Can a patented invention be deemed unpatentable after the patent is granted? TS Patents v. Yahoo

A patent is an exclusive set of rights granted by a government to the inventor of an invention. In the United States to be granted a patent an inventor must file an application with the Untied States Patent and Trademark Office which demonstrates that the invention is worthy of patent protection. The United States Patent and Trademark Office will review an inventor’s patent application and determine whether or not the invention claimed in the patent application can be grant patent protection. If the United States Patent and Trademark Office grants the patent application, the inventor will be granted the exclusive right to make, use, sell and import the patented invention. If someone other than the patent owner exercises one of these exclusive right, then that can be considered patent infringement.

One of the issues that United States Patent and Trademark Office reviews in a patent application is the subject matter of the invention. A patent application must also describe an invention which may be patented. Section 101 of Title 35 of the United States Code defines the subject matter that may be patented under the Patent Act. Under § 101, the scope of patentable subject matter encompasses any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Patents cannot be granted on laws of nature, natural phenomena, and abstract ideas. If a patent application describes an invention which is not patentable, the United States Patent and Trademark Office will deny the patent application.

The world around us is constantly evolving and changing. Law is typically playing catch up with the world it exists in, patent law is no different. When computers first started becoming popular, the programs used to operate them were not considered subject matter which could be patented. Eventually an inventor convinced the United States Patent and Trademark Office that computer programs should be granted patents and the first software patent was granted in April 23, 1968. Over time software patents which pushed the limits of eligible subject mater were granted until the United States Supreme Court decision in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). The Supreme Court’s decision in Alice reduced the scope of software which was eligible for patent protection. The law didn’t change but how the law was interpreted changed.

The question then becomes what happens to software patents granted before the Alice decision which do not comply with the new interpretation of eligible subject matter?

TS PATENTS v. YAHOO, 17-CV-01721 (N.D. CA 2017) illustrates what happens when a patent is granted and then the definition of subject matter eligible for patenting is changed. TS Patents owned a portfolio of patents related to the management of computer resources in a multi user computer environment. Yahoo is a world famous internet company that operates multi user computer environments. TS Patents sued Yahoo for patent infringement and Yahoo requested that the case be dismissed because the patents were invalid in light of the Alice case. Specifically Yahoo argued that the patents were abstract ideas and not eligible subject matter for a patent. The trial court held that for the role of a computer in a computer-implemented invention to be deemed meaningful in the context of a patent eligible subject matter analysis, the invention must involve more than the performance of well-understood, routine, and conventional activities previously known to the industry. Because the trial court found that TS Patents’ inventions were abstract ideas, lacking trans-formative inventive concepts, the trial court granted the defendant’s motion to dismiss the case.

To restate the case simply, at the time the patents were filed, the inventions were considered patentable. But by the time the lawsuit was filed the definition of what can be patented had changed so the patents were no longer valid.

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