Guest Post: So what if a True Invention Uses a Computer!

Guest Post by Martin Goetz

In the Alice vs. CLS Bank case that is before the Supreme Court the question by Alice is "Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…". That's the wrong question to ask.

Equally wrong is to boil down that question to "Is software patentable"which both IP lawyers and the media are quick to do (see Crouch'sblog "Is Software Patentable?: Supreme Court to Decide"and Forbes articleSupreme Court Takes Up Case Challenging Software Patents).

The correct question, which the Supreme Court has answered indirectly and affirmatively in the past, but never in the way I have re-phrased the question is, "Is a 'true invention' that contain as part of (or all of) its disclosure (in its patent application) a digital computer (and a computer program), entitled to US patent protection."

I deliberately put in quotes true invention for that's not part of the debate. In previous patently-O articles I give just a few examples of true inventions which used a digital computer and software as part of their implementation of the invention e.g., artificial retina, voice translation, driverless car, Reading machine for the Blind and 3-D printer. Few, I believe, would debate whether those examples deserve the protection of the US patent System.

For a more in-depth discussion on my arguments of why "Is software patentable?" is the wrong question to ask, see my four patently-O blogs Do the Wright Brothers Deserve a Patent for their Flying Machine?: Why Eliminating Software Inventions from the Patent System Makes No Sense. , "No" to Software Patents Per Se: Software is Only a Means to an End. , In Defense of Software Patents and In Defense of Software Patents – Part 2.

Today, there are hundreds if not thousands of true, and undebatable, inventions that contain a digital computer and computer programs as part of their disclosure in virtually all world-wide industries, including the software industry.

For those that believe that the US patent system has spurred innovation and the growth of the United States since the patent system became law in 1790, eliminating true inventions that contain software as part of their disclosure, would be a catastrophe for the growth and health of the US economy.

250 thoughts on “Guest Post: So what if a True Invention Uses a Computer!

  1. Wow! Martin Goetz is still around? Do the readers here realize that Goetz holds the first software patent?I’m not sure that the term “true invention” is helpful in a legal context. It’s helpful to people who think “software”, per se, is patentable under current law. The readers here (well, most of them) presumably know better. It’s the invention inside, expressed as software, that is patentable. The “machine or transformation of matter” test is enough to encompass most software-related inventions. Most software inventions can be expressed in hardware if the need for speed is great enough. This is routinely done today for graphics algorithms (which are hard-wired into graphics ICs), high-frequency trading (which is sometimes done on custom hardware to save a few microseconds and gain speed over other traders) and, amusingly, Bitcoin mining (which started out as software and is now done almost exclusively by custom hardware.) The “covered business method” issue seems to be coming under control. Nobody is getting away with patenting tax strategies or hedging strategies any more.

    1. “Do the readers here realize that Goetz holds the first software patent?”We’re aware. Not impressed, but aware.

      1. Today, yes. You can take small programs written in C (a programming language) and run them through a program which converts them to VHDL, a description language for chip design. Then you can run the VHDL version through a electronic design automation system and get a chip layout. You then send the chip layout to an IC foundry and you get custom chips back. All this is a routine operation – you can get it done at “http://www.mosis.com/”, for example. It’s an expensive process to get the first chip made (about as much as legal fees for a patent from a major law firm; less than one patent litigation), but then you can have millions made cheaply.

  2. Is there such a thing as Peak Patent Teabagger? If so, this post by Mr. Goetz is pretty to close to how I imagined it would look.

  3. Before you ask any question, determine which aspect of Justice is more important to you in this debate: Truth or Efficiency? I think this audience can generally agree that there are some categories of business methods which deserve patent eligibility, though where one draws the lines can be debated. I think this audience can also agree that a large portion of existing business method patents should be invalid under 102/103/112 grounds, and it is generally these improvidently granted patents which are abused by PAE/trolls.If you value the Truth of the matter, digging to the heart of each patent and technology, figuring out the 102/103/112 issues is the best approach and leads to the best result. In an ideal situation, this would be fine, and I think this is the perspective that Goetz is coming from, figuring out if something is a “true invention”. However, litigation is expensive and almost never ideal; often the pragmatic course of action is to settle. So defendants (and some trial judges) look to leverage the (apparently) most efficient tool available to them, which is 101. It does not lead to the “best” questions to ask, because the answers are likely over-broad. But if the 101 questioning leads to an end result quicker, and close enough to the Truth of the matter most of the time, then it remains attractive because of its Efficiency and probably outweighs the cost of the process of getting to the Truth.I think J. Newman has seen this for a long time, and her recent concurrences sound to me like she just wants to move on from 101 so that it doesn’t distract and detract from the more precise application of 102/103/112. Given the amount, cost, and nuisance/extortion-like quality of litigation in this area though, I can see the Sup.Ct. supporting the use of 101 to get rid of PAE/troll suits at an early stage.

      1. (sigh) I know, but this isn’t just a legal mindset. After the seemingly endless and intractable back-and-forth on 101, the engineer in me thinks, “If it’s within an order of magnitude, it gets the job done, move forward” and the lawyer in me can’t see the value in arguing against that mindset anymore.

          1. I have the legal mindset, but in practice that includes keeping the client’s business interests at the forefront. Having an engineers pragmatism and experience in industry adds to that. The law is meant to serve and facilitate society, and when the law fails to do so, it is the law which is wrong, not the individuals and businesses walking though the legal minefield.

            1. Certainly the client isn’t always right, but at this point we have years of data points to evaluate across a broad spectrum of clients, and I’d wager that most would say that this continued debate and progression of litigation is stifling actual innovation and simply not worth the cost. If the law is failing, the law needs to change.Also, absolutism doesn’t make one a very good lawyer either.

            2. I could not disagree more.In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.Anything less and all you are doing is pandering to the forces that would twist law to their ends.

            3. “In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.”That’s awesome, anon. Have fun storming the castle!

            4. In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.LOL! As has been noted many times before, the patent teabaggers are beyond parody.

      1. I’d still argue that hashing through 101 even as it stands is still more efficient than the discovery needed to work though 102/103/112, but yes, a easily-applied bright-line test would be great. Dear Supreme Court, please get on that. Thanks.

    1. Oh come on. This 101 stuff is a joke. It is not applying the law, but trying to find an excuse to implement policy. Policy that the SCOTUS doesn’t even understand.And, this 101 stuff leads in only one direction–arbitrary enforcement of the law. It makes it so the judge/jury can decide whatever they want to decide. No law. Just do what you want.Don’t fool yourself. This 101 stuff is a cancer. Lemley is a parasite on our system.

      1. It is not applying the law, but trying to find an excuse to implement policy.Because Congress intended purely mental processes to be eligible for patenting. Right? Isn’t that what “the law” says, after all? And that’s all that should matter because … Progress! Or something.

        1. Must you soil my posts. Computer don’t think. They are machines. Repeat after me. A machine doesn’t think. Think is a word we use for our own information processing.MM wrote:” purely mental processes to be eligible for patenting”

          1. Computer don’t think.That’s nice. “Thinking” is a “process”, though, isn’t it? What does “the law” say about the eligibility of “processes,” NWPA?I’m talking about “the law” as you choose to read it, of course, which appears to be “literally, like a kindergartner would read it.”Let everyone know what “the law” says about the eligiblity of purely mental processes, NWPA. In your opinion, of course.

          2. “Computer don’t think. “Could have fooled the popular press. Why I just read in the newspaper today that there are learning compooters! (nevermind that they’ve been working on/with those for decades, it’s apparently news to some) Seems to me like if it can learn then it is thinking.

  4. Martin, there really is no debate, as far as I know, about the patentability of inventions that otherwise pass the MOT but nevertheless use a computer. Diehr. All your examples clearly pass the MOT. Instead the debate centers on business methods that inherently manipulate abstract concepts but involve the use of computers and programming. The question really is this:Whether a claimed invention that does not pass the MOT but instead manipulates abstract concept is nevertheless eligible because it is implemented on a computer?I would suggest that a “yes” answer would involve overruling Benson and restoring In re Benson — after all, it was Rich’s view in In re Benson that a programmed computer was eligible subject matter because a computer was a “machine.”But does Alice really fail the MOT? Clearly it fails the T. But the M? I think it passes the M because it requires specific steps to be taken in the computer in specific time-dependent order.

    1. MoT and business methods and a misunderstanding of the Supreme Court case Benson…Really Ned, the same old merry-go-round?

      1. I think the question in Alice could also be broken done into whether a claim that does not pass the T of the MOT can nevertheless pass the M when specific computer-implemented steps beyond mere calculation are required.

        1. You accusing others of inventing patent law, all the while you seek to resurrect MoT is a bit disingenuous.Please, please, please, please STOP misrepresenting patent law when it comes to MoT.

            1. Ned’s version of MoT certainly is dead.It (Ned’s version) is being attempted to be resurrected to a certain status – see In re Bilski.And I won’t even charge you my hourly rate for that lead.(and to the point of the comment, Ned is misrepresenting patent law)

            2. Why are you directing me to the Federal Circuit case when its holding on MoT was overturned by the Supreme Court? You really charge people for this?

