Making Software Patents Transparent and Understandable: Begin by Determining Whether Software is Patentable

By Dennis Crouch

One major problem with software patents is their forced lack of transparency. The USPTO has granted hundreds of thousands of patents that should rightfully be termed “software patents,” but almost none of those patents include a claim directed to “software.” Rather, the innovative software is being hidden by innuendo and obfuscation because of the perceived ban on patenting software per se.

I contend that if we are going to allow software patents, we should do so openly and honestly. In that world, patent claims would be able to match the words of the computer scientist inventors and might simply be written as “Software comprising …” or “A computer program comprising …” We are not in that world.

In the 1960’s the USPTO began pushing against the patenting of bare computer software. Its 1968 guidelines formalized the USPTO’s position against computer programs as unpatentable mental steps under 35 U.S.C. § 101. That approach was largely vindicated by the Supreme Court cases of Gottschalk v. Benson (1972) and Parker v. Flook (1978). However, the combination of Diamond v. Diehr (1981); new leadership at the USPTO; and the formation of the Federal Circuit all rejuvenated the patenting of computer software. Many still hold to the idea that software per se cannot be patented because the software is not a machine or apparatus and because the software only becomes a non-abstract patentable process once implemented on a particular device. In Bilski v. Kappos (2010), the court rejected categorical exclusions of business method patents (and thus presumably software patents). At the same time, however Bilski and the subsequent case of Mayo v. Prometheus (2012) serve to revive the pre-Federal-Circuit case law and create further direct tension with software patents.

The result from this long history is that we still have software patents but they are hidden under the surface. They are harder to find, harder to examine, harder to understand, and thus much more problematic than they need to be. After fifty years of controversy; meandering administrative practice; and inconsistent Supreme Court decision making, it is time for the courts to take a stand and deliver the law in a way that is clear and precise. Finally answer the question: Is software patentable?

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

338 thoughts on “Making Software Patents Transparent and Understandable: Begin by Determining Whether Software is Patentable

  1. Hello Mr. Heller:

    Thank you for responding to MM’s question to me. If you had not highlighted it i might have missed it! The problem you and Mr. Mooney seem to have is that you confuse the concept of considering additional steps in pre and post solution activity with dissection. And you incorrectly infer that such consideration negates taking the claims as a whole, as required by Diehr. I explained the difference in a post I made in response to a question to me from Professor Crouch, our blogs host. I shall repost it here for your benefit. Please let me if you have any questions. I am here to help.

    101 Integration Expert Said: “On the surface it does seem that the Court is advocating ignoring elements as opposed to viewing the claims as a whole. However those additional elements are extra solution activity, (pre or post).

    And as established in Flook, extra solution activity will not transform a judicially created exception into a patent-eligible application of a judicially created exception. But to take this to the extreme, as some advocate doing, would be a full blown implementation of dissection. The Diehr Court recognized this flaw and fallacy in the Flook Courts analysis and corrected it and warned future Courts what would happen if it was ignored.

    Please read Diehr: “[Footnote 12] [It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877). ]

    The Prometheus Court also was careful not to advocate dissection, a generic stripping away and ignoring of elements, and limited it’s analysis to extra solution activity in the wake of a judicially created exception. In this particular case, a Law of Nature. The use of (new and old) was limited to determining if the Law of Nature was simply being claimed by reducing it to a series of steps. In other word stating the LoN and saying apply it.

    Please read Prometheus:

    “Still, as the Court has also made clear, to transform an
    unpatentable law of nature into a patent-eligible applica- tion 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.”

    However this was not a resurrection by the Court of a point of novelty test. And in following Diehrs warning, and to make sure it’s use of pre and post solution activity was not taken to the extreme or abused, the Prometheus Court carefully and explicitly chose to characterize the Diehr claims as “integrated” which corresponds to (conjunction, and combination) as used in the Diehr case.

    Please read Prometheus:

    “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, 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 with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.” [12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
    Opinion of the Court].

    If we follow the case law history on 101 what establishes patent-eligible subject matter is the application of a concept that is “integrated” into the process as a whole. Prometheus stood for no more than this Court honored principle.”

  2. 101 Integration Expert: “The lesson for you 6 is that “Integration” is viewed by looking at the claims as a whole in light of specification.

    MM said: “That’s strange. Why, then, did the Supreme Court in Prometheus repeatedly make the point that certain elements in the claims at issue were “old and conventional”, a determination that could only be made by comparing those elements to the prior art?”

    101 Integration Expert: But they did not “ignore” elements or steps in the claims. And that Mr. Mooney is the essential difference between dissection and Integration. Dissection ( strip away & ignore) is the antithesis of Integration. Never forget that!

    Now, to why and how the Supreme Court is using the “conventional” language in Prometheus has been explained to you before.

    The Court is referring to extra solution activity analysis ( Pre or Post). When a claim starts with a bare Law of Nature, non integrated, adding conventional steps will not transform the claim into an inventive application of the Law of Nature.

    See Prometheus, “Purely “conventional or obvious” “[pre]-solution activity” is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” (MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.)

    What’s very important for you to understand is :

    1. that you only look at additional steps when there is a bare, or as the Federal Circuit says, Manifestly Evident, Law of Nature/Natural Phenomenon or Abstract idea. And……

    2. And even when you do have a bare LoN with added steps the claims are still viewed as a whole.

    The Prometheus Court summed it up quite nicely here:

    “To put the matter more suc­cinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­ understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” (MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.)

    Let me know if you have any other questions. I am here to help.

  3. anon, what is Dennis's rule?

    I think he knows that attorneys will tend to advocate policies that favor their clients.  They will also tend to not to advocate policies that undermine their client's business interests.  That is the nature of things.

    Dennis seems to recognize this.

    Over my career, I have variously represented patent owners or accused infringers.  I have been inside and outside.  These experiences form my views.  

    Regarding software, I have been a programmer, and have been and still am a patent attorney representing software patent developers.   I do not represent, at present, any defendants in software patent cases.

    Does that help?

  4. What we need is a PTO that refuses to grant patents on programmed computers or configured computers, per se; software per se; or computer readable media or any of their equivalent forms. None of this has been approved by the courts. None of this is consistent with long established precedent.

    Yes Ned, we all know your anti-software patent agenda, and that you feel this is a need.

    Thankfully, your feelings do not match up with the law. Thankfully too, it is Congress that writes the law (as dictated by the Constituion) and that a wide open gate at 101 is consistent with the constitutional mandate. Thankfully, your idea of precedent by the courts to set what is patent eligible is not the law – because, amongst many reasons – you cannot have innovation in such a post-facto world. True innovation cannot be known a priori and legislated in (especially by the courts).

    What is simple and straightforward is that your views on this do not come from a careful and detached objective view of the law, but evidently from your pocketbook.

  5. Your “history” is irrelevant to your current relationship.

    You bringing it up (again) is merely kicking up dust (again). It is from your response that I obtained that Alliacense is your “client” as you begged off (dodged) my question with an attorney/client confidentiality “answer.” If that’s not the case, then what the F kind of answer did you give me at 7:29 PM?

    I do not know if Alliacense actually is your client. All I know is that Prof. Crouch has a rule that it appears that you are breaking. Can I help it if it also makes sense that you are breaking this rule given your long history of avoiding resolution of the issues and topics I bring up?

    I do know that such vested interests – if in fact they are present – will not advance open communication on this forum if your are dutifully advocating for your client (and is probably the reason why Prof. Crouch has that rule in the first place). Quite in fact, this is the type of agenda that I indicated on the initial post on the software thread that you applauded.

    As noted, your comment and treatment of my relatively simple and straightforward (yet ultimately sharply piercing) question puts you in a bad spot either way you proceed as noted in my 11:17 PM post. The honorable options as I see them is to not post per Prof. Crouch’s rules, or to post in a truly individual capacity and accept where the conversation leads (which would be to the apparent detriment of your “client”).

    Also as I posted with the initial post on the software thread, those who want the objective treatment also realize that in the real world, people may NOT give up their agendas. In those cases, life goes on too (although making this blog a better place is likely to fail because those agendas bring the games that detract from an objective conversation).

  6. What we need is a PTO that refuses to grant patents on programmed computers or configured computers, per se; software per se; or computer readable media or any of their equivalent forms. None of this has been approved by the courts. None of this is consistent with long established precedent.

    Perhaps the en banc Federal Circuit might help provide guidance here?

    Software used in a generic computer may be patentable as a process, but the process must not be abstract.

    All of this is simple and very straightforward.

  7. anon, You think I am representing my current client’s views as an advocate? Really?

    I have a long history in patent law. My history began in a patent case that had evolved into in antitrust litigation against the likes of AT&T. I begin to see how they operated, and it informed my views ever since.

  8. Ned Heller Said: “If it ( software) is manually loaded and executed, the computer is being used.”

    Mr. Heller, with all due respect, your lack of understanding of the fundamentals of “Integration” is showing.

    When applying the Courts line of authority and analysis on “Integration” if the software is loaded, ( manually or otherwise) and executed within a computer, the software and the computer pass 101.

    Also continuing with “Integration Analysis” the machine itself is new as well because its operational structure is changed.

    Anything that is “integrated” is changed both operationally and structurally.

    To integrate anything and have it remain unchanged would violate the laws of physics, and of patents.

    So, your analogy of a programmed computer being like a loaded cargo ship is false.

    While the cargo, say a container, is indeed on the ship, it does not change the operational structure of the ship, and therefore is not “integrated”.

    In other words the ship is still the same old ship.

    “Integration” as used in patent law, not only changes the operation of a process, it changes the structure of a device or machine, in that process.

    Thus making the device or machine, new.

    For example Alice’s claims are statutory as a machine and a process because of the “Integration” of software into a system.

    Whereas Ultramercial’s claims are statutory as a process, because of the integration of a concept into the process.

    Ultramercial’s claims do not rise or fall on whether the process includes or is tied to any machine or software whatsoever.

    To conclude, everything I have stated above is factually and legally correct and can’t be disputed when using the Courts “Integration Analysis”.

    For authority please see ( Diehr, Prometheus, USPTO Official Guidelines, MPEP 2106 )

  9. Leo, a programmed computer is like a loaded cargo ship.  It varies from other cargo ships by the cargo it carries.
     
    Section 100 states that a new use of an old machine is a process. 
     
    It was very well understood law, prior to Rich, that one could not repatent an old machine because of a new use.  A new use of an old machine was patentable ONLY as a process.
     
    I hope now you see that one needs more in a claim to say that software transforms a machine into a new machine.  If it is manually loaded and executed, the computer is being used.  If it, in contrast, permanently resident and is automatically executed a machine process, it makes a new machine.  Traditionally, this kind of software is known as firmware.
     
    Between software and firmware is a grey area.  Some kinds of software might indeed be patentable when claimed as a machine; but one needs the software to form an integral part of the machine such that it is alwasys there and always executed automatically when required, like an OS, or a device driver, or he like.  These latter kinds of software, if claimed properly, do in fact transform the machine into something possibly new.
     

     

  10. Sorry, Ned, I don’t follow you. How is a programmed computer any more transitory than any other destructible apparatus?

  11. Software is abstract.
     
    There is a difference between a baseball and a fastball.
     
    There is a difference between a copy and a copyright.
     
    There is a difference between instructions and an encoded article.
     
    You, anon, never keep these distinctions in mind when making broad statements.  The looseness in your remarks is characteristic of two very well known Federal Circuit judges, both have last names beginning with "R," and one of who has expired.
     

     

  12. Leo, before patent law was intentionally confused by the likes of Rich who penned that programmed computers were eligible becaused they were machines in In re Benson, name me one example of a transitory phenomenon that was patentable as a new machine.  Just one.

  13. Software can be a component to an apparatus.
    Software as a component can be a manufacture.

    This is all very mundane. You are attempting to kick up dust in a swamp.

  14. There is something fundamentally wrong with an apparatus claim that does not require in some manner that the “thing” be physically present more than a moment, or only when “used.”

    Baloney, Ned. The fact that you can contrive a scenario in which there is no sale of the apparatus doesn’t demonstrate anything special about computer-implemented apparatus. Similar scenarios can be contrived for all sorts of apparatus. In any case, in your scenario it is not the form of the claim that prevents the apparatus from being sold, but the particular business model employed. So what?

  15. So you are saying that Alliacense is your client.

    That would be an odd reflection of what the USPTO records show.

    So…

    Either you are simply dodging again (but this time with a patently false pretense), or

    You need to both evaluate your ethics by posting on this forum in the way you do in service of your client as well as read, understand Prof. Crouch’s rules for posting here as you would be in clear violation of those rules. Of course this would explain your unwillingness to fully engage the points I make, he run and retread tactics and the sometimes downright bizarre and obstinate positions on case law.

    Either way does not look too good for you.

  16. Anon, you may work for a firm that represents others.  Your relationship to the firm is irrelevant.  What is important is the firm's relationship to their clients.  That typically is confidential.  Don't you get that?

  17. Regarding patent amasses/extortioners who proactively "license" by intimidating based on the size of the pile without actually demonstrating infringement of any patent, I think this is a abuse of the system.  

    What sickens me is that these folks and their leaders are idolized as paragons of virtue and enrolled in halls of fame?  Why?  Because they are smart businessmen?  Indeed they are.  But they are not using patents for the purpose intended by the constitution, advancing the progress in the useful arts.  These folks are better characterized as bullies operating under the rule of "law" known as "might makes right."

    All this goes to show is that what can be abused, will be abused.  We need the government to protect us from these kinds of folks, not honor them.

