“No” to Software Patents Per Se: Software is Only a Means to an End.

Guest Post by Martin Goetz

In Dennis Crouch's July 29, 2012 Patently-O essay "Ongoing Debate: Is Software Patentable?" he concludes by writing "It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable"

One of the main reasons for this long debated argument about the patentability of software is that the wrong question is being debated. The current debate is mainly on the question "Should software be Patentable? And whether software, in the form of a computer program, is patentable subject matter?" Software is just a means to an end.  The debate should be about the invention.  

If the debate was on the question "Is an invention that is patentable in hardware, equally patentable if implemented in software?" there would be much less controversy. Hardware implemented inventions have been issued for well over a hundred years, long before the advent of the digital computer.

Back in October 2011 I wrote an article for a UK publication "Should software be patentable? That's the wrong question to ask". Because of the many comments to that article, many of which were critical of my arguments, I was asked for a follow up article "Pioneer Goetz rebuts software patent critics". In these two articles I tried to stress that software (a computer program) is purely part of a proper disclosure

Article 29 of the US Patent Office's application guidelines covering "Disclosure Obligations" states "…An applicant for an invention shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention…."

Clearly, if the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)

If the Patent Office's examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents. Unfortunately, the Patent Office is bound by a plethora of confusing Supreme Court and lower courts decisions and opinions. Yet, the US Patent Office does have flexibility in how it interprets the US Supreme Court's many rulings. This gets us back to the US Patent Office and its examiners who must be better trained to recognize true inventions. Easily said, and a gigantic challenge for the US Patent Office. But, unfortunately, that is where we are today.

Postscript: Back on November 30, 2009, Patently-O published my blog "In Defense of Software Patents" in response to the editorial "Abandoning Software Patents" by Ciaran O'Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect "software ideas". In that article I commented on the Bilski Opinion as well as gave some concrete examples of software-only patents as well as hardware/software patents. That article also received hundreds of comments, many being negative, and in response in September 2010 I had a follow up article "In Defense of Software Patents – Part 2". Both those articles explained why software companies and other companies should not be denied patent protection on true inventions solely because part or all of the disclosure involves a computer and a computer program. It goes on to describe why many software companies are high technology companies that employ many highly educated people fully capable of inventing.

340 thoughts on ““No” to Software Patents Per Se: Software is Only a Means to an End.

  1. Here we go again. You have used this word abstract. What does it mean?

    E=MCC is abstract? Really? How? I know how to apply it. I know what it means.

    Actually, all of these posts has finally made me realize how to distinguish between the e= equation and Benson. The e= equation goes to characterizing a physical law that we humans believe. That is not the case in Benson.

    Adjusting a price at an exchange is abstract? Physics says it is not. Reality says it is not.

    You have merely picked a word and attached a meaning to the word to provide a circular argument.

  2. Ned: that is an invention. What does abstract mean in your sentence above?

    You would like to have this word “abstract” mean that something isn’t patentable and then you use the word circularly. There is no meaning with integrity to the word abstract as used by the SCOTUS. It is being used as a word that says we believe that this broader than someone should get and we don’t understand the technology and so we are just going to say it is abstract. We are hijacking a old world and attaching a new meaning to it.

  3. Miles: the point is that software is hardware is software. That the general purpose computer and software is just one way of realizign the invention. It coudl be all hardware. The software is then a component of a machine.

    The reason we that have engineering training are so frustrated is that many judges and people like you continue to force the new into the old.

    Respect the technology. Figure out what it is and stop trying to force an understanding based on pre-1920′s understanding and technology.

    You are like J. Stevens who says make me understand in terms of how I view the world. The answer is that you view the world wrong. Think about the pople and Galileo. You are the pope.

    Why some of the engineers get so angry is that you are so arrogant not to take the time to understand the technology.

  4. Here is Morse’s claim — just reject it under 112

    Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

  5. Hmmmm…..I don’t see anything meta physical about a process, especially one that has been applied and integrated. On the hand the essentially metaphysical question of the pre-emption of abstract ideas has no place in the objective analysis of patent law.

  6. “Patentability under 112, 102, 103 and yes 101 should be decided on the invention as claimed, not on some so-called underlying inventive concept..”

    This can’t be emphasized enough!

  7. “Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.”

    I’m not looking to “win points”. I’m looking to help you understand yourself better so that you will eventually arrive at “right-thinking” on your own. I may have worded it a bit strongly, but it pains me to see a professional lower himself as low as you do in taking on these quasi-religious “beliefs” that you espouse when patents are a rather for srs matter.

  8. That’s funny, I just got through “not allowing” something very similar to such a piece of paper not a few weeks ago.

  9. “Can you show me the portion of 101 that specifies “a process involving something physical?” ”

    It does not have to be explicit that you cannot patent meta-physical things. :(

  10. your post talking about software systems that improve the operations of machines. Such are patentable as particular machines.

    That’s not the proper legal definition of ‘particular machine.’ See Alappat.

    You also err with a false distinction of “with” as opposed to “in.” Your “with” is an attempt to ‘use’ software without a machine change as that is not what is understood in the art by the phrase “configured to.” All machines with software “configured to” have been changed from general purpose machines to particular machines. This is understood to be both a factual and legal understanding and is not up for debate.

  11. … as long as method X itself has claims that properly pass the patent eligibility tests (of course, said tests conducted on a claim as opposed to category basis).

  12. Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.

    Classic MM, otherwise known as “swagger” “Enjoy it.

  13. David, Goetz almost gets it right, in my view. The ivention is in the new result achieved. But he then fails when he asks the question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?” This makes the assumption that an a programmed computer is patentable as such, and ignores what the programmed computer is doing.

    He doesn’t assert that point in his post, but it’s easy to reach that conclusion from the direction of his argument.

    However, notice the title: “No” to Software Patents Per Se. While he should have stated it outright, I interpret his comments as: “Patents should not be allowed for “software configured to (x),” but should be categorically allowable for “a method of (x), irrespective of the implementation of that method.”

  14. Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.

    6, I think that you do have some interesting viewpoints and a valuable perspective, so I really don’t want to see you put yourself on my and others’ Malcolm Mooney list of people not worth engaging. But you’re heading there with posts like this one.

  15. Generally speaking, a process for making food is going to patent eligible. A piece of robot-readable paper comprising a recipe identical to that process is not going to be patent eligible.

    (1) Take the method of Diamond v. Diehr.

    (2) Change the method so that instead of cooking rubber, the method cooks a food product.

    (3) Implement the method as software.

    (4) Encode that software onto a computer-readable storage medium made out of paper.

    You now have a claim to a robot-readable piece of paper that causes the robot to cook food. And that’s a claim that the USPTO, CAFC, and SCOTUS would all allow, today, under the current state of the art.

  16. “I think he’s pointing to the issue with the “problematic” software/business method patents being that they are merely automating a known, manual process..”

    Well if that is the problem then nothing that is automated will pass 101, since everything that is automated is automating a known, manual process. Of course such “backwards” thinking would go well with the anti patent crowds crusade against business methods, software, and patents in general.

  17. Well, since signals and mental processes are patentable and the invention has to have a substantial utility, it’s not a stretch at all to require something physical in an invention.

    It is a “stretch” – and by that, I mean a violation of the law – to read the word “physical” into 101 as a qualification of the term “method.” It’s not there for a reason. Courts cannot arbitrarily read significant language into a statute.

    We were talking about compositions, i.e., “instructions” for computers, where the instructions are printed in on object. Or were you talking about instructions carried by signals? That’s even easier to deal with.

    You suggested that compositions are patentable if they recited a (novel + useful) specific composition of atoms – the definition of a composition.

    My reply was that methods are patentable if they recited a (novel + useful) specific sequence of steps – the definition of a method.

    I don’t believe that “a set of instructions” is patentable. I believe that a method is patentable due to the plain language of 35 USC 101. Whether that method is implemented as instructions executing on a processor, the operation of a hardware circuit, the assembly of cogs in a mechanical device, etc., is irrelevant – that’s just PHOSITA’s selection of an implementation of the method.

  18. What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

    The ability to execute, once integrated.

  19. Mr. Heller:

    I I could describe any number of different physical acts of exchanging dollars for a promise, as could you.

    But may I ask, what would be the point?

  20. Fish,  the way the SC described it in Morse.  Something that is simply a principle.  One does not need a specification because there is no need to descibe how to build or make anything.