            3. Why?Because that is the source of the error – it answers your question and shows why Ned is wrong.You are doing that red-cape-charging thing again…

            4. “Because that is the source of the error – it answers your question and shows why Ned is wrong.”What question of mine does In Re Bilski answer?You are doing that not-making-any-sense thing again…

            5. The question as to why Ned should drop his MoT crusade.The sense is here – you missing the sense, well that is another matter altogether – you are doing the blind-bull-charging thing again.

            6. “The question as to why Ned should drop his MoT crusade.”That wasn’t my question. “The sense is here …”Apparently I’ll have to take your word for it.

            7. “your” question?LOL – what was “your” question? – You do realize the topic here revolves around Ned and his misuse of MoT, right? You are doing that dissembling thing again..”I’ll have to” – or you can take the blinders off, open your eyes and try to understand Ned’s misuse of MoT without reacting first to the word “anon.”

          1. …so you too think it should be Machine AND Transformation…?…and you want Justices to rewrite patent law (the 1952 Act was already pretty clear about new uses of old machines)?Add: even if the Random guy is clueless as to the actual law.

        1. I agree with the law – as properly understood and applied.Please stop misrepresenting the law.Benson does not hold against software patents.Bilski: MoT not requiredPrometheus MoT not sufficient.Yes, Ned, properly understood and applied says it all – please stop doing the opposite.

  5. Proposedamendment to 35 USC § 101:Whoeverinvents or discovers any new and useful process, machine, manufacture, orcomposition of matter, or any new and useful improvement thereof, may obtain apatent therefor, subject to the conditions and requirements of this title.Patentabilityand patent eligibility of an invention shall be considered only for each claimtaken as a whole, without disregarding any element of the claim based on theelement’s presence or prominence in the prior art, the routineness orconventionality of application of the element at the time of filing, or theelement being or embodying written matter, mental steps or processes,algorithms, abstract ideas, laws of nature, or natural phenomena. The inventive concept of a claim is the claimtaken as a whole.Subjectto the conditions and requirements of other sections of this title, patentabilityand patent eligibility of an invention shall not be negated by (a) preemptionof any subject matter by the invention, including algorithms, abstract ideas, lawsof nature, and natural phenomena; (b) a lack of a spark of genius orinventiveness embodied by the invention, beyond the conditions and requirementsof other sections of this title; (c) the invention embodying a combination ofelements known in the prior art or found separately in nature, so long as theinvention satisfies the conditions for patentability of sections 102 and 103; (d)implementation of the invention in a computer, computer readable media, or asystem including a computer; (e) an inventive concept embodied by less than awhole claim in its entirety; (f) consideration of any limit the patentedinvention would place on use of the invention; or (g) the invention comprisingintangible or transient effects so long as a useful result is produced.

    1. OK, Mr. Inventor of patent laws: deal with this:I claim the combination of a monkey wrench; anda monkey.Assume that combination is non obvious, and I think it is non obvious.I would think such a claim eligible and patentable under your new laws. If not, why not?

      1. LOL, and Ned, you accuse others of strawmen?Here, you create the strawman of utility when such is not a part of the discussion. Clearly, disparate items conglomerated together can create something that is not patent eligible – under EITHER Hodges’ proposed amendment OR existing law. Further, and just as clearly, software as a machine component has the necessary functional relationship.Your post is excrement and has nothing to do with the conversation. It is you that is attempting to kick dust on the issue at hand.Please stop and address (and incorporate) the actual points raised.

        1. You are right of course Anon that the example is ridiculous, but it does raise a point that one cannot discard 101 utility and simply confine 101 to whether the claimed subject matter falls within the four classes. The ridiculous claim otherwise passes 102, 103 and 112. So, that leaves 101 as the only way to hold these claims unpatentable.I did this, of course, to illustrate this very point.

          1. Ned – it is a strawman and a diversion away from the topic under discussion.It is exactly what you accused me of doing. No one – and I mean no one is saying that utility aspect of 101 is waived away.That you try to defend your egregious posting – your accusing others of the CRP that you do – makes you no better than Malcolm on this point. I expect far better. I expect an intellectually honest attempt – or at least your silence (which screams volumes), and not the CRP that I see here.

            1. I’m Sorry, there seems to be an assumption that the combination of a monkey and a monkey wrench would not be useful. I submit that that assumes facts not in evidence.

      2. Ned, nothing in the proposed additions to 101 negates the utility requirement of the first paragraph of 101 (“any new and useful…). Your example appears to lacks utility, but if your combination had a utility (the monkey was properly trained(?)), I do not see why the combination should not be patent eligible.

        1. Robert, then you may consider rephrasing the following, as I see nothing in this that would limit random combinations of unrelated things.”(c) the invention embodying a combination of elements known in the prior art or found separately in nature, so long as theinvention satisfies the conditions for patentability of sections 102 and 103;”

  6. The Question Presented by SCOTUS is supremely frustrating and just not helpful. I fear that they are going to affirm on very narrow grounds and provide no guidance at all to the patent world.What needs to be addressed are the following: (1) What is an abstract idea? No one knows what an abstract idea is. The “guidance” provided by SCOTUS is nonsensical and just as bad as the phrase “abstract idea”. Even the Federal Circuit has recognized that there is no guidance on this issue aside from processes that can be performed “in the human mind alone” or “with a pen and paper alone.” Rader specifically called this issue out in Ultramercial when he recognized that the claim may not cover an abstract idea at all, which would have rendered the entire discussion moot, but didn’t consider that point because it wasn’t raised by the parties. This is extremely important and often overlooked. If the claim does not cover an abstract idea, then there is no 101 issue. As an aside, Examiners routinely miss this point (as expected), which is supremely frustrating.(2) What claim limitations save an abstract idea? This is simply picking one of the methodologies raised in the concurring/dissenting opinions of CLS Bank or SCOTUS coming up with its own.

  7. Software patentability is NOT the issue in CLS v. Alice. But the question you are asking is circular: how do you define a “true invention”? What is patentable subject-matter? In Bilski the Supreme Court simply was reluctant to answer that question! Note that non obviousness is NOT the criterion: it is a separate test. Value is not a criterion either, even polically. IMHO at least part of the answer is that “protection” must be an exception in a free market economy.

    1. “IMHO at least part of the answer is that ‘protection’ must be an exception in a free market economy.”The problem with you anti-patent people is that you just assume all the good things that come from patents just are part of the system and that patents don’t provide them. Like disclosure and incentives for investment. You attribute only the negatives that patents bring–the quid pro quo part: the exclusion of others. You provide nothing of interest to the debate, but hot air.

      1. You are framing the discussion I am not radically opposing patents I am only saying that they have a limited use. And typically business methods are applied in public so that disclosure is not a benefit here. And otherwise patentees often disclose too little to be useful, especially for software patent. Finally the intent to apply for patent require the applicant to disclose nothing until he is finished which is problematic for inventors who depend on a professional debate with peers not just in their own firm. But otherwise the disclosure is useful, of course.

    1. The real hard part of building a robot is the information processing.Actually, it is just one of the hard parts. Others include obtaining all the information to be processed. Still others include creating mechanisms that are capable of performing specific movements. Still others involve doing all of this within a constrained space. The amount of “technology” that goes into a modern robot is mind-boggling (for those that appreciate all the technology that goes into one).

      1. I didn’t go to his Wedding because he knew I was not related to him. His second Wedding the same scenario. And when his wife died he solidified the facts that we are not related yet again.. So in relationship to my TRUST… tell me again why my Trust was handled by him. claiming no Will. But we know there was. the TRUST! So who did you share it with? All that aren’t related? and the inbreed or the Sarah of JFJ .. and on top of all that you on Phyllis’s ( by the way also not related) ok to invest in Mize’s Club. I can’t wait to hear the minutes of this case LOLOLOL! I believe that’s called PRIMA FASCIA. aka BITING THE BULLET!

  8. I think what you are saying is basically right. (I notice, by the way, the decrease in posts from the paid bloggers as they are on vacation.) The reason the question of is software patentable is wrong is because software/firm/hardware are equivalent. This follows from the Church-Turing Thesis. So, the question is are machines and methods that process information patentable? To say no is to say that a machine that can perform the functions that people perform is not patentable which cannot be the right result.Moreover, what we have is a number of intentional lies regarding information processing from a group of people that are trying to use publicity to get rid of information processing.The following is just an ad hoc list of some scientific truths about information processing.1) Software has structure. The lie: Software has no structure, which leads to the contradiction that two machines with the same structure perform different functions;2) Functional claiming conveys a very definite set of solutions to one skilled in the art. Functional claiming conveys no structure; wrong–to those skilled in the art it conveys a very precise set of solutions;3) Claim scope should be policed using the procedures used in LizardTech–not a judicial exception of abstract.4) A picture that information processing has a real scientific basis. Processing information requires space, time, and energy.5) Consider the claim: “A circuit configured to”. Isn’t software and hardware a circuit configured to?One problem with CLS bank is that we are again running into a problem of something that is well known being implemented on a computer system and then it going to the supreme court rather than a new way processing information going to the supreme court. The oddest thing to my mind is why isn’t a 102 found for these ancient methods? Or a 103? If these systems are really so well known, then why not cite a first year text book? Why is the nuclear option of 101 being used rather than patent law?