    Not long ago we had Lemelson, an inventor who used every legal angle in the book to bilk the system for pecuniary gain.  Every act, in isolation, was legal.  But taken as a whole, there was abuse.  

    I don't know what we can do, but about this.  But if Leahy and crew are going to look into patent abuse, they ought to look into the abusive practices by the very big players first.

  18. Nice and complete dodge of the question of your relationship with Alliacense. Please note that I am not asking about your relationship with IBM (no matter how inclined you may be to malign them, they simply are not the point of my very specific question).

    It’s as if you realize that be admitting of a relationship that you may be violating one of Prof. Crouch’s posting rules…

    What would this site do without those posts?

  19. Apparatus claims are things, sir. They can be sold.

    If you have not been buying your software I know quite a few people who would like to have a word with you.

  20. This is really… or a combination of all of them.

    In other words, you are guessing or throwing everything at the wall to see what sticks because you really don’t know and it just doesn’t “feel” right to you.

    Gotcha.

    Except you might want to visit (again? For the first time?) my mocking example which paints all of your “feelings” and concerns in a purely traditional hardware setting.

    You are attempting to make distinctions which are immaterial for the point of the discussion. Politely, that is called “kicking up dust” and you have been called out for it and (equally politely) asked to rejoin the topic without such tricks.

  21. My relationship?  

    My response:

    Regardless, my attitude about IBM and their ilk was formed in the '70s, right after I got out of law school, joined a firm and began litigating against AT&T.  There is a reason the government sued them.  Size was not the sole reason, or even close.  

    Now, their likes will explain to you the reason they aggressively amass giant piles of patents to intimidate people is because the government required them to license their patents.  It takes only a second to see through this charade.

  22. Guess what the difference is?

    My guess (based purely on observation of your tendencies) is that the difference is NOT something that is actually illegal, but rather the difference is something outside of that “cloud of black letter law” that Ned feels SHOULD be illegal.

    I will not hazard a guess as to why Ned feels so (but might guess that it has something to do with questions ignored and dodged – based solely on the record).

  23. Sorry Ned, I am specifically asking you a question about your relationship with Alliacense.

    This is at least the fourth time you have either ignored or attempted to dodge a very straight forward question.

    What’s up with the games? Do you realize that this makes you look even more guilty of something?

  24. Re: Alliacense vs. IBM.  

    There is a difference between asserting patents against people who are infringing and whom you provide proof of infringement, and what IBM and their ilk do.

    Guess what the difference is?

  25. anon, what I am showing your is that you apply your "configured" computer apparatus claim only to the use of the software.  That, sir, is a method claim.

    Apparatus claims are things,  sir.  They can be sold.  

    There is something fundamentally wrong with an apparatus claim that does not require in some manner that the "thing" be physically present more than a moment, or only when "used."

    This is really either a definition issue, a 101 issue, or a 112, p.2, issue or a combination of all of them.

  26. Sorry Ned,

    In your haste to build your strawman, you have left it more than just a little unclear.

    You say “claim covers a configured computer” but also say “software is present… available to all… public use..” Do you mind explaining what you are trying to say with that? You use “covered” in quotes – why? You also imply that single use is not an infringement, but you then do not provide facts for more than a single use and ask about infringement. Your own example fails on its own facts (in addition to its fail to reach the point you think it reaches).

    You also drive off into the weeds with questions about infringement (direct, contributory, induced), and yet those questions have NOTHING TO DO with the underlying discussion.

    As I pointed out with my mocking example, those VERY SAME questions can be put to an equally “troubling” situation with pure hardware. Quite in fact, ANY patent eligible technology can be stuffed together to make an equally “compelling” strawman.

    If you are trying to make a (policy) point that software shouldn’t be patent eligible because of these types of considerations (and not, by the way, with any of the TRADITIONAL legal notions of patent eligibility), and you have failed completely.

    The fact that you cannot see your failure only means that you are completely blinded by your agenda.

    Review my first post on the software thread. Your type of posts exemplify EXACTLY the type of reasoning that should be avoided. Full of agenda and lacking any sense of objectivity.

    That’s the right answer to your questions – and guaranteed you will not recognize why.

  27. anon, OK.  What is your position, then, on this:
     
    Software is present on server, available to all to download for a fee for one time usage.  The server is a public use server.  "Covered" software is provided on the server by party Nancy Sue.
     
    A difference Service Center provides computers for public use.
     
    Joe Blow uses a service center computer to download the covered software, uses it one time.
     
    The claim covers a configured computer.
     
    Who directly infringes, if anybody?
     
    Who contributorily infringes, in anybody?
     
    Who induces,  in anybody.

  28. I have answered your questions.

    Posted twice (and earlier many times as a question on agendas), but I have still seen no answer to my question of your relationship with Alliacense.

    Or don’t you do answers (that are inconvenient)?

  29. No Ned, you quite miss the point of my mocking example which was not concerned at all with a GP digital computer.

    Hint: “exchanging hardware pieces

    The point is that your example was silly and quite besides the point of the current conversation. Can you please stop sidetracking?

  30. Oh, I have a position – it’s called being objective.

    You seem to not understand an essential aspect – you do not have to have an agenda to understand or talk about law. You mistake “position” for “agenda.”

  31. Your example tracked mine in that it illustrated that any number of people could cooperate to make a GP digital computer run a particular piece of software.  The point is, who really infringes?

  32. Trust you? Sorry, no – you have established no basis of trust as you continue to butcher law left and right.

    Don’t tell me with conclusive statements. SHOW me out of that same “cloud” of black letter law and NOT your imaginary Ned law.

  33. Quite to the contrary Ned, my example was keyed specifically to a non-software hardware issue mirroring your silly hypothetical thus showing that you were only kicking up dust.

    Now will you address the points previously raised?

  34. How can we have a conversation?

    Good question – easy answer: we can have a conversation if you address the points already on the table as that content is much more important than your distractions or even my position.

    In other words, address the law – the true law – and stop trying to make distractions. Make the focal point of the conversation the law and not either “my position” or “your position,” which is often merely a code word for agenda.

    Leave your agenda at the door.

  35. The lesson for you 6 is that “Integration” is viewed by looking at the claims as a whole in light of specification.

    That’s strange. Why, then, did the Supreme Court in Prometheus repeatedly make the point that certain elements in the claims at issue were “old and conventional”, a determination that could only be made by comparing those elements to the prior art?

  36. Anon, is does "programmed computer" or "configued to" cover the corresponding structure and equivalents, or not.  If not, it covers any apparatus that achieves the function.  That is claiming a result or at best a process.

  37. Ned,

    It is more than just a little ironic that you refuse to answer my points raised here with the MM style Accuse-Others-Of-That-Which-You-Do retread of

    Anon, I just knew you would not answer the questions. I knew the reason why also.

    It is you that is not answering, and the reason is only too clear (you should visit the thread to see how the chain has unfolded instead of only viewing the comments by email to see the full comedy of your reply).

  38. Yes.

    You should not have “old” in the claim, as it is neither appropriate nor necessary.
    You should have more than one element to avoid the banal trap of anything close to a “single means claim” – btw, purposefully in quotes to defuse the expected “but that’s a method” claptrap. Keep in mind (yet again) that programmed to is a structural term of art.

    Are you quite done with your strawman attempts?

  39. The point that your hypothetical was silly and not germane to our discussion?

    How could I miss that point?

    Now, please return to the items I have raised and address them.

    Thanks

  40. 1) you clearly have not answered my questions nor addressed the points I have raised (other than the simplest five resistor question – but seeing where that path lead resulted in the “breakdown”). Diverting questions are not answers.

    2) your questions have nothing to do with the topic under consideration. Why should I indulge your efforts to sidetrack from an issue when you are in the spotlight? Should I care that your agenda is threatened by the points I raise?

  41. Anon,

    Is or anything wrong with the following claim?

    1. Apparatus comprising:

    Old computer programmed to do X.

    (X being a defined function and the novelty of the claim.)

  42. Ned Hypothetical Offshoot 1:

    A owns a factory that makes wadgets, leases a special machine owned by B.
    C works for A and runs the wadget making machine.
    D, an independent sales rep, sells the wadgets.
    E, the mayor of the city where the factory of A is located, makes and sells electricity to A to make wadgets.
    F, the town i_diot, secretly pines for no patents, and was visiting China, where he startled a butterfly, that flapped its wings, that changed the air pattern, that changed the precipitation factors, that changed the wind pattern, that made it an overcast day in the city where the factory of A was located, that made B sleep in, that made B late, that made B skip the anti-somebody-might-sneak-in-and-change-the-machine-hardware-pieces-and-machine-settings-to-make-something-other-than-wadgets protocols.
    G owns a product patent for wedgets.
    H, not in privy to any of the above, sneaks into the factory at night and changes the wadget machine, exchanging hardware pieces and machine settings.

    The changes are not detectable to the naked eye.

    Business as “usual,” the factory churns up using the city electricity, but today makes infringing wedgets instead of wadgets.

    Who infringes? The owner of the factory? The owner of the machine? The person who runs the protective software? The owner of the protective software? The person who runs the machine? The person who supplies power to the computer that it operates.? The person making a butterfly flap its wings in China? Who?

    Analysis please.

  43. You do not have to be “careful,” unless you mean that if you speak plainly and logically, you will be forced to admit things you do not want to admit.

    Take a lesson from MM – twice recently he has admitted things that he never wanted to admit (functionally related and configured = structure) – and both on this topic. Life isn’t over for him. What’s the worst that can happen? You have to lay down a few cannards, retire a few agendas. You might find it liberating to have to stop being so “careful.” You might find it enlightening to be able to engage fully in adult conversations.

  44. Ned,

    You have made no point for me to concede to.

    You, in fact, still have not addressed my initial rebuttal to the now oft-repeated Make-a-statement-be-challenged-run-away-and-return-and-make-the-same-statement.

    We are no closer now to having an answer from you then when I first countered your insertion of “permanent and execute automatically.” You have nvere explained the legal backing as to why you insist this is law (when it clearly is not).

    How are we to progress if I have to chase you every time you try one of your old tricks?

    A puzzle? Yes – but not the one you think it is.

  45. Why do you turn and ask me questions when I first asked you to provide a proper legal foundation for your (wayward) insertions?

    Ned – that’s downright disingenuous.

    Address the points I raise before kicking up a dustcloud to hide in.

  46. Ned – that’s an awfully circumspect analogy you are tempting to paint with the “secretly loaded” business. Sorry, but “refuse to deal with” a bad and pointless thought experiment is no basis to actually deal with the more direct points that I have provided.

    I am afraid that you will have to be more direct as to why you think you “have to be careful. Very careful.

    Unless, of course, you have a problem with objective logic…

    …then again, you have not to this day answered my posts on agendas, nor have you addressed the comments I have raised in your attacks on IBM and your relationship with Alliacense.

    Repeated here for your conveniece:

    Your insistence on attacking IBM is quizzical, given that you have not answered my request to you to address the basis of your attacks.

    Our posts on this forum are supposed to be not associated with our professional careers. Are you still associated with Alliacense Limited, and aren’t they a competitor of IBM’s? Wouldn’t “software” patents adversely affect your clients ability to obtain “non-hardware” patent protection?

    I do not know the answers to these questions, or if the answers may be deemed problematic for you. I think they are fair questions given the positions you have taken on a number of topics.

    Don’t get me wrong, being prepared for both business and legal tactics is admirable, but I do wonder whether if all of your expressed opinions are strictly from your individual capacity. If it were me, I would think that even the perception of doubt in this area might me you to withhold opinions (or at least those opinions which I then choose not to substantiate with answers to questions posed to me).

    There are plenty of topics we have discussed, but I do note that it is specific topics that seem to more often than others create the “running-away-and-later-retreading” situation from you.

  47. Agent, you don't have to lecture me on computer technology.  We have plenty of know-it-alls who already do.  I started off my career as a programmer.  I have done it all, including written OS's, real time programming, diagnostic programs, etc.

    I think software that is part of a computer that allows improved interfacing, like an OS or a component of an OS, is entirely patent eligible.

  48. A computer is seen running software.  A claim covers a configured computer.

    Who infringes?   The owner of the computer?  The person who installs the software?  The owner of the software?  The person who supplies power to the computer that it operates.? Who?

    Analysis please.

  49. anon,  with you, I have to be careful.  Very careful.  You like the tent example where people enter and see computers running patented software and doing something useful, like waving a white flag, and along side that a circuit doing the same thing.  But you don't tell us that just before you entered, the patentee's minion secretly loaded the software on your computer.  Just how you, the owner of the computer can be an infringer when the patentee loaded the software on your computer is a puzzle that you do not deal with, and have refused to deal with.

  50. “Transitory” was a bad argument for even the signal case (for example, look up into tonight’s clear sky for ” transitory” signals that have existed longer than the entire human race) -further, we are talking machines here, and as the simple five resistor example made clear, changed machines – whether manually loaded and executed or not (STOP injecting fallacies).

  51. Well, that was one of my points, that we should explicitly allow software as a class of patent eligible inventions. A separate class, because it is so different from processes, devices, and compositions of matter.

    Also, your reductionism will drive you to insanity before it brings you clarity. Data may be intangible, but it is not abstract, rather it is highly structured. Software may be the most highly structured forms of data. In the structure lies the IP of the inventor that deserves patent protection.

  52. …permanent, …executes automatically…

    Ned since I have repeatedly asked you for proper legal foundation for these notions you keep inserting into your arguments and you consistently ignore my requests, I can know presume that you have no such authority, your insertion of these factors is ultra vires at best and downright fraudulent at worst, please restate your position to reflect the conjecture nature or remove them from your argument so as to not mislead the casual reader.

