Thursday, August 26, 2010

Google's Bilski brief didn't advocate the abolition of software patents

After Oracle filed its patent infringement suit against Google, most of the initial reactions in the community expressed disappointment over Oracle's action. However, the more time passes, the more people have second thoughts. It's noticeable in the blogosphere and in discussion forums.

I try hard to be fair and as objective as humanly possible. With this posting I want to shed some light on Google's amicus brief in the Bilski vs. Kappos patent case. The Supreme Court of the United Status (SCOTUS) took its decision in late June, and it was a major disappointment and a setback for the free software/open source movement.

Some large IT companies filed so-called amicus curiae briefs (submissions to tell their views to the judges), and since Google is now being sued over patent infringement, it's worth taking a look at what the "Don't Be Evil" company did in connection with Bilski.

Google partnered with financial services organizations

Google filed its amicus brief jointly with Bank of America, Barclays Capital, The Clearing House, The Financial Services Roundtable, Metlife and Morgan Stanley.

All of those organizations Google partnered with are part of, or represent parts of, the financial services sector. While financial services companies are large-scale software users, it would have been a major surprise to find them take a position on software patents. After all, the Bilski patent application wasn't technically a software patent filing. It claimed a method for managing certain risks related to price changes in the energy market.

Also, those banks have business relationships with large software companies that want patent protection. So it's easy to see that they had a narrow focus (just the Bilski type of business method) as opposed to a broader agenda concerning patents including technical software patents.

However, those who oppose software patents looked at the Bilski case as an opportunity for the SCOTUS to establish criteria for patentable subject matter ("patent-eligibility") that, ideally, would have caused collateral damage (or collateral benefit from the anti-software-patent point of view) to the patentability of software.

Google's choice of partners in this is an indication that I wanted to mention because it's easy to understand. If they had partnered with (for instance) Knowledge Ecology International, the likelihood of a truly anti-software-patent brief would have been hugely greater. But let me now explain the content of Google's brief and why it isn't an anti-software-patent position.

Against straightforward business method patents

Google's brief speaks out against "patents on methods of doing business" and "abstract methods and mental processes like [the Bilski application]". It describes the essence of the Bilski patent application as "the abstract idea of managing the weather-related risks associated with energy pricing".

Such an idea could be implemented -- and nowadays would typically be implemented -- in the form of (a part of) a computer program. That's why Google's brief also argues against "patents on [...] software that merely implements such methods".

But this doesn't mean opposition to software patents that relate to other subject matter than the automation of such business methods.

Amazon's patent on the one-click order is probably the most famous business method patent, at least in connection with the Internet. In a totally unconcealed fashion, it could be categorized as a patent on a business method or on "software that merely implements" one. So it's the kind of patent Google proposed to do away with.

Google gave some examples of such patents that the US Patent & Trademark Office has granted: "method and apparatus for tax efficient investment management," a "process for creating a financial plan for ... funding of college education," a "system for funding, analyzing and managing life insurance policies funded with annuities," and a "system, method, and apparatus for providing an executive compensation system."

However, I said before: "in a totally unconcealed fashion". That's what the one-click patent and the examples listed in the previous paragraph are. But if Amazon had to file the patent in an environment where business methods are formally unpatentable, its patent attorneys could try to draft around that restriction. For an example, they could describe it as a signal processing patent, and instead of the convenience for the buyer they could argue with a reduced number of signals (or if it's a "communications" patent, with reduced network traffic). In the end they might monopolize the underlying concept anyway. Maybe they would even obtain a broader monopoly.

That's what I'd call a disguised business method patent. I didn't find anything in Google's brief that stressed the need to do away with such patents as well.

Only against abstract software patents (not concrete ones)

Wherever Google's brief relates to software patents, it does one of three things:

  1. complain that there are generally too many of them (which would be an argument for higher quality standards, not necessarily for abolition)

  2. refer to the implementation of business methods in software (as discussed in the previous section)

  3. limit the scope of statements on software patents with the word "abstract"

The third item means: if a software patent application is too abstract, it should be rejected, but if it's somewhat concrete, it may be fine.

Google's brief doesn't suggest exactly where to draw the line between an abstract software patent and a concrete one. There's no doubt that a patent on a computer program implementing the Bilski idea would be "abstract". But the brief doesn't argue that software is abstract by definition and should, therefore, not be patent-eligible (as many opponents of software patents claim). I don't believe in the strength of the "all software is abstract" argument anyway. So I don't blame Google for not subscribing to it either. I'm just trying to figure out where Google stands, based on its Bilski brief.

The question of whether a patent is too "abstract" has to do with the breadth of the claims (it's the claims where the scope of the time-limited monopoly is defined) and it may also have to do with disclosure (the extent to which an invention is truly explained). Generally, the more "abstract" a patent is, the broader, and the broader, the more valuable. So it's obvious that applicants and their attorneys will try to push something as abstract as possible through the system. It's up to the patent examiners (or to the judges, post-grant) to insist on a narrower and more concrete application, and on the disclosure of an actual solution.

This is isn't software-specific at all. Half a century ago the SCOTUS already stressed that "a patent is not a hunting license", meaning that it's not a monopoly on the right to solve a problem, but a reward for an actual solution.