    1. #’s 2 and 5 are right. #1 is a pointless argument until you clearly define what you mean by “software” and “structure.” #3 – You seem to be saying that 101 has no place at all in evaluating whether a claim is patentable – I think that horse is already out of the barn. #4 – so what?

      1. The horse might be out of the barn on 101, but it must be put back if it is ever going to be hooked to the wagon again. Right now we are going nowhere on subject matter eligibility – the same unanswered questions year after year. 102, 103, 112 answer the question.

        1. ” the same unanswered questions year after year.”We’ll have to disagree on that, I suppose. I think we’ve received a lot of answers over the last few years. In my practice, which involves lots of software-implemented technologies (generally well below the application layer, however), I really don’t have that much difficulty in applying 101 to claims or potential claims.

            1. I didn’t say that every question has been answered, or that every standard is perfectly clear and precise. But that’s the same situation we have with other aspects of patent law, as well as in almost any other area of law.My point is that Bilski tells practitioners (at least the ones who are listening) an awful lot about what is patentable and what is not. So does Prometheus. Thus, my assessment is quite different from your assertion that “we are going nowhere on subject matter eligibility.” The fact that a lot of people here don’t like the answers doesn’t mean those answers aren’t informative.

            2. While the specific details around the question my vary slightly, as someone who is actively inventing and licensing my inventions, the effect of the confusion is the same thing. Since Bilski, there is no certainty as to what is or is not subject matter eligible (a patent is today presumed invalid) so infringers have no interest in licensing or purchasing patents voluntarily. They must be sued.All of the 101 software cases since (and including) Bilski can be easily solved by applying 102 or 103. This puts the horse back in the barn so the cart can get moving again by reestablishing a degree of certainty to the validity of a software patent.

            3. “Since Bilski, there is no certainty as to what is or is not subject matter eligible (a patent is today presumed invalid) so infringers have no interest in licensing or purchasing patents voluntarily. They must be sued.”With all due respect, every bit of that is ridiculous. What percentage of patent lawsuits filed in 2011 and 2012 involved a Section 101 challenge? I’ll bet it was a pretty small fraction.

            4. I think you read that too finely Leopold.It is NOT that a Section 101 issue must be in the suit – rather, it is that the Court’s monkeying with 101 has kicked up so much dust that patent rights are scoffed at, and infringer’s proceed where they otherwise would not.Have you misplaced your copy of the Infringer’s Handbook? See chapter 5 – Crusade to Weaken PatentsAdd: as far as suits go, the whole “YOU WILL BE SUED” claptrap is one giant dust-kicking (along the lines of the “Troll” hysteria). What is the percentage of active patents in force that have been related to actual suits filed? I would put that number at less than .5%.Add: What if we were to add a criminal element to patent infringement (a la copyright infringement over a certain level)…

            5. “What if we were to add a criminal element to patent infringement…”LOL – that’s a great idea, anon. And then you can send out hundreds or even thousands of letters telling small business owners that they may be subject to criminal prosecution for pressing the “Scan to Email” button on their photocopiers, or for putting a “click to buy” button in their iPad applications. That won’t cause any backlash at all…

            6. Not sure of your point, Leopold.Are you somehow implying that “use” is no longer patent infringement because the user is a small business owner or even an individual?When did that change in the law occur?Perhaps you have missed some of the copyright cases… (for the notion that individuals guilty of infringement pay big bucks)There was even a patent case recently, went all the way to the Supreme Court, wherein a Multi-national conglomerate took on a near-penniless 80+ year old independent farmer (you know, to get those bags of cash) – oh wait, that’s a different wherein your smarminess got thrown back in to your face – hmmm, happens quite a bit between you and I.

            7. My point is that if you think the recent spate of “anti-patent” legislation was bad, try to imagine the backlash after you “add a criminal element to patent infringement.” I’m sorry that I didn’t make myself clear.

            8. You were not clear, because your posts take on a personal “attack anon” tone.Whether you mean to do so or not is rather immaterial. Hence my posts to you about “blind bull” are spot on – you really should pay attention to what I write and not merely react to the name attached.And yes, in the copyright cases, there does appear to be backlash against the big businesses for going after what is their perfectly legal and legitimate statutory levels of damages – even against individuals. There is also a serious discussion of completely revamping copyright law given the ease, low (as in near zero) cost of actual copying, and other considerations that once grounded copyright law. True, copyright law is different than patent law in that the form of protection is longer lasting but much more shallow (copyright has Fair Use while patent law (still) does not). As to any ‘spate’ driven by ‘popular press’ and misconceptions (again, keep in mind exactly who coined the term “troll’ and exactly why – it was not for the benefit of the consumer), my posts will continue to ring true – even against naysayers, those who continue to tell the wrong side to just shut up and those that would mock purity in law.But we both know that don’t we? That’s why you continue to get the short end of the stick in our exchanges.

            9. “You were not clear, because your posts take on a personal “attack anon” tone.”Nah it’s actually because you’re just a ta rd, I understood his post just fine the first time around.

            10. LOL – 6, he is the one saying his post is unclear.I too understood it the first time around (you need to fix your sarcasm meter) – that is why I provided my reply. My reply points out the foibles of his comment – as it was. He is always welcome to restate it, without the “attack anon” tone which is there even if you want to assassinate your character a little more and live in denial.

            11. I’m not sure just how much experience you have in software patent litigation… I don’t know the exact percentage but I suspect it is large. Whether or not the patent is actually invalidated is not what matters in litigation. Risk that it can be invalidated is what matters. The fact is that largely due to 101 and other patent weakening laws (eBay, KSR, etc.), companies do not voluntarily license. You have to sue them. And, if it’s software, they ask for summary judgment for 101 in most of the cases that I’ve seen. It’s the first and primary line of defense because it drives the patent holder to settle for peanuts because the perceived risk of invalidity with unknown eligibility standards is much too high. Do the math… the infringer stands only to lose a few dollars – the patent holder loses the patent.

            12. “And, if it’s software, they ask for summary judgment for 101 in most of the cases that I’ve seen. It’s the first and primary line of defense because it drives the patent holder to settle for peanuts because the perceived risk of invalidity with unknown eligibility standards is much too high. “I see my goals have been largely achieved already. Huzzah!

            13. What percentage of patent lawsuits filed in 2011 and 2012 involved a Section 101 challenge? I’ll bet it was a pretty small fraction.I suspect a very large fraction. Software is where the money is at, and litigators follow the money. Finally, if your client was sued based upon a “software” patent, you wouldn’t be doing your job if you didn’t at least attempt to argue that it was invalid under 35 USC 101.

            14. “I suspect a very large fraction. Software is where the money is at, and litigators follow the money.”Certainly the last part of that is right, and maybe all of it is. However, if “a very large fraction” of lawsuits involve a 101 challenge, that fact is not reflected in the cases coming out of the Federal Circuit.

            15. They settle because the failure of the courts to specifically define 101 (which I believe they can’t) is too risky. Settle cases rarely make it to the Federal Circuit.

            16. My point is that Bilski tells practitioners (at least the ones who are listening) an awful lot about what is patentable and what is not.Please reproduce the important language from Bilski and tell me what “awful lot” it says about what is patentable and what is not.

            17. “Please reproduce the important language from Bilski and tell me what ‘awful lot’ it says about what is patentable and what is not.”I’ll be happy to do so, as soon as you sign an engagement letter and commit to paying my hourly rate.

            18. Would you apply the same terms to whatever you post – or only to those items that tend to show your posts in poor light?(yet another smarmy post by Leopold that ends in his silence)

            19. Well I would be willing to accept your argument if I would understand the allegedly clear message of Bilki and Prometheus. But AFAIK the SCOTUS only rejects “abstract ideas” which is utterly unclear. In CLS, the abstract idea was allegedly made concrete by adding a computer implementation to the application. It is quite trivial but thay may not mattet under the “whole contents” doctrine. The essence of the application is definitely a different one: Alice is not a software firm but a fancy firm developing allegedly innovative concepts for the banking industry.It has been noted before that the idea of involvinga trusted third party is not novel at all which makes the case disappointingly simple. But that applies to many patented”software ideas”Still I would agree that software is not theproblem per se. If there are many bad software patent, not all of them are bad and not all others are good

      1. How does it convey structure?It helps to be one skilled in the art. If the description of a function is sufficient is enough (in the example of a computer program) for a programmer to make the claimed invention, then the function conveys the structure that results from computer program being implemented in a computer.Moreover, claim language does not need to describe a particular example. For example, I would wager that there are thousands and thousands of distinct examples of “a screw.” As such, there is nothing inherently wrong with broad language, which is what one attempts to do by employing functional language.Sometimes an inventive concept rests in what something does. Sometimes how the machine does it is important, but sometimes how the machine does it is not. For example, perhaps the inventive concept is “A is fastened to B.” Whether or not A is fastened to B with a screw, glue, a weld, a nail, etc., etc., etc., is not important. This is the value of using functional claim language.

        1. I agree. For example (see versata): associating a price (a tangible thing) with an organizational hierarchy of a company (a defined technical structure) and allowing that price to inherit to subordinate parts of the organizational hierarchy thus creating different pricing structures should be patent eligible because it uses technical structures and tangible things to perform a defined function.

