AfterDawn: News

Court rules ‘do it with a computer’ doesn't make an idea patentable

This week seems to be bigger than most for software patent news. Earlier in the week we had Google's announcement they are buying Motorola Mobility to acquire defensive patents. Now we have what could be a landmark ruling against the validity of a software patent on the basis that it describes a mental process.

The decision came from the United States Court of Appeals for the Federal Circuit, which is responsible for hearing appeals in patent infringement cases.



What makes it so important is the nature of many, perhaps most, software patents which are nothing more than a description of some common human activity with legalese added which translates to "do it with a computer." They are exactly the type of patents Microsoft co-founder Paul Allen is suing companies like eBay, Facebook, and Netflix over.

In this case, the patent covered a system for detecting fraud in credit card transactions. The patent holder argued that since it specified using the Internet for looking up information, the necessity to use a computer transformed it into a machine process.

The court disagreed with this assessment:

All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind.

They also shot down an argument that another part of the patent tied it to a machine because it mentioned using a "computer readable medium."

Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope. As such, the “computer readable medium” limitation of claim 2 does not make the otherwise unpatentable method patent eligible

The Supreme Court has long held that mental processes are not patentable so that part isn't new. What's important here is the acknowledgement that translating something which isn't patentable to computer code doesn't magically transform it into something patentable.



You can be sure this case will be appealed to the Supreme Court. However, they only agree to hear a small percentage of cases, meaning this ruling is likely to stand.

Read the entire decision below.






Written by: Rich Fiscus @ 18 Aug 2011 14:09

• Previous article

• PS Vita will indeed have 512MB RAM

• Next article

• IBM announces new chips modeled on the human brain

• 4 comments

• Notcow

  Good! But does this actually effect Google, or any other companies? What they're being sued for by all of these companies doesn't have much to do with mental process in the first place, does it? I thought it had more to do with things like touch-screen technology, or how tablets were too closely resembling each other. That doesn't seem like it would be considered mental process.
  
  This looks to me like the court still needs to do more to prevent people from creating very general patents with the intention of suing companies or people who "infringe" upon them.
  

  18.8.2011 16:07 #1

• vurbal

  Quote:Good! But does this actually effect Google, or any other companies?
  Yes and no. It doesn't necessarily affect things like the multitouch patents because those are specifically related to computer hardware. On the other hand, if you look at the patent suits from non-practicing entities (ie patent trolls) you will find that most of them are like this patent. For example, the ad related patents pretty much all fall into that category.
  

  Rich Fiscus
  @Vurbal on Twitter
  AfterDawn Staff Writer

  18.8.2011 16:29 #2

• KillerBug

  This good for small developers. There are so many basic functions which have been broadly patented that you can violate certain patents just be adding two variables together in your code. Obviously these patents are just ignored most of the time because it is the only way to make a program...but then small firms risk getting sued by patent trolls.
  

  
  

  19.8.2011 00:35 #3

• xtago

  Originally posted by Notcow: Good! But does this actually effect Google, or any other companies? What they're being sued for by all of these companies doesn't have much to do with mental process in the first place, does it? I thought it had more to do with things like touch-screen technology, or how tablets were too closely resembling each other. That doesn't seem like it would be considered mental process.
  
  This looks to me like the court still needs to do more to prevent people from creating very general patents with the intention of suing companies or people who "infringe" upon them. You can't patent an idea which is a mental thing, it's not a real object or an action you can apply to a real object.
  
  There's lots of these patents and they don't get contested until it hits a court otherwise it will stand and it's up to the patent holder to sue someone about it, they have X amount time to sue otherwise they have agreed to the free use of the patent.
  
  What your talking about is mainly controlled by patent departments well meant to be but I guess you can know and force things through.

  19.8.2011 10:49 #4