In July, a judge blocked as unconstitutional an immigration policy that the US relied on to weigh whether to detain and deport people who flag illegal or harmful online content as national security risks. In his announcement of the policy, Secretary of State Marco Rubio explained that by targeting a list of researchers—which he stood “ready and willing” to expand—the policy supposedly served to prevent foreign nationals from manipulating digital town squares and censoring Americans.
However, in his order siding with the Coalition for Independent Technology Research (CITR) and staying the policy, US District Judge James Boasberg said the US showed no evidence linking any targeted researchers to a foreign power that might be attempting to censor Americans or manipulate US public debate. Deemed too broad, the policy could sweep in seemingly any noncitizen working in content moderation, the judge said.
Jeff Kohler is asking the U.S. Supreme Court to clarify patent law after courts sided with Google to invalidate his software patent. (Photo courtesy of Jeff Kohler)
Jeff Kohler was working as a software engineer in 2005 when he started spending his nights and weekends on a side project: a web conferencing system that could record and replay live sessions. He filed for a patent without the help of a patent attorney, stuffing two CDs full of C++ source code into the application to show his work.
The patent was issued in 2010, and years later, after Kohler had joined Microsoft, the Redmond company licensed his technology for its Teams video-conferencing platform.
When YouTube later added the ability for viewers to pause, rewind, and change the playback speed of live video, Kohler saw in the feature what he considered to be his own invention. Kohler, who lives in Bellevue, Wash., sued Google for patent infringement in U.S. District Court in Seattle in April 2023.
But rather than defending the feature’s originality, Google argued that Kohler’s patent was too abstract to be eligible for patent protection. The district court agreed and dismissed the case, and the U.S. Court of Appeals for the Federal Circuit affirmed that decision.
Both decisions cited Alice Corp. v. CLS Bank International, a 2014 U.S. Supreme Court ruling that raised the bar for software patent eligibility by holding that an inventor cannot patent an “abstract idea” implemented with generic technology.
Since then, Alice has been used to invalidate thousands of software patents, and the Supreme Court has repeatedly declined to revisit the standard. Now, Kohler is asking the Supreme Court to take up his case, not to overturn Alice, but to clarify how courts should apply it.
“The patent legal system has become hostile to inventors,” Kohler said. “Because of Alice, my case got stopped before it even started.”
HowAlicechanged patent law
When Alice was handed down, patent trolls were on the rise: shadowy entities that bought vague patents to sue tech companies on shaky claims of patent infringement.
That changed under the 2014 ruling, which requires that a patent clear two hurdles: the idea cannot be “abstract,” and it must propose a sufficiently “inventive concept.” The standard has become “a crucial tool” for fighting patent trolls, in the words of the Electronic Frontier Foundation.
But critics say it’s ill-suited to software patents. Because software inventions often rely on pre-existing hardware to run the source code, courts tend to find many of these patents to be insufficiently inventive.
Jon McMichael, an IP litigation partner at Fenwick who has written about Kohler’s case, said this challenge is common in patents where inventors rely on general-purpose computers and off-the-shelf hardware to implement their ideas.
“That’s where those patent holders run into more problems,” he said.
Experts say the courts’ application of Alice has broadened to invalidate the patents of real inventors in addition to those of patent trolls. Toshiko Takenaka, a University of Washington IP law professor who is working on an academic paper about Kohler’s case, said Alice’s ability to quickly defeat bad actors comes “at the expense of the best inventors.”
“Software patents are too frequently being invalidated without giving the owner the opportunity to defend it,” Takenaka said. “This inventor provided something ordinary computers could not do, right? So therefore, in my view, this is an eligible invention.”
Some judges have raised similar concerns, including Federal Circuit Chief Judge Kimberly Moore, who authored the opinion affirming the dismissal of Kohler’s case. In a 2020 concurrence in a separate case, Moore wrote that she and her fellow judges were “unanimous in our unprecedented plea for guidance” from the Supreme Court on how to interpret Alice, which she called a “patent-killing judicial exception of our own creation.”
A quest for legal clarity
After filing his patent, Kohler spent more than 15 years at Microsoft, where he helped launch HoloLens and rose to senior director of product management for the Surface line. He later served as a product leader at Meta for its Horizon platform.
Kohler says he’s hopeful the Supreme Court will agree to hear his case because his petition takes a new approach, asking the court to clarify how to apply the Alice test rather than disputing the test entirely. His new attorney, Kathryn Jean Miller, who does not have prior patent law experience, was admitted to practice before the Supreme Court bar for this case.
“It’s me and my lawyer against the world,” Kohler said. “I never thought I would be doing something like this.”
The Supreme Court has declined more than 89 petitions related to Alice, some of which had the Solicitor General’s endorsement. The justices will decide on Sept. 28 whether to hear Kohler’s case and likely announce their decision the following week.
Kohler is hoping that other inventors will file amicus briefs, which are due by Sept. 23, to illustrate to the court the need for clarification.
“There’s a broad coalition of people who would like some sanity brought back to patent law, from small inventors and startups to former judges,” Kohler said. “That’s what I’m trying to do with my petition.”
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