          1. Price is tangible? Really? !!!!!!!How much does price weigh? How many price does it take to fill a breadbox?If I were to load my cannon with price and shoot a target, will I do any damage?

            1. Why is that not tangible. It extracts a specific number of dollars from my bank account. It tells me if I have enough to take some item home. Just because I can’t shoot it from a cannon doesn’t mean it is not tangible.

            2. “It extracts a specific number of dollars from my bank account. It tells me if I have enough to take some item home.”Unless your bank physically sets aside a pile of banknotes for your bank account, which I doubt, everything you mention there is intangible.

            3. in·tan·gi·ble (n-tnj-bl)adj.1. Incapable of being perceived by the senses.2. Incapable of being realized or defined.3. Incorporeal.I choose definition 2. Can you not define a price?

            4. Mr. O’Brien, you do realize you are arguing State Street Bank — a case that the Supreme Court in Bilski highlighted as a prime example of a test they would not adopt?

            5. Well that’s interesting. I didn’t know that. Do you mean “tangible”? Seems to me that some thing in a patent claim must be tangible. Perhaps the Supreme Court was flawed in their logic.

            6. You’ve got it backwards sister. You just listed out a list of things that are intangible, not conditions where any one of them not being met will render the item tangible. Your “choosing” 2 is irrelevant, as LB can simply “choose” 3 and still designate everything you mentioned intangible.

            7. Need I remind you that State Street Bank and its “price is tangible” was excoriated by the Supreme Court in Bilski.You State Street Bankers have been rejected, yet like Quixote, you continue the vain fight.

            8. Need I remind you that I have never embraced and used the State Street Bank case in my arguments?You keep on wanting to force feed that case into my mouth and I keep on telling you I do not need that case.And you want to lecture anyone about vain fighting with your MoT crusade…. with your anti-business method crusade… with your anti-software crusade?Seriously?

            9. Not at all Ned – As I continue to state – I do not need that case.Why do you continue to try to force feed something I do not need?

        2. Mr. Guru, you learn.But let us also say that when one claims the novel element functionally, one is claiming all structure that achieves that result — the structure disclosed and all other structure yet to be invented that does it as well.

        3. “Moreover, claim language does not need to describe a particular example. For example, I would wager that there are thousands and thousands of distinct examples of “a screw.” As such, there is nothing inherently wrong with broad language, which is what one attempts to do by employing functional language.”Functional claiming very minutely describes the structure. When the structure itself is of minor relevance that is okay. When the structure is the crux of the invention, it needs to be described with particularity.”Sometimes an inventive concept rests in what something does. Sometimes how the machine does it is important, but sometimes how the machine does it is not.”If the inventive concept rests in what it does, then HOW it does it is ALWAYS important. You can’t claim “solving a problem” you can claim “my solution to the problem”.I’m sure a handful of people are in possession of a particular method of sending a man to the moon and returning him to earth. They may claim their particular method. What they may not claim is the whole function of space travel. They aren’t in possession of every means of space travel. Neither is the coder who writes a single means of performing a computer function in possession of ALL means of it.

          1. “When the structure itself is of minor relevance that is okay.”Says what authority? You? LoL. Anon? LoL. “When the structure is the crux of the invention, it needs to be described with particularity.”I agree, which is why I go out of my way to make sure that the people arguing in cases before me go out of their way to specify very clearly that the structure is the crux of the invention.

            1. Still having trouble locating the major treatises that discuss the concept of Ladders of Abstraction 6?Or if you feel honest, you can just say that you haven’t bothered to check.(more of that infamous 6 CRP, run away and post he same CRP again later stuff)Add: LOL – 6 – isn’t part of your job the ability to find references? These were major patent writing treatises, for GAWD’s sake – Donner, Slusky. Can you try any harder to make yourself look any more incompetent?

            2. Anon, I don’t have the slightest clue as to how to start checking, or even what references they were.

            3. The courts have never required the applicant to reinvent the wheel. When someone claims a processor executing code the applicant isn’t required to describe how to build the processor. The processor is already in the art and isn’t the novel aspect. So that part of the structure is of minor relevance and there is a de facto lesser standard. The code, however, is the relevant allegedly novel structure, and an application that simply describes an end and leaves the means as nebulous as possible should have its claims tossed.The courts have a means standard described in Aristocrat. Their jurisprudence with respect to full description of scope of a genus is also well defined (particular means plus expanding principle, or multiple particular means to show boundary). Thus the standard for description of a non-means-format is readily apparent to any thinking person, but without direct guidance that states a standard for 112, 1st rejection in a non-means format I fear the PTO will continue having a low-quality issue.

        4. “then the function conveys the structure that results from computer program being implemented in a computer.”But just what is that structure? Give us a WD please.

      2. Night is thinking software. The functional statement basically describes what the software must do. Programmers may implement this in any number of ways.But as we all know, a functional statement in a programmed computer claim is essentially a method step.

    2. Night: “perform different functions.” Now why in the world will you not agree that that is the sine qua non of eligibility when we are talking about programmed computers?

      1. The sine qua non is the Grand Hall Experiment.Two original manufactured physical computers (without software).Load (change, configure, etc) one with software – leave the other without.Do you still have the same machine?See Alappat.

        1. Two machines that calculate numbers and do nothing else appear to be identical. You are reading into the Grand Hall experiment something else, but refuse to state it or to recognize that the something else is the essence of eligibility: the two programmed computer must DO something different to be different.

          1. Ned,Inherent in the discussion here is that the software, a man made manufacture, is built to do something. Utility is not a part of the immediate 101 discussion.Do not be so obtuse..And no, I have not read into the Grand Hall Experiment – I am applying it directly on point.Add: the difference in machines is indeed physical and tangible – just not visible. Alappat explains this. So no Ned, the sine qua non is not a method claim. It just so happens that the English language allows an easier description in action language – but don’t be fooled – the machines are different. After all, “configured to” is structural language.

            1. “Software do something.” Mr. anon, software doesn’t do anything. The computer programmed with software might do something and that is my point and the point you evade on a consistent basis. If the computer programmed with software does nothing new it simply cannot be eligible. Simply calculating numbers is not new. The computer is doing nothing new when it is only calculating numbers. Hook that computer up to some form of I/O however, and have that I/O do something useful, and then we are talking.

            2. Ned,What does a rivet do?What does a tire do?What does a bullet do?(Other than prove you wrong, that is)add: software is just like “calculating numbers just as ALL chemistry is just like “calculating” with protons, neutrons, and electrons.”And you really need to apply the law as it is with the difference between eligibility and patentability – you are conflating the two again, making 101 arguments against a specifically allowed patent eligible category on seeming novelty grounds.

            3. Anon, you keep on changing the subject in using circular logic. When we are talking about the eligibility of a machine, you refuse to agree that the sine qua non of eligibility of that machine is new machine functionality. Then you say something inane that “software has new functionality,” when in point of fact software does nothing outside of the computer. Then you cite rivets, tires and bullets – all articles of manufacture and not machines. The topic here is this is the functionality of a machine, not the utility of articles of manufacture. You continue to confuse, conflate, mislead and divert attention, endlessly erecting strawmen and knocking them down. It would be a joy if some conversation at some time with you would not be so noisome.

            4. Software is an article of manufacture Ned.Plain.Simple.No such changing of the subject or circular logic involved.Also, when you add components (or manufactures) to a machine, you have a new machine. This is law (as well as a fact). See Alappat.I have put up NO strawmen. None. Not like you and your software is “1″ CRP. Not like your misrepresentations of Benson or Bilski CRP.You are doing a lot of accusing on things that you are engaged in.

            5. You mean non transient computer readable media is an article of manufacture.The relationship of the computer readable media to the computer is to enable the computer to read the contents of the media.You leap from this to software is an article of manufacture without any support for what you are saying. Software is nothing more than representations of instructions and data in the form of numbers. Numbers are abstract, they are not physical. Media can be encoded with numbers in a form that can be read and interpreted by computers or even by humans. But that does not mean that software is the encoded media. You make that leap constantly. This is is one more example of the strawman way you argue.

            6. In the form of numbers…?Can you get a copyright on a “form of numbers?”No Ned – it is you with the strawman of Software is “1″ that needs to be put to rest.Add: as for transience, look up into a cloudless night sky and tell me of transience.Add: “the computer to read” LOL – watch for the anthropomorphication – the use of the word ‘read’ cannot be lazily equated with human reading.

            7. A computer program is defined in the copyright act as a set of statements or instructions …. These are represented on paper in terms of a language. They are translated into machine code by compilers and the like. Machine code is binary and is represented by 1′s and 0′s on paper.There is nothing in any of this that requires the instructions to take any particular form. Source code is generally formed of words, stored in a word processing file like any other document, and may be printed on paper. There is no requirement in that source code be first put on some tangible media before it is fed to the computer for execution. In many cases, machine code will be compiled onto disc drives. Disc drives are not articles of manufacture, but rather they are machines. Copyright protects the expressive aspects of the original work of the programmer — it requires an author. No author writes in machine code that I know of. Thus, copyright is in the source code, the original work of the programmer; but the protection may be broader and can extend to machine code copies.

