The Supreme Court justices signaled Monday that, just like the rest of us, they are at a loss as to where to draw the patentability line for software.
The Alice v. CLS Bank case is already seven years old yet surprisingly has not progressed very far. Early cross motions for summary judgment were delayed as case law developed. At the district court level, the claims were held not to be patent eligible. A panel of the Federal Circuit reversed, and the Federal Circuit en banc was equally divided. So this case, though seven years old, is really in its infancy.
You will recall that the Federal Circuit en banc took 130 pages to say it was clueless regarding this issue. Chief Judge Randall R. Rader issued "additional observations" that were almost a plea to the Supreme Court to relieve the Federal Circuit's dysfunction.
Apparently, this is a hot potato that the Supreme Court isn't embracing, either. Justice Stephen Breyer repeatedly said Monday that the Supreme Court had done what it could in the Bilski and Mayo cases but left gaps, hoping the experts (read PTO, Federal Circuit) could fill in the gaps.
In Monday's oral argument, both sides began by reiterating the arguments from their merits briefs. Very quickly, Breyer stated (quite neutrally) that he was personally looking for help as to how and where to draw the line. The other justices chimed in indicating that, though they recognized that either extreme would be bad, they too could not see a clear place for the fulcrum.
Only Justice Ruth Bader Ginsburg seemed prepared to stake out her position, which appears little changed from the Bilski case. She jumped out at the beginning of the argument by asking Alice's counsel how the claimed subject matter here is less abstract than the subject matter in Bilski. Ginsburg remains highly skeptical of any approach that would extend patentability merely by some minimal recitation of computer implementation. Her active involvement in the questioning and her obvious passion for this issue seem to make her vote fairly easy to predict.
Justice Antonin Scalia was uncharacteristically understated in his comments; this shows that his position isn't settled. He did provide an interesting dig at CLS by observing that one might say the cotton gin was not really an invention, either, because it simply did by machine what others had done before.
Solicitor General Donald Verrilli presented the government's position and urged that a software invention should be patentable only when it "improves" technology (e.g., improves a computer). This drew some questioning from the justices about the difference between improving a computer and improving something else using a computer. Breyer, in particular, wondered how such a distinction might find justification in the law.
At the end of the day, there was less telegraphing of positions by the justices than is often the case. To end where I started, it is nice to see that Supreme Court justices don't find this any easier than the rest of us.
— Stuart Meyer is a partner in the IP group of Fenwick & West LLP.