Peter Junger on Software Patents, SCOTUS and Federal Circuit

-------- Original Message --------
Subject: Software Patents
Date: Sat, 03 Dec 2005 14:59:16 -0500
From: "Peter D. Junger" <[email protected]>
To: [email protected], [email protected]
CC: Seth Johnson <[email protected]>


Here is an entry from my blog: 
<http://samsara-blog.blogspot.com/2005/12/software-patents.html>,
that I think may be of interest to members of the Cyberia and
Cyberprof lists.  I would be especially internested in seeing
arguments against the position that I express here.

My apologies to those who receive more than one copy because of
the cross posting. 

                        Software Patents

    When I was in law school in the mid-fifties of the last 
    century I never took---nor wanted to take---a course in 
    patent law, but I did learn somehow one bit of legal folk 
    wisdom about patents that was current at that time: ''All 
    patents are valid and enforceable, except for those that have 
    been reviewed by the Supreme Court; no patent that has been 
    reviewed by the Supreme Court is valid or enforceable.''

    Since the creation of the Federal Circuit in 1982, however, 
    the Supreme Court has had occasion to decide very few patent 
    cases because all the patent cases that would in the old days 
    have been decided by the various different circuit courts of 
    appeal are now all heard by the Federal Circuit and thus 
    there is never any conflict between the circuits and a 
    conflict between the circuits is the usual basis for the 
    Supreme Court deciding to hear a case.

    Over the years since 1982 the Federal Circuit has held 
    repeatedly that innovations in computer software---in 
    computer programs---can be patented. The leading case in the 
    Federal Circuit on this subject is In re Alappat, 33 F3d 1526 
    (Fed. Cir., 1994), even though, way back in 1972, the Supreme 
    Court had held in Gottschalk v. Benson, 409 U.S. 63 (1972), 
    that a claim in a patent application that describes a 
    computer program---a so-called ``algorithm''---is not 
    patentable.

    Thus we now have the strange situation where most lawyers, 
    including most members of the patent bar, have to assume that 
    software patents are valid and that the Federal Circuit has 
    in effect overruled the decision of the Supreme Court in 
    Benson even though the Court has never been very sympathetic 
    when lower courts have refused to follow its decisions.

    Of late, however, the Supreme Court has evidenced an 
    increased willingness to review decisions of the Federal 
    Circuit in patent cases. When one couples that with the fact 
    that there is more and more evidence these days that software 
    patents impede rather than support the progress of science 
    and the useful arts, I am almost willing to predict that 
    within the next few years the Supreme Court will once again 
    declare that claims in patent applications describing 
    computer programs are not patentable and that therefore so-
    called software patents are not valid.

    It should be noted, however, that that prediction will not 
    come true if no one is willing to bear the expense of taking 
    such a challenge to the Supreme Court or if no one dares to 
    raise in a petition or an appeal to the Supreme Court the 
    fact that there is a conflict between the Court's holding in 
    Benson and the Federal Circuit's holding in Alappat.

--
Peter D. Junger--Case Western Reserve University Law
School--Cleveland, OH
 EMAIL: [email protected]    URL: 
http://samsara.law.cwru.edu