Friday fantasies

Poor Alice thought that patent
protection was on the cards ...
Hard times for software patents? Yesterday the US Supreme Court handed down its keenly-awaited judgment in Alice Corp. v CLS Bank International (Ruling 13-298). This Kat hasn't yet had time to digest his lunch the reasoning, but he has just received this hot-off-the-press note on the ruling, "Alice v CLS Bank: Are Business Methods Mere Abstract Ideas in U.S. Patent Law?", by Katfriend Susan Keston (HGF). As Susan explains, the Alice patents, directed to a computer-implemented financial settlement system, were held to be excluded from patentability on the basis that their subject matter was no more than an abstract idea: this exclusion can't be avoided by implementing the business method on computer hardware. While the scope of the decision is sufficiently narrow to have little impact on software patent-eligibility where there is a genuine underlying technical innovation, patents for business methods in the US are likely to be more difficult to obtain and enforce following this decision, bringing the US into closer alignment with European patent law. Susan concludes:
"... Alice v CLS Bank ... could give rise to a restriction on grant and enforcement of business method patents. This would be good news to those calling for a drive to improve patent quality to reduce the likelihood of unduly broad patents threatening innovation. The fact that the decision does not preclude software patents in general, but is narrowly focused on business methods leaves room for truly technologically innovative software to remain patent-eligible. Thus new and non-obvious high level functionality implemented in software products can continue to be safeguarded by the patent system against unwanted copying by competitors. This should encourage continuing corporate investment in software innovation".
This blog may well carry a further piece or two on this case, which looks likely to generate a considerable volume of interest.

These balloons are powered only by the hot air
generated by EU politicians debating the unitary
patent -- but how long will they stay up ...?
Like most all of us, Katfriend Ingve Stjerna has always found it quite burdensome to follow the Parliamentary discussions on Europe's forthcoming unitary patent and to get an idea about what was discussed in its various meetings, since there are no publicly accessible transcripts of them.  If you want to know what was said, you're forced to rely on the Parliament TV broadcasts and recordings in the Parliament’s media archive (if and when they are available). Ingve has therefore done a wonderful thing: he has translated into both German and English all the speeches and statements from the TV recordings of the JURI Committee and the Plenary meetings, compiling monolingual verbatim transcripts from them (this is what he calls the “unitary verbatim protocol”). Here (to read online or download) is a file containing the English version of all the public discussions that were held by the European Parliament and its Legal Affairs Committee on the unitary patent between December 2010 and the conclusion of the legislative process in December 2012.  The German version, as well as a file containing transcripts of the statements in their original languages, can be found on Ingve's website here.

Young, enthusiastic IP lawyer in need of a good home.  This Kat has recently received an email from a young friend of his, a fellow blogger to boot, who writes:
Every firm should have one
"I am an LLB (Hons) and a LLM graduate. Having moved back to the United Kingdom, I'd like to start my career and gain experience within the field prior to starting the LPC, either through a training contract or independently. I have been engaged with IP law for several years and would like to practise in the area if possible; however I am very interested in commercial law as well and would welcome the possibility of working for a firm or even in-house to advance myself and my career. I would be more than delighted to gain that experience either in London or Southern England preferably but, should the right opportunity arise, I would gladly work anywhere in the UK. I am hard-working, intelligent and love the legal field, and would give anyone the perfect person to add to their legal team. I am interested in any positions, even entry-level, which would allow me to utilize my wide array of skills and knowledge." 
If you think that you have a space for this engaging youngster, please email the IPKat at and he will put you in touch.

Around the weblogs.  The IP Finance weblog carries another cracking post from fellow Kat Neil, this time on how far we can realistically rely on forward patent citations, as well as a perspective offered by Mike Mireles on what was once the Washington Redskins but which he discreetly refers to as the Washington R_____s.   The jiplp weblog carries a forthcoming Current Intelligence note by David Stone and William Corbett (Simmons & Simmons) on the Trunki design case, and Class 46 features a salutary warning from former guest Kat Laetitia Lagarde on why, when it comes to protected denominations of origin and geographical indicators in Europe, it's best not to tangle with Gorgonzola -- even if your name is Gorgo Capra. Finally, there's a lengthy analysis by David Musker of Kohler Mira v Bristan, a rare case on pecuniary and non-pecuniary relief for design infringement, on Class 99.

