When is a patent too abstract? Google and Facebook weigh into key software case

When is a patent too abstract? Google and Facebook weigh into key software case

Summary: Google, Facebook, Red Hat, Dell, Rackspace, Zynga, Intuit and Homeaway have collectively filed a third-party brief in the court case of CLS Bank International vs Alice Corp. Many see the case as important in the ongoing question of how abstract an invention must be before it becomes unpatentable.

TOPICS: Patents, Google

A group of top tech companies, including Google and Facebook, has intervened in the latest precedent-setting case around software patentability in the US.

Read this

Software patents are legalised extortion

Software patents are legalised extortion

Software patents would be great if they actually worked instead of just providing rich pickings for trolls, says Mike Lee

The companies, which also include Red Hat, Dell, Rackspace, Zynga, Intuit and Homeaway, filed an amicus ('friend of the court') brief on Friday in the case of CLS Bank International vs Alice Corp. The case is being heard in the US Court of Appeals for the Federal Circuit, and many are hoping it resolves the thorny issue of how abstract an idea needs to be before it is unpatentable.

The tech firms argued that the patent at question in the case should not have been granted, because the processes it describes are too obvious and abstract to be monopolised by the patent holder, Alice.

The issue is central to the debate over the patentability of software: in the US, the law states that such patents can be allowed, while other places such as the UK hold that computer programs should not be patentable. The permissiveness of software patents in the US is one reason why we see high profile tech patent cases there, such as the one between Apple and Samsung.

"A disturbing number of patents amount to no more than describing an abstract idea at a high level of generality and saying to perform it on a compute or over the internet — without providing any of the specifics required to transform abstract ideas into patentable inventions," Google and the other companies wrote.

"Low-quality patents in computer-related industries have become a scourge that raises costs and places a drag on innovation," they added.

The case of CLS vs Alice

CLS vs Alice involves financial process patents held by Alice Corp. Alice sued CLS Bank for infringing on the patents. CLS initially won the case in a district court, with the court following the logic of a previous landmark case, Bilski, to find Alice's patents invalid. However, the Federal Circuit overturned that verdict, creating a fair amount of confusion.

Google and the other companies referred in their brief to yet another case from earlier this year, this time involving the Mayo Clinic and a patent-holder called Prometheus Laboratories. In March, the Supreme Court said Prometheus's patents, covering a type of medical test, were not valid.

The tech companies argued that principles set by the Supreme Court in that case — principles that essentially spell out how abstract is too abstract — were not being applied in CLS vs Alice.

The Supreme Court's four 'guideposts' in the Mayo decision were:

  • Adding steps or elements that are conventional or obvious is insufficient to confer patent eligibility.
  • Adding general and non-specific steps or elements that do not significantly limit the claim's scope is insufficient.
  • Limiting an idea to a particular technological environment — such as a computerised environment — is insufficient.
  • Claims that fail the machine-or-transformation test are likewise dubious.

"The [Federal Circuit] panel majority objected to the Supreme Court's test, in part because it found the concept of an 'abstract idea' to be elusive," the companies said. "Although it is difficult to formulate a one-size-fits-all definition of 'abstract idea', experience has shown that identifying the abstract idea behind a particular patent claim is generally straightforward."

In the case of CLS vs Alice, Google and its co-signatories said the "asserted claims simply break down the idea of financial intermediation into its component parts, without adding (and limiting themselves to) a particular way of implementing that idea with a computer".

"As a result, they are on the wrong side of all the Mayo guideposts," they wrote.

This was not the first amicus brief Google and Red Hat filed in the case. A much shorter version (PDF) appeared back in September, also signed by Twitter and HP.

Topics: Patents, Google

David Meyer

About David Meyer

David Meyer is a freelance technology journalist. He fell into journalism when he realised his musical career wouldn't pay the bills. David's main focus is on communications, as well as internet technologies, regulation and mobile devices.

Kick off your day with ZDNet's daily email newsletter. It's the freshest tech news and opinion, served hot. Get it.


Log in or register to join the discussion
  • Maybe I can patent the idea of "Getting up and going to work!".....

    ....as a break through for the business world?
    • that would be bad... and other thoughts! :)

      Don't do that! They'd grant it and then industry would have to come to a screeching halt during the deliberations ect ect... Sure, you might win but by the the world as we knew it would be gone! Myan apocalypse self inflicted! :)

      On a more serious note: I'm glad something is seemingly in the works to hopefully address these shortcomings in the US pattent system. A patent should "detail" in length and specifically how an invention works and functions. I think that arguably software should not be patentable however, if it is, then it should be detailed down to the specific code to make it work... Just like a recipe list, one change and poof it's a different product. Also, that code should only be accessible by the Patent office, the patent holder, and authorities in a dispute.

      The billions being wasted on these legal deliberations and squabbling over minutia is infuriating to me as a consumer. I'd much rather see this money go into R&D, the economy, ect. That would be one hell of a stimulus package if all or even half that money went to new jobs and or better paying ones for the little people.
  • Somebody has to decide the issue

    And it may well be the Supreme Court, as a finding in favor of Alice is highly likely to be appealed, regardless of the merits. And there's a chance that Alice would appeal a ruling against it, even though the Supremes seem to be much more skeptical of broad patents than is the Federal Circuit.
    John L. Ries
  • Lold

    Google and Facebook both patent abstract ideas.... It just so happens the companies they are competing against have been around longer and have more patents so they are throwing hissy fits.

    Yes the patent system is broken, but Google and FB are no angels either..