  21. 6, Pre-emption has been appropriately fenced in by Integration, just as Benson was cabined by Diehr.

    Prometheus said: “”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, ( Combination of Steps being Integration.) were in context obvious, al­ ready in use, or purely conventional.

    And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction
    ( Conjuction being Integration ) with all of the other steps in their claimed process.” Ibid. Emphasis Added

    For further instruction on “Integration Analysis” and the limiting effects on Pre-emption see link to uspto.gov

  22. Your “exchanges dollars for a promiss,” ….

    can’t be performed entirely in one’s mind.

  23. David, your post talking about software systems that improve the operations of machines. Such are patentable as particular machines. There is or should be no issue here of eligibity.

    The problem come in when one tries to claim an abstract method using software. I would hope you would agree that an abstract method, e.g., E=MC^2, does not become eligible simply because I call for its caluclation on a GP digital computer?

  24. David, Goetz almost gets it right, in my view. The ivention is in the new result achieved. But he then fails when he asks the question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    This makes the assumption that an a programmed computer is patentable as such, and ignores what the programmed computer is doing. Thus if the programmed computer is doing something abstract, as in Benson, it still remains unpatentable.

    Thus, it is entirely irrelevant that a programmed computer is an embodiment. The invention is the new functionality of the programmed computer in some application.

    (Note, I am talking here about software and not about firmware or other permanently resident programming that can make the machine particular.)

  25. Miles: “I’m afraid the debate can’t be simply reduced to this skewed question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    Agreed. The problem is the word “in.” It should be “with.” The question makes an assumption that includes a fallacy.

  26. David, simple, if you start with something clearly eligible, data compression, then it makes no difference what form the engine that does the compression.

    To the contrary, if you start with something clearly ineligible, manipulation of risk, it makes no difference if the critical computations are performed by trained monkeys or by a programmed computer.

    The issue is exactly what Goetz said it was: what is the end, the result? If that is eligible, then the programmed computer to implement that end is patentable in that context.

    The context is everything.

  27. Hello anon:

    I thought you made a very good and insightful post. Not sure why the vocal minority, ( especially MM and Ned )did not have the courage to reply. I tried to respond honestly and to the best of my knowledge, at the time. Here is my reply post again:

    “Please be aware that not every software claim, will be automatically included as statutory subject matter under “Integration Analysis”. Neither the Court, the Office, nor myself have said such. Prometheus made it very clear that you can’t simply state a concept then in effect say apply it, by reducing it to steps. Such would be overly inclusive. The Court in Prometheus said there needs to be something more. And that something more is “integration”. The new Office Guidelines have taken us a long way in understanding the practical steps for performing Integration Analysis, while taking into account the analysis from previous cases, such as M o T and pre-emption. Those that resist reading and applying the Office Guidelines on Integration Analysis, presumably because of the “overally inclusive” fears you expressed above, do a disservice to the themselves and/or their clients.

    However, Anon. what’s equally important to understand is that “Integration Analysis” IS inclusive; which is in accord with 101’s broad patent-eligibility principles. Nothing in our Constitution, Congressional record, or Court case law has changed this and for good reason. If the laws were narrowed with the tools of overly restrictive tests like M o T or various dissection methodologies like unlimited pre-emption, or selective surgical mental steps test, the door could be slammed shut on the on rush of new technologies, ideas, and ways of doing business that our world and global economy are dependent on for existence and prosperity. Like the Court said in Bilski:

    ” a rule that broadly-phrased claims cannot constitute patentable processes could call into question our approval of Alexander Graham Bell’s famous fifth claim on “‘[t]he method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth,’” The Telephone Cases, 126 U.S. 1, 531 (1888).”

    Bell’s claims as well as Morse’s claims 1-7, would pass concept, application, and integration, while the infamous claim 8 would fail. Diehrs claims 1-11 all pass concept, application and integration but claim 11 fails M o T, as well as an unlimited Benson based pre-emption analysis. ( See Stevens Dissent in Diehr arguing claim 11 fails Benson). While Prometheus claims passed M o T but failed concept, application and integration.

    What we learn from the above is that no ones pet category or subject matter is eliminated or unduly favored under Integration, while at the same time the broad door for 101 statutory subject matter is left open. Indeed, “Integration Analysis” is truly the key to a objective approach for establishing what is 101 statutory subject matter, and as the Prometheus Court said, “determining a process is an inventive application of a concept.”

    That 101 Statutory Subject matter turns on “Integration” after concept and application is a broad stroke of genius and much needed guidance provided to us by the Court. Let us all hope that the Patent Community opens it’s eyes so that we can all benefit from the new light.

  28. E=MC^2 is abstract.
     
    Communicating at a distance using EM is abstract.
     
    Exchanging contracts to balance risk is abstract.
     
    Adjusting price in exchange for a promise is abstract.
     
    1+1=2 is abstract.
     
    The statutes require one to describe how to make the claimed invention.  How do you make 1 + 1 = 2?
     

     

  29. We have seen two guests post follow ups to Dennis’s post on software patent eligibility.

    One, hopelessly misguided (Prof. Sheppard), the other much closer (Mr. Goetz – who is obviously a bit more knowledgeable about the subject matter than the first guest poster).

    However, my post from Dennis’ original thread still hits the mark. I repeat it here for the benefit of all.

    And a note on intellectual honesty: only 101 Integration Expert had the balls enough to comment back on my post. Very telling!

    Without further ado…:

    The real answer to the question of whether software is patent eligible is yes.

    Software is patent eligible as a general category because software is a component to a machine, made by man to have a specific and credible utility. That is what software is.

    But like ANY 101 question, the answer at the category level is NOT ENOUGH.

    It NEVER is.

    What this boils down to is that the question is not being properly asked.

    One cannot ask a 101 question at the category level and expect a 101 answer that applies to all individual claims.

    This is because the judicial exceptions must be looked at at the individual claim level.

    It is a mistake often repeated (even by those who should know better – ahem, Dennis) to conflate the category question and the individual claim question.

    While creating multi-hundred post threads is nice, engendering continued conflation and confusion should be avoided.

    The real question is: Is any individual software claim patent eligible?

    The answer is (the great and typical legal answer): it depends.

    At a base level, the rebuttable presumption is that a software claim is patent eligible. But the presumption must be checked at the individual claim level. Just like any process or method (be it a business method or a medical method – let’s leave the crusades at the door, Ned) or just like any composition of matter (be it different in kind from a Product of Nature or not, let’s not try to separate one backyard from another, Malcolm), the manufacture of a software claim must be individually screened against the judicial exceptions, and not every software claim will pass (let’s not be overally inclusive, 101 Integration Expert.)

    If you ask the wrong questions, you cannot get the right answers.

  30. suckie Your entire “recipe” argument was shown to be a fallacy not once or twice, but repeatedly over the course of two years when you trotted it out every few months by Noise Above Law.

    Gotta love the revisionist history, suckie. You can resurrect your suckpuppets, you know. Nobody except you clings to this imaginary fantasy of yours regarding any “fallacy.” Why not just spout some blather about “integration” and take a dump in the punchbowl like you usually do?

  31. 6,

    I think you will agree (everyone except the overly self indulgent has) that the judicial exceptions apply no matter which enumerated category a claim is written to. Further, I am sure that you are aware that the Supreme court has explicitly stated that 101 is not to be used as a denier of patent eligibility to entire categories of invention.

    With this understanding, even given your far too broad exemption doctrine (which was specifically warned Against in Prometheus), even you must understand that trying to categorically deny patent eligibility based on category or type (rather than employing the exceptions at the individual claim level) runs afoul of what the Courts have directed.

  32. MM,

    You ask others to grow up yet insist on plying tricks long discredited. Your entire “recipe” argument was shown to be a fallacy not once or twice, but repeatedly over the course of two years when you trotted it out every few months by Noise Above Law.

    You turned to blind ignorance (the famous Sam Hill comments) as you were shown the proper legal understanding of the ability to claim “writing” in patent applications due to the proven functionally related exception.

    Time for you to grow up and stop wasting everyone’s time on stale and disproven arguments.

  33. DStein

    Modern technology is inherently and increasingly interdisciplinary. Scientists and technologists are constantly taking ideas from one field of endeavor, and using them in different contexts. There is no rationale for confining an invention to a specific context – or of defining the breadth of that context.

    Equally true of science at any point in history.

    older practitioners (including the patent meddlers on the Supreme Court) endlessly categorize inventions as “the electrical arts,” “the software arts,” “the chemical arts,” etc., while younger practitioners consider these categories quaint anachronisms.