    Thanks.

  53. Well, yes and no. Prior art has to be enabling, too, so it is kind of the same problem of diluting the enablement required. But even if software patents were adequately enabled, the PTO would still fail in finding the best prior art.

    Obviously the devil lies in the details, and I am not saying that transitioning to a higher enablement standard for software patents will be quick or easy. I guess it will have to begin with the PTO admitting that many patents are not adequately enabled, which is a real problem for them.
    When inventions were primarily mechanical, a drawing could capture most of the information needed to reproduce the invention, though not perfect by any means. This can teach us how far the PTO’s enablement standard for software has been biased by the infinitely flexible OSITA of the POSITA.

    Also, many claimed software inventions are subtle aspects of much larger, complex systems that need teams of programmers to implement. It follows that such disclosures should be much more thorough than simpler software inventions.

  54. Missing from the concept of a programmed computer is any recognized requirement that the “software” be “part” of the computer such that become one with machine. An operating system is one kind of such software that is permanently resident and which automatically executes. I think such software should be eligible for patenting as a new machine if claimed in a fashion that would exclude manual loading and execution.

    This is the same issue, the lack of fixation, or permanence, that we saw in the case of signals.

    Software that uses a computer to do something external to the computer that is physical should be patentable as a process. The computer is irrelevant because patentability turns on what the process does, as in Diehr.

  55. Did I EVER indicate that utility or any other portion of patent law was somehow not applicable?

    Please Ned, stay real.

    I think you get the point of the logic that flows freely (and fully) from the very simple five resistor example. There is no need to fight that logic. Just accept the natural consequence and leave the agendas at the door.

  56. Let me make an observation.

    A circuit by definition has physical inputs and outputs that have substantial utility when interconnected with other circuit, such as in Alappat, where the claimed circuitry was part of a graphics display.  

    A computer that  calculates a number does not necessarily have physical inputs and outputs.  The resulting number must actually be used to do something practical, something physical, for the computer to be equivalent to a circuit.

    I have agreed that a programmed computer having inputs and outputs that does something physical is claimable in that context.  The problem I see is that you seem to want to claim the programmed computer as such, sans inputs and outputs and with no practical utility.

  57. I am in awe of your patience or lunacy to deal with these issues over and over again, Anon.

    Please, Ned, read about modern information processing. MM: you are patenting known chemicals. All known. How many chemicals do you suppose are possible? How many have been made? How many that have not been made can we tell what the structure is? So, you have no structural claim at all. All you have is use claims. We should pare down the chemical arts to only allowing a way of using chemicals and a way of making a known chemical.

  58. Ned,

    That does not answer the question, so I will ask you again:

    Do you have the same thing when those five resistors are in series as when they are in parallel?

    Do you?

  59. First of all, I don’t think you can claim a well dress man.

    But, if you can, yes, that is a new man, or as most any woman will tell you, an improvement thereof.

    …every girls crazy ’bout a well dress man.

  60. Ned,
    I’m arguing that the state of the law is absurd due to ridiculous, wrong headed, result driven decisions. Reviewing nonsense such as Morse won’t change that.

    –… …–

    -.. . Les

  61. No Astraea, all of things are natural laws, abstract, have no structure, and are ideas (or concepts on the talk show circuit) only. If you have number, you have improperly capturing a natural law.

  62. Fish scales,

    Yes, the big problem is examination. And yet, more “sexy” areas of focus are almost always undertaken – both in the political and in the academic areas. Lemley, as much as I dislike his work generally, comes closest with his “cost-effectiveness” writings.

    What obfuscates the picture even more so (as is clearly evident by the current series of threads and comments) is the aim and targeting of a particular type of invention, as has been abundantly made clear can (easily) assume a mode that without question passes 101 scrutiny at the category level.

    If one is objective, the bias and agenda is perfectly obvious.

    And yet, if the actual underlying problem were to be addressed, ALL areas of technology (even those in the future) would benefit. And yet “we,” the royal “we” allow ourselves to quibble, to entertain “bad” agendas that should be curbed at the onset, to spend our efforts at protecting inventions that objectively fall into the wide open gates of 101 as a category, instead of putting the focus on where it belongs, on where it would do the most good for the most people. As 6 would say: it’s an area of grunt work. But it is the most important area receiving the least amount of attention from the press, the academics and the political machines. Why this is so would make an excellent academic paper.

    The royal “we” passed the buck in the 60’s (as is reflected in the obvious non-objective rant of dicta in Benson. The royal “we” passed the buck with the AIA. The funny thing is, we don’t even need Congress to be involved (directly) to attack this problem. No substantive rights need to be affected by making the examination process better in applying whatever set of laws are on the books. Examination is grunt work. It is difficult grunt work. It is non-sexy grunt work. It is also something that cannot – and should not – be made easy either by instituting a policy of reject-reject-reject (as under Dudas or as under the category-wide “policy” agendas) or by accept-accept-accept.

  63. Ned,

    An answer please:

    To put it to you in simple terms based on common electrical components: You have five resistors.

    Do you have the same thing when those five resistors are in series as when they are in parallel?

    Do you?

  64. The Big Strawman is the argument that because some area of endeavor makes money for a lot of people that somehow somebody should make sure that patents are involved.

    Corrected.

  65. A program implemented in an FPGA is a thing. A circuit design implemented on a computer is also a thing. Actually placing it on a PCB doesn’t change it in a meaningful way.

  66. How do you distinguish this from a claim of a drilling machine, controlled by a controller, where feedback is provided? If you eliminate anything that is controlled by computers, you eliminate 80% of current technology, outside bio/chem, and including biomechanical devices. Given that the only area where the US is still seriously competitive is innovation, this sounds like an absolutely terrible idea.

    I always ask anti-software patent folks how they would distinguish hardware and software. Shifting from hardware to software, and vice versa, is just a matter of choice.

  67. Okay Mr Heller. let’s end this charade shall will?

    Software is a set of specific steps that when executed produce an objectively measured “guaranteed” result.

    Case Closed.

  68. Thanks AgentGG,

    But supposedly, this site has changed. This site is not supposed to be the home of such purposeful intellectual dishonesty.

    MM slipped up big time by admitting on another thread that the functionally relatedness which lies at the heart of the exception to the printed matter doctrine. In other words, he can no longer claim that which he relinquished, at least not honestly.

    Likewise, on yet another thread, he reverts back to knowing what “effectively” means – especially in relation to judicial excpetions, except before the remanded Myriad case came out, he didn’t know what it meant or how it could apply to the judicial exception of Products of Nature. He clamors that “comments here aren’t court briefs” as if any less of honest behavior as one would present to a court is acceptable here. He has an obligation to treat the law correctly and his pruposeful mistatements fall far short of acceptable behavior.

    I guess this type of lieing is allowed on Patently-O.

  69. Ned,

    Factually wrong.
    Legally wrong.

    Simple as that.

    TO put it in simple terms to you based on common electrical components: You have five resistors.

    Do you have the same thing when those five resistors are in series as when they are in parallel?

    Do you?

  70. No.

    The question is what is software as if software were a thing and patentable as a thing.  

    If software is data, data not physical.  That is the point.

    The embodiment of a software on a media is physical.  But it varies from other such embodiments by its data content, just as the instructions for cooking a recipe printed in a book is physical, but it varies from other recipes in terms of its abstract content.

    The content of software comprises a series of instructions, just like a recipe.  The instructions cause a computer, when executed, to manipulate data.  The instructions of a recipe cause a cook to manipulate food.

    It is quiet apparent that what we describe when we speak of software are instructions that cause computers to operate in certain ways.  The computer hardware is old.  The computer readable media is old.  Everything physical is old.  What is new is the machine process, the state of the machine as it cycles from one state to another.

    Nothing physical is new here.  

    Hook the computer up to something physical so that the computer controls something, then we are talking.  Do something practical with the computer.  That is the stuff of patents.  

  71. “Hardware?

    What is hardware?

    How much does hardware weight?

    If one sells hardware, does it come in a box?

    Can one cook hardware and eat it?

    Describe how to make hardware as required by the patent laws of these United States.

    So, software is hardware, but hardware is not physical. Hardware are numbers. Numbers are abstract. Hardware is abstract.

    Hardware is not eligible for patenting.”

    See the fallacy?

    Stop playing games.

  72. Process?

    What is process?

    How much does process weight?

    If one sells process, does it come in a box?

    Can one cook process and eat it?

    Describe how to make process as required by the patent laws of these United States.

    So, software is process, but process is not physical. Process are numbers. Numbers are abstract. Process is abstract.

    Process is not eligible for patenting.

    See the fallacy?

    Now then, Software, as has been told many many times, is equivalent to firmware and is equivalent to hardware.

    Ned, define hardware.

    See the fallacy?

    Stop playing games.

  73. Data?

    What is data?

    How much does data weight?

    If one sells data, does it come in a box?

    Can one cook data and eat it?  

    Describe how to make data as required by the patent laws of these United States.

    So, software is data, but data is not physical.  Data are numbers.  Numbers are abstract.  Data is abstract.

    Data is not eligible for patenting.

  74. You may some good points, AgentGG. Please elaborate. Isn’t the problem the failure of the PTO to locate and apply the best prior art and not one of patents not being enabling?

  75. I will try the fool’s errand.

    Software is a special kind of data that encodes executable instructions for a processor.

  76. No need, MM dispatches herself quite adequately into the realm of absurdity…hasn’t changed in many years here.

  77. Les: I think you nailed it in explaining why we are where we are today – because examination capacity in the digital arts has been at least a decade behind the curve. So we are left with a low enablement standard and many worthless issued patents, while many rightly now question the value of the entire patent system.

    If you (massively) raise the enablement standard, you make each patent more complex and more instructive. That raises costs and the bar to filing software patents, which lowers the number of patents and examination capacity required, while increasing quality. I do not believe code is self explanatory, but requires substantial documentation to be understood by others. I could envision a software patent application to include a real example of all code objects in a program and a description of how they fit together, along with code examples.

  78. What about software whose entire purpose is to enable execution of other software, like an embedded OS?

    Assuming that executable code was a statutory class of invention, why could I not describe my code in a specification and list a number of exemplary execution target platforms on which it may be executed?

    You seem to be saying that since no one has patented software per se, software patents do not exist. But that was Dennis’ point, that we have obscured the true software innovation, wasn’t it?

  79. In the examples I briefly mentioned, I was trying to show how common software technology provides utility that cannot be mimicked by mental steps.

    Web server – the sheer capacity to handle thousands of network connections simultaneously (or in real-time), opens up an entire realm of web applications. A software web server becomes a platform for e-commerce, www, etc. Note that when mental steps were available to humankind, it was not the Internet.

    Data stream processing – no amount of mental steps could provide an interactive digital television network or video overlays to a channel. The amount of data is too vast for one mind, and too complex to coordinate among many minds.

    Embedded controller – I was tacitly referring to an embedded OS on a robotic system, able to sense and react by deciding and activating actuators. No way a human could control a system with a large number of inputs/outputs using mental steps alone.

    You might argue that a Google robot car software app could be reduced to mental steps of a human driver, since they both just drive around. I am submitting that the Google robot car software is much more than just driving around: it generates data, it can record its total operational history without subjectivity, it is networked, and it can be a platform for even more software or apps (like remotely driving vehicles over the network), none of which is comparable to mental steps.

  80. “Turning back to Benson, what do we have when we ignore the apparatus?”
    Except that one of the method claims referred to the apparatus — apparently you skimmed the brief.

    “But as we said, with method claims, the apparatus is irrelevant.”
    So you are backing away from MOT?

    “That was in fact the way the Supreme Court came out, even if it did not say so in a very clear fashion.”
    A Supreme Court that knew less about a computer than many pre-schoolers of today.

    “These are not physical acts”
    They are if they are acting on a shift register … again, you don’t appear to have read the brief.

    “That the greatest thinker of all time, Pres. Ford, was right and justice Douglas was wrong”
    You’ve given us this line of bull before — it is irrelevant. Douglas’s analysis was little more than “the claims are too broad.” The same logic could have been applied to a patent on a nail because there are so many different applicatins for a nail.

    Douglas was an embaressment to the Court for more than just this decision.

  81. Ned,
    You quite miss the point that the invention is the claim as a whole. Inventions do have elements and those elements are evaluated, but it is STILL the invention is the claim as a whole.

  82. you’re fine.”

    6, I give you credit for making a step in the right direction of integration. But your conceptual view of “Integration Analysis” needs a bit of fine tuning. For example, there really is no such measurement and therefore no such standard for the stating someone is claiming, “the entirety (or practically the entirety) of the algorithm.” You either claim the algorithm or you don’t. Same applies to a LoN/Natural Phenomenon.

    If your claims start with say, an algorithm and the end result is the answer to performing the math equation, and the specification does not describe anything more, then you might be able to arrive at a conclusion that nothing but the algorithm is being claimed. For example this is why Flook’s claims were not “integrated” and directed to just a mathematical formula. See Diehr describing Flook:

    The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number, and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, [Footnote 10] nor did it purport to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit. [Page 450 U. S. 187]

    Many examiners like yourself make the error of not reading the claims in light of the specification to make sure what is claimed in consistent with what is described in the spec. So before you determine a Court created judicial exception is being claimed, such as an algorithm, read the spec for consistency. Now in comparison to Diehr’s use of the Arrhenius equation we have an entirely different process in terms of patent eligibility.

    The Diehr Court said “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction( read as integrated) with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a [whole] does not thereby become unpatentable subject matter. 437 U.S. at 437 U. S. 586. Emphasis added.

