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Federal Circuit case renders many broadly written software patents invalid

215 points by grellas 15y ago

btcoal 15y ago
"CyberSource's patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction." IANAL and this is not legal advice, but the guys (probably) that tried to patent this should go f* themselves.
- nitrogen 15y ago
  Rather than do a drive-by downvote, I'm going to say that while I may share your sentiment to an extent, it has been my experience that HN usually prefers more substantive comments.
dminor 15y ago
> Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer. Really, really hoping this logic survives and becomes widely applied.
- tghw 15y ago
  I can imagine certain individuals making a lot of money as expert witnesses, demonstrating the execution of patented software processes completely mentally.
  - marshray 15y ago
    Wouldn't you think that "mentally" includes the use of pencil and paper? Given enough of that and time I can simulate any classical computer.
    - wes-exp 15y ago
      It does include pencil and paper: The Court noted that the calculations, while “primarily useful for computerized [applications],” could still “be made [using a] pencil and paper.”
    - wisty 15y ago
      In a sense, yes. But it might simply be that you can't patent anything that a normal person (say, the judge) could easily do with a pencil and paper. So things like "See if the guest's name is on the guestlist" might be found unpatentable, but complicated sequences of instructions (which you have specifically laid out) for which you really do need a computer (or some other machine) might still be patentable. I'm not a lawyer, though.
      - jimktrains2 15y ago
        If you're performing a computation that cannot be done with pencil and paper, a computer cannot do that computing.
        wisty 15y ago
        As another post is pointing out, there is a "practicality" clause. If you can use a computer to do something that would otherwise take days to compute, it may still be patentable.
        marshray 15y ago
        It's impractical to multiply two million-digit numbers by hand, but elementary schoolkids know the algorithm to do it. Does that imply that using a computer to multiply numbers of sufficient size would be patentable? How about a particularly efficient multiplication algorithm that can be demonstrated by hand? How about a linear problem optimization algorithm? http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_controversy http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_... How about a network optimization problem? http://www.google.com/search?q=network+optimization+patent http://www.google.com/search?q=network+optimization+patent The whole idea of patents in a post-industrial economy is a farce.
monochromatic 15y ago
Title is slightly misleading. From the article, it sounds like they're just applying the usual standards for software patents to Beauregard claims. If this is the first time that's happened, that's pretty interesting... but it seems to me to be clearly the right result, and I didn't realize there was any serious debate about that question.
JVerstry 15y ago
"(...) the court focused on prior case law holding that mental processes standing alone are not patentable." I hope judges will support those statements more and more. Really good news.
sehugg 15y ago
The text is in Esperanto, the comments are a Befunge program. Anyone willing to post an executive summary?
- dctoedt 15y ago
  EDIT: I just (re)posted a summary as a top-level comment.
dctoedt 15y ago
The court's opinion in this case (the CyberSource case) is at http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1358.pdf http://www.cafc.uscourts.gov/images/stories/opinions-orders/.... Tl;dr: The three-judge appeals court panel affirmed a summary judgment of invalidity. The panel announced a pretty straightforward test as one "filter" that can rule out patentability for certain claims: 1. If a method can be performed by the human mind alone, or with paper and pencil, then it's an "abstract idea," and therefore unpatentable under Supreme Court precedent. 2. If as a practical matter [a] the method cannot be performed with paper and pencil [b], then it passes the filter described in 1 above [c]. 