    I’m pretty sure the Patent Everything trolls who hang out here are older than the rest of us.

  34. DavidStein Method of making food are patentable.

    I never asserted otherwise. You need to step up your game, David. Reading comprehension.

    Generally speaking, a process for making food is going to patent eligible. A piece of robot-readable paper comprising a recipe identical to that process is not going to be patent eligible.

    Do you understand, David? Do you disagree that this is (at least) the current state of the law? Do you believe that the law should be changed to allow the patenting of pieces of robot-readable paper with instructions for making new hamburgers? If so, simply recognize that you are in the very very tiny minority of Patent True Believers. There is no reason to take such people seriously.

    Likewise, there is no reason to take people seriously who can’t have a conversation on this subject and not readily comprehend the issues being discussed.

    So grow up, David. You and Marty both.

  35. Can you show me the portion of 101 that specifies “a process involving something physical?

    Well, since signals and mental processes are patentable and the invention has to have a substantial utility, it’s not a stretch at all to require something physical in an invention.

    by the same token, a method is eligible if it provides a set of steps that, performed together, achieve a useful result that is objectively distinct from prior art.

    We were talking about compositions, i.e., “instructions” for computers, where the instructions are printed in on object. Or were you talking about instructions carried by signals? That’s even easier to deal with.

    If you want to change the subject, go ahead. I understand that tactic is very useful in this context. Our trolls do it all the time.

  36. What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

    Pretend for a brief moment that 6 is correct and that the full extent of any character involved does not get by the exceptions to the printed matter doctrine (some, no wait, ANY functional relationship). How then do we explain the FACT that software does work to effect a change in a machine? That the FACT that a new machine is created from a general purpose machine when that software configures the base machine and enables that base machine to do something that it could not do if the software did not configure the machine?

    Someone once made a challenge on this blog to explain this simple fact pattern, and no one ever has. I invite those that once again ignore this simple fact to explain how this change can take place in the absence of some functional relationship.

    As someone also said, what you don’t say speaks volumes and when you don’t say it yells so loudly I cannot hear anything else you say. Explain (or not), what you say (or don’t), you have the floor.

  37. “When confronted with the question of whether “software was just math,”"

    When, precisely, did that come up in Diehr? Iirc, they were quite explicit that there was more to the claims than math, indeed, there were temperature measurements and auto-opening explicitly recited.

  38. “according to the”

    law.

    “That is the type of specific principle that I’m asking you about.”

    I know you want the preemption doctrine to be all about some certain “specific principle” other than the only principle it is about. It is about only one principle bro, ensuring that you do not, either straight up, or by hook or crook, patent on judicially excepted subject matter. I know that you feel like it is hard to determine what is judicially exempt subject matter, but that is on you bro. Some of us are not afflicted with this problem. And perhaps someday, you’ll get your mind right. Perhaps you are asking for assistance in getting your mind right, but I’m afraid that I cannot offer further assistance. If you require in depth personal, and perhaps in person, tutoring then I’m afraid I’ll have to charge.

  39. Excuse me for the question: I understand the objection to software patents being unpatentable subject matter as they are some form of natural algorithm. However, I wonder if anyone, during their trips in the forest, saw the famous spreadsheet tree?

    In short – software is like any other invention. Not means nor hardware bound. Software inventions ARE INVENTIONS, nothing short of that! They serve exactly what the purpose of patents should have been before it has been stolen by the US congress, including the newest attempt: To PROMOTE the useful arts.

    Shalom

  40. Thanks David for clearing that up for us!

    Your definition of abstract is better than the judicially created one which means we will just pick whatever we want and exclude large swaths of patentable subject against the congress’s intent.

    Abstract boys and girls has a clear meaning in engineering! Read my post above. We are taught to find the right level of abstractness and work there. You need only know how to walk up and down the abstraction ladder.

    You see my little paid monkey posters, the problem you are having in excluding information processing algorithms is that you are mischaracterizing reality. That never ends well. (Ned you are a dope. and a dishonest monkey.)

  41. Ned, what does abstract mean? You openly admit that this is a legal term that has some strange definition approxiately meaning “too broad.”

    Abstract in engineering is encouraged. As long as one can walk up and down the abstract ladder. That is the goal in engineering. An abstract representation of solving a problem means that you can walk up and down the abstraction layer and solve all the problems under it.
    That is a good thing that should be elible for patentaility.

    You are an intellectually dishonest person that plays off the ignorance of the public and judges. What I said above is what I as taught at the top engineeringn schools in this country.

  42. While you’re all here crying about Software, I am inventing something that will be worth so much to the USA it may become a “Secret”. And will be worth wayyyyyyyyyyyyyyyy more than a Billllllllllllllllionnnnnnnnnnnnnnn Dollars. It will be the answer to many woes.

  43. “Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter? ”

    Hello David:

    I would say Prometheus “Integration Analysis” takes us a long way to answering all your questions. The best way to demonstrate this is to use Ultramercial’s claims as an example of how to apply the analysis, since those claims are software and computer related. And the Court remanded the case back to the CAFC in view of Prometheus, integration.

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency” Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Flook like Bilski only claimed math equations and thus claimed abstract ideas. The steps of the process did not “integrate” the concept into the process as a whole.

    So the question before the CAFC is as follows:
    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no.

    The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr and Flook:
    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.

    
1. offering a service


    2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately.

    See Prometheus explaining why the claims as a whole are not fully integrated:
    “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of conventional transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC should hold Ultramercials claims as statutory subject matter because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.

  44. The problem is that rich people do not like this answer so they keep searching for some means of distinguishing mathematical algorithms from non mathematical algorithms.

    Diamond v. Diehr: When confronted with the question of whether “software was just math,” the CCPA and Supreme Court ruled that a functional result achieved by configuring a computer to apply math was not “just math,” and therefore patentable.

    The proposition that “software is just math” has been squarely presented to the CAFC and Supreme Court in every major 35 USC 101 case since then, and they have consistently and uniformly rejected that blanket conclusion.

    The judges were not “confused” into answering this question in any particular way. They were asked directly to adopt your proposition, and they have squarely rejected it every time. No “rich people” or “word games” interfered with their decisions.

  45. I would go for that only if the patent on the code superceded the copyright on the code, so that it would come fully and completely into the public domain on expiration of the patent. The law would have to be written in such a way that Congress cannot continually increase the term so as to achieve an eternal patent.

  46. The facts are that software is mathematics and under section 101 it cannot be patented. The problem is that rich people do not like this answer so they keep searching for some means of distinguishing mathematical algorithms from non mathematical algorithms. Since there is no such thing as non-mathematical algorithms, these attempts always lead to self contradiction.

    Until the rich people stop playing word games and trying to confuse judges into ruling that black is white and white is black there can be no progress.

  47. “They are not the invention. ”

    That’s your tard-view. Us people in real life know better. As posted up thread by someone, there is a difference between what is being described and in how it is being described. Although this is wholly lost upon you because you are a patent lawl ta rd. And you always will be. It is a problem with your world-view. And until it is cured, you will forever wonder why those cr azy courts are picking on your software patentlols.

    “The invention is a particular solution to a particular problem.”

    Argue that in a case before me and your patent falls even faster to 101 brosensky. I recommend against such nonsense. Stick to the party line and maybe the CAFC will succeed in bailing you out for another decade.

    “His point is that the invention can be implemented many ways – software, electrical hardware, a hybrid, mechanical parts, whatever”

    And his point is quite irrelevant to the law. Some of those implementations might be patent eligible and others may not be, all depending on how he, subjectively, chooses to claim them.

    “The invention is the functional concept taught by the specification. ”

    Write that “functional concept” down for me in a given app and I’ll throw it back in your face via a 101 so fast it’ll make your head spin. Just as all examiners should be currently. Trust me, stick to the party line, deviate just a little and you lose big time.

    “The author’s point is that discussions of embodiments are part of the “best mode,” not part of “the invention.”"

    Perhaps you are right, he is a tar d after all. :( Or perhaps he really didn’t have a point, he simply wanted to blather like he always does about how he’s just “misunderstood” and that’s why all the kids are picking on him and his software.

  48. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes.

    And by the same token, a method is eligible if it provides a set of steps that, performed together, achieve a useful result that is objectively distinct from prior art.

    For example: “A method of processing data to achieve [ desirable result], the method comprising: manipulating the data in [specific way].”

