Supreme Court ruling has wiped out 11 “do it on a computer” patents so far
(Source: ars technica; Written by: Joe Mullin)
There have been no less than 11 federal judicial rulings striking down patents as "abstract" since the US Supreme Court's June 26 decision in Alice v. CLS Bank.
It's a high number. The case was recognized as a big decision by commentators when it came, and what's happened since suggests the ramifications may be broader than first thought. Vox Media's Tim Lee (former Ars contributor) has an article rounding up the 11 rulings.
The list only highlights patents that have lost under Section 101 of the US patent law, which governs when a patent is an "abstract idea" that can't be patented. Section 101 wins are important to repeat defendants, because they're wins without going through discovery and hiring costly experts. However, some members of the patent bar see Section 101 as an overly blunt tool for weeding out bad patents from true innovations. Many of the patents being knocked out under 101 are "do it on a computer" patents that take everyday activity and add a lot of computer jargon.
"The courts are sending a pretty clear message: you can't take a commonplace human activity, do it with a computer, and call that a patentable invention," writes Lee.
This season's patent walk of shame includes the Digitech case, in which a unit of Acacia Research Corporation tried to use a circa-1996 Polaroid patent to sue 31 different camera companies and retailers. A July 17 decision by the Federal Circuit put that patent to rest. Lee also counts the "computer bingo" patent, another Section 101 strike down noted by Ars after an August 26 decision from the same court.
Since then, a Delaware court has knocked out a patent on a computer system for "upselling" that was used to sue Amazon.
On September 3, Google won two patent cases. In one, a Delaware judge knocked out a patent describing a method for using a computer "to facilitate an exchange of identity between two anonymous parties," finding that every step of the method was routinely performed by human job headhunters. That patent was held by Walker Digital, a patent-holding company controlled by Priceline founder Jay Walker.
That same day, Google won a second victory at the Federal Circuit when a company called BuySafe tried to claim the concept of using a computer to issue surety bonds, a type of transaction that the judge noted has been around since ancient times.
Most recently, on Thursday September 11, a Florida court knocked out a patent held by a company called Every Penny Counts, or EPC. Lee explains that the company held a patent "on the concept of subtracting a small amount of money from each of many payments in order to accumulate a larger sum of money—using a computer." Every Penny Counts has been suing financial companies since 2007.
Not every patent on the list was used by a "patent troll," a term often applied to companies that have no business beyond patent lawsuits—but most were. The first post-Alice case, however, involved a Comcast patent that was wielded against Sprint.
Readers interested in seeing the full, egregious list should read Lee's piece. These patents wouldn't necessarily have won the day before the Alice v. CLS case, but it's safe to say many of them would have advanced further, put more pressure on defendants, and scored more settlements.
Not every bad patent can be challenged in court. There are hundreds of thousands of software patents, and litigation is expensive. But if patents keep getting crushed on Section 101 grounds, more defendants will be able to make a credible threat that if they get sued by a patent troll, or a big company, they won't back down. Instead, they might be able to deprive their opponent of a patent that shouldn't have been issued in the first place.