3. If a method would be unpatentable under 1 above, then a claim to a storage device encoding computer instructions for performing the method is likewise unpatentable. NOTES: [a] In its discussion, the court distinguished a couple of prior cases where such non-paper-and-pencil methods had been held patentable. See pages 20-21 of the PDF. EDIT to respond to petegrif's comment below: One of the earlier methods that had been ruled patentable was "for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask ...." The CyberSource panel distinguished this precedent by saying that, as a practical matter, that earlier method could not be performed by the human mind or with paper and pencil; see page 21 of the PDF. [b] An unanswered question: How exactly are ordinary people supposed to determine whether a method can or can't be performed with paper and pencil "as a practical matter"? [c] Even if a method gets past the "paper and pencil" filter, there are still other filters to pass before it will be patentable---but once the Patent and Trademark Office has issued the patent, then a presumption of patentability applies. COMMENT: This is an area where the net effect of the precedents is not entirely clear. It wouldn't surprise me if the court were to take this case en banc, namely to have all of the court's 12 judges rehear and redecide the case in an attempt to clarify the law. (An en banc opinion is generally regarded as carrying more precedential weight than an opinion by a three-judge panel.)
- petegrif 15y ago
  The problem I have with this is the following. a) There is no software that we cannot put into hardware - literally! Software and hardware are interchangeable. So the oft cited distinction between s/w and h/w is, to say the least, somewhat arbitrary. b) "If a method can be performed by the human mind alone, or with paper and pencil..." This test sounds as if it might make sense but runs into real problems once you bear in mind issues of computability. E.g. is it therefore patentable if although it could in principle be performed by the human mind with a paper and pencil the degree of computation required is so enormous that such a method is completely impractical. e.g. real time graphics processing. I suspect that the class of such methods is extremely large.
daimyoyo 15y ago
Good. Overreaching software patents and the patent trolls who file them are a cancer on the software industry.
philipkimmey 15y ago
Patents are totally beyond me. Supposedly there's a concept of "non-obviousness" but every patent that is disputed is strikingly obvious to a "person of ordinary skill in the art." On a panel of 5 competent engineers, asked "How might we go about identifying potential credit card fraud on the Internet?" I suspect all 5 would independently bring up the idea of storing customer IPs and comparing that to IPs that have used that credit card in the past. I can't help but feel like patent law is just a way for lawyers to extract money from people actually trying to make things.
6ren 15y ago
> Here, the court repeated its stance that mere data gathering steps such as "obtaining information" cannot be sufficient to "make an otherwise nonstatutory claim statutory." It's just poor drafting. If they'd said "do all this stuff to determine if the credit card is valid" and added "if is valid, then execute the internet transaction, otherwise deny it" as part of the claim, then it would not merely be providing information - and could not be done with paper and pencil alone. You need to make a change in the world, i.e. execute the transaction. Usually, a patent would have later "dependent" claims, that further restricted an initial overly broad claim, but apparently they didn't here. I get the impression that the court is being a bit pedantic, as it's clear what was meant; however, it is true that pure information can be used in many ways, not necessarily restricted to execute/deny.
mckoss 15y ago
Judges have NO IDEA how to interpret patents. I would claim that EVERY MACHINE is reducable to a (software) simulation, and that every software simulation can be (in theory) executed by the human mind with paper and pencil. While you could argue that the claims in this case are obvious, I find the reasoning used here to be contrary to ANY patent being issued for any machine or process.
- kylewpppd 15y ago
  I would find your claim to be slightly outlandish. Even if we assume that you could simulate anything known to humankind with software, you would still need to invent a thing to properly simulate it.
  - mckoss 15y ago
    I'm not claiming I could INVENT any machine with a software process. Only that one could take any patent granted for a machine, and build a total software simulation for the described machine. By the judges' logic in this ruling, the software simulation of the machine is unpatentable. But what's the difference if the machine is implemented with atoms instead of bits?
- cperciva 15y ago
  ... and this is why logicians tend to make poor lawyers. It doesn't matter if an argument is logically sound; what matters is whether the argument is convincing, and saying "sure I can do this with pencil and paper... it will only take a hundred billion years" isn't going to convince anyone.
- buff-a 15y ago
  Simulating a steam engine in your head doesn't actually pump water out of coal mines. However, "simulating" checking an IP address against a list produces exactly the same thing as the claimed invention: information. If your patent produces information then you're pretty much fucked. And rightly so.
  - 15y ago