    Or even better: “the method comprising: executing instructions on a processor that cause the processor to manipulate the data in [specific way].”

    Oh, you don’t agree? It has to be “physical?” Can you show me the portion of 101 that specifies “a process involving something physical?” Or does it just say, “a process?”

  49. Nothing, your claim language will do it. Or else your FPGA will stand or fall with your firmware.

    …according to the subjective, artificial, and unsubstantiated criteria that you have drawn up in your head.

    The theory of gravity is a specific principle. If you drop a ball of a certain mass from a certain height on the planet Earth, barring other conditions like wind, I say that it will fall with a certain acceleration. This is just what I think *should* happen. We cannot reasonably disagree here. The theory specifies exactly what will happen, every time, unless other conditions intervene.

    The requirement of 37 CFR 1.72 that the abstract must not exceed 150 words is not reasonably open to debate.

    The definition of a “composition of matter” in 35 USC 101 is pretty well-settled. I don’t recall any recent debate about whether something does or does not qualify as a “composition of matter.”

    That is the type of specific principle that I’m asking you about. The words “abstract” and “preemption” do not state anything about the difference between a programmed firmware chip and an FPGA.

  50. It’s pretty easy. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes.

    You forgot one key word: effectively.

    If not effectively different, the slight structural differences may not be enough.

  51. 6 Not to mention my preaching on exactly the correct meaning of the infamous paragraph from Diehr supposedly about dissection.

    Get off my lawn, 6.

  52. “I have two questions:”

    So when I answer these two questions will you be good to go and not have to ask anyone about this ever again?

    But before we commence, let me remind you that where I’m really drawing the line is in the way you draft these types of claims.

    “Do you understand how FPGAs and firmware operate, and the degree of overlap between these technologies?”

    Yes, and “there is 0 overlap between these technologies save for their FUNCTIONS”.

    “Do you understand that you can configure an FPGA as a general-purpose processor and an instruction store feeding instructions into it – that such a solution, although a 100% FPGA-based solution, operates identically to traditional firmware?”

    Yes, depending on your definition of “operates”. I will presume you mean simply “functions”. Obviously an FPGA and firmware on a gp comp system “operate” differently though they may well both achieve the same “function”.

    “What is the specific principle of mathematics or the specific section of 35 USC 101 that differentiates firmware from an FPGA?”

    Nothing, your claim language will do it. Or else your FPGA will stand or fall with your firmware. If you so choose to draft your FPGA claim in such a way as to preempt all use of your algorithm on all FPGA configs that just so happen to function in x manner, rather than just one (or perhaps a small few species) physical FPGA config that is specifically set forth in your spec, it will go right on down with the firmware claim. Presuming you draft your firmware claim in standard format.

    “Do you have anything more than the single word “abstract,” and your subjective view of what that means?”

    Yes, in a given app I will have the claim language, and a construction thereof, along with an analysis of what is covered by such, and a comparison to the judicially exempt subject matter I believe to be an issue.

    You good to go Davie?

  53. Yeah, it was “an idea which is abstract”. :)

    Or better still, anything that “isn’t concrete.” :)

    But wait! We have a clear definition in 37 CFR 1.72: “Abstract” is defined as “A brief summary of the technical disclosure in the specification, commencing on a separate sheet, preferably following the claims, under the heading ‘Abstract’ or ‘Abstract of the Disclosure,’ not exceeding 150 characters in length.”

    It follows that everything in the patent application outside of the “abstract” is not “abstract.” How silly of us to have missed this! Case closed.

  54. Because software patent claims aren’t tied to a particular implementation they have an uncanny ability to morph and cover systems and computers that were not in the possession of the inventor at the time.

    Modern technology is inherently and increasingly interdisciplinary. Scientists and technologists are constantly taking ideas from one field of endeavor, and using them in different contexts. There is no rationale for confining an invention to a specific context – or of defining the breadth of that context.

    Perhaps this is the greatest conceptual divide in patent law: viewing technology either as a set of discrete, well-defined specialties, or as a continuum of knowledge. This seems correlated with age: older practitioners (including the patent meddlers on the Supreme Court) endlessly categorize inventions as “the electrical arts,” “the software arts,” “the chemical arts,” etc., while younger practitioners consider these categories quaint anachronisms.

  55. “Can you identify a principle of law that specifies where the line must be drawn?”

    Yes. Preemption.

    I didn’t realize just how simple of an answer you were looking for. My bad.

    “our “principle” is your gut instinct, backed with a vague reference to math and a vague reference to 101. ”

    No, it is not. It is my claim construction backed by an analysis of what is encompassed thereby which is then compared to all abstract ideas and other judicially exempt subject matter in the universe.

  56. DavidStein:

    Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter?

    It’s pretty easy. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes. If they are not properly claimed, they are either ineligible as abstractions or indefinite. Take your pick.

    Does any of this sound famililar? It should. And the eventual outcome is going to be even more familiar.

  57. “I’m not suggesting the hammer was the pinnacle of innovation.”

    Mr. Miles,

    With all due respect you ARE suggesting, rather strongly, that a hammer is more deserving of being called an invention than a line of code.

    I would simply like to know, in your opinion, why the hammer is more deserving than the line of code?

    Now if you are equating, painting, drawing, and perhaps beating sticks together to make a rhythm, ( cave man music), with designing a functioning line of code, then you are making the mistake of confusing liberal arts, with useful arts.

    Liberal art such your caveman creations are an entirely subjective process from beginning to end. Liberal Arts are not eligible for patents.

    Designing a functioning line of code, A.K.A. Software, is an objective process that when executed produces a concrete guaranteed result every time.

    It does not matter what you think of the software. Whether you think it is complex or easy, brilliant or junk. Whether you see it as worth millions or worthless. When executed, software produces a concrete guaranteed result every time.

    Thus software is a useful art worthy of patent, as are business methods

  58. All embodiments encompassed within “the invention” are “the invention” just as much as any other embodiment or description thereof is.

    They are part of the specification, as an explanation of one possible application of the invention. They are not the invention. The invention is a particular solution to a particular problem.

    If that be his argument, which I can find no indication of in his post…

    How about this: “If the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)”

    His point is that the invention can be implemented many ways – software, electrical hardware, a hybrid, mechanical parts, whatever. These are all just examples of the “best mode” – examples of embodiments of the invention.

    In addition to describing the invention (with enough specificity to satisfy the written description requirement), a patent disclosure has many other, different elements:

    • A title
    • Enabling subject matter (i.e., providing details to enable PHOSITA to use the invention)
    • Descriptions of the attached figures
    • A best mode of implementing the invention
    • A declaration by the inventors
    • Cross-references to related applications
    • An Information Disclosure Statement identifying related references
    • Assigment documents

    …etc.

    These are all part of the disclosure, but they are not part of “the invention.” The invention is the functional concept taught by the specification. The other parts support the disclosure of the invention and satisfy other requirements of the patent process.

    The author’s point is that discussions of embodiments are part of the “best mode,” not part of “the invention.”

  59. “has never learned to examine software patents properly”

    What part of examination of software patents is done improperly NWPA? Other than failing to invalidate pretty much all of them under 101?

    “what the software patent really are.”

    What are they really?

    “If the courts treated software as its true character”

    What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

  60. Another big difference is that software is nothing but a collection of symbols being processed just like you read a recipe. Until you actively interact with external elements (such as knives, forks, bowels) all you are doing is scanning symbols.

    A hammer is a collection of atoms. Even if it has a novel invention – e.g., a particular claw shape that removes nails well – the hammer and claw just sit there, all on their own, until used for the specified purpose.

    A chemical invention is a recitation of a structure of atoms. The invention isn’t even the atoms themselves – it’s just the concept of arranging atoms in a way that provides some functionality in some chemical environment. You still need a human to make the chemical and to introduce it in the specified environment.

    A hardware design is just the concept of an arrangement of circuit components. The concept of the arrangement does nothing – it isn’t even physical. Even after it’s translated into a piece of hardware, the hardware itself also does nothing on its own – it sits there on the shelf, inert, unless a user positions it in a device, configures it, and arranges a supply of power.

    By the same token – even if software instructions are “just symbols,” a user can provide those software instructions to a processor that’s capable of executing them to achieve a functional result. It is “just symbols” in the same way that a hardware patent is “just a conceptual arrangement of parts,” that a chemical patent is “just a conceptual arrangement of atoms,” and that a hammer is “just the concept of a physical structure.” The action of implementing of these concepts in the physical world provides an embodiment, but the invention is the concept motivating that action.

