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...
