In re Ferguson (Fed. Cir. 2009)
Scott Harris has been discussed several times on Patently-O. Harris is a former Fish & Richardson partner. Fish handles the most patent litigation of any firm in the country. In addition to being a patent attorney, Harris is an inventor. He has contracted with the plaintiffs firm Niro Scavone in several actions to enforce patents against Google and other companies. Harris is one of the named inventors of the Ferguson application and he handled the [futile] appeal.
The claimed invention focuses on a “method of marketing a product” and a “paradigm for marketing software.” These claims focus on methods and structures for operating a business.
Methods Under Bilski: Claim 1 reads as follows:
A method of marketing a product, comprising:
developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;
using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company, so that different autonomous companies, having different ownerships, respectively produce said related products;
obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; and
obtaining an exclusive right to market each of said plurality of products in return for said using.
Under Bilski, this case is open and shut. The claim is not even arguably tied to a machine — especially under the Nuijten construction of machine to be a “concrete thing, consisting of parts, or of certain devices and combination of devices [including] every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” (Quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)). Thus, the 1863 touchability definition of machine appears to hold weight. On the second Bilski prong, the claim does not require transformation of any article into a different state or thing. The only transformation is that of legal rights and organizational relationships that were explicitly excluded in the Bilski decision: “transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.”
Harris asked the court to consider a different test of patentable subject matter: “Does the claimed subject matter require that the product or process has more than a scintilla of interaction with the real world in a specific way?” The CAFC panel rejected that proposal primarily based on the precedential value of Bilski: “In light of this court’s clear statements that the “sole,” “definitive,” “applicable,” “governing,” and “proper” test for a process claim under § 101 is the Supreme Court’s machine-or-transformation test, see Bilski, passim, we are reluctant to consider Applicants’ proposed test.” The court went on to determine that the “scintilla” test would create too much ambiguity as well.
Non Method Claims: The application also included claims directed to a “paradigm for marketing software” made up of a marketing company that markets software in return for a contingent share of income. Although “instructive,” the Federal Circuit did not directly follow Bilski. Rather, the court looked to determine whether the claimed paradigm fit within one of the four statutory classes listed in Section 101:
Inventions Patentable: “… any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”
In a gentle Koan, the Court stated that it “need not resolve the particular class of statutory subject matter into which Applicants’ paradigm claims fall, [however], the claims must satisfy at least one category.” In fact, the court did attempt to resolve the particular class, but was unable to fit the paradigm claim into any of the four.
Applicants’ paradigm claims are not directed to processes, as “no act or series of acts” is required. Nuijten, 500 F.3d at 1355. Applicants do not argue otherwise. Applicants’ marketing company paradigm is also not a manufacture, because although a marketing company may own or produce tangible articles or commodities, it clearly cannot itself be an “‘article[]’ resulting from the process of manufacture.” Nuijten, 500 F.3d at 1356. Again, Applicants do not argue otherwise. And Applicants’ marketing company paradigm is certainly not a composition of matter. Applicants do not argue otherwise.
Again applying the touchability notion of machine, the Court also rejected the notion that the company paradigm could be a machine:
Applicants do assert, however, that “[a] company is a physical thing, and as such analogous to a machine.” But the paradigm claims do not recite “a concrete thing, consisting of parts, or of certain devices and combination of devices,” Nuijtent, and as Applicants conceded during oral argument, “you cannot touch the company.”
Ending in a flourish, the court found that in fact, the Ferguson paradigm claims are “drawn quite literally to the paradigmatic abstract idea.” (quoting Warmerdam).
Judge Newman offers a poignant concurring opinion.
NWPA,
I was not aiming for an abstraction such as the one you put forth with J. Moore. I was aiming for a much simpler point that ANY process (and process is still one of the categories of patentable subject matter) can be described in a flowchart.
The Mooney veneer of the examiner posing as a practioner is so thin that the statement:
“That’s called an algorithm. Thank you for admitting this fundamental point in favor of patent ineligibility.” Posted by: Malcolm Mooney | Mar 13, 2009 at 02:47 PM
is absolutely inane and requires a briar-rabbit-6-twist-of-logic to defend.
We’ll simply step aside of the strawman “you could also flowchart a method consisting of a single step” distraction offered by Malcolm as it has absolutely nothing to do with flowcharting processes and signs of patent ineligibility.