    That’s why we call it intellectual property – it’s not about the actual hammer, drug, circuit, or software, but the concept embodied by it.

  61. “A line of code is not a hammer.

    A hammer is an article of manufacture. A line of code is a portion of a process. Of course they are different, but both are specified as statutory subject matter under 35 U.S.C. 101.”

    Agreed!

  62. I should also note bad, that I’ve personally done more meaningful patent work from my intertubes in less than 5 years than you will ever do, in your life. Late 2006/early 2007, I take to the intertubes to preach on 103. KSR decided not long thereafter. My view of the law is established as what the law is, compared to the old guard’s TSM views (which notably were applied by the lower court and were the standard view of pretty much all patent professionals at the time).

    Late 2007/early 2008 I take to the interwebs to preach on 112 2nd being misapplied and B claims. Miyazaki is handed down, and B claims begin their slow demise as understanding starts to permeate the system where before many lawl tards did not understand things well enough to argue them properly. I preach on official notice at the same time, the office adopts that as the official view later that year. Also around that time I preach on the claims and con rules, later only to be stymied by a weak willed director. I further preach, before the In re Bilski decision, that preemption is the only thing that the law requires as criteria for what is patent eligible and what is not. Later, that decision comes out and lo and behold, preemption rules the day. That point later made more explicit in Prom.

    Round abouts of 2009 I preach on the proper interpretation of 112 1st, in direct contradiction to what many tar d attorneys spout off on these boards, and irl cases. Ariad is handed down settling yet another dispute in my favor.

    That is but a small sampling. But it is no accident that I looked over Diehr’s claims and how the references were applied to them at the PTO prior to the USSC noting such and then the office using them as an example in their guidelines. Not to mention my preaching on exactly the correct meaning of the infamous paragraph from Diehr supposedly about dissection.

    I continue to this day preaching my new school patent religion to fight you old ta rds that have lost your way.

    Influential people lurk this board, and the fact that on nearly every issue that I meaningfully address the law is suddenly that way a little bit later should not be lost upon you.

    Be clear, I get substantial lulz from wrecking your old school nonsensical views of the law. And presenting how to do so clearly and succinctly for interested parties that might just so happen to be listening.

  63. Mr. Heller, commerce and industry is diverse and there is no one desirable model. As for as patent claims go you can pick and choose virtually any process that is useful for business. Certainly the most famous business method to reach the Supreme Court, has to no doubt be, Diehr’s process of curing synthetic rubber. As for as your notion that, ” BMs, being generally abstract”, that is quite impossible. If you disagree, show me one business process you can perform entirely in your mind?

    :: Silence::

  64. 6, my question was not: “Can you draw a line in the sand?” Sure – anyone can. Draw it between (I) and (J). Done.

    My question was: Can you identify a principle of law that specifies where the line must be drawn? Your “principle” is your gut instinct, backed with a vague reference to math and a vague reference to 101. You have failed to understand the question.

    Let’s look at the line that you chose: “firmware storing instructions” = bad; “FPGA configured to implement instructions” = good. I have two questions:

    1. Do you understand how FPGAs and firmware operate, and the degree of overlap between these technologies? Do you understand that you can configure an FPGA as a general-purpose processor and an instruction store feeding instructions into it – that such a solution, although a 100% FPGA-based solution, operates identically to traditional firmware?
    2. What is the specific principle of mathematics or the specific section of 35 USC 101 that differentiates firmware from an FPGA? Do you have anything more than the single word “abstract,” and your subjective view of what that means?
  65. 1. It stops being math when the hardware takes over.

    Yes, they have NEARLY the equivalent operation.

    A big difference is that when hardware is operated out of its range it has a strong tendency to melt.

    Another big difference is that software is nothing but a collection of symbols being processed just like you read a recipe. Until you actively interact with external elements (such as knives, forks, bowels) all you are doing is scanning symbols.

    When you add the physical interfaces, (hands, knives, forks, bowels..) you are still doing nothing with the recipe but scanning it… and then interpreting what it specifies.

    2. It is ineligible when the “invention” is composed of nothing but symbols. And that is all a program is. Abstract symbols that are read from a storage device.

  66. That’s why we say “computer executable instructions” instead of “computer readable instructions”.

    LOL.

  67. Would I be redundant in asking that same question? Or should I note that Mr. Morgan has engaged in such drive-by “an expert somewhere believes” attempted substantiations?

    What are the odds that a person will be identified so that the source can be vetted?

    What are the odds that even if a person is identified, the vetting will reveal a person exhibiting the same level of “scholarship” as the recent guest professor?

  68. If we were to require that the actual software “implementation” be disclosed in the patent, and then limited the claim just to that one “implementation” instead of granting all “implementations” as is accomplished through the issuing of functionally recited claims then people would probably have no problem with software being patented.

    I wouldn’t. Much shorter term than copyright. The only “deleterious effect” would be on the skimmers who profit off patent gambling.

  69. “a drop down menu on a display”

    Because nobody ever imagined that it would be useful to keep information hidden until a user of the information desired to access it. At least nobody ever imagined that until computers were invented. When was that? 1993 according to the Patentblogtroll Alternate Reality Calendar.

  70. DStein A line of code is a portion of a process.

    Exactly like a line in a robot-readable cookbook!!! Those lines should be patentable.

    Right, David?

    Oh, wait. There’s an important difference between an instruction for cooking read by a machine and an instruction for determining the value of a “real-time reflationary hedge fund sub-index.” Maybe David can tell us what important difference is.

    [grabs popcorn]

  71. Perhaps the bullet and gun example should be discussed again? (that seemed to shoot dead the components cannot be patent eligible discussion)

  72. What “structure” does Lemley want practitioners to disclose for software inventions?

    On occasion, I’ve filed cases claiming a specific software architecture – e.g., a first component configured to perform task A, a second component configured to perform task B, a third component configured to perform some type of management of the first two components…

    In some cases, the architecture matters; it can enable some advantages that other architectures can’t – e.g., scalability, efficiency, granularity, or a particular security policy.

    Consider the model of the web. You typically have a webserver answering requests by providing resources, and a device running a web browser and acting as a client to issue requests. That’s a specific, complex, and established architecture, with lots of conventions established around it: the general roles of server and client; server-side vs. client-side processing and APIs; server-side vs. client-side caching; routing; processing distribution; security considerations, like cross-domain security policy…

    Sometimes, the software architecture within a server or a client exhibits a disadvantage. It’s not just important to recognize and address the disadvantage, but where in the architecture you do it. For example:

    • Does a software component run inside the virtual machine of the web browser, or outside of it?
    • Does it communicate directly with hardware, or the operating system, with the virtual machine provided by the web browser, or within a further emulation layer (e.g., a Java VM running in the browser?)
    • On which layer of the OSI network model does it communicate?
    • Does it live within a domain isolation construct, or not? Can it talk directly to other processes within the browser, or does it send such requests through the browser?
    • Is it stored in the browser cache, or in the native file system, or does it only live in volatile memory?

    …etc. These are all questions of architecture, and often, they matter. And in rare cases, the architectural variation IS the invention – it provides a specific and important functional advantage.

    I don’t expect many people to understand much of this. I discovered an appreciation for software architecture – of the fragility and limitations that a software architecture may exhibit, and the types of solutions that cleverly that alleviate them – after studying and designing many APIs, and getting a feel for the craftsmanship involved in good software architectural design. But the subtlety of this scenario does not diminish its significance or importance.

  73. ” and cover systems and computers that were not in the possession of the inventor at the time”

    As if the “inventor” “possessed” anything at the time of “invention”.

  74. “While important to discuss in the disclosure, they are not “the invention.”"

    Sure they are, all embodiments encompassed within “the invention” are “the invention” just as much as any other embodiment or description thereof is. This is why prior art getting only one small species of a huge generic claim gets the whole thing on anticipation.

    You attorneytards routinely confuse “the invention” with “how we lawlta rds worded what the invention is” aka the “claimed invention”.

    “because of how they might be embodied is illogical and futile.”

    If that be his argument, which I can find no indication of in his post, then upon what does he base this absurd allegation upon?