    The lesson for you 6 is that “Integration” is viewed by looking at the claims as a whole in light of specification. And that the combination ( Integration ) of steps in conjunction with an algorithm, LoN/Natural Phenomenon will transform an un-patentable judicial exception into a patent eligible inventive application, of the exception. ( See Prometheus) In part II, I will take you in depth on the Integration analysis, of software, and other processes, without a claimed machine.

  83. “You need to get help.”

    I did get help, in graduate school, and post graduate research and coursework, in Advanced Cognitive Psychology, Neuro-Science, Systems Analysis, and Complex Information Processing.

    If you want to engage in a substantive debate on these subjects in relation to processes for scientific and technological inventions and I am available. Otherwise you may return to playing games now.

  84. Les, I would politely suggest that you read the following cases, including the dissents:

    Le Roy v. Tatham
    O'Reilly v. Morse
    Corning v. Burden
    Cochrane v. Deener.

    After you have, you will quickly see that Benson was not that remarkable a case.

  85. Design choice?

    However consider the flak jacket.  I can claim the jacket.  I can claim the well dressed man wearing the improved flak jacket. 

    Is the man new?

  86. anon, translation: stop thinking.  Exist in a fog.  Ambiguity is clear.  Four fingers?  Five?  What is real?

    Anon, honestly, you would make a good dictator, a boss type from 1984.

  87. MM: I said it well, thank you. And you understand it and yet refuse to address it because you know you are wrong.

    I am completely wrong a molecular formula described by a formula (where the molecular formula could exist). You are saying that chemist cannot make the molecular formula? That isn’t what I was taught. It may have been long ago, but still.

    So, again, when pinned you refuse to answer.

  88. it is well known that for any chemical formula that describes a poosible chemical a chemist can make it

    Huh? To the extent this isn’t a trivial tautology, you’re completely wrong.

    Structure: How can two machines perform different tasks and have the same structure? Not possible.

    Again: wrong. I know what you’re trying to say. But you’re not saying it. And I’m not going to make your argument for you because it’s not a good argument.

  89. I would quibble, the process performed using the machine has to be new.

    at some point:

    planting was known.

    metal blades were known.

    and planting using a metal blade to turn over the soil was new.

    As for abstract…what does that mean? As near as I can tell, in this context abstract means too broadly described.

    Being too broadly described is addressed by 102 and 103, not 101.

  90. So, how about:

    1. A well-dressed man comprising:
    Clean shirt, new shoes
    Silk suit,black tie,
    Gold watch, diamond ring,
    cufflinks, stick pin
    Top coat, top hat,
    wallet (fat),
    Black shades and white gloves.

    2. The well dressed man of claim 1 wherein the black shades comprise:
    rhinestone shades.

    3. The well dressed man of claim 1 wherein the black shades comprise:
    cheap sunglasses.

  91. Actually, that codec claim is a mess. Shame on the attorney and the examiner for letting it through. Fortunately for the patentee, it probably passes 112 under the courts’ “not insolubly ambiguous” standard, but it’s still a mess.

    To answer Ned’s questions, no, it almost certainly wasn’t intentional, and yes, all too many patent attorneys are this sloppy. I don’t think this problem is limited to “software patent attorneys,” whatever those are.

  92. Dennis ends his blog with….

    “After fifty years of controversy; meandering administrative practice; and inconsistent Supreme Court decision making, it is time for the courts to take a stand and deliver the law in a way that is clear and precise. Finally answer the question: Is software patentable?”

    I agree with him that the Supreme Court has not been crystal clear in its review of so-called software patents. But I disagree that the question is “Is Software patentable? If anything, the question should be “If an invention contains software (a computer program) as part of its disclosure, should it be disqualified as not patentable subject matter. How the Patent Office can better review patent applications, so that they do not issue patents that are obvious, is also a very valid question.

    In my August 10, 2012 Patently-O guest post “No to Software Patents Per Se: Software is Only a Means to an End.” I tried to explain why software is only a part of a disclosure and is not the invention. There should never be software patents, per se —only inventions that may, or may not, have software as part of the inventions disclosure.

    Here’s a set of five facts that I think are indisputable.

    Fact 1. To get a patent on an invention an applicant must provide a “Proper Disclosure” in the application.

    Fact 2. When the Patent office issues a patent it is not on the Proper Disclosure, although the Disclosure must be adequate for someone “skilled in the art”. It is only on the invention which must meet the requirement of being non-obvious and contributing to prior art.

    Fact 3. The Supreme Court has said many times that an invention is not disqualified if its meets all the criteria for an invention, even if part or all of the invention uses software in its disclosure.

    Fact 4. Software and electronic circuits (hardware) are interchangeable. As noted in “Hardware/Software Tradeoffs: A General Design Principle?” the decision to implement an invention — and to provide the disclosure — as hardware circuitry, software or a combination of hardware/software is based on such factors as cost, speed, reliability and frequency of change.

    Fact 5. The US Patent Classification system has over 400 classes of patents. Patents that contain software, hardware circuitry or a combination range from classes e.g.., Class#379 Telephonic Communications to Class#704 Speech Recognition to Class#707 Data Processing. These are just a few of the many classes that could contain software as part of the disclosure. Look at IBM’s over 200 patents on Speech Recognition at link to research.ibm.com .
    Their disclosures include software and software/hardware circuitry. IBM appropriately calls them Speech Technology patents.

    I’d be happy to hear from my many critics as to why my conclusion —- that there really is no such entity as a “software patent” — there are only inventions in a great many Patent Office Classes that incorporate software as part of its disclosure.

  93. “When one claims the use of a machine, the claim is a process. The process itself has to be new and has to be non-abstract.”

    Mr. Heller you are wrong.

    First, if a process consist of the operation of a machine it is not abstract. In fact the process is a applied.

    Second, the process itself (including the use of the machine) does not have to be new.

    One can get a patent on the new use of an old process. Please see 35 USC 100 (b) for authority.

    After application all that is required is “Integration”, (See Prometheus) which can be identified in a novel combination of all the elements in the claim as a whole.

    Please see Diehr:

    “As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972):
    “The patents were warranted not by the novelty of their elements, but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions, ‘the whole in some way exceed[ed] the sum of its parts.’ Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 340 U. S. 152 (1950).”
    Id. at 406 U. S. 521-522 (footnote omitted).
    In order for the dissent to reach its conclusion, it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the § 101 inquiry, and conflicts with the proposition, recited above, that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.” [ Diamond v. Diehr – 450 U.S. 175 (1981) ]

  94. Your non sequitur of Ford’s ploy has absolutely nothing to do with the (lack of) patent knowledge – and downright animosity – of Justice Douglas towards patents. Any knowledge the man may have had in other arrears did not translate to this man.

    The homage you direct (and conversely the scorn towards Judge Rich who was knowledgable) is merely a direct reflection of your value system tied to your agendas.

    It is shocking that you do not realize the negative impact that your blatant lack of objectivity brings to the table. Justice Douglas is easily in the “top” three worst IP justices of all time.

    Easily.

  95. Ned,
    Stop looking for “inventions in the elements (aka, your errant point of novelty) and realize that the invention is the claim as a whole.

  96. If a well-dressed man is not patentable it is because it is known…for prior art see George Clooney or Frank Sinatra.

    If it were claimed in the Jurassic then it may have well been patentable.

  97. Les, my point here is that what is being claimed is really a process. Whether the process is patentable has to be analyzed in terms of whether the process does something patentable or whether the process does something abstract.

  98. I don’t follow you Ned. Is your problem with your claim that the algorithm is old or is it that it is abstract?

    If computerizing the old algorithm is obvious, then it it should be rejected invalidated under 103. It should not be rejected under 101 as not being a new machine or improvement thereof. If computerizing the method is indeed new, then 101 is passed via the improvement to an known machine path. Obviousness is handled under 103.

  99. Just, Morse: Dicta, she says.  She also says that claim eight was a process claim, not then recognized by the courts. She further says that Morse was about the breath of the claim which is not a patentable subject matter issue.

    Much of what she says here was also said in the dissents in both Le Roy v. Tatham and Morse.

    As I have often expressed here, I think both these cases are really about the requirement of the patent laws to describe how to make and use an invention, the specification, the requirement in the statutes that we now know to be section 112. I have quoted on numbers of occasions the relevant portions of each case was clearly state that the problem is the lack of a description of how to make and use the full scope of the claimed invention.

    This is where her brief gets really weak. She states that breath is not a patentable subject matter issue. But it is in a way. If one were to claim a principal in the abstract, not tied to any apparatus or process invented by the applicant, then one claims all ways of carrying out the principle claimed. As described in both cases, one were not even need a specification such a case but simply state the principle. Obviously, there's something wrong with such a claim in view of the statutes.

    I would agree with this, that later cases did acknowledge that there in the case of processes, the particular form of the apparatus used was irrelevant. In point of fact, with processes, the particular machines used are largely irrelevant. I would hope you would agree with this proposition.

    Thus if I have a claim to a process for doing steps A, B, C, the invention is in the steps and not in any particular apparatus used to perform the steps. For this reason, one needs to ignore the apparatus.

    Turning back to Benson, what do we have when we ignore the apparatus? We have a method of performing a mathematical algorithm. The claim therefore limits the means for calculating algorithm to one apparatus, a general purpose digital computer. That is the substance of the claim. But as we said, with method claims, the apparatus is irrelevant.

    You see this theme again and again and again in the Supreme Court cases involving mathematical algorithms, where the essence of the invention is the algorithm and not the means of calculation.

    So the patentability critically depends on what the algorithm is. In the case of mathematics is a series of mathematical steps. These are not physical acts. Nor do they modify physical acts. Therefore they are not process steps.

    In the end, the Benson claim did not claim a patentable process. That was in fact the way the Supreme Court came out, even if it did not say so in a very clear fashion.

    Now the article also says there is a great deal of animus between the patent bar and justice Douglas. Indeed, the whole Republican Party was that a war with that gentleman for any number of reasons. One of the greatest thinkers of our time, none other than "Poland is not dominated by the Soviet Union" Pres. Ford tried to have the man impeached. But what are we to think about this? That the greatest thinker of all time, Pres. Ford, was right and justice Douglas was wrong?

    In the end, that brief was an embarrassment to the author.
     

     

  100. Would you agree that installing software manually and manually executing it improves the machine at least in that it gets the machine to do something it couldn’t do before?

    If you will not agree to the above, please explain why one installs the software.

  101. “Of course it is. Does it make the machine operate in a new way? I assume yes.”

    Very good point. Especially since a new use of an old machine is statutory subject matter.

  102. Ned Heller said: “I don’t ingore you commenst”

    But you do refuse to provide citations and proper pin cites when asked. When I recently challenged you for a citations to back up a statement you made regarding the law, you response was,

    Ned Heller Said: “take your fricken insouciance and go to fricken hades, you GD cure.”

    With responses like that I would rather you just ignore my comments.

  103. David, regarding the Codec, if you know,
     
    1) is the invention in the funtions, or can they simply be eliminated from the claim as being "explanations"?
     
    2) if the inventions is in the functions, do the functions describe old elements or new?
     
    3) Finally, I didn't see, or didn't understand if I did see, any functinional relationship between the DAC and the rest of the claim.  It seemed to just sit there. 

  104. Point to the accused device and argue that the application did not enable the accused device. That is the test.

    I thought the test was whether the specification enables the claim.

    No idea how I got that wrong. I must be missing a pincite from Diehr or something.

  105. >>there is no objectively ascertainable correlation >>between physical structure and function when it comes >>to instructions for computers

    Goodness. So, the representation of a number is not physical? Electricity is not physical? That is what you are telling us.

    If you take your instructions and implement them with a special purpose circuit do you that is certainly physical structure that is a result of the function.

    The representation of those instructions (believe it or not) is another form of that same structure. And the physicality of that structure is the electrons and the physical structure of the general purpose computer.

    Sorry, MM, your arguments are angels spinning on the head of a pin again.

  106. Great post MM. You reveal yourself. You see you misunderstand my enablement argument. I argue that a functional claim is enable for what is disclosed in the specification. There are many possible reasons why another device may not be enabled.

    Please. This is patent law 101. The test of whether or not the claim is too broad is whether or not another device reads on the claims and is not enabled. In software there are many cases when this can happen. That is the problem. This right here, should be read over and over again by everyone. This is why the PTO is having so much trouble and the courts are having so much trouble. We cannot delve into this subject becaues of the Possy and Lemless and Sternless and Mooron. The functional claim is enabled for a class of solutions. And, understanding that sentence is the beginnning and ending of all the problems.

    But, when the filth try to say it is an idea and abstract or law of nature, then it is impossible to discuss how to unravel this problem. (Again, I will say that prior to Benson there were academic papers that made a start at this problem.)

    But, I can write a computer program that will spit out all possible chemicals and it is well known that for any chemical formula that describes a possible chemical a chemist can make it. So, your universe is small. Your universe it filled. You are claiming what is known.

    Structure: (See Dennis!!!!!!! I told you that was the next round of witch hunts and you doubted me.)

    Structure: How MM can two machines perform different tasks and have the same structure? Not possible. Ergo, there is structure. Admit that and the next step of understand the scope of enablement can be tackled.

  107. How can the insertion itself be “fallacious”?

    It can be fallacious when you make the statement in an attempt at obscuring the doctrine under discussion.

    Are you saying that you were not trying to obscure the “functionally related” exception to the printed matter doctrine?

    Careful MM, you have been warned that lieing is not acceptable on the new Patently-O.

