not Known Yet’. Fortune magazine called it an “unprecedented patent”. Had I specified my invention using circuitry, as had other sorting patents in the past, the controversy would have started later in time.

The Importance of the CLS Bank v. Alice Corp Supreme Court Decision. As Judge Kimberly Moore stated in her dissenting Appeals Court brief, an adverse decision by the Supreme Court  could decimate electronic and software industries and be the death of software and electronics patents. It could be even worse! It could impact every one of the 18 major industries in the United States.  These major industries actively file for patents and it is highly probable that many of their patents contain software as is part of their specification.

In conclusion, the question posed by Alice …

“Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…”

should not be answered because computer-implemented inventions refer only to how an invention is described in the specification section of a patent application. An invention is defined only by its claims, and not by its specification.

The Supreme Court should simply affirm, as it has in the past, that including a computer and software as all, or part, of a specification in a patent application is perfectly permissible.

[This post originally appeared at IPWatchdog.]

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