  75. Why make it so complicated there stein? But here:

    “A general description of the data processing algorithm
    A configuration of an artificial neural network that performs the algorithm
    Pseudocode instructions suggesting a specific process
    Source code in any given language
    A ready-to-run script
    An executable binary encoded as computer-readable machine instructions
    The script or binary transmitted in a “nontangible medium,” i.e., a signal
    The script or binary stored in volatile memory (e.g., RAM)
    The script or binary stored in general-purpose nonvolatile memory (i.e., the classic computer-readable medium)
    The script or binary stored in nonvolatile firmware”

    ^Claims to that will be abstract and/or preempting that which is abstract. There may be a way of drafting such so that it would not be abstract, but the patent would be worthless.

    “An FPGA encoding the algorithm
    A circuit diagram of a hardware circuit implementing the algorithm
    A photolithography mask usable to create a hardware circuit implementing the algorithm
    An actual hardware circuit implementing the algorithm”

    All good to go, depending on how claimed, but usually would be good to go. It is possible for you to overdraft on any of these and also preempt the “math”, you would probably accomplish this through overuse of functional language.

    “then where along this spectrum does it stop being “just math?”

    The question is not where it stops being “just math”, although the answer to that is probably just after the first listed species. The question is where you stopped preempting the math. And it is precisely where I just showed you, so long as you follow ordinary drafting practices. Because you will necessarily try to get the whole of your “math” or the whole of the “algorithm” limited only to whichever of the 2nd through 9th fields of use. This is through no fault of anything other than standard drafting practices so that you will end up with a claim worth something.

    “If all of these forms of the algorithm express the same functional logic, then why should it matter how that logic is carried out?”

    Because of the law. Although the law is the way it is to prevent you from broadly preempting on the math.

    “Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter?”

    Already told you. And I presume standard drafting through the whole thing. If you deviate from standard drafting on any of them, then any of them could possibly become patent eligible or ineligible.

    “And what is the logical basis for drawing the line there – what section of 35 USC or 37 CFR, or what scientific or logical principle of physics or computing, supports drawing the line there?”

    35 USC 101. Preemption.

    “I usually don’t get an answer to either question.”

    Of course not, because you have to study the subject as if it is your life’s work to really understand it and be able to discuss it conversationally. Probably 1% of patent professionals have done this while 90% of them subjectively think they have when they in fact have not.

    Now that you have your answer, do the world a favor and stop asking that question of people who have no chance to understand w t f you’re talking about.

  76. The fascinating–but likely fallacious–aspect of Goetz’ post is the notion that *the patent itself* can be analogized to software, therefore software *is* invention.

    To which parts of Goetz’ post are you referring? The parts that I read (i.e., the entirety) argued that software, like hardware, was an element of the disclosure – specifically, the “best mode” of the disclosure. Software is one embodiment of the invention; hardware is another; and a hardware/software hybrid is a third. While important to discuss in the disclosure, they are not “the invention.”

    You also mentioned “a hammer.” “A hammer” may embody an invention, but is not an invention itself. Here’s an invention: “A specific structural concept for a claw having a certain structure that is advantageous for pulling nails.” That may be embodied in a hammer – or as a separate manufacturable part that’s attachable to a hammer – or as a design schematic for a manufacturable part… etc. The “invention” is the structural concept that, when embodied in some form, conveys a certain functionality.

    Goetz’s argument is that software is simply one type of embodiment of an invention; that other types are available and fungible; and that attempts to exclude certain inventions because of how they might be embodied is illogical and futile.

  77. A line of code is not a hammer.

    A hammer is an article of manufacture. A line of code is a portion of a process. Of course they are different, but both are specified as statutory subject matter under 35 U.S.C. 101.

  78. People with vested interests do not want to understand that hardware is equivalent to firmware (which is just software in a specified location) and is equivalent to software.

    That’s always the argument that I present: for most computer-related techniques, software and hardware are fungible. That principle goes back all the way to the concept of a Turing machine – the very foundation of computing. Yet, the same people who are up in arms about the patentability of software as “just math” have no problem with the patentability of hardware doing the exact same thing.

    To drive home this point, I raise the following spectrum. Take any algorithm of choice – compression, encryption, image processing, whatever – and then consider all of these embodiments of the same logic:

    • A general description of the data processing algorithm

    • A configuration of an artificial neural network that performs the algorithm
    • Pseudocode instructions suggesting a specific process
    • Source code in any given language
    • A ready-to-run script
    • An executable binary encoded as computer-readable machine instructions
    • The script or binary transmitted in a “nontangible medium,” i.e., a signal
    • The script or binary stored in volatile memory (e.g., RAM)
    • The script or binary stored in general-purpose nonvolatile memory (i.e., the classic computer-readable medium)
    • The script or binary stored in nonvolatile firmware
    • An FPGA encoding the algorithm
    • A circuit diagram of a hardware circuit implementing the algorithm
    • A photolithography mask usable to create a hardware circuit implementing the algorithm
    • An actual hardware circuit implementing the algorithm

    (and for fun, we can even extend this to more exotic types of computers, such as…)

    • A quantum computer configured to perform the algorithm

    • A DNA sequence as part of a DNA-based computer configured to perform the algorithm in vitro
    • A biological composition of matter (e.g., a slime mold computer) configured to perform the algorithm

    Given this spectrum, I ask two questions:

    1. If you posit that the stuff at the top is “abstract” or “just math,” then where along this spectrum does it stop being “just math?” If all of these forms of the algorithm express the same functional logic, then why should it matter how that logic is carried out?

    2. Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter? And what is the logical basis for drawing the line there – what section of 35 USC or 37 CFR, or what scientific or logical principle of physics or computing, supports drawing the line there? Is there any logical basis beyond, “the stuff in this range is my industry and I don’t want patents there?”

    I usually don’t get an answer to either question.

  79. Also, has the Patent Office set forth a definition of “abstract idea” which examiners can use to reject claims?

  80. But now prosecution is not compact, because examiners too frequently just reject under 101, not wanting to also go to the time-consuming task of searching and rejecting under 102/103.

  81. Mr. BJ, I know what FPGAs and ASICs are.  They are quite patentable.  They can be programmed to do useful things.  So what?

    Regarding BMs, they generally are abstract.  If you disagree, provide one exemplary BM that is not.

  82. Night, all we are showing you is that your statements include subject matter clearly ineligible.  Simply calculating numbers without using them for anything is not useful.  It fails the fundamental of all utility tests: substantial utility.

  83. Fish, no.

    Take any application that does anything eligible.  Substitute a programmed computer for circuits, no problemo.  The other way works just as well.

    Take any application that is doing something ineligible, i.e., changing the bid price based upon a formula.  Automating that process with a computer does not transform the process into something eligible.  See, he condemnation of State Street Bank by both the Federal Circuit and the Supreme Court.

  84. Fish, start?  

    The problem is that we have compact prosecution.

    What I think will happen, though, is that the 101 problems will disappear as the applicant amends to overcome 102/103/112.

  85. “At least one IP Professor thinks a Beauregard claim violates long established case law against “written matter” claims.”

    And who is that, Paul?

  86. It’s just a ridiculous twist of form over substance.

    Yes, that’s why it didn’t work for Benson. Or Prometheus.

  87. Show me a hammer that can pound a nail in your wall without some machine (like a person) to operate the hammer. A hammer is just as useless as software without a machine to operate it.

  88. I just say the instructions are encoded on an ASIC in one embodiment. Yes, such an ASIC would require multiple chips as big as your desk, but that doesn’t mean that it can’t easily be done. There’s your structure.

    It’s just a ridiculous twist of form over substance.

    All “software inventions” are abstract ideas.
    All chem/bio “inventions” are natural phenomena.
    All “mechanical inventions” are laws of nature (and obvious to try).

    Did I miss any?

  89. “Taking a complicated known thing and painting it blue doesn’t get you past 103, nor should it.”

    Confusion functional and non-functional again?

  90. “Night, so long as you focus on irrelevancies you are never going to get [inducted into the Ned Flanders, Mad Max, 6, and babo-on club].”

    There … fixed it for you.

  91. “Lemley says that the specficiation of software conveys no structure.”

    Lemley got his degree in economics and political science. What do you expect? Granted, a claim involving software (e.g., the method steps performed by a software) can cover a wide variety of different structures. However, there is nothing wrong with a broad claim so long as it doesn’t impinge upon the prior art.

  92. “There is a difference between substituting a programmed computer for circuits in an application and patenting [a Ned concocted strawman]“.

    There, I fixed it for you.

  93. “when did business methods become unpatentable subject matter?”