Lex specialis.  "Lex Specialis(sima): Videogames and Technological Protection Measures in EU Copyright Law" is the title of an article by Tito Rendas (Católica Global School of Law, Catholic University of Portugal) which is shortly to be published in the European Intellectual Property Review. Tito was very excited to share the news with readers of this weblog, who are perhaps more comfortable with Latin words like specialis than they are with English words like autopoietic. Anyway, since abstracts are quite the vogue this week, here's Tito's:
Another special Lex
Article 1(2)(a) of the InfoSoc Directive and the CJEU’s decision in UsedSoft (C-128/11) make clear that the Software Directive is a lex specialis in relation to the former. In Grund (C-458/13), the question arose as to which of the two directives governs the circumvention and distribution of devices to circumvent technological protection measures used in “hybrid products” – works containing computer programs as well as multiple copyrighted audiovisual elements – such as videogames. In its judgment in Nintendo v PC Box (C-355/12), the CJEU, despite the referral made by the Bundesgerichtshof in Grund, briefly addressed this question. Following Advocate General Sharpston’s opinion, the Court stated that the InfoSoc Directive, which confers a more generous protection to TPMs than the Software Directive, should govern TPMs used in videogames. The article critically examines Advocate General Sharpston’s and the CJEU’s (implicit) understanding of the lex specialis doctrine. It argues that a more nuanced understanding of the doctrine is needed in order to aptly answer the question referred in Grund
You can read this article without having to find an EIPR since it has been uploaded on to SSRN, here.
Friday fantasies Friday fantasies Reviewed by Jeremy on Friday, June 20, 2014 Rating: 5


  1. Meanwhile, over on IP Redneck...

    Alice. ALICE? WHO THE #%?@!!?! IS ALICE???

  2. Sadly, the Alice in Wonderland machinations will not end - the program against business method patents should note that the new 4 (that is, 3) STILL is not 5.

    (In reference to the oral arguments of the case, where the dissent-dressed-as-a-concurrence from the Bilski case that would have actively rewritten US patent law and eliminated business method patents outright, were reminded that their few was a minority in the Bilski case.

    That minority has shrunk - NOT grown.

    Words meaning what Humpty Dunpty WANTS them to mean continues...

  3. Tito's article reflects his excellent presentation on the Queen Mary Postgraduate Legal Research Conference 2014. A must-read (from a fellow Portuguese) for anyone interested in the interactions between infosoc and software directive.

  4. It is difficult to know the impact that Alice v CLS Bank will have. IPWatchdog is of the opinion it renders hundreds of thousands of software patents invalid. Certainly the decision confirms that the strict approaches of Bilski and Mayo were not one-offs. Essentially we've got a very broad definition of what an 'abstract idea' is and little idea of how much of a 'significant' contribution is needed before it become patent eligible. Certainly implementing it in on computer will not normally be enough to turn it into eligible matter. It seems to me this is part of a reaction to the many 'probably invalid' patents the USPTO has been granting in the software field and their misuse by patent trolls.

  5. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.

    So what is needed is a technical effect.

    IPWatchdog seems to think that, instead, even more "clever drafting" is needed. That ignores one of the rather clear messages of the opinion.

    This Court has long “warn[ed] . . . against” interpreting §101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”

  6. Anonymous @ 19:27,

    You make a rather unsupported assumption that the Court is correct in its disparagement.

    Worse yet, you ignore the reality of human nature - the history of any Court (or court) ruling so aimed at the "scrivener" is merely aiming at the wrong target. Have you ever heard the phrase "patent profanity?" Scriviners will react and set the proper "green flags" and avoid the "red flags" and nothing (underneath) will change. Patents protect inventions and software is an invention. Nothing the Court can do can change that fact. This only highlights the fact that the Court is attempting to legislate from the bench - in the US, our Supreme Law is offended at this because in the US, the power to set patent law is one of the few powers EXPLICITLY set forth (and set forth NOT to the judiciary).