Now run away Malcolm, another of your fatal logic arguments has been dispatched.
>>You could well be right about Stevens on most >>IP issues. But in Microsoft v AT&T, he was a >>lot closer to understanding how software works >>compared to the technologically-challenged. >>Treating software as an >>architectural “blueprint,” as did the majority >>in Microsoft, is an absurd analogy for how >>software works.
EG: The problem with Stevens is that he like Douglas before him “with a seeming purpose” want to exclude all software from patentability. The other justices just appear to be really dense. Stevens model of software is that it is an equation that we all should be able to use, and that the PTO can’t do the job of examining software patents. Twenty five years ago the reason was there was no prior art. Now I am not sure what it is.
A machine that processes information.
The flow chart discussion above is ironic. It seems to underlie J. Moore’s arguments. Moore goes through the following exercise: can I think through the method in my head and could my head perform the method. (And yes she thinks out loud so we can know what she is thinking.) Yes. Then it can’t possibly be eligible for patentability. J. Moore, go through that exercise with a physical process—such as Deener–and you will see that your body could perform the process described in Deener, so it should not be eligible for patentability, right?!
The implications of Moore’s thinking are interesting. I guess what J. Moore is saying is that she is such an obvious common thing in world that no machine that could do what she can do would ever be eligible for patentability.
I don’t see anything wrong with anonymously trolling your own blog. Of course I’ve had a lot of free time to think about it lately.
“Sad, brother. Truly sad.”
Yep, and trolling your own blog is like sleeping with Lumbergh. Its just creepy.
Now how would you know anything about what goes on between Dennis and his posters Mooney? Oh wait, I think I know.
By the way, Che Guevara’s mule called… well you know the rest.
“Any method can be flowcharted.”
Only if “flowcharts” are defined so broadly that they are synonymous with methods.
It may be technically true that you “can” flowchart a method of “A then B then C”, but in that can case you could also flowchart a method consisting of a single step.
Only a m0r0n would engage in such a silly practice.
By the way, Caveman, I thought you were banned. You went through the trouble of finding a new email address just so you could accuse Dennis once again of doing what you (and primarily you) do habitually, i.e., post under multiple user names?
Sad, brother. Truly sad.
“This whole Mooneys-under-the-bed thing is getting very very old…”
Very old and inconvenient for the PuppetlyO Puppet Master, because when people really understand the intellectually dishonest agenda of the puppet show here at Puppetlyo the credibility will evaporate.
The funny thing is that the Puppet Master actually thinks people don’t notice. But they do, and I took a poll, most think its “Unethical and Wrong.”
Malcolm,
Your ignorance is showing (yet again).
Any method can be flowcharted. You may choose to be your own lexiconagrapher and define “algorithm” as a flow chart of a process, but even with that definition, this is NOT an admission of a fundamental point in favor of patent ineligibility.
That is unless you and 6 have been drinking together again and redrafted 35 USC 101.
“My case is Article 3, section 8 of the US Constitution, the 35 U.S.C., and the 37 C.F.R. ”
I will be honest I haven’t seen any Beauregard claims that cover a legitimate promotion of the progress of the useful arts. Can you show me one? 37 USC doesn’t have any public policy objectives in it that I can see.
“In fact, all software/computer programs can be “flowcharted” to describe what “process” they perform.”
That’s called an algorithm. Thank you for admitting this fundamental point in favor of patent ineligibility.
“Actel”
It has been awhile since I used one of those boards. I’d forgotten it was an “embedded” FPGA, frankly I don’t remember how it operates and I don’t feel like looking it up atm.
Just did you have something you wanted to say or did you just want to throw around ridiculousness that has no bearing on the discussion at hand? I haven’t said that patentability rests on public policy necessarily. Although it could very well be that the office lacks the authority under the constitution to even issue a patent to a Beauregard claim. That is another discussion. Right now we’re discussing if there are any public policy objectives being furthered by patenting Beauregard claims. So far no one has, or can put anything forward.
I don’t blame any of you, I find it difficult to as well. Except maybe Just, because he thinks he’s a big shot, and he will until his 3rd RCE time comes around. I know his type. Real uncooperative until they have no choice.
“You are crafty to base your hypothetical by assuming a contested fact.”
You’re right I am crafty. And yes, I assume that it is a contested fact, because I am contesting it.
“That software can be written down on a piece of paper is just one big red herring.”