215 points by grellas 15y ago

"CyberSource's patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction." IANAL and this is not legal advice, but the guys (probably) that tried to patent this should go f* themselves.

nitrogen 15y ago
Rather than do a drive-by downvote, I'm going to say that while I may share your sentiment to an extent, it has been my experience that HN usually prefers more substantive comments.

dminor 15y ago

> Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer. Really, really hoping this logic survives and becomes widely applied.

tghw 15y ago
I can imagine certain individuals making a lot of money as expert witnesses, demonstrating the execution of patented software processes completely mentally.
- marshray 15y ago
  Wouldn't you think that "mentally" includes the use of pencil and paper? Given enough of that and time I can simulate any classical computer.
  - wes-exp 15y ago
    It does include pencil and paper: The Court noted that the calculations, while “primarily useful for computerized [applications],” could still “be made [using a] pencil and paper.”
  - wisty 15y ago
    In a sense, yes. But it might simply be that you can't patent anything that a normal person (say, the judge) could easily do with a pencil and paper. So things like "See if the guest's name is on the guestlist" might be found unpatentable, but complicated sequences of instructions (which you have specifically laid out) for which you really do need a computer (or some other machine) might still be patentable. I'm not a lawyer, though.
    - jimktrains2 15y ago
      If you're performing a computation that cannot be done with pencil and paper, a computer cannot do that computing.
      - wisty 15y ago
        As another post is pointing out, there is a "practicality" clause. If you can use a computer to do something that would otherwise take days to compute, it may still be patentable.
        marshray 15y ago
        It's impractical to multiply two million-digit numbers by hand, but elementary schoolkids know the algorithm to do it. Does that imply that using a computer to multiply numbers of sufficient size would be patentable? How about a particularly efficient multiplication algorithm that can be demonstrated by hand? How about a linear problem optimization algorithm? http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_controversy http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_... How about a network optimization problem? http://www.google.com/search?q=network+optimization+patent http://www.google.com/search?q=network+optimization+patent The whole idea of patents in a post-industrial economy is a farce.

monochromatic 15y ago

Title is slightly misleading. From the article, it sounds like they're just applying the usual standards for software patents to Beauregard claims. If this is the first time that's happened, that's pretty interesting... but it seems to me to be clearly the right result, and I didn't realize there was any serious debate about that question.

JVerstry 15y ago

"(...) the court focused on prior case law holding that mental processes standing alone are not patentable." I hope judges will support those statements more and more. Really good news.

sehugg 15y ago

The text is in Esperanto, the comments are a Befunge program. Anyone willing to post an executive summary?

dctoedt 15y ago
EDIT: I just (re)posted a summary as a top-level comment.

dctoedt 15y ago

The court's opinion in this case (the CyberSource case) is at http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1358.pdf http://www.cafc.uscourts.gov/images/stories/opinions-orders/.... Tl;dr: The three-judge appeals court panel affirmed a summary judgment of invalidity. The panel announced a pretty straightforward test as one "filter" that can rule out patentability for certain claims: 1. If a method can be performed by the human mind alone, or with paper and pencil, then it's an "abstract idea," and therefore unpatentable under Supreme Court precedent. 2. If as a practical matter [a] the method cannot be performed with paper and pencil [b], then it passes the filter described in 1 above [c]. 3. If a method would be unpatentable under 1 above, then a claim to a storage device encoding computer instructions for performing the method is likewise unpatentable. NOTES: [a] In its discussion, the court distinguished a couple of prior cases where such non-paper-and-pencil methods had been held patentable. See pages 20-21 of the PDF. EDIT to respond to petegrif's comment below: One of the earlier methods that had been ruled patentable was "for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask ...." The CyberSource panel distinguished this precedent by saying that, as a practical matter, that earlier method could not be performed by the human mind or with paper and pencil; see page 21 of the PDF. [b] An unanswered question: How exactly are ordinary people supposed to determine whether a method can or can't be performed with paper and pencil "as a practical matter"? [c] Even if a method gets past the "paper and pencil" filter, there are still other filters to pass before it will be patentable---but once the Patent and Trademark Office has issued the patent, then a presumption of patentability applies. COMMENT: This is an area where the net effect of the precedents is not entirely clear. It wouldn't surprise me if the court were to take this case en banc, namely to have all of the court's 12 judges rehear and redecide the case in an attempt to clarify the law. (An en banc opinion is generally regarded as carrying more precedential weight than an opinion by a three-judge panel.)

