Software Patent Eligibility

Periodically we share outstanding “IP News” essays written by undergraduate students for the Intellectual Property course (BUS 502). Below you will find Rachel Meland’s. 


Software Patent Eligibility

The status of software patent eligibility has been a matter of some uncertainty over the years in the United States. This matter has been the subject of several important Supreme Court Cases going back to 1972 when the SCOTUS decided Gottschalk v. Benson[1]  and as recent as 2014 in the Alice[2] decision. This issue returned to the court room once again when McRO sued several video game companies over two of their software related patents. These patents were rejected in the district court[3] and the case reached the Court of Appeal for the Federal Circuit in 2016. On September 13, 2016 the court released its judgement in McRO, inc. v. Bandai Namco Games America[4] overturning the previous ruling and attempting to clarify the law related to software patents eligibility.

In McRO v. Bandai the claimed invention was for a piece of software that automates the synchronization of lips and facial expressions in animated characters. This automation replaces the previous method that required human animators that had to use their subjective reasoning to determine how, and the extent to which, the facial expressions associated with various phenomes transition between each other. The automated process makes contextualized decisions by adhering to set of pre-defined “rules” established in the software. This software supposedly does a better job than animators and relieves them of their “tedious and very time consuming, as well as inaccurate” work[5].

The dispute over these patents was whether they should be considered abstract ideas under the exceptions to patentability of section 101 or if they fall within the category of computer programs that run a physical process known as ‘software implemented inventions’ as established in Diamond v. Diehr (1981)[6]. The test that accompanies this analysis was established by the Supreme Court in Mayo v. Prometheus (2012)[7] and affirmed in 2014 in Alice. The test is composed of two parts; the first is to identify the abstract idea present in the invention, the second is to verify that there exists a “something else” that maintains its patentability[8]. The Court of Appeal clarified that the first part of the Alice test, should focus primarily on evaluating the negative future effect of the monopoly granted by the contested patent, referred to as a pre-emption analysis.

The source of the exceptions from patentability is a concern that people will gain monopolies over “the building blocks of human ingenuity”[9] or the “the basic tools of scientific and technological work.”[10] Patents cannot be allowed for inventions that “tie up too much future use of any abstract idea they apply”[11] nor can they “limit the use to a particular technological environment.”[12] The definition for an abstract idea was laid out in 1853 and quoted by the supreme court as recently as 2014 as “a principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right”[13]. However, the exemption of abstract ideas must be balanced because on some level, all inventions are based on an abstract idea.

The federal court in McRO clarified that this balance is maintained by looking closely at the claimed invention and determining whether the invention is too abstract based on its pre-emptive effect, because pre-emption, not tangibility is the concern underlying §101 exceptions[14]. However, in doing so it is important not to interpret the claims too broadly and subsequently exaggerate the perceived danger,  because it is the specificity of the claims that detail the ‘materiality’ of the inventive concept.[15] This was, according to the Court of Appeals, the error made by the lower court; in claiming that the invention pertained to the “abstract concept of using rules”[16] its pre-emptive effect was too broad. Whereas the appellate court concluded that the claims were actually for a “type of rule” or a “genus of rules” which is a far narrower construction[17].

The court specifies that pre-emption analysis is particularly important for genus claims because “it is self-evident that genus claims create a greater risk of pre-emption, thus implicating the primary concern of §101 jurisprudence.”[18] For these rules the pre-emption concern is twofold; firstly, if the genus of rules merely invoke generic processes and secondly, whether the genus of rules pre-empts all techniques of automation of 3-D animation that relies of rules.

For the first criteria, the court decided this was not the case, the previous method of animation was largely a subjective process performed by the animators, the objectivity of the rules claimed differentiates them from the prior art[19]. The court decided that it is the “incorporation of the claimed rules, not the use of the computer, that improved the existing technological process.”[20] Nor is it a process that “any animator engaged in the search for an automation process would likely have utilized.”[21] On the second, the court clarified that by constructing the claims in the patent as a genus of rules, the assumption can be made that there exists alternative approaches to animating the synchronization of speech and facial expressions. Additionally from an evidentiary standpoint, “there has been no showing that any rule based lip-synchronization process must use rules with the specifically claimed characteristics.”[22]

The conclusion of the judgement is that because the rules claimed do not “pre-empt approaches that use rules of a different structure or different techniques” therefore it is not directed to an abstract idea per step one of the Alice test. The court omits any discussion about part two of the Alice test, having failed at the first stage.

Despite the strong position against abstract subject matter in patents-particularly software patents-taken recently by the Supreme Court of the United States, McRO v. Bandai ensures that the door to software patent eligibility isn’t closed completely. McRO’s patents were deemed inventive because they disclosed a way to transfer a subjective, artistic process onto a computational and objective platform. An artist’s occupation, even an animation artist, is inherently abstract.  By replacing the artist by a computer, it is arguable that the incorporation of software makes this process more “mechanical”


[1] 409 U.S. 63, 64 (1972) (“Benson”)

[2] Alice Corp. v. CLS bank Int’l, 134 S. Ct. 2347, 2355 (2014), (“Alice”)

[3] McRO, Inc. v. Sony Computer Entm’t Am., LLC, 55 F. Supp. 3d 1214 (C.D.Cal. 2014)

[4]  McRO, Inc. v. Bandai Namco Games America Inc. et al., No. 15-1080, (Fed. Cir. Sept. 13, 2016)  (“McRO”)

[5] McRO at p9

[6] 450, U.S. 175 (1981)

[7] Mayo Collaborative Servs. v. Prometheus Labs. Inc., 132 S. Ct. 1289, 1293 (2012) (“Mayo”)

[8] Alice at p7, quoting Mayo

[9] Ibid

[10] Ibid, quoting myriad

[11] McRO at p14

[12] Flooke supra note at 594

[13] Alice at p8 citing Le Roy v. Tatham, 14 How. 156, 174–175 (1853)

[14] McRO at p25 quoting Mayo

[15] Ibid at p21

[16] Ibid at p14

[17] Ibid at p22

[18] Ibid p23

[19] Ibid at p24

[20] ibid

[21] McRO at p27 quoting Myriad

[22] McRO at p26

This content has been updated on December 22, 2016 at 12:15.

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