Last month, Apple brought a motion for summary judgment of invalidity against two Ericsson patents, based on the exclusion of abstract subject matter under 35 U.S.C. § 101 and its interpretation by the Supreme Court in the famous Alice case, in the declaratory judgment case in the Northern District of California. Ericsson's opposition brief argues that there is so much technology involved in the operation of a wireless network, it's just impossible to hold such patents to cover abstract subject matter, lest an extreme interpretation of Alice spell doom for patent law as a whole.
Reply briefs are often very repetitive, reinforcing points already made in the motion in light of the opposition brief. Over the years I was actually bored by many such filings, including a number of Apple replies. Apple's reply brief in this context is one of my favorite ones, however, because it addresses some important post-Alice legal questions and convincingly dismantles Ericsson's arguments with great specificity (this post continues below the document):
The first footnote counters Ericsson's assertion that the clear-and-convincing-evidence standard of proof should apply to Alice. Apple points to case law that supports applying the preponderance standard. The recent Supreme Court decisions on § 101 (Alice, Bilski, Mayo etc.) didn't address the evidentiary standard. The Federal Circuit has clarified that "while a presumption of validity attaches in many contexts, no equivalent presumption of eligibility applies in the section 101 calculus." A decision from the District of Oregon cites Justice Breyer's concurring opinion on Microsoft v. i4i (where clear and convincing evidence was held to be the applicable standard for other invalidity theories):
"Where the question of invalidity depends 'not upon factual disputes, but upon how the law applies to facts as given,' the clear and convincing evidentiary standard simply does not come into play."
Apple then addresses the two Alice steps (is there an abstract idea in play, and does the patent claim go beyond the abstract idea identified) for either patent it challenges. If you're interested in the details of this, you may find Apple's argument worth reading in detail. I'd like to just talk about a couple of aspects.
I know that those who would like to mitigate the impact of Alice tend to argue that the § 101 patent-eligibility analysis should be totally separate from novelty and non-obviousness considerations. Admittedly, my previous post on this motion process may have appeared to blur the line. But the Alice logic is simply that if you only use "generic" hardware to implement what you claim to be an "invention" (referring to the claim limitations, not whatever the description might contain beyond the claim elements), your "invention" isn't patent-eligible. While "generic" is not the same as "new" or "non-obvious," it's still a somewhat similar analysis. Before the first computer or the first mobile network was invented, it wouldn't have been generic.
Over here in Europe, we've had this kind of discussion for a long time because of the exclusion of computer programs "as such" from the scope of patent-eligible subject matter under the European Patent Convention. I've followed numerous nullity cases before the Federal Patent Court of Germany and related discussions in courts hearing infringement cases (where nullity cannot be decided, but the outcome of nullity cases must be predicted because a strong prognosis of invalidation results in a stay). Both the lawyers arguing these cases for parties challenging patents and the judges rarely conclude that an entire patent claim falls under the exclusion. They're much more comfortable arguing on the basis of (non-)novelty) and (non-)obviousness and then finding that the question of patent-(in)eligible subject matter doesn't even have to be reached.
In no small part, this is due to the fact that it would simply be bad for the business of those lawyers and bad for the domain of patent-specialized judges if many patents were declared invalid on the basis of wholesale ineligibility. It would be a show stopper, and the show must go on for the professionals working in that area, which at least subconsciously and in some cases probably also at the conscious level prevents them from proposing or establishing rules that would end the discussion about most software patents. For example, the Federal Court of Justice affirmed the nullity ruling on Apple's slide-to-unlock patent, but disagreed with the Federal Patent Court for fear that its decision contained at least one statement that would get too many user interface patents invalidated. What they are more willing to do over here (though they still prefer decisions to be based on obviousness or non-novelty) is that they identify the novel claim elements and then determine whether those are technical under the EPC.
While it's easy to imagine patents that are so abstract one wouldn't have to consider what is "generic" (Alice logic) or "software as such" (EPC logic), those are hard to come by, and patent claims like the ones at issue in Alice were not like that. In most cases, the claim drafters had tried to inject some token references to technical means of solving a technical problem. Therefore, Apple is right to refer to the following Alice passage:
"A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'" (bracketed language in original)
And an indirect Mayo quote by Apple shows again that novelty/non-obviousness considerations inevitably overlap with the abstract subject matter analysis:
"explaining the additional elements within the claims, apart from the abstract idea itself, must involve more than ''well-understood, routine, conventional activit[ies]' previously known to the industry' (quoting Mayo [...]; bracketed language in original)"
Here, the Ericsson patent claims at issue are just about abstract protocols and their generic implementation on run-of-the-mill mobile communications technology.
Finaly, a really good quote from Source Search Techs., LLC v. Kayak Software Corp., District of New Jersey:
"DDR Holdings tells us that when a patent holder seeking to establish § 101 eligibility for an otherwise abstract idea points to a particular element of a patent's claims as solving a computer-centric problem, the claims must specify how that solution works. [emphasis in Apple's filing] That specificity removes the claims from the abstract realm."
Apple says that Ericsson's claims just don't meet that requirement, and many pages of legal argument that now tries to portray the subject matter of those patent claims as technical inventions can't change what's written in the claims. I agree.
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