For the most part I agree. And personally I try to stay away from that particular fact in arguing against Beauregards, when I do.
“Computer software is not a “written work.” The software can be “represented” by a written work, but the written work is not computer software. Just as a blueprint can also “represent” a piston, the blueprint is not the piston.”
You lost me on that one. I can assure you that it is, I’ve written lots of software myself and I’m nowhere near a journeyman at it. It is definitely a written work. Also, the software can be the written work itself if you program in machine code. I’ve done that laborious ridiculousness myself, trust me it is done. As to your piston analogy it is very far off base since written software doesn’t only represent the software, it is the software unless you use some high level language, and then you’re simply using a high level language to shortcut through making the actual software the old fashioned way and you’re having a computer help you write the machine code.
I’m going to guess you haven’t done much coding yourself, at all.
I do have one question more though, since you guys refuse to answer my question about the public policy objectives.
Do you guys think that if a claim reads on a piece of paper with words of written software on it like in his OCR example above then the PMD might be applicable even though the court said the PMD was applicable only when the words were meant solely for the human mind/eyes? I believe that would be a case that might even get granted cert.
I’m thinking about writing some code that enables a computer with a camera to cature a representation of code, perform OCR, compile, and execute the code.
I’m thinking of dumping the code into a patent and filing it with the USPTO.
I’m thinking of claiming a computer readable medium having the code recorded thereon.
I’m thinking of suing the USPTO, PAT2PDF, GOOGLEPATENTS, and anyone who views, prints, or photocopies the patent.
I’m thinking of filing a ptent application claiming the process of thinking about these things.
I’m thinking of suing you.
“Justice Steven is one of the biggest obstacles to clear thinking in patent law and we can only hope that he retires soon.”
Night Writer Patent Attorney ,
You could well be right about Stevens on most IP issues. But in Microsoft v AT&T, he was a lot closer to understanding how software works compared to the technologically-challenged. Treating software as an architectural “blueprint,” as did the majority in Microsoft, is an absurd analogy for how software works.
Max
To be fair, magic words will allow a claim to escape EP-101, but that’s a hollow victory because non-statutory claim elements are then excluded from the analysis of obviousness – substance does triumph over form in the end.
This whole Mooneys-under-the-bed thing is getting very very old…
I’m Spartacus!
“…is it too much to hope for some joined-up thinking about what is or is not statutory subject matter, instead of all this ‘magic words’ nonsense?”
Yes.
In Section 8 of Article 1, the bit that intrigues me is the bit about Congress having the power to define offences against the “Law of Nations”, to make rules about “Captures” on Land and Water, and to punish felonies committed on the high seas. Is all that stuff still there today. I imagine that “capturing” and punishment on the high seas is still in there, but all reference to a “Law of Nations” has been excised, right? Now I come to look at it word by word, Section 8 says “Science and useful arts” by giving exclusive rights to “inventors”. So, it’s 1) not necessarily ALL of the useful arts and 2) only “inventors” that qualify. Not every new and non-obvious thing is an invention (the winning number, for example, in the useful art of lottery tickets) and not every creator of a new and non-obvious thing qualifies to be dubbed an “inventor”, right?
Mea Culpa. I meant Article 1.
How many identities has “Mooney” now acquired? A multitude. But I suppose it’s a comfort, to lump together all views that don’t accord with your own as the ranting of just one solitary crazed individual. Myself, I have my doubts about the sanity of all those who see Mooney round every corner, and hiding behind every second posting.
6 said, “Make your case, if you have one, for a public policy that is served by protecting the functionality of written works.”
My case is Article 3, section 8 of the US Constitution, the 35 U.S.C., and the 37 C.F.R. In terms of how you examine patent applications, I think it says a lot that you are concerned about the public policy for patentability of functionality of software, when you should be more concerned with carrying out your duties to Exmaine patents under the law as it exists. This prjudice against certain art areas in the PTO has to stop. The bottom line is that copyright does not protect functionality or underlying information, only artistic espression. Patent protects functionality, but not underlying information or artistic expression. Is that not clear enough?
I’m thinking pots and kettles Tyrone. Be careful not to disparage, with the “magic word” slur. In Europe, our magic word is “technical” no? Our magic’s more powerful than that of the CAFC, right?