petegrif 15y ago
The problem I have with this is the following. a) There is no software that we cannot put into hardware - literally! Software and hardware are interchangeable. So the oft cited distinction between s/w and h/w is, to say the least, somewhat arbitrary. b) "If a method can be performed by the human mind alone, or with paper and pencil..." This test sounds as if it might make sense but runs into real problems once you bear in mind issues of computability. E.g. is it therefore patentable if although it could in principle be performed by the human mind with a paper and pencil the degree of computation required is so enormous that such a method is completely impractical. e.g. real time graphics processing. I suspect that the class of such methods is extremely large.

daimyoyo 15y ago

Good. Overreaching software patents and the patent trolls who file them are a cancer on the software industry.

philipkimmey 15y ago

Patents are totally beyond me. Supposedly there's a concept of "non-obviousness" but every patent that is disputed is strikingly obvious to a "person of ordinary skill in the art." On a panel of 5 competent engineers, asked "How might we go about identifying potential credit card fraud on the Internet?" I suspect all 5 would independently bring up the idea of storing customer IPs and comparing that to IPs that have used that credit card in the past. I can't help but feel like patent law is just a way for lawyers to extract money from people actually trying to make things.

6ren 15y ago

> Here, the court repeated its stance that mere data gathering steps such as "obtaining information" cannot be sufficient to "make an otherwise nonstatutory claim statutory." It's just poor drafting. If they'd said "do all this stuff to determine if the credit card is valid" and added "if is valid, then execute the internet transaction, otherwise deny it" as part of the claim, then it would not merely be providing information - and could not be done with paper and pencil alone. You need to make a change in the world, i.e. execute the transaction. Usually, a patent would have later "dependent" claims, that further restricted an initial overly broad claim, but apparently they didn't here. I get the impression that the court is being a bit pedantic, as it's clear what was meant; however, it is true that pure information can be used in many ways, not necessarily restricted to execute/deny.

mckoss 15y ago

Judges have NO IDEA how to interpret patents. I would claim that EVERY MACHINE is reducable to a (software) simulation, and that every software simulation can be (in theory) executed by the human mind with paper and pencil. While you could argue that the claims in this case are obvious, I find the reasoning used here to be contrary to ANY patent being issued for any machine or process.

kylewpppd 15y ago
I would find your claim to be slightly outlandish. Even if we assume that you could simulate anything known to humankind with software, you would still need to invent a thing to properly simulate it.
- mckoss 15y ago
  I'm not claiming I could INVENT any machine with a software process. Only that one could take any patent granted for a machine, and build a total software simulation for the described machine. By the judges' logic in this ruling, the software simulation of the machine is unpatentable. But what's the difference if the machine is implemented with atoms instead of bits?
cperciva 15y ago
... and this is why logicians tend to make poor lawyers. It doesn't matter if an argument is logically sound; what matters is whether the argument is convincing, and saying "sure I can do this with pencil and paper... it will only take a hundred billion years" isn't going to convince anyone.
buff-a 15y ago
Simulating a steam engine in your head doesn't actually pump water out of coal mines. However, "simulating" checking an IP address against a list produces exactly the same thing as the claimed invention: information. If your patent produces information then you're pretty much fucked. And rightly so.
- 15y ago