    It happened a long time ago in the reality that exists between Ned’s ears. There are, however, many times when Ned confuses that reality with the reality that he shares with everybody else. It’s all about the context.

  94. And, dope, the problem is that the PTO has never learned to examine software patents properly. And, the fault is Benson. And, R. Stern. Dope extrondinaire. The dope of dopes that thought he could exclude software patents by legal fictions and instead gave the PTO nightmares by creating all this nonsense.

    Dopes, get it, the reason the PTO has so much problem is that they are trying to examine the applications using the legal fictions rather than what the software patent really are.

    Dopes. If the courts treated software as its true character, then the PTO could examine it and we wouldn’t have all this nonsense.

  95. “[e]quivalent ‘in’ an application.”

    What Ned is saying is that it isn’t equivalent in Mordor or the Hoth system.

  96. That’s why we say “computer executable instructions” instead of “computer readable instructions”.

  97. And that’s why you’ll never progress from a public employee into meaningful work in the private sector.

    It’s really sad that our patent office has people working there with such a poor grasp of the patent rules. It’d be nice if we were getting what we’re paying for.

  98. I think that you should join miles in looking up the definitions of FPGA and ASIC.

    when did business methods become unpatentable subject matter?

  99. I’ll probably get edited by Dennis, but I have to say it again. Ned you are a dirty monkey. And so are you MM and IAENEENAO#AW you don’t even rate as s dirty monkey. You are a dirty amoeba.

  100. An apparatus, comprising:

    two twigs tied together at approximately a middle point of each twig, wherein the twigs are tied together with a string.

    How outrageoius that this is eligible under 101!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! Dopes. That is the kind of nonsense you dopes post everyday about software. Ok. so, people submit applications for software like the one above with twigs.

    So what. What’s the point? So, now should I say that every invention that claims some form of wood should not be eligible under 101? Or that for all wood inventions we should first look at what is actually claimed and then determine whether or not it is eligible under 101?

    Face it, you are intellectually dishonest and want to remove information processing from patentability. The irony is, of course, you dirty monkeys have messed this up so much that the PTO has not gotten the examination right. If you dirty monkeys had not had Benson then by now the PTO would have figured out how to examine these application properly.

  101. It seems to me that a Beauregard claim comes closer than any to claiming software directly, albiet normally expressed in functional language, not in code.
    Strangely, after all the years since the PTO agreed to such claims and withdrew their pending challenge at the Fed. Cir. prior to any decision, no patent litigation challenge to the widespread use of Beauregard claims has ever make it to the Fed. Cir. to be actually approved or rejected by the Fed. Cir., as far as I am aware?
    At least one IP Professor thinks a Beauregard claim violates long established case law against “written matter” claims. Especially as arguably its normal format of computer-eadable instructions written or stored on tangible storage medium could include printing on paper and not exclude also being human readable?

  102. And as long as you continue to post general dismissals of others arguments you are never going to get it right.

    Right is information processing. Right is information transformations are transformations of a property of matter that is as real as any other property of matter.

    End of story. When the court gets this, then we no longer will be in this endless psychotic characterization loopy nonsense.

    And the paid posters will need to look for another job.

  103. Ned, are you saying that you are substituting circuits for a computer program and the purpose/result of the invention is still the same but the invention now is no longer is patentable?

  104. start with claim construction, 112, 102 and 103

    and all of sudden the claim is either rejected/invalidated or narrowed and 101 is not an issue

    no need to decide whether an “abstract idea” is claimed and BTW what is an “abstract idea?”

  105. In this post Mr. Goetz shows his self interested “logic” that makes no sense at all off once again.

    He goes on and on about how we’re all focusing on “the wrong question”.

    He believes that there is some magical “invention” that is at issue in software patents, at least some of the time, which is somehow divorced from the underlying software. But he does not explain how this happens in the real world. Obviously, because there is no “invention” being claimed in a claim that covers a software “implementation” other than the software.

    He goes further to posit that if the debate was on the question “Is an invention that is patentable in hardware, equally patentable if implemented in software?” then there would be much less controversy. But he does not explain why. Even the stupi dest patent professional can see that there is a glaring difference in breadth between a claim that is limited to some specific piece of hardware and in a claim that is limited only by what is accomplished by the hardware. The former is amenable to people “designing around” and “inventing around” so as to be able to accomplish the task as the patented hardware without infringing. The later is not amenable to people designing around and inventing around, because the task itself, performed by any hardware, or software is covered.

    That is to say, Mr. Goetz misses the fundamental problem with software being patented, a glaring hugeness of breadth due to the fashion which it is usually claimed. If we were to require that the actual software “implementation” be disclosed in the patent, and then limited the claim just to that one “implementation” instead of granting all “implementations” as is accomplished through the issuing of functionally recited claims then people would probably have no problem with software being patented. But, obviously, no software patent would be worth paying to have, because everyone else would just design around you immediately and are very unlikely to ever infringe, even unintentionally.

    Not to mention the fact that, obviously, granting authors rights to functions has been explicitly rejected in copyright law, and it was done so for a reason. There is no reason to allow authors a backdoor into getting rights to functions by way of patent lawl.

  106. Software implement grace machine:

    1. A programmed computer, comprising;
    means responsive to data imput indicative of a the dollar amount of a contribution, wherein the amount is represented by Z;
    means for calculating the time one’s stay in purgatory is reduced according to the formula X = Y * Z, where X is the time reduced and Y is a Bible-defined constant; and
    means for displaying the reduced time to a contributor.

    Entirely patentable right? — because, as we all “know,” programmed computers are eligigle. Move on to 102/103.

  107. “BK, I have never heard any one seriously debate the eligibility software that originally creates a novel drop-down menu on a display.”

    Then you’ve never met anyone that properly applies the judicial exceptions.

  108. Mr. software, the linked wiki article does not include a claim from the patently reference. However it the dust describe the claim as a method of dividing longer messages in the smaller messages in a communication network. Why do you think this is a software patent?

  109. It might I add, perhaps we could have converted the Prometheus “information” into a patent eligible invention by displaying that information on a computer screen in a drop-down menu.

    Sounds like a plan…

    What a joke.

  110. BK, I have never heard any one seriously debate the eligibility software that originally creates a novel drop-down menu on a display.

    But it becomes a serious question of eligibility when the software creates a drop-down display that is generic and old and which varies from the prior art only in its information content.

  111. Night, after all our discussions it seems you still do not get it. There is a difference between substituting a programmed computer for circuits in an application and patenting an abstract algorithm by reciting the use of a programmed computer to conduct its math.

  112. Bad joke, I think you missed the point. Advocates of software patents are not trying to substitute programmed computers for circuits in a particular application. They are trying to patent abstract ideas and business methods simply by reciting a computer or programming these abstract concept into a computer.

  113. patent on a 1986 application — doubt if it would survive today’s examination, and it will go away soon and be totally irrelevant

  114. Patentability under 112, 102, 103 and yes 101 should be decided on the invention as claimed, not on some so-called underlying inventive concept in the spec.

  115. Here’s my analysis of the reason why “software patents” give people so much heart burn as compared to hardware/hammer patents.

    It’s probably helpful to consider an example. My favorite is the 4,974,952 patent from the Fujitsu v. Netgear case from a few years back. (link to en.wikipedia.org). That patent was written at in 1986 many, many years before 802.11 standard was around in years pre-dating the relevant wireless hardware and technology. Nowhere in the specification of that patent do they even have the basic hardware features to enable its use in modern wifi systems, and yet, there it is being enforced against EVERY Netgear wifi product.

    Because software patent claims aren’t tied to a particular implementation they have an uncanny ability to morph and cover systems and computers that were not in the possession of the inventor at the time.

    This is so unlike reducing the software down to its hardware implementation. At the very least, the hardware implementation would be tangible, fixed (to use copyright terms). The bits and pieces would be knowable, comparable. You could stack your implementation up against the implementation and compare.

  116. I think he’s pointing to the issue with the “problematic” software/business method patents being that they are merely automating a known, manual process, not that they’re merely software.

    The ones that don’t merely automate a known manual process shouldn’t be a problem.

  117. I’m not suggesting the hammer was the pinnacle of innovation.

    But calling thinking antiquated doesn’t advance the discussion. Your cavemen had painting, linguistic abstraction and music 40,000 years ago. It’s not like it has remained incomprehensible or has not been assigned any social or economic value. The issue is whether like abstractions should receive the *same* protection. There is a linguistic, metaphysical and ontological difference between denotation and the denoted.