Or is “technical” not really “magic” at all. Rather, it corresponds to “useful arts” in the US Constitution, and “technology” an GATT-TRIPS so is as irreducibly fundamental as it is possible to get.
” share with Mooney ”
You ARE Mooney…
Max: “I can’t imagine the USA accepting Euro-101, much less simply adopting the elegantly simple European Patent Convention lock, stock and barrel. Can you?”
Nope, me neither, but is it too much to hope for some joined-up thinking about what is or is not statutory subject matter, instead of all this “magic words” nonsense? The idea that an unpatentable computer program becomes – bibbidy-bobbidy-boo! – patentable by virtue of being “tangibly embodied on a data carrier” simply boggles this poor mind.
I share with Mooney the hope that the clock is about to strike midnight on the most egregious examples of bizware patents, but would also hope for a grown-up approach to patent rights in a hugely important industry sector.
Spoke too soon. Sorry Dennis. I see my posting now. It just took a long time to get into the thread, for some reason.
Now it’s happened to me: comment written and posted….and into thin air. No sign of it on the thread. Dennis, any more of this and I’ll lose my enthusiasm for posting to this blog. I can’t be faffed to start saving drafts etc.
I suppose I used a word that your f1lt§r picked out. It used to tell me, but it didn’t on this occasion. Grrrrrrh.
6: The premise of copyright and patent law is that we want to encourage the creation and disclosure of artistic works and useful articles. (You’d get that from an IP survey course.) If you don’t accept that premise, stop reading because your beef is with the system, not just software.
If you accept that premise, consider that, in the absence of market power, software packages compete on the basis of their utility. Because copyright does not cover such utility, copyright protection is insufficient to encourage the creation and disclosure of the software functionality that is readily copied, once seen.
Now, if you want to argue that incentivizing software isn’t necessary because their particular industry would build it anyway, go ahead and have that argument. To have a market-based policy argument is fine in my book.
To have a technology-based policy argument is pretty difficult because a CD with encoded executable software is effectively a subcomponent. And we patent subcomponents in all sorts of other arts without hesitation.
>>Justice Steven’s analogy to the punched roller >>used with a player piano
Could you put a roller in the piano and have it generate a new song? No. And the problem with Justice Steven’s is that he has a desire to pigeon hole the computer into something that he already understands rather than something that is new under the sun, which it very clearly is.
Justice Steven is one of the biggest obstacles to clear thinking in patent law and we can only hope that he retires soon.
Yeah Tyrone. We in Yoorp are fortunate enough to enjoy the historical accident of a Patent Statute that includes a 101 provision that expressly includes the word “computer” yet which was enacted during in the interregnum between computers and the time when non-pharma patents became sexy. Given the diametrically opposed interests of pharma and EE, I feel sorry for the USA, aware that its patent statute needs updating, yet unable to navigate between those hotly opposed and enormous commercial interests. Shall “patentable” be confined to that which has technical character? Or not? I’m not expecting an answer any time soon. I can’t imagine the USA accepting Euro-101, much less simply adopting the elegantly simple European Patent Convention lock, stock and barrel. Can you?
6,
You ask about the “public policy” of patenting the functionality of software/computer programs. Software/computer programs are treated under copyright as similar to books (“written expression”), presumably because of the computer/software code uses alphanumeric expressions. That’s a very strange way to view software/computer programs which are not really analogous to books. But that’s where they’re stuck in copyright (check out the Copyright Registrar where you’ll see that software/computer programs are registered for copyright using the same category of forms for books).
Frankly, software/computer programs are much more amenable to patenting as a “process” under patent than as “written expression” under copyright. For example, SCOTUS’s majority view in Microsoft v. AT&T that software is akin to an architectural “blueprint” is extremely inapt. In fact, dissenting Justice Steven’s analogy to the punched roller used with a player piano is a much more apt and reflects the origin of IBM punchcards from the 1801 Jacquard loom (the original “computer controlled” machine). Software code does more than simply provide a set of instructions, but instead “drives” or “operates” the computer. In other words, software, unlike a blueprint (or a book) is “dynamic” operating process. In fact, all software/computer programs can be “flowcharted” to describe what “process” they perform.
That software/computer programs may be covered under copyright and patents is also not inconsistent. Product or packaging designs can be covered under design patents, copyright and trademark.