    Your stated "need" only proves that the Court's latest (implicit) writing and inserting that writing into 35 USC 101 - when Congress had left it out - only confirms that the Court is out of control.

  7. Did the SCOTUS in ALICE pay any attention to EPC eligibility caselaw? Indeed, did Randy Rader resign in a huff because he lost his face to Robin Jacob, in a SCOTUS-mediated debate about eligibility?

    This month's CIPA Journal reports two English software cases, one found to be technical and eligible, the other not. I wonder whether the SCOTUS would concur, Holding that while one is no more than a computer-implemented abstract idea, the other is more than that, and eligible.

    One of the English cases was about a voucher system to be used at supermarket checkout tills. The other was about giving the Backspace key on a keyboard an extra task to perform. No prizes for divining which one of these inventions was deemed to be technical.

  8. @Anonymous of 21:35:
    I am happy for you that you know everything better than the US Supreme Court. However, what the US Supreme Court states is legally "correct" as far as it concerns US (patent) law. That's not a "rather unsupported assumption", but simply how things work.

  9. Yes, MaxDrei, it's interesting that the Supreme Court has over-ruled Radar's part dissent in the en banc Federal Circuit decision where I think Radar said the system claims should be eligible matter. They've gone for a much stricter approach. I don't think I've read any good explanations of how 10 top Federal Circuit judges managed 7 separate opinions between them. Is this such a difficult case?

    I also wonder whether stretching eligibility in this way is a good thing. Is it right for eligibility to depend on whether conventional means are being used to carry out the idea? That means it changes as the prior art changes.

  10. MaxDrei,

    That same suggestion re Rader's stepping down was previously mentioned at IPWatchdog and Patently-O.

    Anonymous @ 01:45,

    You show your ignorance by thinking that the Court is right because they say so and "that's how it works." There is substantial writings discussing the Court being corrected with ensuing legislation precisely because what they said got it wrong.

    Anonymous @ 11:34,

    You raise a good point in that the CAFC en banc decision showed a deep fracture. Sadly, the Supreme Court has simply replied "We don't care" by refusing to even own the mess that they have created and they compound that mess by telling all that they will NOT clean up that mess and that they will not define "abstract."

    I also think that you hit with your notion of eligibility changing, and is best recognized as being put prior to the decision (but still ignored by the Court): Patent elgibility is not the same thing as patentability.

    Congress in 1952 changed the law, pulling out from 101 the ability of the Court to define invention, gist of the invention and a myriad of other equivalent terms by way of the Congress-allowed tool of common law evolution. Congress created - and segregated - a different mechanism in 103.

    What the US Supreme Court has done is by judicial edict repeal that action of Congress. Of course, those who know US law also know that the US Constitution explicitly designates which branch of the government has the authority to write patent law, and it is not the judicial branch.

    The good ship US Patent Jurispudence has hit an iceberg.

  11. Anonymous reports, of my suspicion why Chief CAFC Judge Randall Rader resigned:


    That same suggestion re Rader's stepping down was previously mentioned at IPWatchdog and Patently-O."

    So now I ask: might that particular Anonymous tell us who mentioned it, and when? Until he does, I will take comfort, that my suspicions as reinforced.

    Quite a coup really though, isn't it, for Robin Jacob. He couldn't get the Enlarged Board of Appeal at the EPO lined up behind him but never mind any more. Now that he has turned the SCOTUS round to his point of view, perhaps the EPO will follow, if US eligibility/patentability caselaw now boils down to something nice and simple, as a direct consequence of the Alice case.

    It's a big "if" though folks, isn't it?

    Whatever! Chief Rader (still young, virile and vigorous) will no doubt be pointing out to us for years to come, how Alice has dumped a whole load of chaos on the US law of eligibility/patentability.

  12. @Anonymous of 16:38
    You show your ignorance by thinking that the Court is right because they say so and "that's how it works."

