The space between the signal and the action

In the game-theoretic world, the gunner never shoots: the other side looks at the options down the game tree, realizes that one action will lead to his or her getting shot, and doesn’t take that action. In Game Theory textbooks, cases never go to court: both sides calculate the risk-adjusted expected payoff from trial, and if it is positive for one hyperrational side, then it is negative for the other hyperrational side, and a settlement can be calculated based on that. In both cases, knowledge that an event could occur largely has the same effect as the event itself.

But there was an eight-year glitch in the game-theoretic matrix, which has given us an interesting chance to see what happens between when a signal of a legal position is sent and when the position actually hits.

Here in 2014, the Supreme Court handed down a ruling regarding the patentability of software, Alice Corp v CLS Bank. The first draft of the ruling was published in 2006.

The question in the 2006 case of Labcorp v Metabolite was whether a patent of this form was valid:

1. draw the patient’s blood,
2. measure the level of a chemical in the blood, and
3. correlate that level to the risk of a disorder.

Steps 1 and 2 are by themselves not patentable, because they are physical processes but are entirely not-novel. Step 3 may be a novel correlation, but it is an abstract scientific discovery, and one may not patent abstract ideas or research results. So is the combination of the physical-but-quotidian steps 1+2 with the abstract-but-novel step 3 a physical and novel invention?

The Court’s decision (PDF) was one sentence long:

The writ of certiorari is dismissed as improvidently granted.

For those whose Latin is rusty, the ruling says that due to a procedural glitch, the Court should not have heard the case, and would not rule. However, Justice Breyer, with Stevens and Souter, wrote a 15-page dissent (see the above PDF). It was a hot one, with a real sense of urgency that allowing this patent to stand will cause real damage. It argued that the patent should not stand because abstractions are not patentable for good reason, and the physical steps in this patent are just a cursory attempt to get past the bar from patenting abstractions. In game-theoretic terms, this was the Justices signaling as well as they could given that technicalities precluded a ruling.

Years passed, and nothing further was said. No member of the Supreme Court has a blog. They make an effort to give rulings that are as concise as possible. Sure, they heard cases involving sketchy patents, but if the case was about applying patents across borders, then the ruling would take the patent as given and discuss the cross-border issue. If the question was about patenting business methods, then the ruling would be about whether it’s OK to patent business methods.

So during that period, the last signal the Supreme Court gave regarding the patents like the three-step patent above was the dissent in Labcorp. You can read tea leaves, but such faint signals pale compared to the strong language of the Labcorp dissent.

Let’s apply this to software. Here is another patent template:

1. buy a (physical but quotidian) stock computer;
2. load a (novel but abstract) program onto it.

This is the same format as in Labcorp in a different context, and the logic of the Labcorp dissent would invalidate this sort of patent as well. Nonetheless, during this period the US Patent and Trademark Office granted so many Labcorp-like patents that they had to move to a new (very attractive) office complex and implement a new telework infrastructure to handle all the new examiners. As will be discussed below, probably tens of thousands of these patents were completely invalid under the logic of the Labcorp dissent.

The PTO provides this handy PDF breaking down how many patents were granted by category. Between 1993 and 2004, there was growth in most fields, but typically a doubling or tripling. If you want to see the real growth, you have to skip down to the 700 series, where most of the load my novel algorithm on a stock computer patents lie.

Here’s a trimmed down table of patents granted in certain categories:

cat # field 1993 count 2013 count change
250 radiant energy 1887 3552 188%
267 spring devices 291 330 113%
273 amusement devices: games 430 538 122%
324 Electricity: Measuring and Testing 1272 2741 215%
340 communications: electrical 1332 4995 375%
704 Data Processing: Speech Signal Processing, Linguistics, Language Translation, and Audio Compression/Decompression 252 2053 815%
705 Data Processing: Financial, Business Practice, Management, or Cost/Price Determination 229 7897 3,448%
715 Data Processing: Presentation Processing of Document, Operator Interface Processing, and Screen Saver Display Processing 263 4350 1,654%
729 Information security 21 3810 18,143%
801 Multicellular Living Organisms and Unmodified Parts Thereof and Related 38 1536 4,402%
901 Robots 204 336 165%

Think back to 1993 for a minute: there were people doing research in speech therapy, there were devious financiers looking for an edge, there were people trying to make their presentations interesting, there was information that had to be secured, there were multicellular living organisms. The invention of the Internet (in the 1970s and 80s) certainly made all fields more efficient, but it’s hard to argue that financiers in 2013 were 34 times as inventive as the financiers of 1993. You get 375% growth in patent counts by having more engineers using better technology in their research, and you get 1,600% growth by making patentable what before had not been.

They did so with the support of the Court of Appeals for the Federal Circuit (CAFC), who presented a series of rulings pushing the boundaries of what is patentable far beyond the bounds signaled in Labcorp; more on them below.

In 2012, the case of Mayo v Prometheus was decided. The three-step medical test patent I described above in the Metabolite patent also describes the Prometheus patent. The ruling followed exactly what Breyer said in his Labcorp dissent: duct-taping together an obvious physical step to a novel abstract discovery does not make the discovery patentable. It was a unanimous ruling, closely following the 15-page sketch from 2006.