Man, these software arguments go round and round ad infinitum and, from a Yoorpean perspective, continually miss the point. A computer program “as such” shouldn’t be patentable because it’s just copyrightable expression, whatever. It’s WHAT the software DOES and/or HOW it does it that should determine patent eligibility. In Yoorp, “technical character” is what counts (the meaning of which can be gleaned fairly well from the case law, if not readily expressed in a concise manner). If you pass that test you can claim a method, a programmed machine and a program product, with or without tangible embodiment on a data carrier.
What seems to be missing in the US is a similarly clear doctrine on the WHAT/HOW question, which presumably is what Bilski tried (and failed) to do.
“There are close to 400 patents and close to 600 published applications that specifically claim OCR”
Uh … so what?
Shall we pull, at random, 5 of those patents that use Beauregard language and laugh at the claims?
I think there might be some patentable subject matter lurking out there in the field of OCR. But it’s virtually impossible that it is software-based.
A Familiar Voice: “Just as a computer can OCR the piece of paper and “upload” the software in order to make the software functional, the same computer can OCR the blueprint, and use the blueprint to cnc machine the piston.”
And yet the blueprint isn’t patentable but the software is.
“The software can be “represented” by a written work, but the written work is not computer software.”
And yet if I write down a computer-implementable method for displaying an improved virtual toolbox, that writing can anticipate a Beauregard claim.
It seems contradictory, but that’s because what I wrote is true and what you wrote is false.
“I extend an invitation to any who think they could do a better job than me or SF can do at finding a legitimate public policy objective that would be served by allowing the patenting of the functionality of written works.”
You are crafty to base your hypothetical by assuming a contested fact.
How is software being written on a paper any different than a blueprint of an unique automobile piston? Anybody writing a claim to a piece of software or an automobile piston is not intended to claim the either the blue print or the written code.
Just as a computer can OCR the piece of paper and “upload” the software in order to make the software functional, the same computer can OCR the blueprint, and use the blueprint to cnc machine the piston.
That software can be written down on a piece of paper is just one big red herring.
Computer software is not a “written work.” The software can be “represented” by a written work, but the written work is not computer software. Just as a blueprint can also “represent” a piston, the blueprint is not the piston.
It’s fairly clear that 6 has not read the law, or has even failed to read his basic engineering texts about the structure of materials, but it now appears that 6 has failed to read chapter 1701 of the MPEP.
Also 6, I don’t recall when the test of patentability became whether the invention “served public policy”
6 says
“No takers on the invitation to explain to us all what a public policy served by allowing protection of software through patents might be?”
We can’t seem to successfully explain to you that atoms don’t fall out of wires, how can we ever hope to deal with something complex like examining patents, software or otherwise.
“It takes “considerable skill” to proofread a document. But that does not mean that claims to computer-implemented methods for proofreading documents should be patentable.”
I can’t conceive of a more specious argument than this. There are close to 400 patents and close to 600 published applications that specifically claim OCR and probably many more that claim the subject matter without specifically using “OCR.”
Apparently over 1000 applications say you’re exactly wrong Mooney. But, for regular readers, that’s no big surprise.
“do you know that it is modeled on a heuristic algorithm”
What is the heuristic algorithm modeled on?
“That isn’t really software is it? That is hardware that has been modified.”
embedded FPGA = embedded (software) field “programmable” gate array-i.e. it is software that changes the functionality of the hardware.
Look at patents from Altera; Xilinx; Actel.
The key is the software-that is what the name says. PSoC (Programmable System on a Chip) also is similar. Software defined radio (SDR) is also similar.
MM I specifically wrote – “except MM”.
Since you mentioned proof-reading – do you know that it is modeled on a heuristic algorithm. And the better ones use the same algo. to achieve the end result. But what do you care-For you the entire-EE side should be gotten rid off. Everything that was and could be invented was already invented in the last century by Tesla. 🙂
“Class 2 of software: implemented in hardware: like an embedded FPGA:”
That isn’t really software is it? That is hardware that has been modified.
No takers on the invitation to explain to us all what a public policy served by allowing protection of software through patents might be?
anonrakgcain “You can consult any software coder worth her salt- that it takes considerable skill to bring down code size and still achieve the same functionality. ”
It takes “considerable skill” to proofread a document. But that does not mean that claims to computer-implemented methods for proofreading documents should be patentable.
There is no point to such patents. They do not promote innovation. They protect abstract ideas but not “inventions.” Such patents promote nothing except the continued existence of a rather thoughtless and greedy patenting culture that appears to have thrived in the shade of such patents.