            8. You forgot the basics of fixed in a tangible media (thus must have structure, and thus also you are incorrect that software having copyright has no requirement of such fixed in a tangible media)…Now, let’s see you acknowledge the exceptions to the printed matter doctrine (which changes your choice of ‘author’ to a more appropriate term of ‘manufacturer’)… – and Ned – this is explicitly the legal support for my position, and it is quite disingenuous of you to accuse me of not providing support when I repeatedly have – AND I have repeatedly drawn your attention to this AND you have repeatedly refused to even discuss this aspect of law. Clearly, it is you, not I, that leap about with unsupported conjecture, that refuses to incorporate into their legal position ALL of the required nuances of the discussion. Once again, you are taking baby steps on the path that I have so often attempted to lead you down. But when you get close to realizing the inevitable conclusion, you disappear. I have a dreadful feeling that, once again, you will disappear without incorporating a key legal (and factual) point into your understanding..Also, as a note to a separate discussion, the ‘tangible’ in copyright law is more in line with the ‘tangible’ used by another poster recently on this blog, and is the definition which would defeat the ‘tangible’ prong of Nuitjen if that prong were attempted to be maintained. As it is, the ‘tangible’ prong in Nuitjen appears to be a prong willing to be let go, and the other prong, the ‘transience’ prong is the prong that is being clung to. Of course, that prong too is simply wrong (my “look up into the clear night sky” admonition) and Nuitjen should (eventually) be repealed. In fact, just this past summer a new element, Ununpentium, was confirmed ( link to science.time.com… ). Ununpentium is ‘transient,’ with the longest lasting version having a half-life of ~200 ms – yet no one in their right mind would doubt the reality of the item, nor its patent eligibility as a manufacture.add: also realize that software garners BOTH copyright and patent protection – but for distinctly different aspects. Let’s not have the typical ‘Malcolm befuddlement’ with not understanding the differences between copyright and patent get in the way.

            9. “tangible medium of expression” is where the “work of authorship” must be fixed. But that, in the case of code, is a piece of paper upon which are written the statements or instructions of the program. That is what is protected by copyright. To register, one has to supply that source code to the copyright office.Copyright protects that work. I see nothing in the copyright act that states that works of authorship have to be in any particular form despite your argument to the contrary. The source code must be perceptible, that is all.

            10. Again Ned – you do not address the points I raise: there is structure. There must be structure. The exceptions to the printed matter doctrine then ‘bridge the gap’ so to speak and provide the legal foundation. You have NEVER addressed this legal point – and you dodge the issue yet again.And no – I am NOT making any argument about ‘particular form’ – there is NOTHING in ANY of my posts that support your misstatement.Fixed in tangible media – how are you missing that in the Copyright law? The only way you can be missing this is by purposefully missing this. I have directly called your attention to this, and yet you persist in ignoring the law. It is obvious that you do not want to discuss what the plain text of the law provides.We both know why, don’t we.

            11. Your BASIC assumption is incorrect. You assume the copyright is in the machine code and not in the work of authorship, the source code. Source code is not executable.

            12. Nonsense Ned – I make no such assumption about where the copyright is – I have never made such a statement. Such a statement is immaterial to the point under discussion.Stop prevaricating and dodging.

            13. anon, giving you the benefit of the doubt, how does the copyright law requiring that the work of authorship, which is source code In the case of computer programs, be embodied in a tangible medium of expression help your case that software is an article manufacture? Even if source code was required by law be so embodied, source code is not usable by a computer and a tangible medium of expression is not necessarily an article of manufacture.

            14. Why are you kicking up dust trying to differentiate between software as written and software in translation to machine code?Why have yet (STILL) not recognized or acknowledged the exceptions to the printed matter doctrine?Ned – I can not give you the benefit of the doubt, as these points have been put before you so many times now – and yet you still insist on playing games.

            15. Now you seem to concede that copyright in software is in the work of authorship. Copyright law does not make software an article of manufacture.

            16. Actually Ned – yes it does – or more to the point, the aspect captured in copyright law (fixed media) is the same aspect that witnesses that software is not some ‘ghost’ you wish it to be.Why are you still avoiding the exceptions to the printed matter doctrine? – Mention the topic and Ned disappears – anyone want to guess why this happens each and every time?And authorship was never debated – authorship gives rise to an aspect of software covered under copyright law. But you must be aware that software is covered by both copyright and patent law – for different aspects. So there is both authorship AND manufacture going on.

            17. Anon, you are the one saying that copyright law prove your case. But they only require the source code be fixed. Period.

            18. Ned – you neglect the rest of the legal positions: Why is it that you have NEVER commented on the exceptions to the printed matter doctrine?

            19. ” Ununpentium is ‘transient,’ with the longest lasting version having a half-life of ~200 ms – yet no one in their right mind would doubt the reality of the item, nor its patent eligibility as a manufacture.”You’re kidding right? You use as an example of something which you regard as clearly patent eligible that which is trotted out consistently as being unquestionably NOT ELIGIBLE by the courts? I guess you don’t recall the whole debate about lithium, or any other element just discovered, being ineligible? You’re such a ta rd.

            20. LOL’s on you 6. Man-made elements have been patented.Yet another character suicide by you (butting in, missing the point, AND being wrong). Don’t you get tired of that?Besides which, the point of the post (being on transience) stand out like a beacon. Pay attention next time before you rush off to commit suicide.

            21. “Man-made elements have been patented.”Whether they have been patented or not is not the issue.

            22. LOL – Go ahead 6 – tell me the ‘issue’ and why I posted what I posted.Don’t worry, I have already pointed out to you what you missed, so even you should be able to get this right.Then feel free to actually join the legal conversation under way with hopefully some small (even minute), semblance of something intelligent to add.I will not be holding my breath.

            23. “Go ahead 6 – tell me the ‘issue’ and why I posted what I posted.”Eligibility. Because you’re a ta rd.

            24. “that which is trotted out consistently as being unquestionably NOT ELIGIBLE by the courts?”Show me one single case of a man-made element patent being negated by the courts as not being eligible.After all, “that which” that I am talking about (for a different purpose which you still do not seem to grasp, even after I tell you) is not just any man made item (like a DNA fragment, for example), but a rather specific item called an element.Your use of the word ‘consistently’ indicates at least a series of such rulings. Come 6 – we both know that you simply made up your statement with NO backing whatsoever. Either support your statement with actual case cites, or apologize and retract it. Then feel free to join the actual conversation.

            25. “Show me one single case of a man-made element patent being negated by the courts as not being eligible.”Show me one single case where one of these supposedly patented elements was asserted against someone accused of infringement in court and I’ll be glad to. “Your use of the word ‘consistently’ indicates at least a series of such rulings.”No, it doesn’t.

            26. LOL – asserted for infringement?You are way deep in the weeds now 6.Besides which – you were the one claiming to have court cases. We both know that you simply made that up – I merely busted you on your falsehood.And what does consistently mean for you then, if not for a series?And you have YET to return to the actual discussion underway.How do you stand to be so wrong, so thoroughly, so often? Character suicide does seem to be your specialty.

            27. “Besides which – you were the one claiming to have court cases”You need to read more carefully.

            28. That’s more than funny from you 6 – you don’t bother to read at all before you comment.No. It is apparent that it is you that needs to read your own posts.

            29. ” No author writes in machine code that I know of.”Sure they do. Old old old machines were sometimes this way. Many schools even have people write in machine code for simple projects.

            30. Anon, I agree with you. Not only are nontransient storage media an article of manufacture, but also the link-loader obviously manufactures a different transient copy of the software upon commencement of execution of an executable or of a dynamically-linked library (DLL). This step of manufacture edits the executable software’s stand-in addresses that are offsets from the base address, so that these relative stand-ins (which are generic to all computer-machines with the same ABI) are replaced by absolute addresses peculiar to that individual computer-machine’s current state, hence extending the computer-machine’s current state, hence extending the computer-machine’s mechanism (i.e., the computer-machine’s effective finite-state machine [FSM]).

            31. Read physics Ned. Information cannot be destroyed and it takes time, space, and energy to transform represented information. That is doing something just as much as a chemical reaction in a test tube.

            32. again, night, you simply do not seem to understand that there is no connection between actual information and its representation in numbers other than the human brain. When I am talking about numbers and you are talking about information we are not talking about the same thing.

            33. I think Ned you are trying to make distinctions that do not exist. A machine is sitting there transforming information. That is enough.

            34. Enough? You speak of information as a physics concept. In that sense, information means the state of time space. But numbers are not in time space, they are abstract.A machine that performs a calculation, e.g., 1 + 1, produces a result, 2. How this affects time space is not all that obvious. I await your explanation.

            35. Information cannot be destroyed and represented information requires time, space, and energy to transform.The computers are just like little grain processing machines or test tubes. What is going on is a physical process.

            36. The computer requires power to operate. Its circuits have inputs and outputs. The state of the inputs defines the state of the outputs according to the circuit. In this sense, all circuits when they operate reduce entropy. But are the circuits new if depending on their inputs?

            37. Ned, The ‘circuits’ (or machine) is new when it is “programmed to” – remember, “programmed to” is structural language.

            38. What in the world does all that mean Ned? Space-time, entropy, etc. Information processing has its own physics. You can’t change information without work.Are the circuits new if depending on their inputs? What in the world does that mean? I will answer yes they can be, but I feel like I just fell into a hole.