  108. MM Said: “But beyond that nobody knows what “sufficient integration” means in the 101 context except maybe Breyer.”

    Okay, now that we have cleared up your misuse of “sufficient” let’s get this “Integration Analysis” thing.

    First of all plenty of people know what “Integration” is and how to perform the analysis.

    The Diehr Court knew.

    All nine justices on the Prometheus Court know.

    The USPTO and it’s entire examining corps know.

    For your own education you can refer to the above Court cases as well as

    link to uspto.gov

    link to mpep.uspto.gov

    What follows is my own “Integration Analysis” of the claim in Ultramercial which as you know has been remanded 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/ natural 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. Nor can they be completed with mere verbal instruction or with pencil and paper. 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.

  109. “”But beyond that nobody knows what “sufficient integration” means in the 101 context except maybe Breyer”

    Okay let’s nip this in the bud.

    Being “sufficiently integrated” is like being “sufficiently pregnant”.

    There is no such thing!

    Your LoN, Natural Phenomenon or Abstract idea is either “Integrated” or it is not.

    PERIOD!

    Furthermore the Prometheus panel does not describe “sufficient integration”. Nor did the Diehr Court on whom the Prometheus Court relies on for integration, ever use any limiting or qualifying language such as “sufficient” for it’s integration analysis.

    When the Prometheus does refer to sufficient it is simply saying that if the LoN/Natural Phenomenon or abstract idea is “integrated” that in itself is sufficient to render it not to be extra solution activity, pre or post.

    Are you two clear on that now?

  110. > “aqueous acrylic glitter paint”
    > That is not a structure?
    >
    > “aqueous emulsion of an acrylic polymer”
    > Emulsions of polymers are not structures?

    (1) Which parts do you suppose connote structure?

    “Aqueous” indicates that the substance includes water.

    “Acrylic” describes a general class of chemicals

    “Glitter” describes an appearance.

    “Paint” describes an intended use.

    “Emulsion” indicates a mixing of two normally immiscible substances.

    “Polymer” indicates that the material is made in a particular manner (i.e., through polymerization).

    Putting these words together – the claim provides much detail about the chemical properties, method of manufacturing, and suggested use of the product. Where is the structure?

    (2) Are you suggesting that the inclusion of a single adjective describing a single physical property of an invention is sufficient “structure” to qualify as patentable subject matter?

    If so, then you will certainly agree that “instructions executing on a PROCESSOR IN A DEVICE” is entirely sufficient, since processors and devices are typically hardware components. I wasn’t aware that your sensibilities had shifted so radically. MM will be disappointed to have lost your company on that side of the 101 issue.

  111. 101 Integration Expert: Exactly what pre-Federal-Circuit case law has been revived by Bilski and Prometheus that has created tension with software patents?

    MM: That would be the Federal Circuit case law that says…..

    101 Integration Expert: Excuse me but what, pre-Federal-Circuit case law would that be again? Proper pin cite please?

    ::Silence::

    101 Integration Expert: Prometheus upheld Diehr’s claims as a whole doctrine

    MM:your statement is wrong.

    101 Integration Expert: Can you please quote the exact passage in Prometheus of the Court overturning Diehrs claims as a whole doctrine?

    ::Silence::

    MM: I agree that the Supreme Court believes that the inelgible subject matter in Diehr (an algorithm) was “integrated” into the invention in Diehr. But beyond that nobody knows ……

    101 Integration Expert: Well, I agree you don’t know much about “Integration Analysis” but it’s a good start to acknowledge what the Court has held. Now let’s see if you can connect the dots and realize that you have completely defeated your own mental steps dissection theories, since the Court has also held Diehr is controlling case law, and we know dissection is the antithesis of integration.

  112. On the contrary, two of your examples – processing requests one at a time, and image analysis and modification – can certainly be done via mental steps. Your third example recites hardware, so I don’t see how it’s an example of why the mental steps analogy doesn’t work: you recite hardware, so it can’t be purely mental, by definition.
    In short, your analogies don’t seem to support your argument here… Could you expand?

  113. “Do you seriously, I mean seriously, contend that such is an ‘new’ machine?”

    Of course it is. Does it make the machine operate in a new way? I assume yes.

    You “abstract algorithm” is no longer abstract once it is put to a practical use — a fact complete lost on Douglas within Benson. Again, I highly recommend that you read the brief I cited above.

  114. Your predictions of the demise of the Diehr decision were brayed out ad nausium prior to the Bilski decision which shut you down for months in that collosal failure.

    Your recent (and painfully repetitive) self defeat in the Prometheus 9-0 decision and that decisions announcement that Diehr was most on point should shut you down, but you seem to have become callused to any sense of decency or pride in your self-inflicted jihad.

    I seriously suggest that you seek professional help.

  115. Been there. Done that.

    Ned, your tactic of argue by ignore my past comments is insulting and truthfully I would hope that you would find it beneath you. I have been more than patient with you on this topic.

  116. “But beyond that nobody knows what “sufficient integration” means in the 101 context except maybe Breyer”

    Come come MM, sure they do. So long as you are not claiming the entirety (or practically the entirety) of the algorithm you’re fine.

  117. That is too much Ned. I have schooled you on the facts of Alappat repeatedly. It was you that keeps running. Do you remember my patient efforts with the three steps of software discussion? You are the one that refused to engage when your agendas were threatened by my simple logical and factual presentation.

    I will not tolerate such a lie.

  118. “aqueous acrylic glitter paint”

    That is not a structure?

    “aqueous emulsion of an acrylic polymer”

    Emulsions of polymers are not structures?

    Bro, I think you need to think again.

  119. Ditto using a computer.

    Wrong factually and legally.

    Ned you know this not to be so. Yet you persist in what I can only generously call telling a lie.

    Until you can be honest, we can not proceed.

  120. Mr. Heller lost it and said” 101, are you fricken kidding? I am the only one here that does citations. You can take your fricken insouciance and go to fricken hades, you GD cure.”

    All of that and still no citation.

    Point proven.

    Case closed.

  121. “Where’s the pincite which shows that Diehr’s claim included a mental step?”

    You do not need a pin cite for that because all process have mental steps in one form or another. If you would like me to explain the advanced cognitive psychology and neuro–science this fact is based on I would be more than glad to go in depth.

    After all, there is a scientific reason they are called processes, and not machines, articles of manufacture, or compositions.

  122. > David, that codec claim ((2) U.S. Patent No. 7,930,046) seems to require both apparatus and steps. 112 problem.

    The lack of indentation in Patently-O’s forum software makes this a little difficult to read. But scanned correctly, it’s just a set of components, where each is functionally described.

    There is no 112 problem here. The same type of functional language is present in the water treatment mechanical apparatus: “a micro-nano bubble generation tank that (a) receives water introduced from outside and (b) adds the micro-nano bubbles into the introduced water;…”

  123. David, that codec claim ((2) U.S. Patent No. 7,930,046) seems to require both apparatus and steps. 112 problem.

    First, the claim claims apparatus.

    Then it claims actually setting an output mute switch depending on status conditions.

    Do you think the ambiguity was/is intentional? Is this the form of sloppiness we get from software patent attorneys?

  124. Because copyright and expression is equivalent to patent and function…

    No wait, it is not.

    Yet another wonderful MM self-defeat.

  125. > “Processes” aren’t “analogous” to structures. The recitation of new structures (or a new physically defined arrangement of old structures) is necessary in the other examples, but you want an exception to be made for computers running new instructions and for compositions carrying the instructions.

    I’ll await your comments reconciling your “structure uber alles” position with the totally structure-free mechanical, chemical, and electrical patents presented above.

  126. I not only give citations, I give pincites. And even better (much much better) I give pincites and proper readings of those pincites.

    Where’s the pincite which shows that Diehr’s claim included a mental step?

  127. In Diehr, a software program using the Arrhenius Equation was able to determine temperature and automatically cause a lid to open on a rubber curing mold.

    So awesome. Interesting fact: almost all of the Justices who decided that case were born while Arrhenius was still alive. Arrhenius didn’t reach 70 before he died, but he was born before the US Civil War, which was a fight over whether it would remain legal for people to own and sell other people like they were personal property.

    This is just another way of saying that Diehr’s invention will soon join the same heap which currently includes Signature Financial Group’s equally unworthy invention.

  128. Ned, do you really think that you are the only one here that does citations? Really?

    And I not only give citations, I give pincites. And even better (much much better) I give pincites and proper readings of those pincites.

    You are welcome.

  129. > All of that stuff is ancient in the art, David, connected just as you recited.

    101, Malcolm. The topic is 101.

    > …we’re not talking about a new device that is structurally distinguishable from prior art devices and which converts, e.g., sound waves into, e.g., light waves or electromagnetic waves.

    The codec circuit claim that I posted above (7,930,046) is composed of switches and modules that are described purely by their function. They are not structurally related. They may not even be structurally *connected* – near-field wireless communication is starting to be used to couple circuit components. And their sole purpose is to convert a signal into a different form.

    Do you object to the 101 patent eligibility of that circuit?

  130. What the heck is the “heart” of the “functionality exception”? You brought it up. Now explain it. Baby steps.

    Now you want me to explain something that you already admitted to and self-defeated on. Maybe you can borrow Michael R Thomas’ time machine and recall your self-defeat admissions.

  131. The only processes the judiciary have declared to be non patentable are Laws of Nature/Natural phenomenon and abstract ideas.

    Also purely mental processes, and claims reciting only an old conventional step followed by a mental step (since a mental step can not possibly be “integrated” with a prior conventional step in a manner which avoids the effective claiming of ineligible subject matter).

    Feel refer to provide a counter-example if you believe this is mistaken. If you can’t provide a counter-example, then probably best to simply say thank you.

  132. > You’ll find that in those applications the actual invention is not the engine, the power source, or the power conduit, but rather some other improved component that recited structurally and is connected to them in a way that is also recited structurally (if that’s part of the invention).

    Sometimes, yes. Often, no.

    Let’s consider some examples in different fields.

    ===

    (1) U.S. Patent No. 7,803,272:

    A water treatment system, comprising:

    a micro-nano bubble generation tank having a micro-nano bubble generator for generating micro-nano bubbles including both micro bubbles and nano bubbles, wherein the micro-nano bubble generation tank receives water introduced from outside and adds the micro-nano bubbles into the introduced water; and

    an anaerobic measuring tank for applying an anaerobic treatment to the water introduced from the micro-nano bubble generation tank and measuring a content of the micro-nano bubbles in the water under treatment.

    ===

    (2) U.S. Patent No. 7,930,046:

    A codec comprising:

    an output module for converting a digital input signal into an analog output signal;

    a control interface, operatively coupled to the controller module, for receiving a rules enable signal and for selectively enabling or disabling selected ones of a plurality of disconnect rules in response to the rules enable signal, the plurality of disconnect rules comprising a first disconnect rule;

    a controller module, operatively coupled to the output module, for monitoring a plurality of status conditions and to:

    when the first disconnect rule is enabled, setting an output mute switch to mute an audio output in response to determining that the first condition is met;

    when the first disconnect rule is enabled, setting the output mute switch such that the audio output is not muted in response to determining that the first condition is not met; and

    when the first disconnect rule is disabled, setting the output mute switch such that the audio output is not muted both when the first condition is met and when the first condition is not met.

    ===

    (3) U.S. Patent No. 5,276,075:

    An aqueous acrylic glitter paint composition comprising:

    an aqueous emulsion of an acrylic polymer having a glass transition temperature between 0.degree. C. and 20.degree. C.,

    glitter, and

    an associative thickener which does not destabilize the glitter comprising a hydrophobically-modified cellulosic polymer,

    wherein after the composition is applied onto a substrate and cured it remains dimensionally stable, flexible and exhibits a gloss of at least 50 after at least one washing.

    ===

    Three average and unremarkable patents, from three different fields. All simply present an aggregation of elements., interrelated by function (“OPERATIVELY coupled”), or logical position within a process flow – or, in the chemical case, not interrelated at all, but simply a novel aggregation!

    None of these patents presents structure. And in each of these fields, this is fine. There is no controversy. There will never be a 101 rejection.

    And yet, if you describe a software invention in the exact same way, MM refuses patentability due to the lack of structure – the sacred quality that ostensibly sets patentable subject matter apart from software.

    Can we put this tired line of reasoning to rest now?

  133. anon, Why?  

    A baseball is a thing.  A fastball is a type of pitch, a known state imparted to a baseball by an act.  It is temporary.  Throwing a fastball may change its state in time/space.  But the baseball itself is unchanged.  

    Ditto using a computer.

    The computer may be used to do something, but the computer itself is unchanged.  Only when software becomes part of the machine can one consider that a new machine is created.  

    When you say that a computer is configured, you seem to include using a computer in your analysis.

  134. Exactly what pre-Federal-Circuit case law has been revived by Bilski and Prometheus that has created tension with software patents?

    That would be the Federal Circuit case law that says you can’t turn patent ineligible subject matter into eligible subject matter merely by reciting some some old, conventional (= insubstantial) but patent eligible element (e.g., “a computer” or “computer-executable media”).

    Prometheus upheld Diehr’s claims as a whole doctrine

    Hmm. Prior to the Prometheus decision you insisted that the claims in Prometheus were eligible because Diehr said courts were absolutely precluded from taking into the novelty of a particular claim alement. But the Supreme Court found the claims in Prometheus ineligible, in fact, only after they took into the account the old, conventional nature of one of the claim elements (hint: it was the element that wasn’t a step of thinking about a correlation).

    So your statement is wrong. Maybe Dennis can find a way to rephrase what you wrote so it is correct.

