The Supreme Court is getting pretty insistent that adding with a computer to otherwise mundane concepts does not make the mundane new or patentable.
As we covered earlier, in Alice v. CLS Bank, the SCOTUS indicated that taking old ideas and doing them with a computer isn't going to fly any more.
Now the high court is sending a case back to the lower court for the THIRD time to make sure those courts get the message.
US patent 7,346,545 is owned by a company called Ultramercial, which sued Hulu, YouTube, and a gaming company called WildTangent (remember those guys and their hard to get rid of games?) back in 2011.
It describes a "method and system for payment of intellectual property royalties by interposed sponsor on behalf of consumer over a telecommunications network."
In plain English, it describes a system in which viewers watch an advertisement as a "payment," and then get to watch a piece of online content.
So what had been happening for 50 years in television and radio ads, watch commercial and then enjoy, was patented by hanging "With a Computer" on it.
2) The US Court of Appeals for the Federal Circuit, overruled, and re-instated the patent.
3) Wildtangent appealed to the Supreme court.
4) SCOTUS ordered the Federal Circuit to reconsider its allowance of the patent.
5) The Federal Circuit, not getting the hint, again allowed the patent.
6) Wildtangent and the EFF filed another petition before the Supreme Court.
7) On Monday, the Supreme Court granted WildTangent's second petition, in a short "summary disposition," and ordered the case to be sent to the Federal Circuit for the third time.
The Federal Circuit must reconsider the patent in light of the recent ruling in Alice v. CLS Bank, a 9-0 decision in which the Supreme Court ruled that adding computer language to patents on basic ideas isn't enough to stop them from getting tossed out due to being non-abstract.
One can only wonder if the lower courts will finally get the message (along with the USPTO) doing just about anything done before, but doing it with a computer, is not novel. Perhaps some semblance of common sense is starting to form in the patent mess.
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The death of software patents in the United States has been greatly exaggerated. In a memo to Patent Examiners, the United States Patent And Trademark Office (USPTO) has released preliminary examination guidelines in view of the U.S. Supreme Court's recent opinion in Alice v. CLS Bank. The guidelines, which have been provided in a post on the patent blog Patently-O [PDF], specify that:
Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.
The memo notes that "the basic inquiries to determine subject matter eligibility remain the same" and guide Examiners that they must "first determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does not fall within one of the categories, reject the claim as being directed to non-statutory subject matter". Then, "if the claim does fall within one of the statutory categories, determine whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) using Part I of [a] two-part analysis... and, if so, determine whether the claim is a patent-eligible application of an exception using Part 2 [of the two-part analysis]".
More details of the proposed analysis are provided in the guidelines linked to above.
(Score: 0, Insightful) by Anonymous Coward on Tuesday July 08 2014, @10:07AM
W I T H
A
C O M P U T E R
(Score: -1, Offtopic) by Anonymous Coward on Tuesday July 08 2014, @10:19AM
not that there's anything WRONG with that.
(Score: 2) by Tork on Tuesday July 08 2014, @03:59PM
🏳️🌈 Proud Ally 🏳️🌈
(Score: 1, Insightful) by Anonymous Coward on Tuesday July 08 2014, @04:28PM
Last I checked, hand-written letters on bulletin boards could be edited later. ;-)
(Score: 2) by Tork on Tuesday July 08 2014, @05:11PM
🏳️🌈 Proud Ally 🏳️🌈
(Score: 0) by Anonymous Coward on Tuesday July 08 2014, @10:42AM
The link "that the high court is sending a case back to the lower court for the THIRD time to make sure those courts get the message" points to "http://artechnica/".-Ignacio Agulló
(Score: 2) by janrinok on Tuesday July 08 2014, @11:17AM
I cannot now find the correct link - I have removed the third link temporarily while I continue to search. If anyone finds it - pse let me know.
(Score: 3, Interesting) by martyb on Tuesday July 08 2014, @11:24AM
Link found and fixed.
And, to keep this on-topic... I understand there is a need for checks and balances, but it strikes me as a bit odd that the SCOTUS did not just issue a verdict on their own, instead of sending it back to the Court of Appeals. I suspect there's a good rationale for it, but it escapes me at the moment. Any ideas?
Wit is intellect, dancing.
(Score: 4, Informative) by nightsky30 on Tuesday July 08 2014, @11:41AM
Perhaps they are tired of seeing that stupid shat. When they send the case back to the lower courts, it is their way of saying, "We shouldn't even see these sorts of cases because it never should have gotten this far. Your ruling isn't logical. WTF are you lower courts doing? We're not cleaning up your mess, but we sure as hell will make sure you clean it up by sending it back your way until you do".
(Score: 2) by WizardFusion on Tuesday July 08 2014, @12:43PM
OT: That is the same sort of thing that happens when I get a support ticket from the 1st level support guys. :)
(Score: 5, Informative) by MrGuy on Tuesday July 08 2014, @12:16PM
is that the Court of Appeals for the Federal Circuit (CAFC) is the appellate court that handles all patent issues. And they frankly don't care what the Supreme Court thinks. CAFC is pro-patent-holders all the way, no matter how ridiculous.
They repeatedly uphold bad or questionable patents, flying in the face of Supreme Court precedent. They establish their own tests and methods for determining validity that run actively counter to Supreme Court rulings. They do not give a f*ck what the Supreme Court thinks.
Yes, for cases that get appealed to the Supreme Court, that are sufficiently awful, the Supreme Court can (and routinely does) reverse the CAFC. But a.) that adds a lot of time to the process, b.) adds huge amounts of uncertainty to patent cases, and c.) leads to bad rulings standing if the Supreme Court doesn't weigh in every time (and they don't).
Since it was established in the 80's, the CAFC is the institution most directly responsible for the awful state of US patent law. They make up their own pro-patent-holder rules that defy both justice and common sense. They don't respect Supreme Court precedent as binding - they continue to ignore directly on-point rulings (like Alice and Bilski) when it suits them.
The story isn't the Supreme Court standing up for its own precedents. It's the lower courts (and specifically the CAFC) getting it wrong so many times that the Supreme Court has to touch the SAME CASE on the SAME ISSUE this many times.
The Supreme Court doesn't have the bandwidth to watch and reverse every bad CAFC ruling. Congress needs to abolish this rogue court (as they have the constitutional power to do) before it destroys innovation in this country forever.
(Score: 2) by Blackmoore on Tuesday July 08 2014, @01:09PM
Well then it sounds to me like the CAFC will once again rule in favor of the patent.
Does the Supreme court have a means to eliminate part of or restructure the court system itself?
(Score: 3, Interesting) by elf on Tuesday July 08 2014, @01:50PM
I think there is a change of leadership in the lower courts which may mean there is a different result (Judge Randall Rader retired). I think the reason it goes down again is to get a result there so futures cases at that level can use it as a precedence.
(Score: 2) by frojack on Tuesday July 08 2014, @07:23PM
The Supreme Court can't restructure the court system, that is left to Congress. Cases pretty much have to follow the normal chain of appeals, otherwise the SC would be hopelessly overburdened.
The court COULD have, (and often does) simply over-rule lower courts and hands down a final decision, but more often, for workload issues, and also (I suspect) as a way of schooling the lower courts, it tells them to do it over and do it right.
Most of the time, the simple fact that the SC agreed to grant certiorari to an appeal is a pretty clear indication they think the lower courts messed up.
No, you are mistaken. I've always had this sig.
(Score: 1) by Max Hyre on Friday July 11 2014, @02:04AM