            39. Night, your argument for 101 eligibility reduces to the simple fact that computers are physical machines. This was advanced by Rich in In re Benson. It was never adopted by the Supreme Court.In order for a machine to be eligible under 101, it must be new or improved. The same machine, unaltered in any way, is not eligible.

            40. “The same machine, unaltered in any way, is not patentable.”Corrected Ned – you (again) mistake patentable and patent eligible.Further, there is no ‘same machine’ once the machine is changed (configured) with new software – THAT is a holding of Alappat – no matter how hard you try not to see it. The addition of the manufacture and machine component of man-made software changes the machine. Once again, you attempt to ignore the ‘Morse’ aspect of the situation and you attempt to hold the first computer to be the ‘invention’ of all future improvements to that machine. That is the essence of the fallacious ‘House’ argument. Stop the fallacy, Ned.Once again, the addition of the manufacture and machine component of man-made software changes the machine. This is an undeniable fact of reality.That you have a new machine when an old machine is changed with the configuration with new software is the law.Until you can accept this, you are not being intellectually honest.

            41. “Night, your argument for 101 eligibility reduces to the simple fact that computers are physical machines. This was advanced by Rich in In re Benson. It was never adopted by the Supreme Court.”It really does, and it really was, and he’ll never give it up.

            42. Two machine consuming power is all I see. They sit there, doing nada. They are both just calculating numbers. How that makes them different machines is beyond me.

            43. LOL – Is that all you see?Quite clearly, you need to open your eyes and face reality. One machine without software may merely be a paperweight, a heater – but the other with software configured, is a new machine. What type of new machine is expressly linked to the actual software configured. Thus, my past posts tying in the Morse factor comes into play again. You would have the computer encompass all future improvements (in software). That is not allowed.This is not only a fact in reality. This is the law.

            44. Anon, you are adding a fact not in evidence: that the machines in the grand hall are performing I/O. Otherwise they both sit there doing nothing but generating heat.

            45. Re: Alappat, but that machine was part of a graphic unit and did operate on inputs and did have outputs that were used to produce an anti-aliased display. I am not sure how Alappat supports your view that a computer that does nothing at all — e.g., has no inputs or outputs, is a new machine if one changes its programming.

            46. Protons, neutrons and electrons, Ned.I have a big box of them. If I configure something, do I need it to interact with anything else for patent eligibility?You are trying so hard NOT to understand here. I have no holes in my logic no matter how tightly you clench your eyes.

            47. I am just connecting the dots. If you are drawing a conclusion, you really cannot have significant holes in your logic or proofs.

    3. I agree with 3, but not so much with 2. In theory, 2 is correct. In practice, the functional language is synonymous with “solve the problem” which conveys a wide range of solutions. Of course, proper application of LizardTech solves that issue.The issue with 103 is simple: When you’re the first one to write code which simply implements what was done prior to computers you gain the benefit of the legal fiction regarding enablement (that supposedly all code-writing is enabled by mentioning the goal) but you also gain the benefit of claiming the ancient act is non-analogous, unenabled and non-obvious.I find it rather comical that many disclosures provide no more “guidance” to a PHOSITA than your average episode of Star Trek, and yet Star Trek is science fiction and the disclosures result in multimillion dollar monopolies. Clearly Roddenberry took the wrong track.

      1. 2 is correct. A functional claim provides a clear set of possible solutions to one having ordinary skill in the art. If it doesn’t then it has 112 problems. If it is too broad, then it has 112 problems. The anti’s argument that a functional claim conveys no structure is wrong–and ridiculously wrong. The anti’s have time and time again presented outrageous arguments that only the scientifically ignorant would buy. And, thanks to Obama we have a Fed. Cir. stacked with scientifically ignorant judges. And, I voted for Obama twice.

        1. But “clear set of possible solutions” isn’t necessarily sufficient, right? If I were to claim “means for doing X” then it would convey a clear set of possible solutions, but by definition conveys insufficient structure, as that’s a requirement for claiming in means-plus format. Then the only question is if replacing “means” with “a function that causes” suddenly creates the necessary structure . How can it, as any PHOSITA already understood from the other limitations of the claim that the only possible means could be a function?Maybe we’re just splitting hairs here, as I agree with you that the description of the function conveys some fixed endpoint, and that is some amount of structure, I just think that is insufficient structure under 112, 1st. You seem to argue that it conveys structure, but the scope may be too broad and lead to 112, 1st. Seems like both of us are saying what needs to be done is more 112, 1sts

          1. What I think is that 1) hardware/firmware/software are equivalent. 2) That a functional claim does define a definite set of solutions that a PHOSITA understands very well. The set of solutions is enormous, but well defined. That is a consequence of the new technology of information processing. LizardTech explains a way to police claim scope.And, RandomGuy, is information processing any different than the other arts? I don’t think so. How many different types of hinges should you get if you claim a door with a hinge? The fact is that a sanity check would be to post a patent specification on a software board and see if the people on the board understand what needs to be done. The answer is yes they do. (they need a bit of context that doesn’t matter thrown in.)The equivalence is a direct consequence of the Church-Turing Thesis.Means plus function has a meaning limiting a solution to what is disclosed in the specification.

            1. I’ve already addressed this “thinking” vs. “knowing” in other threads bro and it is far beyond a kindergarten subject. It’s a subject that most adults don’t even have an understanding of. As evidenced even in this and former threads by yourself. Looks like there are even some very recent articles out on the very subject.

      1. You have said 100′s of times that I am Martin, so why don’t you ask Martin straight up right now if NWPA and Martin are the same person? We are not.

      2. Hmmm,You know that Lemley also chooses not to reply to NWPA. Or pretty much anyone else for that matter….Maybe Lemley is NWPA?/sarcasm

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  11. I’m not a lawyer, but I am an inventor (i.e., I have my name on patents) and there were some things that I worked on that other people who I trust (who have patents, some of them famous) said could have been patented. I’m not qualified to answer legal questions, but to the question of “would we come up with nifty devices without the patent system?” I think the answer is surely “yes”, because I did. The first patentable idea I had (in someone else’s opinion, not mine) I had no idea was patentable at the time; I just wanted to solve a problem that was in my way. (It was a really good idea; another guy built on it to complete his dissertation, it made its way into commercial products, as a grad student I got a free trip to Germany to talk about it at a conference.) So since I had a good idea without the incentive of the patent, clearly this happened at least once. And it seems to me that a lot of other people had quite good ideas before it was common practice to patent every bit of software in sight.It’s also difficult to disentangle the benefit of software patents from the benefit of Moore’s law hitting its sweet spot, during the decades when “supercomputers” went from something that required special power and cooling, to something you could load in the trunk of your car, to something that sits on your lap, and now in your pocket. That put a lot of processing power in a lot of people’s hands, and created gigantic new markets for software.I see a comment questioning the definition of “true invention”, and I agree, and the problem is that I don’t entirely understand the legal definition — if a lawyer says “sure, let’s try that” and the patent office agrees, then I guess it must be a true invention. There have been things that I worked on where I was certain that it was a valuable invention worthy of a patent, and other things where I was less sure. (And RandomGuy, surely you know that all the bloviating in the front is not what determines what is patented, it depends on the claims. And the problem with patents getting vaguer and vaguer is that now that we know what happened to the Wright Brothers and their patent, every patent attorney worth their salt will quiz the inventor on each and every detail of the invention to see if it can be generalized. That undoubtedly leads to more valuable patents, but they are also somewhat harder to understand.)(I should clarify — all my patents are “software patents”.)

  12. I have no problem with the patenting of a computer running a program. What I think causes all of the trouble in the software area is that the claims are constantly directed to a functional end rather than the structural means. If the Wright Brothers describe and claim their flying machine (even if, as you suppose, it used modern day software in some control manner) I have no problem. But if the brothers instead try to claim “a processor running software which controls the flight of a machine” then I have a problem on many levels. It claims too broadly for what the brothers have made, it fails to disclose which variables are important for the “control” (which likely provides no useful teaching to justify the monopoly grant) and if fails to leave room for improvement (which leads to all sorts of interpretation, 101, and patent thicket problems).The problem with software patents is not that they exist, but that they almost exclusively land in the latter category. The solution is to invalidate those claims.

    1. The Wright Bros patented a twisting wing that lifted one wing and lowered the other for banking. Later someone invented an hinged aileron that performed the same function, but with a different design. The Wright Bros attempted to enforce their patent against the hinged aileron and lost.

      1. I was referring to his former article where Goetz suggested that had the Brothers invented today, they would have used a computer program to control their “three-axis control system”, and that if the anti-software people got their way, there would be no patent for “what is recognizes as one of the greatest inventions of the 20th century” which Goetz advances as a reason for software patents generally.I’m not familiar with the facts you conveyed, but they seem precisely what should happen – Person A invents a structure which solves a problem, Person B invents a different structure that solves the same problem in a different way, and there was no infringement.The difference with software is that generally nobody discusses structure. They discuss function. And the function they discuss is so broad that it amounts to every reasonable solution to the problem. To analogize, software people today don’t claim the structure of their “twisting wing”, they claim software that performs the function of improving the banking of aircraft. i.e., not one particular solution, but all solutions. That’s so broad that 1) it’s manifestly obvious nobody has ALL the code that achieves that function, 2) most times, there is no limiting description in the spec (which provides no guidance to PHOSITA), 3) the applicant isn’t in possession of the most efficient embodiment at the time of filing but wants to assert it later, 4) there is no means of designing around the patent. A large number of patents with this problem are granted in the software arena.