    “integration” analysis

    I agree that the Supreme Court believes that the inelgible subject matter in Diehr (an algorithm) was “integrated” into the invention in Diehr and somehow that is why Dierh’s invention was eligible. But beyond that nobody knows what “sufficient integration” means in the 101 context except maybe Breyer. Is an otherwise ineligible algorithm stored on a general purpose computer sufficiently “integrated” into that claim to render the claim patent eligible? We’ll find out in a couple years.

  135. And I have repeatedly asked you to ground your extra requirements (such as this “automatic” requirement) to some legal anchor.

    And repeatedly you decline to provide any such legal basis.

    Will this time be any different Ned ?

  136. Regrettably, I must disappoint you: have never touched a ham. Thought about it, but it’s one of 500 hobbies I’d pursue if I had more time.

    I’ve read of Sealand as part of the copyright wars. Fascinating story. By sheer coincidence, I learned that the owner of Sealand (a gentleman named Roy Bates, or “Prince Roy of Sealand”) died today. :-/

  137. Dennis Crouch said:

    “At the same time, however Bilski and the subsequent case of Mayo v. Prometheus (2012) serve to revive the pre-Federal-Circuit case law and create further direct tension with software patents.”

    Dennis:

    Exactly what pre-Federal-Circuit case law has been revived by Bilski and Prometheus that has created tension with software patents?

    Bilski struck down a strict machine or transformation test, while explicitly stating the Courts precedents stood for no more than the principles in Diehr.

    Prometheus upheld Diehr’s claims as a whole doctrine, relied on its “integration” analysis, while calling Diehr the most on point for what IS a patent eligible application.

    None of the above Court actions seem in conflict with the patentability of software to me.

    So if you are claiming that those Court cases somehow revived anti software cases of the lower courts I would like to know what those case are?

    Thank you for your time.

  138. Why should we begin by assuming software is not patentable, or at least suspect?

    Why the prejudicial and discriminatory stance agains this area of technology?

    Then what’s next, business methods? Medical Methods? Rubber curing Methods?

    The bottom line is, software IS patentable, until Congress says it is not.

    Why?

    Because it is a process, just like any other process. The only processes the judiciary have declared to be non patentable are Laws of Nature/Natural phenomenon and abstract ideas.

    Software does not fit into any of the categories above and we all know it.

    Therefore the burden of proof should be on those that seek to roll back the progress and close the door on patent rights.

  139. Here is nother hint.

    In Diehr, a software program using the Arrhenius Equation was able to determine temperature and automatically cause a lid to open on a rubber curing mold.

  140. “What of the doctrine that an old/obvious use of an old machine is not patentable as a process? ”

    Citation please?

    Oh silly me. This is Ned Heller. And Mr. Heller does not do citations.

    Carry on with saying anything you want.

  141. analogous flexibility

    There’s no “analogous” flexibility in the examples you provide. “Processes” aren’t “analogous” to structures. The recitation of new structures (or a new physically defined arrangement of old structures) is necessary in the other examples, but you want an exception to be made for computers running new instructions and for compositions carrying the instructions.

    It’s an exception you are looking for, not an analogy. More accurately, an obvious apparent exception already exists. The discussion we are having here (and which will soon be had in court) is whether that exception is supported by our patent laws and whether the adverse effects on our patent system merit the continuation of the exception.

    As I’ve noted many times already in these threads, there is, in fact, a very specific but much more analogous exception to the general rule against claiming compositions by the recitation of new functions. I find it odd that none of the usual suspects are bringing it up.

  142. TINLA, I can't get anyone to clearly define what they mean by software.

    I have agreed in principle that software which forms part of the machine such that it executes automatically when required is integral with the machine.  Such software transforms the machine into a particular machine and is patentable as such.

    However, the apologists for patenting software will never agree that it is required that the software be part of the machine and be automatically executed.  They will say, rather, that when one manually installs the software and executes it that, nevertheless, such an action creates a new machine.  I think that has to be wrong.

  143. Do you agree that “a program” is a noun, as opposed to an adjective, verb, etc.?

    Are you aware that a noun is either a person, a place, or a thing?

    Are you under the impression that “a program” is a person or a place?

  144. anon, agreed.  But when you suggest that the finding by the Supreme Court that the Benson algorithm was not directed to a practical application somehow is dicta is the problem with your thesis.

  145. Policy is for pounding tables. Funny you again accuse others of that which you do. Maybe because both the facts and the law work against you, you are in such a hurry to dismiss them.

  146. Les, not categorically.  Benson remains good law.

    I claim: computer programmed to execute an abstract algorithm.

    Do you seriously, I mean seriously, contend that such is an "new" machine?

    What of the doctrine that an old/obvious use of an old machine is not patentable as a process?  

  147. Where ya gonna get the Examiners that can read and understand reams of .exe files or what ever you mean by a more realistic enablement standard?

  148. At that level of detail the claim can be rejected under 102. (e.g. Batmobile or failing that, NightRider)

    If it can’t be rejected by the prior art, and the disclosure tells how to make and use such a car, then it should be granted.

  149. AgentGG: Introduce executable code as a new statutory class of invention

    There is already copyright protection, on steroids, to protect code. See, e.g., the DMCA. Enough special treatment is enough.

    Define a more realistic (read: tougher) enablement standard for software patents going forward.

    Sure. But the end result is the same: provide the code. And that’s protected by copyright.

    software does not merely automate actions that could be performed manually, but represents an entirely new class of innovation:

    – a web server processes requests from thousands of remote clients and responds to each one individually

    News flash: prior to computers, systems existed for responding to multiple remote requests individually. This is not an “entirely different class of innovation.” It’s information processing. Animals have been processing information since the evolution of the brain and, at a more primitive level, earlier than that.

    software, an industry that dominates our economic landscape

    That’s certainly why the lawyers got interested in trying to patent software. But it doesn’t excuse the horrible legal arguments that have been made (or worse: were never made) to permit functional claiming to run amuck in this particular subject area.

  150. “Never mind that no specific physical architecture is disclosed”

    Wait, wut? Did they fail to provide drawings? Because if so, objection!

    “But software inventions that recite “an image capturing component” connected to “an image rendering component” via “an image processing component” – no matter how specific and novel and inventive and advantageous this is, it only discloses “function” and not “structure,” and so is patent-in eligible. Right?”

    Did they provide a drawing? Or is it all just a series of “boxes” with a “flow-chart”?

    It appears you’re just trying to claim a camera with a sensor part, and a processor which has two physically different areas. If that be true, there is no problem, but then again, it has di ck to do with softwarez.

  151. software inventions that recite “an image capturing component” connected to “an image rendering component” via “an image processing component”

    All of that stuff is ancient in the art, David, connected just as you recited. When we talk about “software inventions”, we’re talking about the invention of new methods of processing information, i.e., converting information from one “type” (which you are free to name whatever you want) into another “type” (which you are free to name whatever you want). And we’re talking more specfically about claiming that new method without reciting any new technology that results in a physical (non-abstract) transformation, i.e., we’re not talking about a new device that is structurally distinguishable from prior art devices and which converts, e.g., sound waves into, e.g., light waves or electromagnetic waves. We’re talking about old devices that are “instructed” (or “programmed”) to receive/obtain [insert arbitrary “kind” of] data A and “transform” it into [insert arbitrary “kind” of] data B. Let’s ignore for the moment the question as to whether that type of abstract transformation is the sort of transformation that merits or is entitled to patent protection. The gist of the “structure” argument (which bears on computer devices and B-claims) is that an old “instructed” device/composition is indistinguishable from these new “instructed” devices except in terms of their functions. And the (thus far) irrefuted fact is that, with one exception, claims to new compositions can’t be obtained over claims to old compositions merely by the recitation of their new “capabilities”.

    Once this fact is recognized, we can move onto the more interesting policy discussion which is the degree to which patents are necessary or even helpful for promoting the progress of the “software arts.” Note that this question is distinct from the often-confused issue as to whether patent lawyers, patent aggregators, and other skimmers of the present software-patenting paradigm will take a short-term financial hit.

  152. “I reject your game of having someone else explain everything so that you can take potshots.”

    French for “I don’t know jack squat about the PMD beyond that which NAL force fed me back in the day, and she didn’t know jack squat either so I know literally nothing”.

  153. You’ll find that in those applications the actual invention is not the engine, the power source, or the power conduit, but rather some other improved component that recited structurally and is connected to them in a way that is also recited structurally (if that’s part of the invention).

    Is it possible that David Stein doesn’t know this already?

    Serious question.

  154. You will have to actually come up with a substantive argument MM

    Respectfully, anon: we’re way past that but keep pounding the table if that makes you happy. In the instant case, I simply stated a proposition. You are entitled to believe that the proposition false but it remains irrefuted without evidence. You haven’t provided the evidence and you never will, just as you will never ever provide an example of a new mental step that is sufficiently “integrated” with a prior old step such that a claim reciting those two steps meets 101. There is a simple reason for this failure on your part, anon. Try the high road for a change.

    Your fallacious insertion of “physical” in front of “structure” is noted

    How can the insertion itself be “fallacious”? I simply wrote a sentence. It’s a fact that the sentence (like any proposition) might be false or not. The sentence I wrote, however, is not false. It’s true. Here it is again:

    there is no objectively ascertainable correlation between physical structure and function when it comes to instructions for computers

    All you need to prove me false is provide the correlation, anon. You can’t do that, however. Nobody can. That’s a fact you need to learn to accept graciously. Try it sometime.

  155. I reject your game of having someone else explain everything so that you can take potshots.

    I’m not asking you to explain “everything.” I’m asking you to explain anything in your comment upthread, which is nothing more than an exercise in handwaving without additional explanation. I understand that you are reluctant to make any positive statements about anything, it being so much easier to simply re-type “you self-defeated” over and over.

    Now is your chance to impress everyone with a little intellectual honesty.

    9-0. You still haven’t digested that bit of honesty and now you want more? LOL.

    What the heck is the “heart” of the “functionality exception”? You brought it up. Now explain it. Baby steps.

  156. Mechanical inventions often recite claims like “an engine” coupled with “a power source” via “a power conduit.”

    You’ll find that in those applications the actual invention is not the engine, the power source, or the power conduit, but rather some other improved component that recited structurally and is connected to them in a way that is also recited structurally (if that’s part of the invention).

    Chemical and pharmaceutical inventions are also recited structurally at the point of novelty/utility. Even if the structure is only that of the functional group of immediate interest.

    If you’re claiming a novel computer mouse, for example, then by all means connect it to an unspecified “computer”. But if you’re going to claim that your invention creates a Whole New Computer(TM), then you’d best start describing and claiming what makes that computer different, with more particularity than “it does tricks A, B, and C”.

  157. Your fixation on structure vs. function is cute, but irrational.

    Mechanical inventions often recite claims like “an engine” coupled with “a power source” via “a power conduit.” You would bless that as a recitation of “structure” – broad, yes, but PHOSITA knows what a “fastener” is, so this is an indisputably patent-eligible subject matter. Never mind that no specific physical architecture is disclosed; that’s jut structural “breadth.”

    But software inventions that recite “an image capturing component” connected to “an image rendering component” via “an image processing component” – no matter how specific and novel and inventive and advantageous this is, it only discloses “function” and not “structure,” and so is patent-in eligible. Right?

  158. Not so at all NS – check again at which authority the SC has and which authority Congress has.

    And until Congress explicitly rules them out, they are in.

    Of course, you may want to reference my many earlier posts on what this exactly means and how I have treated (uniformly and consistently) the application of the Judicial Exceptions (which according to that same Supreme Court do not come from the authority of the Court, but rather implicitly from the words of Congress)

    Ever wonder why in every 101 decision since the 1952 Act the Supremes expressly found authority in what Congress had done? Don’t you think it’s time you do?

  159. Requiring an explicit recitation of hardware for a software claim does nothing but tie software to hardware, which is inherently true in any case.

    Please see my other post as to why the mental steps analogy does not hold for software. Thus, ‘purely mental infrigement’ is a poor standard and should not be considered. We should just consider infringement of software by other software.

  160. I’m stunned that you have ever heard of Sealand. Are you a radio ham by any chance?

    Mind you, moving servers there to get around a patent might provide a reason for its existence, beyond merely providing a rare place to ‘work’ on ham radio.

    N3KIP, aka G8VUK

  161. I reject your game of having someone else explain everything so that you can take potshots.

    You have already admitted your self-defeat of functionally related. Now is your chance to impress everyone with a little intellectual honesty.

  162. To even suggest that software, an industry that dominates our economic landscape, both in terms of revenue and utility, is not patentable is prima facie ludicrous.

    IMHO, what the software patent law history to date shows is how our patent system has struggled to adapt to software technology.

    Let me give some common examples to show that software does not merely automate actions that could be performed manually, but represents an entirely new class of innovation:

    – a web server processes requests from thousands of remote clients and responds to each one individually;

    – image processing software analyzes and modifies image content in data streams, such as video feeds; and

    – an embedded controller in a mechatronic system receives sensory input from the enviroment and activates actuators.

    These simple examples show us that the innovation content in software could never preclude patentability, because software creates functionality that is more than the sum of the tangible elements in many solutions. It is the core of innovation in many systems, and represents precisely what the patent system is designed to protect.

    So the issues we are dealing with today are the result of a sub-optimal response of our patent system to software technology. How to rectify this?

