For those of us that have been wondering how the Supreme Court can get its Section 101 jurisprudence back on track, the answer may be found in the brief of Microsoft Corporation, Adobe Systems Inc., and Hewlett-Packard Company as Amici Curiae, in support of affirmance.  The brief offers a reasonable path forward for the Supreme Court to refine the “abstract idea” test it rolled out in Bilski v. Kappos, 130 S. Ct. 3218 (2010).  That test may have worked to exclude Bilski’s business method innovation from patent eligibility, but unfortunately taken to its logical limit applied equally as well to exclude pretty much every other software invention as well, technological or not.

Clearly, the specter that the abstract idea exclusion to software subject matter will preclude patenting of technologically oriented software innovations in general, and even more so innovations that deal with manipulating what might be regarded as abstract information, such as inventions in the realm of artificial intelligence (e.g. IBM’s Watson(r) artificial intelligence system, or data compression algorithms underpinned by mathematical concepts), is of great concern to many of today’s technological titans, such as Microsoft, IBM, HP, Adobe and many others.

The Microsoft, Adobe and Hewlett-Packard brief echos many of the points made by IBM in its brief, and also offers a path forward for the Supreme Court to circumscribe the Bilski abstract idea test so its application so it does not pose a threat to “true” technological software invention.  This is the essence of the points made by the brief:

1.  The Court should look at each “claim as a whole” and consider all the limitations of the claim in order to decide eligibility under Section 101. “Patent eligibility should turn on whether the claim as a whole recites a specific, practical application of the idea rather than merely reciting steps inherent in the idea itself.”

2. Alice Corp is not claiming a “true” technological innovation — notwithstanding the fact that some of its claim are limited to a machine-implementation.  “While some of petitioner’s claims do refer to a computer or computer implementation, none relates to an advance in computing, software, or any other technology. Nor do the claims represent an innovation in how a computer may be employed to produce the desired result. Instead, the claims recite an abstract idea for conducting a business transaction and then add what amounts to the directive, ‘do it on a computer.’”

3.  The subject claims recite no functional relationship between the putative invention, a method for hedging risk, and the computer on which it is implemented.   “The claims all focus on a method for reducing settlement risk in financial transactions. Some claims may mention computers, but there is no connection between the method described and technological innovation; the references to computers are incidental or pretextual. The putative invention is the method, and that cannot be changed by saying, “and do it on a computer.” Far from being directed to patentable computer-implemented inventions, the patents concern unpatentable “abstract ideas” for organizing human obligations.

4. Software is an essential component of today’s technology, and it is just as deserving as patent protection as any other technology.  “Ultimately, however, software underlies the varied functionality and practical utility that computers provide. Without software, computers can do nothing useful. As a result, software is an indispensable aspect of innovation in every technological field and sector of the economy. Different software programs enable a general-purpose computer to perform new and different tasks.  ‘Such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’  In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).”

So, where would the Supreme Court leave us if it adopted this analytical framework in its decision on Alice Corp’s claims?  How can us mere mortals apply these, do I dare say, “abstract” Section 101 concepts to the real world?  I think one analogy that is easier to understand is this.  Consider the hypothetical where the “invention” is claimed as the combination of a record player and a record playing on it, wherein the record constitutes an engraving of a novel musical score on the record.  As I have pointed out in previous posts, I think most patent attorneys would agree that a novel musical composition is outside the scope of patent eligible subject matter, and that merely claiming it as part of a machine (i.e., the record playing on a record player) should not carry the music into the realm of patent eligible subject matter.  I think is pretty much what Microsoft, Adobe and Hewlett-Packard are saying in this brief — that Alice Corp’s business method innovation is the equivalent of music that is not patent eligible, and that merely “playing” this subject matter on a computer doesn’t carry it across the threshold of patent eligible subject matter.

On the other hand, were there some technological aspect to the implementation of the subject matter, like perhaps in the case of the music hypothetical, that the music is capable of performing a technological function like vibrating a beaker of chemicals to mix its content, then there may very well be patent eligibility.

At the end of the day, I think we are headed to a “technical effect” test akin to what the EPO and other jurisdictions have been applying for many years already.