        1. That was my point. There has to be some sort of function for it to be useful, but you can’t just patent the function of it – there must be structure in the way it accomplishes it. If someone else invents a different structure to accomplish the same function, that’s called designing around and their is equally patentable.

          1. If someone else invents a different structure to accomplish the same function, that’s called designing around and their is equally patentable.It is equally patentable already. If you look at software patents, they can be of widely differing scopes. One patent, for example, may describe “server load balancing” as just one constituent part of a client-server interaction, whereas other patents may each describe particular examples of server load balancing and still more patents may each describe further refinements of those examples.

          2. Exactly! And the problem with most software functions is that they neither claim nor disclose the structure, which most practicioners seem to think makes a strong patent, but in reality means the patent should never have been granted.

            1. That’s just the kind of thinking that is wrong and leads to all the problems. Structure is always the only thing protected. The only valid limitations are structural limitations (perhaps with intended use) and means-plus-functions which on their face appear structure-less, but simply call the structure in the spec. A new use for an old structure is not patentable. In the case of computer functions, the limitation is directed to a genus of algorithms. The algorithms are ordered steps. The ordered steps are the structure. This raises two issues: 1) Does the Applicant prove he is in possession of the full genus of structures rather than just a single novel species? and 2) Does the Applicant prove he is in possession of the single species?Thinking that methods just need to describe the end result of the function is what leads to low quality patents, patent thickets, and the court constantly having to throw out patents. Functions need to have disclosed structure.

            2. Really useful, anon. Here, pop quiz for you:Applicant decides he is going to improve the gas efficiency of his car. He considers three ways to do it: inventing lighter materials for the chassis, making an engine which more efficiently derives energy from gasoline, and lowering the wind resistance. Applicant decides to lower the wind resistance. Applicant does something completely obvious like cutting off the side view mirrors. Applicant describes all of the foregoing in an application. Applicant claims computer code which automates the process.Applicant claims 1) A computer-implemented method which *limitations for data gathering*, performs the function of improving gas efficiency, *cleanup limitations*.2) The method of claim 1, wherein the function of improving gas efficiency further comprises lowering the wind resistance.3) The method of claim 2, wherein lowering the wind resistance comprises cutting off the side view mirrors.Claim 1 fails 112, 1st because it is admitted. Claim 2 fails 112, 1st because a PHOSITA knows there are other ways not described which would lower wind resistance. These claims will remain invalid even if applicant finds a non-obvious limitation to add to claim 1. Ned claims the methods need only function. Ned is incorrect.In software, most Applicants fail to even include claims 2 and 3, they simply modify claim 1. I’m sorry if you are successful at getting your clients wonderfully broad and completely invalid claims.

            3. And I’m sorry that you only get worthless easy to design around picture claims for your clients.A concept you need to check into: ladders of abstraction.(and it is pretty clear that you don’t know anything about the software arts and that your practice is limited – far too limited – to one type of art and one type of claim.)

            4. Have them – thanks.Do you have the basic drafting guidance of ladders of abstraction? Your posts indicate no. You can ask Leopold for them.

            5. Ladders of abstraction cannot put your inventor in possession of something he isn’t in possession of, nor shrink the scope of possible solutions to a problem. There’s no artful way to give the inventor a valid patent on software to improve gas efficiency when all the software does is cut off a side view mirror.

            6. Your possession and scope are side issues – dust-kicking at its finest.Proper possession and scope are still achieved for a vast majority of patents in the software arts. ALL patents art fields contain patents that should not have been granted for a variety of reason – including possession and scope. Your dribble here is quite meaningless as you clearly do not understand the art field.

            7. And this is simply bogus. With software, the method is the invention — the steps — what the software makes the computer do when programmed and operating. It makes no fricken difference at all how one actually programs the computer as that is hardly the invention at all.This is why programmed computer claims are and are properly treated as methods for eligibility purposes. And, that, sir, is the position of the en banc Federal Circuit in Alice, until and unless overturned.

            8. “With software, the method is the invention — the steps — what the software makes the computer do when programmed and operating.”That’s right, which means you have to describe the steps. You can’t just say “my computer was in operating state A and I claim all ways of getting it to operating state B”. You can discuss the steps you take to move from A to B and get protection for those steps and similar steps. You cannot go further out and suggest that because you have created one way of getting from A to B that you are in possession of all ways.I claim “a function for getting to third and main.” In my specification I achieve this function by doing the steps of 1) walking three blocks east, 2) three blocks north and 3) one block west. These three steps are the structure of my function. These steps are what I get protection for.If someone else invents the same function by 1) taking a taxi three blocks north and 2) two blocks east. They have achieved the same function with a different structure. It’s entirely possible that the two functions are equivalent and thus he still infringes.It’s also possible that the difference in structure (two more blocks, different mode of transport) make some sort of important difference or render the two inventions totally different. In fact, Google (for example) runs a totally different algorithm for walking to a point than taking a car to a point than riding public transportation to a point. Someone who invented Google’s walking algorithm is simply not in possession of Google’s public transportation algorithm. They are different inventions. The attempt to claim both when one isn’t in possession of it is simply invalid under 101 or 112, first. It’s the exact problem that Morse had.”It makes no fricken difference at all how one actually programs the computer as that is hardly the invention at all.”Only so far as the difference does not result in different steps for achieving the function. There’s no difference for achieving the same steps in iOS or Windows (even though they’re using different code). There is a difference between doing the steps A,B,C,D or A,C,B,D. Whether that difference is one if import is up to a fact finder.

            9. Random, if I invent a method of doing things in a computer, i.e. software, I describe a series of steps which are essentially calculations. As I suggested before, any programmer can implement the series of steps in a computer program without too much trouble. It is within the skill of the art.Precisely what structures involved in this I do not know because the structure is not the invention. In fact, one hardly need a specification at all given that the method can be completely described in the claim.Now you then change topics and talked about a method of getting from here to there and Google and something else. What this has to do with the topic of conversation at hand I do not know because the question on the table is software where the novelty is in software steps. Doing something physically with a car, horse or a mother pushing a stroller in a certain order to get from here to there can be implemented in software, but also can be implemented by a human performing same steps. Obviously software is not the invention.

            10. A PHOSITA comes upon a problem with the state of the art. They solve it. Their means of solving it is to type out a series of ordered computer commands. When those commands are saved to a non-transitory medium they change the structure of it. When they are read by a processor the computer executes method steps. The code, the particular code typed in is the structure of the invention. If someone else solves the same problem using a completely different approach, which results in different code and a different structure, he has created a different invention. The first inventor was never in possession of this completely different code, and thus any claim which has a scope that would cover the completely different second code is likely overbroad and subject to a 112, 1st rejection. It is for this reason that a specification cannot simply state it is capable of performing a function, because at most what the applicant has is one means of achieving the function. Similarly, the claim cannot claim the function. The only thing the claim can claim is the method steps that the applicant is in possession of, I.e. The algorithm that occurs from his code. Most applicants do not claim or even disclose their algorithm, they just state that they are in possession of the function.

            11. Random, this is so much nonsense as to be … Well I will not complete that thought.The invention is in the method and the method covers all code that carries into effect the method. Code, structure, whatever, has nothing to do with the invention. Nada. You don’t even need to disclose any code. Really!

            12. You need to disclose the code or algorithm, and you can claim the code or algorithm along with any algorithm that falls within the expanded scope that you can prove you possess. You cannot claim the whole function. To analogize again, (sorry) NASA could claim the Voyager spacecraft and their method of landing on the moon(assuming it is described and enabled). NASA couldn’t claim any apparatus fit for celestial travel nor the function of landing a spaceship on the moon. This would be true if all human interaction was removed and only code piloted the journey as well. However, the overbroad scope is precisely the scope most computer applicants try to claim. It doesn’t matter whether NASA considers their invention to be their method of landing on the moon or the function of moon landing, they cannot claim the function as that encompasses a wide range of actions they have never done. They can claim their actions and equivalent actions, but that requires a disclosure of their actions (I.e. Their algorithm). Never proper – a spec that states only “the Voyager computer then runs code to direct it to fly and land on the moon” and a claim that includes in it’s limitation the function of flying to or landing on the moon.

            13. As I said, you have to disclose the algorithm. I have never heard of a case involving code only.Second, you confuse claiming a result with claiming a method comprising at least two steps, where the novelty is not solely in one step. In almost every software invention, one is claiming a method and not a result.

            14. Random, your penchant for picture claiming is every bit as wrong as Ned’s penchant for old canards.There is nothing anywhere that says to claim a genus, ALL species must be detailed out in an application. You simply want to go too far with your exactitude.add: Random, why are you insisting that code and algorithm are the same thing, or that they are directly interchangeable? You do realize that they are vastly different, right?