The count of rejections started to rise somehwat here, but there were judges in patent-centric courts who were still reluctant to apply this to computing patents, because they perceive that enviornment as too different from the medical test environment. See the majority ruling Judge Prout dissents from and Judge Michel’s amicus brief, below.

Here in 2014, Alice Corp v CLS Bank asked about a patent regarding arguably novel software on a stock computer, as per the two-part patent above. To summarize the ruling in Alice: directly apply the ruling in Mayo v Prometheus to find this patent invalid, for exactly the same reasons. This one was also unanimous.

Dennis Crouch, well-regarded legal scholar/blogger, describes the change brought about by Alice thusly:

Alice Corp. fits within that precedent as an incremental addition, but without rejecting or even modifying the Supreme Court’s own prior precedent. Rather, what Alice Corp. has rejected is the prior analysis of the Federal Circuit and US Patent Office that seemingly allowed for the patenting of systems and processes whose inventors relied upon only an iota of hardware to separate the patented invention from an underlying abstract idea or law of nature.

The new cohort of [Supreme Court rulings] collectively wipe-away thirty years of Federal Circuit precedent on eligibility, but at the same time, revive 150-years of Supreme Court doctrine on the topic.

The buzz when Alice came out was cautious and didn’t want to assume that much would change. [For those keeping score, here’s the only thing I said about it.] But the present situation at the patent office and at the patent-centric courts is a patent bloodbath. Have a look at this article entitled “Software patents are crumbling, thanks to the Supreme Court“, or see “Already Alice Corp. v. CLS Bank Has Brought a Sea-Change in Patent-(In)eligibility“.

Back to the game-theoretic framing, if the Patent and Trademark Office and CAFC were seeking to maximize long-term stability, they would have looked down the game tree in 2006 and seen that the Labcorp ruling would eventually be precedential, so they might as well follow it immediately.

But that’s not what happened. Why?

Those who firmly believe that the Labcorp dissent was not a good position might have committed a host of confirmation biases and taken every piece of evidence hinting at another direction as proof that the Court would never implement Labcorp as a majority ruling. So that might be the story.

There were lots of patent rulings from other courts. As above, the majority on the Federal Circuit’s appeals court was especially active, but it was often swatted down by unanimous rulings by the Supreme Court over the course of this period. So if we commit the ecological fallacy and think The Law has a will and a course, then The Law, mostly steered by the Federal Circuit majority, was moving toward allowing Labcorp-style patents. But if we recognize the CAFC and SCOTUS as distinct bodies, SCOTUS was sending lots of signals that it (often unanimously) felt the Federal Circuit majority was doing it wrong. So there’s another way a not-perfectly-rational agent might misread things.

If the agents were fully rational, and knew Alice would come eventually, then we have to move on to the incentives of the agents. The Patent Office’s incentives push it to grant as many patents as the law allows. Department of Commerce employee evaluation forms rate employees on how well they protect intellectual property, not on how fairly they adjudicate the balance of what is or is not subject to IP protections. The head of the PTO through much of this period, David Kappos, had previously been the VP for intellectual property at IBM; IBM benefited immensely from having its Labcorp/Prometheus/Alice-failing patents for eight years, even if many of those patents are now worthless.

The judges on the CAFC have a more interesting utility function. They are effectively appointed for life, and you’d have to really be chummy with the litigants before there’s any buzz about removing a judge. So they have latitude to rule in terms of what they think is the correct law.

The short story for the CAFC v SCOTUS conflict is that the CAFC wants to find what is optimal for the patent system and the Supreme Court wants to find what is optimal for the United States. See Ars Technica or Cato for much discussion of the specialist court.

This has certainly led to conflict. But don’t take my word for it; here’s Judge Prout of the CAFC: “The majority [of CAFC judges who wrote this ruling] resists the Supreme Court’s unanimous directive to apply the patentable subject matter test with more vigor. […] The majority has failed to follow the Supreme Court’s instructions [in Prometheus]—not just in its holding, but more importantly in its approach.” Or on the other side, Justice Roberts had a famous quip during the oral testimony for a patent case mostly about court procedure: “[Other courts] can’t say, I don’t like the Supreme Court rule so I’m not going to apply it, other than the Federal Circuit.” (p 18)

Judge Michel of the Federal Circuit wrote an amicus brief in Alice advising against restricting patentable subject matter. Even addressing the Supreme Court itself, Judge Michel calls a previous Court ruling as “aberrational” (p 6), describes the Court “as the creator and arbiter of the judicially-created ‘exceptions’ to statutory patent eligibility, including ‘abstract ideas,’ whatever that means” (p 7), and urges the Court to not rely on its own rulings (p 8).

So the majority at the Federal Circuit’s appeals court spent the `00s working hard on pushing the scope of patentability well beyond the framework signalled in Labcorp, based on what seems to be a heartfelt but insubordinate belief that the Supreme Court has been doing everything after 1981 wrong. Given that their goals led them to avoid the Labcorp rule as long as possible, the Supreme Court was forced to pull the trigger and set its rule down in a clear majority ruling.


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