(This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.)
Part IV. THE CONTINUED APPLICATION OF MENTAL STEPS TO SOFTWARE INVENTIONS
Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority and a statement of fact about how computers operate. The Court’s conversion of the mental steps doctrine from its factual form to its fictional form in essence turned the performance of mental steps from being a necessary condition for ineligibility to a sufficient condition. And since the Alice decision refused to offer a definition or even a methodology for identifying abstract ideas, the fictional form of mental steps has been taken up as a model tool. As a result, it has substantively impacted both the case law and the outcome of many patent cases.
Though the Federal Circuit decided dozens eligibility cases after Benson, it was not until some forty years later that Federal Circuit adopted the fictional form of mental steps. First, in Cybersource, that court stated that “in finding that the process in Benson was not patent-eligible, the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas--the "basic tools of scientific and technological work" that are open to all.”1 Then in Bancorp, the court stated
As the Supreme Court has explained, “[a] digital computer . . . operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Benson, 409 U.S. at 65. Indeed, prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Oxford English Dictionary, supra. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes.2
Here too, the statements from UDC have been taken out of context and used in a manner at odds with their intended purpose and meaning. However, as should be clear, the digital operations of a computer are not “interchangeable” with the mental processes of a human. That both can be described in a common way does not make them the same in fact. If the programmed operations of a computer are interchangeable with the mental processes of a human, then so too are the mechanical operations of an adding machine, since these operations can likewise be described as the “same procedures” performed by a human. Clearly, this result would not be correct, and thus it implies that the “interchangeability” premise is false.
After Alice, reliance on Benson’s “mental steps” and the pencil-and-paper test increased significantly, even where the claims were directed to processes that were disclosed as fully performed by a computer. These types of claims that would have been eligible under the pre-Benson factual mental steps approach of Judge Rich and the Court of Customs and Patent Appeals. What follows is a short survey of several exemplary cases:
In Planet Bingo, LLC v. VKGS LLC, the Federal Circuit stated that “The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper,” and expressly relied on Benson: “Like the claims at issue in Benson, not only can these steps be “carried out in existing computers long in use,” but they also can be “done mentally.””3
In Broadband iTV, Inc. v. Oceanic Time Warner Cable, LLC, the claims included steps of “enabling the online uploading of videos” and “converting the uploaded videos standard TV digital format.” 4 The court nonetheless held “Even though the ‘336 Patent anticipates that its steps will be performed through computer operation, it describes a process that a person could perform “[u]sing a pen, paper, and her own brain.”5 The court did not explain how a human with pencil and paper could themselves enable uploading of videos or convert the videos into a specific digital format.
In Concaten, Inc. v. Ameritrak Fleet Solutions, LLC, one of the claims dealt with generating maps of the locations of snow plows, and presenting graphical users interfaces based on such maps, along with automated instructions to the snow plow operator. The claim included steps of “processing, by the server, the received collected information to (i) provide a map associated with a physical location of a selected snow maintenance vehicle” and providing, over the wireless cellular network, the map and an operator instruction to the selected snow maintenance vehicle of the plurality of snow maintenance vehicles, wherein the map is visually displayed, by a touch screen monitor”.6 The court held that these steps were “nothing more than taking steps routinely performed by humans.”7
In Evolutionary Intelligence, LLC v. Sprint Nextel Corp., the claims were directed computer search methods using a data structure described as a “container” formed of “registers” with specific types of relationships ("the container registers having defined therein data comprising historical data associated with interactions of the identified containers with other containers from the plurality of containers, wherein searching the first container registers comprises searching the historical data;” etc.). 8 The court held that the claims cover “no more than a computer automation of what “can be performed in the human mind, or by a human using a pen and paper.””9
In Kinglite Holdings Inc. v. Micro-Star Int'l Co. Ltd., the claims were directed to encrypting the BIOS of a computer:10 “A method to securely invoke Basic Input and Output System (BIOS) services, comprising: creating a service request to invoke BIOS services; signing the service request with a service request signature generated using a private key in a cryptographic key pair; and verifying the service request signature using a public key in the cryptographic key pair to ensure the integrity of the service request.”11 The court held that the steps of “generating a signature using a “private key” and verifying that signature with a “public key” can be performed by a human who is capable of reading such keys.”12 The court did not explain exactly how a human would mentally create a service request for a BIOS service, since such an operation take place within the operating system, not at any user-accessible level of the computer.
Finally, perhaps the strangest application of the mental steps doctrine is Stanacard v. Rubard, LLC.13 The invention involved combining caller ID and call forwarding to route and connect a call to a unique recipient. The customer of a telephone service has their own phone number, as is normal. The telephone service also provides a local ten-digit telephone number that the customer can assign to a second phone number (including long distance international numbers) of another person. When the customer, calling from their own phone, calls the local number, the telephone service determines the caller’s number using caller ID, and then looks up the second number that the caller assigned to the local number. The service then connects the caller to that second number.14 Claim 1 recited:
- A method comprising
detecting an identity of a caller;
receiving an assigned incoming telephone number;
identifying a recipient associated with the assigned incoming telephone number and the identity;
connecting the caller and the recipient;
wherein said caller has a plurality of assigned incoming telephone numbers to choose from, at least one of said plurality of assigned incoming telephone numbers being associated with said recipient,
wherein each assigned incoming telephone number is associated with multiple recipient telephone numbers, a particular telephone number of a recipient being determined solely by a particular assigned incoming telephone number used by a particular identified caller and without input of further data by said caller, whereby said caller is not required to be within a particular network for making calls.