    IMHO, there are two viable options:

    1) Introduce executable code as a new statutory class of invention, besides devices, processes, and compositions of matter. Software is none of these and may deserve commensurate recognition;

    AND/OR

    2) Define a more realistic (read: tougher) enablement standard for software patents going forward. As software gets more complex, the enablement of patent applications should mirror that trend. By raising the bar on the contents of the description, we actually would be able solve many issues with the patent system that appear to have negative consequences. This might even involve defining, to some degree, the skill level of a PHOSITA for software claims.
    This is the idea I prefer, because it can be implemented by the USPTO, though it will be fought tooth and nail by present patent holders and technology companies.

    What do you think about these two suggestions?

  163. Understand that which is a HOLDING from Benson and that which is merely DICTA from Benson.

    A lower court does not need to “overrule” dicta.

  164. Your fallacious insertion of “physical” in front of “structure” is noted and rejected.

    You will have to actually come up with a substantive argument MM.

  165. Prof. Crouch,

    The repeated vacuous comments clearly obfuscatory in nature directed to non-useful arts are extremely non-useful to an adult conversation on the merits for this topic.

    Please provide suitable relief.

  166. > The patent system wasn’t designed to promote things like the creation of new structually-defined devices for transmitting information? Really?

    I am not talking about “creating a new structurally-defined device.”

    I am talking about taking the exact same device (e.g., a server configured in exactly the same way), carrying it across the border to another country, and plugging it in.

  167. There wouldent be any entertainment industry if I hadent invented it and I still havent been paid yet however I was expecting to be or it wouldent exist except in some circumstances where people were saying invent or die but at least there intrests caused the conception even though it was highly illegal so without patents nothing would be here since 1953 and before with my grandfathers

  168. it is nice of you to take the most ridiculous claims and hold them up as if they are representative of information processing claims when they are not.

    As already noted, there is no difference between the “most ridiculous claims” in this area and the other claims except that the drafters of the “most ridiculous claims” failed to come up with clever “technical” names for the “kinds” of information being received, stored, and ouputted by the computer.

    Point to the accused device and argue that the application did not enable the accused device.

    I’m pretty sure that you’re already on the record here as arguing that all computer programs are enabled once you describe their functionality. Anyone can write the code once they are provided with the (ahem) “new” abstract concept. So that argument doesn’t work.

    Gee, I ran 10,000,000 chemicals through water with fish and look this one reacts so I am claiming it.

    If it’s a new and non-obvious chemical, you deserve to be congratulated. If it’s not a new chemical, you might be eligible for a method claim. But you’ll still need to describe the chemical using structural terms that unambiguously and objectively distinguish it from those in the prior art.

  169. According to the Supreme Court, the Constitution gave the Supreme Court this authority. Assuming that software patentability should be decided by some other governmental body, how would that work, and what are parties supposed to do in the meantime?

  170. Those technical games are not the types of design-arounds that the patent system was intended to tolerate.

    The patent system wasn’t designed to promote things like the creation of new structually-defined devices for transmitting information? Really?

  171. you have no substantive rational

    YYes, I do anon and it’s shared my many people, including may people who write code for a living. That’s why we’re having the discussion today, anon. That’s why this case and others are being teed up and that’s why the Supreme Court will be weighing in a matter of time, just as they weighed in on the issue of [oldstep]+[newthought] claims in Prometheus. You (and your sockpuppets) seemed to have similar difficulties processing that turn of events, as I recall. I found it amusing then and I find your stubborn denseness equally amusing now.

    you flail against the heart of the functionality exception to the printed matter doctrine

    I have no idea what the “heart” of the “functionality exception” to the PMD is and neither do you. You are playing the game that you so dearly love to play where you pretend that we are not having a policy discussion. I’m sorry, anon, but we are having a policy discussion. Does the “exception” to the PMD play a role in this policy discussion? It certainly does, but only to the extent that rampant abuse of the “exception” seems to have contributed to the problem.

    It’d be better for everyone (but especially you) if you started at the beginning and explained to all of us (1) what is the purpose of the “printed matter doctrine; (2) what is the underlying patent statute or Constitutional principle that was used to justify the creation of the “printed matter doctrine”; and (3) what is the name of the Supreme Court case which first affirmed the applicability of the PMD; and (4) what is the name of the Supreme Court case which first affirmed the applicability “functional exception” to the doctrine?

    Now’s your chance to impress us all, anon.

  172. In your rush to your bad joke, you forgot to read my comment. That was my point: not being cyborgs, we can’t perform steps in a patentable “software” claim in our heads, because they require that hardware, or those networks. Because those claims don’t raise that pure-mental thoughtcrime possibility, they shouldn’t be rejected under 101, the way a mathematical algorithm or abstract idea should be.

  173. > You have patents from the 90s claiming an algorithm implemented on generic computer components asserted against modern systems in which the sole commonality between the systems is the algorithm. … This is unlike any other technological art, at the moment.

    Let’s analogize.

    In the field of chemistry, functionality = a specific arrangement of atoms. A patent applicant doesn’t need to limit the claims to an entire molecule (they can claim only the functional part of the molecule, such as a binding site of a protein), or only one arrangement of atoms (they can claim a genus), or only the arrangement when made by one synthesis technique (as long as they disclose one, or if PHOSITA would know of one).

    In the field of electronics, functionality = a specific combination of electronic components. A patent applicant doesn’t need to limit the claims to a specific, complete circuit (they can claim only the subset that provides a useful result), or only a single, exact circuit provided by a single mask work (they can generalize and vary the combination to a genus).

    In the field of software, functionality = a specific combination of software processes. The inventor would like to claim any variation of that combination that satisfies function/way/result equivalence – in exactly the same way that chemical patentees claim any protein featuring a specific type of binding site, and that electronics patentees claim any device featuring a combination of components resembling an exemplary combination.

    But you suggest that the software applicant shouldn’t be granted this analogous flexibility – that their claims should be tied to a single type of device, and that improvements in various components of the device, whether or not those improvements actually pertain to the software invention, should escape the scope of the patent.

    I can’t agree with your rationale.

  174. If that we’re true of software, then software would not work.

    It is true that there is no objectively ascertainable correlation between physical structure and function when it comes to instructions for computers, just as it is true that there is no objectively ascertainable correlation between physical structure and function when it comes to instructions for, e.g., “making a new cookie”.

    So your “if-then” proposition is false, anon. Please return to the drawing board. Here’s a hint, anon:

    10101010100110110101101
    01010011010001100110010
    10101010101010101010110
    01011010100111101010001
    01111101101010011010010
    10101010010010101011110
    11101101011010101001010
    10101001010100111100101
    01010101010101001010100

    Ask someone to translate that for you.

  175. New technologies evolve and develop, and software is one of them. Look at the number of top universities that are offering degrees in software engineering. And look at the headlines on news articles, like this one from yesterday. — GM now hiring — 10,000 computer workers

    You could have said the exact same thing about the entertainment “industry.” Why weren’t there patents on all that new entertainment based on all the “sensations” they caused in viewers and listeners who simply couldn’t help put plop down $$$$$ for more more MORE!!!!!!!

    the patent system needs to adapt

    Why? You think the rate at which new methods of processing information about when and where your grandmother downloads Beatles songs (“wherein said song re-mastered to correct pitch errors in the vocals”) is going to slow down if we stop handing out patents? Why would you think that?

  176. Perhaps if what you say is true:

    But, again, and again, I will say this:

    Point to the claims. Point to the accused device and argue that the application did not enable the accused device. That is the test. And that is the key to policing software claims.

    Besides, it is nice of you to take the most ridiculous claims and hold them up as if they are representative of information processing claims when they are not.

    I guess you better get back to your claiming of a known chemical substance. Gee, look I found a sequnce of DNA that already exists and now I am claiming it. Gee, I ran 10,000,000 chemicals through water with fish and look this one reacts so I am claiming it.

    Humph.

  177. > Stop forcing software patents to be written as if they were NOT software patents.

    Better: Stop forcing patents in the computing arts to limit the claims to a specific set of implementation details.

  178. > Technical gamesmanship? That sounds like real innovation requiring actual skill beyond simply filig a patent application.

    Consider a copyrighted work – let’s say, the best symphony ever written. Obviously, copyright applies to it.

    Let’s say that someone wants to create a knockoff that’s as close as absolutely possible without actually violating copyright, so they change one note at a time until they happen to cross some threshold – and, voila, no copyright infringement.

    That’s the type of technical gamesmanship I mean regarding the unnecessary complexity with software patents:

    “You patented your software as instructions executing on a device? OK, we’ll just move our servers to Canada, or New Zealand, or Sealand, so that we’re outside of your patent jurisdiction.”

    “You patented your software as an executing method? OK, we won’t actually *execute* the method; we’ll just give millions of people source code. If *they* choose to execute it, you can sue them; we’re only contributorily liable.”

    “You patented your software as a computer-readable storage medium? OK, we’ll just distribute it over the internet.”

    Those technical games are not the types of design-arounds that the patent system was intended to tolerate. They are simply loopholes, created and held open by the endless philosophical ponderings of CAFC/SCOTUS about whether computers are “abstract,” whether signals are “tangible,” and whether Steve Jobs’s ghost can dance on the tip of an iOS reset paperclip.

  179. That’s never the case where no there is no correlation between structure and function.

    If that we’re true of software, then software would not work.

    Thanks for attempting to talk substantively and (once again) self-defeating.

  180. New technologies evolve and develop, and software is one of them. Look at the number of top universities that are offering degrees in software engineering. And look at the headlines on news articles, like this one from yesterday. — GM now hiring — 10,000 computer workers

    And the patent system needs to adapt and recognize and protect software developments where they otherwise meet 102, 103 and 112. (Simply computerizing a method is most likely an obvious, and thereby nonpatentable, development.)

  181. You are the king of non-responsive arguments MM.

    The points in my post: that you flail against the heart of the functionality exception to the printed matter doctrine has been evidenced repeatedly as your self-fail. You cannot advance the conversation past that point without attempting to resort to childish non-useful arts strawmen which has been pointed out previously.

    You have nothing useful to say and yet you prattle on because you “don’t like software patents.” Yet, you have no substantive rational and instead drive the thread to a Trainwreck state.

    Please post responsively or not at all.

  182. really need to step up your game

    There’s that weird habit of yours again, anon: a completely non-responsive comment, including a parroting of an earlier statement I made. It’s the blog equivalent of “your mama.” Try to do better. We’d all appreciate that.

    this stale line of thought of yours convinces no one.

    It may not be new, anon, but it’s not “stale.” And please don’t confuse yourself with everyone else. Next thing you know you’ll be posting here under multiple aliases again.

  183. anon: configured” is a structural claiming feature

    It can be in certain contexts, anon, but only where the structure(s) are objectively ascertainable by the skilled artisan. That’s never the case where no there is no correlation between structure and function. This is easy stuff to understand. Also, you’ve been taught this irrefutable fact before, dozens of times.

    “isolated” and “purified…?”

    Among others. You’ll note that no patents have been granted to “isolated molecule wherein said molecule is configured to [insert any function]”.

    Better step up your game, anon. This has all been taught to you before. Are you going to start pretending that you’re ten different people again?

  184. The question is NOT is there a better one. The question is which one was given the authority in our constitution.

    You want it different? There is a way to get there (properly) – it’s called a constitutional amendment.

  185. Same banal flailing against the functional exception and the attempted obfuscation with examples to the non-useful arts.

    You really need to step up your game MM, because this stale line of thought of yours convinces no one.

  186. The particular configuration of a programmable machine is not eligible as a new machine.

    Wrong in fact.
    Wrong in law.

    You know better, this what you post is a deliberate lie.

  187. In My opinion software patenting ahould be allowable it it creates a marketable invention leave the machine or transformation in the last century there should be progress not repeted regression in human advancement to the fullest extent possible. It should be the right of the genuine inventor based on his cival rights to the patent as his intellectual property. If we could only tell that to the aia drafters we could be really be moving ahead now instead of a dead stop where we are at now.

  188. Structural features like “isolated” and “purified…?”

    Reminder: “configured” is a structural claiming feature.

  189. David,

    The error in your statement is “expressly add.”

    That’s not how the legislation works. Legislation ia already perfectly clear and the gate is a wide open gate and Congress adds things expressly disallowed (e.g. nuclear weapons).

    The real problem is the people not understanding that this type of innovation cannot be known beforehand and legislated as “allowed.”

  190. A computer that can drive a car would be declared an abstraction or an idea.

    1. A computer that can drive a car.

    Why would squashing this claim under 101 as a transparent effort to claim an “abstract idea” offend anyone?

    In fact, typical computer-implemented claims do not contain much more than this. Even if you were granted this claim, tomorrow some hard-“working” software “inventor” will be claiming a computer that can drive a car, wherein said car is moving on an inclined plane, wherein said computer calculates this that and the other blah blah blah blah and wherein said gear is automatically adjusted blah blah blah and wherein said driver is informed that gas is running low by an automated text message blah blah blah wherein said car lets you know it’s your mother-in-law’s birthday and automatically provides directions blah blah blah.

    This is not “promoting progress” in “computers”. This is promoting progress in patent drafting. Nothing more.

  191. Are you advocating for a rule that: if you drop the generic computer components and all you have left is an algorithm (a series of steps/problem solving operations) then you aren’t patent eligible. If so, okay.

    If not, I’m not sure what this comment adds.

  192. COnsidering that congress DID just implement a new patent law and left the situation unchanged…. Looks like they did decide.

  193. This really a job for Congress, because until Congress expressly adds software to patent eligible subject matter, the courts will continue to issue conflicting opinions due to the lack of clear statutory guidance.

  194. nah, it’s just like chemistry. All the parts already exist and rearranging them changes nothing. Ban chemical patents.

    Key distinction: those patented chemicals are claimed and examined based on a required recitation of the structural features which distinguish them from the prior art.