Conventional vs. non-conventional programming of a computer

Google's brief describes quite clearly on page 10 of the PDF file where Google would draw the line between patentable and unpatentable subject matter. I'll quote and explain:

Rather, "the clue" to patent-eligibility

The term "patent-eligibility" means whether something falls under patentable subject matter. If software is excluded from patentable subject matter somewhere, then it's "not patent-eligible", or more elegantly, "patent-ineligible". The term is meant to distinguish subject matter from other patentability criteria (novelty, nonobviousness etc.). However, when we talked about patent-eligibility in the EU debate over software patents, we always just said "patentability [of software]".

is whether a process results in physical transformation or reduction of an article to a different state
or thing.

That's the "transformation" part of the machine-or-transformation test. Software all by itself can't do that, so it's an non-issue for us. Google cites the Gottschalk vs. Benson case, which we don't have to worry about here.

Where such transformation does not occur, the Court has recognized processes to be patent-eligible only when the claim, considered as a whole, is necessarily tied to the non-conventional use of a machine.

Google talks about conventional vs. non-conventional use of a machine (such as a computer) at several points. One might think that programming a computer is by definition a conventional use because being programmed is what computers are for. Unfortunately, that's wrong.

I know this in detail because in the EU software "as such" isn't patentable subject matter, but a lot of software patents get granted, and the reasoning will always have to do with theories that are the equivalent of "non-conventional use of a machine". For an example, optimizing the use of the limited number of pixels of a screen (such as by a tab control), accelerating a database operation (such as by a better sorting algorithm), compressing data, encrypting data... all those kinds of achievements go beyond a conventional use of a machine under the logic of patent law.

Why would Google be fine with patents on a non-conventional use of a machine? Because pretty much everything on which Google seeks patents meets -- or is at least intended to meet -- that requirement, not from a programmer's common sense point of view but under patent law. For an example, Google's patented PageRank algorithm would not be considered a "conventional" use of a computer by a patent examiner or court because it's so useful for the purpose of estimating the relevance of web pages.

To resolve this case — and to provide needed clarity regarding the scope of patentable subject matter — this Court need only reaffirm these long-established precepts.

There you have it: Google called on the SCOTUS to uphold a set of criteria under which the kinds of patents Google obtains are available. Let's face it: the kinds of patents over which Oracle sues Google now also fall in that "non-conventional use of a computer" category. Google is getting a taste of its own medicine.

Adaptability of patent law to future innovation

At the top of page 11 of the PDF file, a long sentence relates to "technological advancements" and supports the idea that new technologies should be patentable in principle. Google's brief just argues that the Bilski patent application, which isn't as technological as Google's PageRank patent, is a kind of subject matter that has "existed since the time of the first Patent Act." That law was passed in 1790. Of course, businesses and markets existed before, so the Bilski idea could, in theory, have come up in one shape or another more than 200 years earlier.

In terms of where Google stands, it's just important to realize that this kind of reasoning isn't an anti-software-patent position at all. Instead, it is consistent with the idea of an "expansive" patent system that covers ever more fields of technology with time.

An anti-software-patent theory in this context would argue that even though US patent law is meant to adapt to new technologies, patent law is only a means to an end, and for reasons A, B, C and D, software patents run counter to the lawmakers' original intent (including that one might even argue they're unconstitutional).

It would undoubtedly be a huge challenge to win that kind of an argument, but it would be theoretically possible because very few legal principles are absolute: in most cases, different principles and values have to be weighed off against each other. In this case, the idea of the patent system expanding is one principle and value, and one could bring others into play to argue against the compatibility of software patents with existing patent law and, possibly, the Constitution. I just want to highlight that Google doesn't do that.

References to patent-critical literature

In all fairness I have to say that Google does cite some very patent-critical authors, such as James Bessen and Michael Meurer. I know the former (we were sitting next to each other on a conference panel years ago and agreed on a lot of things). Google also recalls that in the early 1990s virtually all software companies opposed the patentability of software (ironically, that would also include Oracle). Quite accurately, Google points out that innovation in software occurred anyway and, at the time, didn't require patent protection.

Google deserves credit for having drawn the attention of the SCOTUS justices to such theories and eye-opening writings. While this wasn't the only amicus brief to do so, the combination of Google with several of the giants of the financial services industry certainly did lend a kind of credibility to those critical voices that, by contrast, a notorious communist without any track record in business, authoring a submission on behalf of non-commercial entities, never brings to the table.

Still, Google stopped far short of advocating the abolition of software patents. One may prefer to crack one nut at a time and do away with business method patents first, then deal with other software patents.

However, if you look at Google's unequivocal support of non-abstract patents on a "non-conventional" use of a computer and its failure to argue against an expansive patent system, there's just no way a person knowledgeable in the field of substantive patent law could say that Google's brief was an anti-software-patent submission. It was at best neutral with respect to the kinds of patents Google itself files for, and I think it's fair to say that on the bottom line -- especially in the most crucial context, the legal tests for patent-eligibility -- was pretty much pro-software-patent.

Also, it must be considered that Google has never spoken out against the patentability of software as a whole on any other occasion either. I'll comment on that some other time.

I don't support patent aggression, but perhaps Google has to learn about patents the Ellison way.

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