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

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.
Written by David Meyer, Contributor

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

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.

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