…a good chance the independent solution will not infringe.
Let’s put it this way, “software” inventions that involve the type of skill above will generally not be performed by the average coder like our friend “Brian” who is frozen at his keyboard afraid to write a line of code because of “software patents.” Those type of inventions are generally available for sale as extensions or special purpose libraries that can be patented, sold, distributed and used by many people to attain functionality that is prohibitively complex to develop independently. If someone wants to develop an independent solution, there is a good chance the independent solution.
Back in another life, when I was a software developer we faced this kind of decision all the time, but especially with a compression requirement that we had. Since we were breaking new ground, there was not a lot available. We wound up paying for a third party library solution that we could easily integrate into our prototype product, but we continued to evaluate many other third party and independently developed solutions none of which would have infringed the module we bought.
“(it’s become quite clear that when commenters here refer to the “little guys” they are referring to what most of us know as trolls).”
Mooney, YOU are a troll.
For 6 and other posters (except MM)about software patents:
I provide two classes of software and ask one simple question:
1. Class 1 of software (just-software).
Code can be implemented in various ways in multiple languages across various platforms. Think of the functionality that is achieved by using either 2500 bits or 300 bits. Software engineers gree that same functionality using 300 bits is better than the one using 2500 bits. So code size is a test bench across platforms. As an example think of the “lasso” tool in a picture editor software like (Adobe). The Maths behind it is petty simple but there are different ways of selecting the pixels.
You can consult any software coder worth her salt- that it takes considerable skill to bring down code size and still achieve the same functionality. It is even more impressive when the “logic” is ported across coding languages.
If you deny a patent for this skill-then the whole point of the patent system goes for a toss.
Class 2 of software: implemented in hardware: like an embedded FPGA: For this class too, software is the driver, rather than the dumb harware (gates).
Can you simply deny patentability for these classes just because it is software.
(Beaureaugard claims are one way of claiming these two classes. )
Since no one else, I believe, has squarely addressed the point posed by The Future is in Software, to amend section 101 to read “Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or software program . . . ” I’m all for amending 101, but the amendment you propose won’t do the trick. Software is already patentable, it’s just that any method that you’d implement through software, unless it cures rubber, has stopped being patentable. If you passed your amendment, the PTO, or the CAFC, will look at the first software claims that come through and apply the MOT test. Compositions of matter are already patentable, too, but your claim to a composition of matter comprising limestone won’t be. I think a better approach would be to amend 101 to say something to the effect that a general purpose computer is a specific machine for the purposes of determining whether a method defines patent-eligible subject matter.
SF says he doesn’t know of any particular public policy objective being accomplished, or that it is so secret or complicated that he refuses to tell me, and I’ll need to take a class to find out what one is.
It’s ok SF, I understand, it is difficult to enunciate a public policy objective being accomplished by patenting written works, the function of written works, or functionalities imparted to machines by written works. To your credit though, I doubt if any teacher in any class can do it either. So far as I can see that is because it doesn’t exist.
None the less, I extend an invitation to any who think they could do a better job than me or SF can do at finding a legitimate public policy objective that would be served by allowing the patenting of the functionality of written works, the functionalities imparted to machines by written works, or mediums which impart functionalities to machines by providing the information contained in written works to put it forward. With at least a bare minimum of support if you could.
Mooney: Look, I’m not going to argue that Saint Beauregard gave us anything more than the myth that it’s binding Federal Circuit law. Sadly, written description, enablement and indefiniteness have not been used to reign in attempts to short change the public in the software patent quid pro quo. (And obviousness surely hasn’t either.) I will, however, take issue with anyone that thinks copyrightable expression embedded on a computer readable medium (as opposed to any functionality embedded thereon) can be used to distinguish the prior art.
As for 6, take a survey course on intellectual property and you’ll understand why we have copyright, why we have patents, why we have trademarks, and how all of them may apply to a particular software package.
SF “You get patents for the “functionality” that the code performs.”
Yes, that’s the magical gift of Saint Beauregard to his children: you can obtain claims to broad conceptual approaches and algorithms that anyone could dream up in five minutes and a few more hours to cobble into an application, as long as the claims are scratched onto a “computer readable medium.”