    This irrefutable point has been made to you before, probably a hundred times.

    technical solutions

    Since when is mere recitation of the result desired (e.g., a computer programmed to be capable of storing/receiving/processing X) equivalent to a “technical solution”?

    That’s a rhetorical question. Step up your game.

  195. Les: All inventions are assemblages of known components.

    To the extent this is true, it is utterly banal: we do all live in the same universe, although Les clearly wishes he lived in a different one.

    Your strawman does highlight one of the key problems with B-claims, at least: they pretend to be new “assemblages” but are structurally indistinguishable from prior art “assemblages”. With one trivial exception, no other technology is afforded this luxury.

    Rather than distinguish the prior art on the basis of structural differences, the typical B-claim (much like the typical computer-implemented “process” claims) distinguishes itself from the prior art on the basis of the “type” of “information” being processed. In other words, receiving, storing and delivering information about the status of your yard maintenance contract or YBA2 hedge fund is considered by the USPTO to be patentably distinct from receiving, storing and delivering information about the last ten Adam Sandler DVD’s your grandmother purchased. Why is this the case? There is no legal justification for the distinction. If there were, the patentability of DVDs containing new “kinds” of movies or new “kinds” of music or new “kinds” of advertisements would be unquestioned because there is no patent-legally meaningful distinction to be drawn between the different “effects” of such information on the carriers and/or recipients of that information. None. Nada. Zilcho.

    Note that for the purpose of responding to your comment, Les, I am for the moment ignoring the enormous and weekly-growing class of computer-implemented claims that differ from the prior art only in their recitation of a computer and/or a memory (computerized methods of bird identification anyone? have the people at the USPTO responsible for that joke been fired yet?). But only for the moment.

  196. MM: before patents everything to do with computers was a secret. The big talk was how to build into the hardware chips to prevent people from decompiling code.

    Microsoft hired those thousands of researchers because of patents. You guys, just have no experience with real development, real corporations, and just speculate based on no evidence. And, now you have Possy on your side. What a dope.

  197. Wow, Brian another person that understand the reality of the situation. A computer that can drive a car would be declared an abstraction or an idea. They used to say it captured a natural law, but they have been so humiliated over this claim that they have created new words.

    Voo doo words: idea, abstraction, no structure (imagine two devices with no structure and yet they perform different function–magic!!!!)

    But, the filthmeisters march on! Moore whom I have heard cackle with glee at the thought of ruling that all software is ineligble. Dope Lemley who says software has no structure. Posner how has decided to make factual findings on his little putz brain that software patents do not encourage innovation. I think Posner should be awarded the prize for the person that has gone furthest for the smallest contribution to law.

  198. Algorithm + generic computer?

    The patent is on the algorithm. If all it does is something abstract, then…

    Well patenting abstract principles has been contrary to law for 160years.

  199. how can you mentally store something in a computer implemented database?

    how can you mentally transmit data via a computer network from a first computer to a second computer?

    were you the inspiration for that show Heroes? Was it based on a true story?

  200. Is there a better governmental body? Unless and until Congress acts, we have to live with the law as it is written. The Supreme Court interprets existing law, which may or may not exclude software patents.

    Congress should decide this issue, but we can’t wait for an event that may never come.

  201. nah, it’s just like chemistry. All the parts already exist and rearranging them changes nothing. Ban chemical patents.

    Hey for that matter, all mechanical parts already exist. We’re just reconfiguring them. Ban mechanical patents.

    And so goes the rabbit hole of “new, useful, and non-obvious technical solutions are not patentable subject matter.”

  202. Just as with mathematical algorithms, software can be performed as a series of mental steps, albeit slowly. Allowing a purely mental patent claim would mean that one could infringe simply by thinking… and possibly could infringe simply by reading the patent application and examples, and particularly any flow charts in the figures.
    One potential remedy for infringement being an injunction, how do you possibly enforce an injunction to stop someone from thinking about something? Does it create a potential thoughtcrime?

    The same applies to diagnostic patents – realizing that a patient has blood levels of chemical X greater than Y, and determining that a patient has disease Z can be performed in one’s mind, and simply reading and understanding a patent application that has an example chart of a patient’s blood work that indicates they have disease Z would infringe such claims.

    Requiring hardware in the patent claim may be trivial in terms of obviousness, but it removes any potential purely mental infringement.

  203. All inventions are assemblages of known components. The Wright Flyer was an assembly of known: Wood, fasteners, cloth and rope or cable all being used, in general terms, for what they were intended. The wood was used for framing. The cloth was used to direct the wind (like a sail), the fasteners were used to hold the wood and cloth in the desired position. The rope or cable was used to pull things….

    There is no reason to carve our an exception to prevent inventions that happen to include a computer as a component of the inventive combination from being patented.

  204. Requiring claims to specify, and be limited to, a single, particular embodiment creates opportunities for design-arounds that unfairly appropriate the invention through technical gamesmanship.

    Technical gamesmanship? That sounds like real innovation requiring actual skill beyond simply filig a patent application. Remind me again: what is the purpose of patents? To promote progress in the useful arts, or to line the pockets of patent attorneys and “investors”?

    You realize, of course, that other fields have been evolving successfully under this nightmare regime you describe for a long, long time, and continue to do so.

    The Big Lie is the argument that because some area of endeavor makes money for a lot of people that somehow somebody should make sure that patents are involved. Gee, I wonder what type of person would be most likely to make this sort of argument?

  205. MM,

    Not sure what point you think you are making, but IANAE’ s vapid “House” argument has been exposed as a fallacy a long time ago. He should know better than to trot it out yet again.

    If you want to contribute, then please start doing so.

  206. Yeah, I think that’s an unfinished sentence. I think Dennis meant to conclude that with: when it is run by a “computer” or other software running device.

  207. Exactly.

    This is unlike any other technological art, at the moment.

    This is unlike any other technological art, ever, with the exception of piano rolls and the like, which nobody ever patented based on the new information encoded thereon. And why not? One reason: there wasn’t enough money to be made by piano roll trolls (or at least that was the perception). Where were the patents on “new” computer punch cards which provided computers with new capabilities but which differed from prior art punch cards only in the information encoded thereon?

    what really needs to happen is the scope of how those patents need to be reigned in under other patent doctrines

    101 is perfectly fine. As we discussed here for years, you can’t have your cake and eat it, too. It’s a slow motion squeeze play and the software “industry” (I still laugh at the concept, pun intended) is going to take a tumble similar to that which the so-called personalized medicine “industry” scammers took in Prometheus.

    The bottom line is that the USPTO failed to do its job (and is still failing miserably every Tuesday) and they failed to do it for all the wrong reasons (incompetence and cronyism). The blowback has been building for a long time.

  208. If you want to get down to brass tacks, the real problem is that a general purpose machine has made it possible to claim every incarnation of an algorithm possible. And that’s basically what has happened.

    You have patents from the 90s claiming an algorithm implemented on generic computer components asserted against modern systems in which the sole commonality between the systems is the algorithm. The memory, processing power, networking capabilities, operating systems, communication infrastructure, etc. have wildly shifted and improved, but a patent claiming the algorithm plus the bare essential components of a computer applies.

    This is unlike any other technological art, at the moment.

    So, if you ask me, what really needs to happen is the scope of how those patents need to be reigned in under other patent doctrines to avoid applying the claims to technology that was not available at the time a patent was filed.

  209. anon: Of course we both know that you are purposefully misrepresenting this.

    You fool no one with such pedantic and juvenile parlor games. Stop wasting all of our time please.

    LOL. Clean up in aisle five, Dennis.

  210. A computer program product is a manufacture. In many instances you can download it over the Internet. If the program is a good one, you will only be able to do so after making a payment. So it is a vendible product. And in many cases it advances science or the useful arts.

    Nowadays manufactures are not all made by folk in overalls with chisels, saws and glue. Many are made by high level scientists and exhibit great skill and utility e.g. much control software. The language of section 101 was devised in the eighteenth century and should be “always speaking” so that it continues to cover modern developments. In the same way a statute from 1850 prohibits driving carriages through a park also prohibits driving tanks through the park, even though tanks were not known products in 1850 and are not wheeled in the same way as the carriages of 1850. “Anything under the sun made by man” is perhaps over-broad, but the spirit of what Judge Rich said remains relevant today.

  211. You quite miss the factual and legal significance that the situation described is most decidedly NOT merely using a known PLC.

    Of course we both know that you are purposefully misrepresenting this.

    You fool no one with such pedantic and juvenile parlor games. Stop wasting all of our time please.

  212. Programmablel logic controllers have for obvious reasons replaced rows of hardwired switchgear and motor controllers & the like. Why should a novel & useful, & non-obvious software reconfiguration on a PLC be viewed differently than a novel, useful & non-obvious hardware implementation of the same circuitry? And if you could patent the actual hardware implementation would software accomplishing the same end infringe the patent?

    I’m sure the person who invented the PLC got a nice, broad patent on it. Ditto the guy who later invented a better PLC.

    Why would a “software reconfiguration” for a PLC be any more patent-eligible than a method of rearranging a row of switches by hand? If you’re going to squeeze it into section 101, it can only be as a new method of using a known PLC, and then you’re going to have to show that it does something really special that isn’t already inherent in “here’s a bunch of transistor switches that you can use software to control however you like”.

  213. A computer is simply an all purpose machine that becomes purposeful only when provided with instructions – software. Software reconfigures and resets transitors to accomplish a specific purpose and in the process reconfigures hardware within the all purpose computer. How is that different than blueprints and schematics for the design of a machine used to accomplish a particular useful purpose? Color me less than convinced argument that ware is not a machine or apparatus.

    If one were to reconfigure an existing apparatus to accomplish a new useful purpose, or to improve the manner in which a known end is acheived, would that be patentable?

    Take a specific example. Programmablel logic controllers have for obvious reasons replaced rows of hardwired switchgear and motor controllers & the like. Why should a novel & useful, & non-obvious software reconfiguration on a PLC be viewed differently than a novel, useful & non-obvious hardware implementation of the same circuitry? And if you could patent the actual hardware implementation would software accomplishing the same end infringe the patent?

  214. The problem is that most software patents should fail either obviousness, disclosure, or both. They apply textbook algorithms to particular problems, in ways obvious to anyone skilled in the art, or they are so vaguely written that reading them doesn’t provide any information about how to make a product satisfying the claims not already known to an ordinarily skilled programmer.

    Strip out these, and you’re left with patents on genuinely new ideas in software design, but these ideas are usually published in the academic literature rather than patented.
    The academics involved don’t seem to need the rewards patents provide to motivate. Thus, while they’re the kind of thing that ought to be patentable, in practice the inventors wouldn’t apply for them.

  215. “software only becomes a non-abstract patentable process”

    Wait wait, when exactly does software “become” a process?

  216. “I contend that if we are going to allow software patents, we should do so openly and honestly.”

    The motion is seconded.

  217. Dennis, no one wants a patent for “software.”

    The types of problems that are solvable using computing technologies are vast. Applicants want to claim them as such – as solutions to those problems, irrespective of specific design choices. Is “software” limited to compiled code? Or to imperative instructions, as opposed to declarative statements describing the solution (and interpretable by a computer)? Does “software” include a CD-ROM containing data that a computer can use to apply the techniques? Or a solid-state memory device storing such data? Or a signal? Or an FPGA? Or a chemical computer? Or a quantum computer? … etc.

    A skilled computer engineer can imagine a dozen ways to implement that solution. Requiring claims to specify, and be limited to, a single, particular embodiment creates opportunities for design-arounds that unfairly appropriate the invention through technical gamesmanship.

    I believe that what applicants really want is the ability to claim *the specific, functionally described solution to the specific problem*, especially when implemented with any type of computing machinery, broadly defined as such.

    So, my ideal solution to this whole 101 mess is this: Allow patents for “processes” that present specific, functionally described solutions to specific, practical problems – irrespective of the embodiment of that process.

  218. Is software is unpatentable, so are circuit design patents.

    No difference whatsoever between coding instructions in Python versus describing a circuit in VHDL.

  219. I believe the courts, and Congress, have taken that stand (although certainly not clearly). The Supremes have avoided saying “software is not patentable” several times when they discussed the subject. Congress could have taken it off the table in AIA but didn’t. The Supreme Court has said “anything under the sun invented by man” is patent-eligible, and software is clearly that. The idea that “software is just math” is no different than saying “a numeric coprocessor made of known circuit components is just math”, or “a camshaft that converts angular motion into translational motion is also just math”. And there are plenty of European software patents anyway.

    But I think your point is more that the shrouds obscuring software patents should be removed by making it possible to claim what is actually invented rather than some abstraction driven by unclear court cases? If so, I heartily agree!

    Most of the market cap of the biggest non-resource extracting companies in the country comes from intangibles (software, trademarks, expressive works)—just compare (for one example) the market caps of all the telecom equipment vendors against those of Google, AT&T, Microsoft, Apple, Verizon, and the like. All of the equipment manufacturers taken together don’t add up to the market cap of $100B, yet the carriers collectively (and globally) are probably pushing $1T and the top tech companies collectively are closer to $2T (but want patents eviscerated, since they already have their market dominance). To imagine that somehow software is at an unprotectable level of abstraction, especially given the silliness of the notion that copyright protects software (ALL of the important software patents are for inventions, not expressive content), would be to undermine one of the few engines of growth in our economy, and one of the few areas where the US remains highly competitive.

    Even financial services are really just software; the only real difference is that the big firms managed to buy the CBM elements of AIA, while the tech giants did not manage to kill off their lesser companions (yet; they’ll keep trying).

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