  118. “If the Patent Office’s examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents.”

    Okay, let me see if I get your point. You are saying most of these processes for improving the efficiency and quality of doing business pass 112, which covers disclosure. And assuming they are not anticipated at 102 or obvious at 103 they can get a patent. But, if the invention is determined by the examiner to be software, or a business method the examiner can and should reject it right away. Is that right? Well, what you have not done is provide a cogent argument as to why the patent system should discriminate Inventors of against software and business methods? I

    n fact I have not heard anyone make that case yet. And until that argument is actually made and won, the Constitution, Congressional Statute, and Courts case law that make software and business method patents legal, should remain the law.

  119. “means to an end” is a new patentability test???

    you have to be kidding — don’t see that in the statute

    and that would effect many non-software inventions

    are medicines a means to an end

  120. “A line of code is not a hammer.”

    And why is a hammer presumably more deserving of being called an invention than a line of code?

    Because a cave man can understand how to use, and possible create a hammer, but would have no idea how to design a functioning line of code.

    And that is the “line of thinking” that the anti software and business method people have.

    It’s not even “Iron Age” thinking.

    It’s “Cave Man” thinking.

    Yet these same people would profess to be in favor of “Promoting” the “Progress” of the Useful Arts.

  121. Completely agree with the point that the patent office should focus on the Invention, not on whether the best mode is software or firmware or hardward….

  122. And completely ignore his argument. What an intellectually dishonest worthless excuse for a humnan you are.

  123. It seems to attract a great deal of imperious and socially inept people, who believe an engineering degree has bestowed them with great philosophical acumen. They don’t attempt persuasion but just assert the ignorance of their (unknown) audience.

    Nicely done, Miles.

    …my point was pretty simple. A line of code is not a hammer.

    I think your point is well taken. But in fairness to Mr. Goetz, I don’t think he disagrees with you. Perhaps I’m reading too much between his lines, but my take on his comment is that it’s silly to debate the patentability of software because it is already established that software, by itself, is not patentable. I think Mr. Goetz is saying that examiners shouldn’t obsess about whether a particular invention may be implemented using software, but on whether the application actually discloses an invention at all. As Mr. Goetz says, many “business method” and so-called “software patent” appliations can and should be rejected because they fail to define an invention, without regard to whether the primary implementation involves the use of software.

    Certainly the PTO should continue to reject claims that are directed to software per se. But it has never been the case that a claim fails Section 101 merely because the invention it defines uses software. I think Mr. Goetz is on the right track.

  124. (including the hardware underneath it). Incredibly complicated and clearly something that should be patentable.

    And indeed it is patentable. If you’re the one who invented the “hardware underneath it”.

    Taking a complicated known thing and painting it blue doesn’t get you past 103, nor should it.

  125. Indeed, I’m not sure why I post on this blog. It seems to attract a great deal of imperious and socially inept people, who believe an engineering degree has bestowed them with great philosophical acumen. They don’t attempt persuasion but just assert the ignorance of their (unknown) audience. Unsurprisingly, it seems to be the same people who are terribly dissatisfied that they failed to persuade the public of their program for legal change.

    Without getting into philosophical debates about wave-particle duality, my point was pretty simple. A line of code is not a hammer. Show me a software program that can put a nail in my wall without any “hardware” and I will grant your point.

  126. The problem is that people don’t understand the difference between a 101 and 103 argument.

    Take a patent that covers software that creates a drop down menu. now go build that from scratch (including the hardware underneath it). Incredibly complicated and clearly something that should be patentable.

    People then say, but wait, computer hardware is well known as are most programming languages, etc; all you are doing is writing a few lines of code. That is fine, but then you are making a 103 argument, not a 101 argument.

  127. One other thing:

    Lemley says that the specficiation of software conveys no structure. That is how intellectually dishonest some of the academics and judges. However, I think in today’s world there is no such thing as an academic law professor. We should call them practicing attorneys that teach on the side. They have their client base and anything they publish is for their client base. We should also not put any weight into any publication. No legal publication deserves an pepper corn of respect.

    What is interesting is that this software business is playing out in our entire society. Everyone knows that medicene is completely broken and that it is fiction to image that a doctor has your interest in mind or that a hospital or doctor’s office is not a store where someone else fills your cart and charges your credit card. And we get the same types of people that defend the medical system and the same intellectual dishonesty.

  128. And, I hope that my post isn’t deleted for my comment about J. Moore. Why not let her try to defend herself. What a nice position she is in to perform her duties and not have to answer for herself.

    Let her try to explain these matters. J. Moore cannot. Because she is wrong. She won’t because she is intellectually dishonest.

  129. Well, you have it partially right. For one thing, software is hardware. Software is nothing but a way to implement hardware in a convenient way. That is a fact that cannot be gotten around other than by the intellectually dishonest.

    Second, you need to think a bit about why we are having this problem. People J. Stevens and J. Douglas and R. Stern caused most of these problems. And, a lot of their misconceptions can be understood by where science/philosphy was in 1920. None of them understand the brain as an information processor. They seem to believe that thinking is separate from the body–magically.

    Third, you are dead right about the invention being the focus. A lot of business method problem is that the judges seem incapable of casting the problems in terms of information processing. if they did, then they would see all the problems disappear. Conceptually, their problem is that they don’t see information as something that is real–but it is real property.

    To imagine that transforming information is not a transformation is a misunderstanding of the laws of physics. So, what do you have? Information processing algorithms and machines. Now what are they processing?

    A couple of more tidbit. 1) Why this is happening is that they are mischaracterizing realty. That is why this is never ending. Until they accept that this is information processing and informatoin is a real property of the universe then we will keep going round and round. 2) When mechanical inventions started to challenge man’s dominance, there was a back lash. I think that is what we are seeing with informatoin processing. Some of the jokes during oral arguments make that pretty clear. At the Fed. Cir. one judge said, yeah, next they will patent writing decisions for court cases. Ahh…yes. Likely, within 100 years computers will be able to make better decisions than human judges.

    What we don’t want is EPO standard that somehow the software has to do with the efficency of hardware. What a nutty standard. Why? Because hardware for what? Hardware for what they consider a hardware task. How does that make any sense? If I have a computer to diagnose an illness I need hardware. The software is a specification for hardware. It is a convenience for hardware. But, the EPO says that hardware to access a disk is hardware that counts but hardware that is needed to diganose a cancer doesn’t count. OK. That reduces the problem to we will count what hardware for communciation between computers that are completely general purpose that could be used for any purpose. OK. I build computers that aren’t general purpose but only for diagnnosing cancer. Then shoudl softare that makes it more efficent for tumor infomratoin to be analyzed be eligible?

    I nkow I don’t have time to go into this, but I think anyone with a brain that cares to understand can seee the problmem is that either intellectual dishonest poeple (J. Moore is one), or magical thinkers (J. Stevens is one), cause these problems by ignoring the realty of what software is.

  130. Yes, the debate can. Every EE knows this. It’s the non-EE’s who seem to have trouble grasping the concept that we can program the SAME software onto a hard drive of a general purpose computer, into an FPGA, or hardwire it into an ASIC.

    The problem is that many people commenting on this topic, like yourself, have no idea what the FPGA and ASIC are. Because you guys don’t understand the technology, you don’t understand the issues, yet you feel qualified to comment for some reason.

  131. I’m afraid the debate can’t be simply reduced to this skewed question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    One problem is that it uses an undefined (and likely bizarre or shifting) notion of “implementation”. Software *cannot* produce physical effects like hardware or in the absence of hardware. Likewise, it requires bending our notions of the physical activities of “make, use and sell” over which exclusive rights are provided. Even accepting the formulation of the question, it fails to resolve the issue of competing regimes for software (which Goetz has attempted to address elsewhere, but this framing does not respond to).

    The fascinating–but likely fallacious–aspect of Goetz’ post is the notion that *the patent itself* can be analogized to software, therefore software *is* invention. I think the premise to that argument is probably correct/fair. But the conclusion doesn’t follow. I think it is probably not simply the activity of abstracting from some (physical/empirical) discovery alone, or *articulating it* that constitutes the “invention”. If that were the case, the inventors for every patent would be the patent agents. While that may be a very appealing proposition for readers of this blog, it doesn’t seem tenable.

  132. People with vested interests do not want to understand that hardware is equivalent to firmware (which is just software in a specified location) and is equivalent to software.

    There is no logical reason to not understand the simple truth.

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