Meanwhile, when you try to patent the functionality of molecules that took, in some cases, millions of dollars, a team of Ph.D. scientists, and years of testing to achieve, the law (e.g., Rochester) requires that the structure be expressly and specifically recited in the claim.
Yet somehow the biotech community continues to innovate, “in spite of this.” I put the phrase in quotes because, as much as the Kevin Noonan’s of the world might disagree, allowing crap like the claims in Rochester or Classen to issue would be the worst possible result for the biotechnology industry. Great for trolls and those whining “little guys”, though (it’s become quite clear that when commenters here refer to the “little guys” they are referring to what most of us know as trolls).
Well, my response was lost to the “back” button on the side of my mouse. I ha te that button I never even use it when I want to go back.
Bottom line guys: Please address the public policy that needs to be filled by protecting the functionality rather than merely stating what happens in the absence of protection and asserting that it needs to be stopped. Why does it need to be stopped? I see no reason to stop copying of the functionality of code. That is why I’ve asked the question.
For example, copyright was originally justified from a public policy perspective by saying that it will spur the creation of content and that the spurring of the creation of content is a good public policy objective. I agree with that. Although I see that copyright is now used for different ends, and so perhaps needs modification, I still agree with the basic premise.
There simply is no public policy objective served by protecting the functionality of software. Does it spur creation of more functionality of software? I have seen no evidence for it whereas there was evidence back in the day of the printing press for copyright (where there might not be as much anymore).
Make your case, if you have one, for a public policy that is served by protecting the functionality of written works.
I’ll deal with your comment later SF since my original response was baletad.
6: “My children’s story code also has code to display it. Why is it that you can ignore the code for the story while you cannot ignore the code to display it?”
You can claim the manner in which the computer displays the story, not the content of the story. One is functional. One is printed matter. If you do claim the content of the story, you can ignore it for purposes of 102/103.
If you can explain how your “story code” is functional, great. If all the story code supplies is text that is displayed, that sounds “solely for the understanding of the human eyes and mind” to me. Claim how the functional aspects of the story code interact with the display component. But if you try to claim the content of your story (e.g., that your story is about “Red Hiding Hood”), guess what … that’s printed matter.
If you claim computer readable instructions for displaying “6 is a great examiner,” you can ignore the “6 is a great examiner” under printed matter. See what the rest of the claim says.
Although, Greg Aharonian who is quite knowledegable and incisive in other areas, actually supports the merger of copyright and patent law. You would have good company there 6.
I just ignore those rants, because it likes talking to someone who is otherwise rational but believes in the hollow earth theory.
6,
You need to understand the distinction between functionality and expression. A story has no functionality. A method of conveying a story could be patentable under 101, although it would likely fail under 102 or 103.
“This lack of sympathy, more like [antipathy] hostility really, runs counter to promoting the progress of the useful arts.”
Typo corrected.
6 said, “I do have one serious question for all the “software should be patentable” crowd. Software is a written work. No matter how you swing it. That is copyright domain. And I’m pretty sure folks can use copyright to protect their code. Why is it that you think it should get both protections? Just purely from a public policy perspective. Why should we afford it both?”
In part, because copyright protection only prevents actual copying. If someone independently writes software that fulfills a market niche developed by another, they are not liable for infringing a copyright on the software that created that market niche. The new software can supplant the old simply by functioning the same way. It does not have to have the same or even similar code or appearance. In that way, it is highly different from a novel or film. There is functionality that needs to be protected, not just artistic appeal.
As an aside, your question is symptomatic of a plague among PTO personnel, who seem to have no ability to mentally place themselves in the shoes of the inventor or assignee and intuit what is needed to motivate reduction to practice, disclosure, and market realization of inventions. This lack of sympathy, more like antipathy really, runs counter to promoting the progress of the useful arts.
“You can get copyright for the “expression” in the code itself and the output. You get patents for the “functionality” that the code performs. ”
What is the public policy objective for distinguishing the two and providing protection for both? That is my question above.
My children’s story code also has code to display it. Why is it that you can ignore the code for the story while you cannot ignore the code to display it? PMD cannot be used. Both are information structures on the CD remember, both the code for the story and means of displaying are physical matter in the form of dips on a cd and are, in the words of the court paraphrased, “not solely for the understanding of the human eyes and mind” and are “to direct the operation of a machine”. The former of which is the only time the printed matter doctrine excludes subject matter from consideration. I believe that was from In Re Lowry if you want to look it up. Since the printed matter doctrine cannot be used, why can we ignore the story now?