    Yes, that's how it works in most legal systems and especially in those with binding precedents. You're obviously free to feel they decided wrongly, but that doesn't change the legal fact that the Supreme Court's word is the law. And so there is no "unsupported assumption" when I cite directly from the opinion...

    Now stop taking this so personally.

  13. MaxDrei,

    I am not sure if one should take comfort in reinforcements from anonymous sources on blog posts, but the one at Patently-O was by NWPA, and an anonymous poster said the same thing at IPWatchdog. I could get the links, but again, why bother as such really does not serve to reinforce anything of merit?

    As to US caselaw boiling down to something nice and simple, I have to wonder just what it is that you are smoking. The US Supreme Court has removed any semblance of clarity and brightline rules, ushering in an era of "abstract" undefined.

    It does not take a ex-Chief Judge Rader to be able to the dump of chaos.

  14. The comfort I draw, anonymous, is that I am not alone in my suspicion. But I agree, on anything of "merit", what anonymous posters write on patent law blogs is not to be taken with any degree of confidence.

    Can SCOTUS reverse itself? I ask because it has long been stuck with "abstract idea" hasn't it? I don't see how you can sharpen that concept, any more than you can paraphrase "obvious". So has this particular group of SCOTUS judges really made it worse, and has it really passed up a chance to make US-eligibility clearer. I'm not sure.

    Conversely however, with "technical" in the "no binding precedent" environment of DG3. Now with that notion (and hundreds of eligibility cases per year to ponder over) you really can make progress, all the way to an irreducible minimum of fuzziness at the margin of eligibility.

  15. Anonymoujs at 21:53,

    That's an odd way of saying "you are right," maintaining your denial that the Court could - in fact - be wrong.

    You are not an attorney, are you? leastwise, not a US attorney, as you seem to not understand our system, which is not how you (continue) to portray it. Here, the ultimate law of the land is NOT every word that comes from the Supreme Court.

    Further, I am not "taking this personally." Try to stay focused on the topic without meandering off the path into the "personally" weeds.


    Good question with "Can..?" The easy answer is "Yes, they can." The subsequent question of "Will they?" has an equally easy answer: "Not a chance." One only has to look to the Prometheus case and the Court's writings there as to the "sanctity" of their implicit writings: no matter what, the Court's own implicit writings would not be allowed to become 'dead letters.'

    Can you clarify your statement of "I don't see how you can sharpen that concept, any more than you can paraphrase 'obvious'"? SCOTUS is pretty clear that they refuse to sharpen what "abstract" means as they point blank say they refuse to define the term. I struggle with how anyone can say what it appears that you are saying.

    (Let's leave out the "no-binding precedent" discussion for the moment - and for clarity's sake, focus first on one set of laws)

  16. Conversely however, with "technical" in the "no binding precedent" environment of DG3. Now with that notion (and hundreds of eligibility cases per year to ponder over) you really can make progress, all the way to an irreducible minimum of fuzziness at the margin of eligibility.

    "no binding precedent" sounds not that positive in the light of the UPC perspective. What about certainty, similar cases. Unless DG3 does not have any ambitions of a quasi-legal forum.

  17. In reply to anon at 11.57 today (above) two Points:

    1. In England the court declines to define the word "obvious" because it appears in the Statute. I suspect SCOTUS declines to define "Abstract" for basically the same reason.

    2. The EPO's "technical" is better than "abstract" as a litmus test of eligibility, for the reasons given by Prof Don Chisum just now, over on the Patently-O blog.

  18. Most European (civil) legal systems lack "binding precedent".

    It does not mean that courts can decide whatever they want, but it does mean they have the flexibility to deviate from earlier rulings. Those earlier decisions are persuasive, but not binding.

    For the EPO boards it means that a single "bad" decision can easily be overruled by other boards or even the same board.

    There is nothing strange about no binding precedent, and I am quite sure the UPC won't have binding precedent either.

  19. "1. In England the court declines to define the word "obvious" because it appears in the Statute. I suspect SCOTUS declines to define "Abstract" for basically the same reason."

    Where in the statute is this word "abstract?"

    Once again, your statements are just bizarre.

  20. What is the (non-circular) definition of "technical?"


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