The court went so far as to refer to the “genius of the '156 patent (and it is indeed clever and creative),”15 as an “elegant solution to the problem of the calling card PIN was apparently overlooked by a lot of smart people for a very long time.”16 Nonetheless, the court found the claims directed to a mental process, relying on Cybersource and the pencil-and-paper analysis. The court’s implementation of the pencil-and-paper test, however, borders on the bizarre:
When I was a child I watched Lassie on television. Whenever June Lockhart, playing Ruth Martin, wanted to reach someone by telephone, she rang Jenny at Central and got herself connected to whomever she wished just by saying "Can you get the doctor?" or "I need to speak to Timmy's teacher, Miss Jones." Ruth didn't have to dial any numbers at all. Jenny, the intermediary, recognized Ruth as the caller from the line that rang at Central, and she knew which receptacle to plug Ruth's line into so that Ruth's call to Central would be forwarded to its intended recipient. Nothing different happens here, except that switching machinery and computers (none of which is claimed) recognize who the incoming caller is and to whom she wishes her call forwarded. As defendant points out, a room full of telephone operators with sheets of paper containing the look-up tables could accomplish the same result- expensively, true, but the same result, using the same process.17
It’s a fair bet that in the history of patent litigation no court has invalidated a patent based on its childhood memories of television shows.
These cases illustrate the types of patents that have been invalidated under the fictional form of the mental steps doctrine and pencil-and-paper test. Not all courts presented claims for software inventions adopt the mental steps approach. The most cogent judicial critique of the mental steps test is by Judge Pfaelzer in California Inst. of Tech. v. Hughes Commc'ns Inc.18 The claim before the court dealt with the generation of parity bits for communication packets, “Claim 1 of the ’032 patent recites generating a parity bit by accumulating two values: (i) the value of the previous parity bit and (ii) the sum of a number of randomly chosen irregular repeats of message bits.” Even accepting this simplification of the claim, the court rejected Hughes’s argument that the steps could be performed mentally:
One of Hughes’ arguments deserves special attention. Hughes argues that calculating parity bit values involve “mental steps [that] can be performed by a person with pencil and paper.” Therefore, Hughes, argues the claim is not patentable. Defs.’ Mem. in Supp. of Invalidity at 14, Dkt. No. 126. The Court finds this mode of analysis unhelpful for computer inventions. Many inventions could be theorized with pencil and paper, but pencil and paper can rarely produce the actual effect of the invention. Likewise, with regard to software, a human could spend months or years writing on paper the 1s and 0s comprising a computer program and applying the same algorithms as the program. At the end of the effort, he would be left with a lot of paper that obviously would not produce the same result as the software.19
The court offers two further insightful observations. First, “Pencil-and-paper analysis can mislead courts into ignoring a key fact: although a computer performs the same math as a human, a human cannot always achieve the same results as a computer.”20 This is an important point, one regularly overlooked by the courts, as the examples in Kinglite and Broadband iTV above show: while a human may be able to calculate manually a cryptographic key (Kinglite) or perhaps even manually encode a video (Broadband iTV) that would not achieve the same results as claimed. This is consistent with Judge Rich’s observation in In re Benson that speed of computation is “essential in the practical utilization” of the process.21 Today, the courts have distanced themselves entirely from appreciating the significance of practical considerations—patent eligibility is performed in an intellectual vacuum.
The court’s second observation was that “it is clear that Caltech’s error correction codes were not conventional activity that humans engaged in before computers, and the codes do not become conventional simply because humans can do math.”22 This point is likewise routinely ignored: once a court decides a human can perform the claimed steps, it typically reduces the subsequent analysis of whether there is an inventive step to these simplistic terms. This is how the Stanacard undertook the inventive step analysis: “The claimed invention is literally no more sophisticated than what Jenny the Operator did on Lassie, those many years ago; as defendant argues, any telephone operator given a copy of the lookup table (which is not part of the claimed invention) can route and connect the call.”23
1 Cybersource, 654 F.3d at 1371.
2 Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1277 (Fed. Cir. 2012) (holding patent claims to a computer-implemented system non-statutory as mental steps).
3 576 F. App’x 1005, 1008 (Fed. Cir. 2014), quoting Benson, 409 U.S. at 67.
4 Civ. No. 15-00131-ACK-RLP, 2015 U.S. Dist. LEXIS 131726, at *16 (D. Haw. Sep. 29, 2015).
5 Id. at *23.
6 Civ. No. 14-cv-00790-PAB-NYW, 2015 U.S. Dist. LEXIS 127679, at *2 (D.Colo. Sep. 23, 2015).
7 Id. at *12.
8 Civ. No. 13-04513, 2015 U.S. Dist. LEXIS 136458, at *6 (N.D. Cal. Oct. 6, 2015).
9 Id. at *15, quoting Cybersource, 654 F.3d at 1372.
10 Civ. No. CV-14-03009 JVS (PJWx), 2015 U.S. Dist. LEXIS 145121 (C.D. Cal. Oct. 16,2015).
11 Id. at *12
12 Id. at 14.
13 12 Civ. 5176 (CM (MHD), 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y. Nov. 18, 2015).
14 Id. at *2.
15 Id. at *10.
16 Id. 11.
17 Id. at 9
18 59 F. Supp. 3d 974 (C.D. Cal. 2014).
19 Id. at 982.
21 In re Benson, 441 F.2d. at 688 (emphasis added).
23 Stanacard, 2015 U.S. Dist. LEXIS 157345, at *10.