            15. No, that’s not what I’m saying (and I agree you need not detail all species). You are required to more than your exact code/algorithm, but there is a standard for genus/species:1) particular embodiment +2) broadening principleYou could easily claim a larger scope than the “picture” as you say, but it requires more than a single perfunctory sentence and probably doesn’t extend to claiming the entire function (which is a scope that encompasses every means to achieve the end). It’s not hard to say “I wrote code which did steps A, B and C to achieve function D. I claim code which does A, B and C. Further, actions like F, G, and H would also achieve the same goal as A and can be substituted. B is well known in the art and has many known substitutes. C can be achieved in any suitable manner so long as it includes a http GET. (etc)”Very easy. Unfortunately, Applicants don’t so any of that. Instead they say “I possess a way to achieve D. I claim D.” They don’t detail how D is achieved at all. That’s not allowed, for obvious reasons – If an infringer achieves D by using action F, it is unclear whether Applicant used action A, or action F. Or if Applicant posited action F. Or if F and A are equivalent actions. If a second infringer achieves D by using actions W,X,Y,Z, which are totally different actions, not only is he not infringing of applicant, but he’s entitled to his own patent.

            16. Your response seems to make the same mistake many applicants do. They are in possession of one means of achieving a function, but claim all of them, without any support as to why they are in possession of the larger scope. This is not an enablement issue, as your statement that it’s within the skill of the art suggests. Nor is this a definiteness issue, as you seem to think by “the method can be completely described in the claims”. The question is what did the applicant have when he filed and what is he seeking protection for, and are those commensurate.

            17. So long as the method is expressed in two or more steps, where the novelty is not just in one, there is no overclaiming problem at all. The Supreme Court made it clear that its ONLY complaint was with claims functional at the point of novelty.

            18. “The Supreme Court made it clear that its ONLY complaint was with claims functional at the point of novelty.”Cite please (and Ned, the Supreme Court has actually said the opposite – see Prometheus and Diehr: “But §§102 and 103 say nothing about treating laws of nature as if they werepart of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be considered as a whole”). Prometheus 566 U. S. ____ (2012) at 21.)Stop your misrepresentation of law.

            19. Cite? Faulkner v. Gibbs, 338 US 267 – Supreme Court 1949″The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”

            20. Need a cite from post 1952, Ned. Preferably something post-Diehr and post-Prometheus wherein the Court reiterated the claims as a whole requirement which makes your PON a cannard (hint: see my citations above). You are just getting on your old merry-go-round again.

            21. anon, what are you talking about? Are you trying to change the topic again? The question on a table was functional claims. The Supreme Court made it clear in both Halliburton and in its following case Faulkner v. Gibbs that they had problems with claims functional at the point of novelty and not with combination claims when the novelty was in a combination. Furthermore, in Halliburton itself they did not have a problem with prior art elements that were functionally claimed. There is nothing post 1952 that affects this. What could possibly have changed? The Supreme Court simply has not addressed functional claims since.

            22. The topic is not functional claims per se – rather, it is the canard of Point of Novelty.Did you not read the citation I provided?

            23. LOL – tell that to the Supremes.(and then you, yourself, can use the proper nomenclature: patentability versus patent eligibility)

            24. anon, did you know that Morse, Perkins Glue and Halliburton all cited “112″ as the statutory basis for their decisions on functional claiming? The Supreme Court HAS been clear.

            25. But Ned – you have not.Here: patentability versus patent eligibility.Elsewhere: exceptions to the printed matter doctrine. Why is it that you cannot address that controlling law?(And how do you wish to infuse novelty into 112 – in order to cover your Point of Novelty canard)?

            26. I am sorry, anon, for confusing you by citing controlling Supreme Court authority that is supported by the CCPA’s decision in Fuetterer, authority that is binding on the Federal Circuit unless overturned en banc. Claims functional at the point of novelty, according to controlling case law, are to be construed according to 112(f). Now it seems the courts are trending that way. So is the PTO.You stand, again, like Quixote, tilting against windmills in a lost cause.

            27. You have not confused me, Ned.You only run from the discussion.As usual.Again – how are you bootstrapping novelty into 112?Hint: your PON is a canard, as ALL elements in a perfectly patent eligible AND patentable claim may be non-novel. The PON, as it were, is in the claim as a whole. ADD: also, you might want to re-read the case you just brought to the table in Fuetterer, as it dispels your notion that Halliburton was left intact by the 1952 Act (and points out the vice you employ with your lifting out of context the word “functional”). As with other concepts (i.e. 101/103 and invention, you seem to misapply the 1952 Act and words that were too malleable and used by anti-patent forces to constrain what patents are allowed for – the very notion of the smackdown of the Court by the 1952 Act that you forever and a day seek to not acknowledge).

            28. 6, perhaps. But if is really software they are claiming, software is nothing but math. What the numbers mean is in the mind.

            29. The distinction is important, anon, because there is a distinction between the abstract and the real. Time space has structure in terms of relationships. A particular structure is its state at a particular time. The state at a particular time can also be called information. The information entropy of the universe increases from one state to another.In contrast, representations of information are abstract. We can model the universe, but the model is not the universe. The model can decrease information entropy of the universe. But this can happen only in an abstract world.

            30. Ned,You continue to ignore reality and the law.See Alappat.Software, as a man made manufacture, when added to a machine really does change that machine.

        2. All of your concerns are adequately addressed (or should be) by other sections of the patent code. The problem with using 101 is that is has no reasonable test or limits and threatens to swallow many useful inventions that should get patent protection.

          1. I agree. I think when there’s no or just nominal structure it’s hard to distinguish between a 101 and a 112, 1st. But just as there is minimal danger in deciding it on 112 grounds, there’s also minimal danger in taking an “invention”, as here, where I think it’s clear it ultimately shouldn’t get protection and the court using it as a means to further define a 101 test. The only way you get a reasonable test with reasonable limits is to adjudicate the issue.

        3. They discuss function. And the function they discuss is so broad that it amounts to every reasonable solution to the problem.That’s the goal. The goal of patents is to protect the “invention.” For any given “function,” there are likely thousands (if not hundreds of thousands) of different of ways to implement that invention — some are efficient and some are not. However, with the speed and memory capacity of a modern computer, efficiency is of little import for most applications. If one could only protect the examples described in the specification (e.g., the code), then those patents would be useless in most applications. Of course, this would make one side of the debate very happy.When I claim “A attached to B with a screw,” I don’t need to describe every possible screw in existence within the specification.

          1. You’re kind of assuming the issue aren’t you? Of course if thee differences are of little import then they are equivalent. The reality is they aren’t equivalent. It’s hard for me to accept that there are “thousands of ways” of doing something which have different qualities (some are more or less efficient) and that those embodiments were both 1) non-obvious beforehand and 2) suddenly enabled and described by the recitation of completely different structures that accomplish the same goal.That’s like saying if I reshape a car body to reduce the wind resistance I can craft valid claims in a manner that someone who improves the engine would infringe because they both fall under the same general function of “improving gas efficiency of a car”.Besides if what you are saying is true, then protection still exists for the particular code embodiment since the infringing code would be equivalent. In either case, I feel like you’ve admitted the issue, because you’re admitting there are thousands of ways of doing a function that Applicant claims did not exist before, and Applicant haven’t demonstrated possession of the genus, only the particular species. One cannot invent a drug that cures cancer but claim “any drug that cure cancer”.

  13. Nothing against your ultimate position, but you need to add more to the debate than the term “true invention” — a term for which you don’t give a clear definition. I suspect that very few of the 200+ eventual responses to this post will actually discuss the term (or what you’ve written). Instead, we’ll get the same cast of characters restating the same positions for the umpteenth time.

    1. Quite so. I think Goetz means to distinguish a machine which has inventiveness outside of its software versus software functionality being the driver of patentability? I think there’s widespread agreement that if there is any novelty in the claims of CLS Bank v. Alice at all, it comes in the form of the computer embodiment (as nobody disputes that escrow is ancient), making it not a “true invention.” If, however, the claims at issue had been attached to a specification that invented the concept of escrow, applying them in a computer context should not work to defeat their patentability.If that is what he’s saying, I disagree, because I can posit software functionality that in and of itself would be patentable (some “non-true inventions” can be patented) and because I can picture a machine which would be inventive until it adds in its unnecessary software limitation (a “true invention” becomes unpatentable).

      1. RandomGuy, Geotz is reframing Diehr. All his examples pass the MOT and are not made ineligible because the novelty is in the use of a programmed computer in the inventive process just as in Diehr or for that matter, Alappat.But Alice implemented an ancient business method on a computer using new methods. The claims did not pass the T part of the MOT. But did they pass the M? When one adapts a computer to do more than simply calculate numbers, but must do steps in time specific order, is this not a special machine?

        1. Alice implemented an ancient business method on a computer using new methods.Huh? How can you use the terms “ancient” and “new” to describe the same method?

    2. I think the article had its desired chum effect and distracted the focus from the Office Appointment scandal.But PG, the term “true invention” is expressly NOT within the debate as proposed by Mr. Goetz. That is NOT what he has written (so in a sense, you are both correct and also join in those not discussing what he has written – because to Mr. Goetz, “I deliberately put in quotes true invention for that’s not part of the debate.”Instead, it is not exactly clear just what the debate is for Mr. Goetz, just what the purpose is of his post, as he adds nothing new to the discussion.

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