What is the public policy objective for considering the functionality “on” the cd as opposed to strictly the functionality “of” the cd as with every other claim type in existence?
It was interesting to see how much hypothesizing about about the applicability of PMD to stories on cd’s is done on these boards when the caselaw blatantly rejects that notion. According to the court, any structure on the cd etc. that causes the machine to perform an action (display “p”) is not exempt from consideration by the PMD. But don’t worry about that right now, focus on the public policy questions please guys.
“C’mon 6 – review Written Matter Doctrine once again. Think about what copyright covers (does copy right cover functionality?)”
What is the public policy for allowing the functionality of a written work to be protected?
“In Beauregard, the PTO dropped its appeal. In Lowry, the PTO Board said the claims were statutory, so the Federal Circuit never addressed the issue. My definition of “good” law isn’t one based on the PTO’s preference at a couple of points in time. I prefer to have a holding of a Federal Circuit case on point.”
Some people are ignorant of that. And, what’s more, is that the real issue is not whether the claims are stat under 101, it is whether they distinguish over the prior art by the means in which they purport to. But let’s talk about public policy right now.
Nobody will win a case saying that claims to a cd are not statutory unless we get some heavy duty post solution Bilski action up in here.
6:
You can get copyright for the “expression” in the code itself and the output. You get patents for the “functionality” that the code performs.
Using your CD example, the CD would be statutory subject matter, but the “novel and nonobvious” content of the children’s story would be akin to printed matter and thus ignored for purposes of 102, 103.
If, however, there was claimed functionality on the CD that enabled the display (e.g., drivers, etc.) those would be considered for 102, 103.
“Software is a written work. No matter how you swing it. That is copyright domain.”
C’mon 6 – review Written Matter Doctrine once again. Think about what copyright covers (does copy right cover functionality?)
“Beauregard and Lowry are good law”
In Beauregard, the PTO dropped its appeal. In Lowry, the PTO Board said the claims were statutory, so the Federal Circuit never addressed the issue. My definition of “good” law isn’t one based on the PTO’s preference at a couple of points in time. I prefer to have a holding of a Federal Circuit case on point.
I do have one serious question for all the “software should be patentable” crowd. Software is a written work. No matter how you swing it. That is copyright domain. And I’m pretty sure folks can use copyright to protect their code. Why is it that you think it should get both protections? Just purely from a public policy perspective. Why should we afford it both?
Getting into the information structures is no different than getting into the written work aspect. If I take a children’s story and encode it so that it can be shown on another computer’s screen, without an outside viewer program (aka adobe), burn that, and look at the CD I then have a CD with the same ability to impart a functionality on another computer just like any windows CD etc. Why in the blue blazes should the CD that just displays a children’s story not be patentable (I believe you will all agree that it is not) and one that makes the computer display a window or perform a calculation be? Just purely from public policy perspective that is. What about if we consider the fact that we can simply reprogram the way the computer reads the DVD such that the information retrived from the children’s story CD actually tells the computer how to have all the functionality of windows. What then? Now my story CD has the same functionality as it did before, but as always it is still functional to tell the computer to run windows. I can see no public policy objective served by granting a patent on a children’s story CD just because it is capable of telling a computer (properly programmed with a read program that will modify how it reads CDs) to run windows. I don’t see the public policy objective that is being served. Can you identify it for me?
“It appears, that like other posters, you are carelessly conflating 101 with 102/103.”
Don’t forget the Supreme Court too, in Flook.
From a policy standpoint, innovative software *should* be patentable, for the same reasons that innovative biotech, chemical, mechanical, pharma, etc. advances should be patentable. That is to say, the rationale for patents that we’re all familiar with (quid pro quo, etc.) applies equally to the software as well as bio/chem/etc industries.
Additionally, as a former research biologist-turned bioinformatics software developer-turned patent attorney, I believe that the knowledge/insight/creativity/etc required to be innovative is fundamentally the same across arts.
Therefore, I think Bilski and how it’s being applied is ridiculous. Beauregard and Lowry are good law, but Bilski can be twisted up and used to eviscerate software patents?
I think it’d be way better for innovation in this country if, instead of continuing to play games with the language in Bilski w/r/t software patents, we got a firm statement from Congress that software is patentable subject matter. Maybe an amendment of 101 to read:
“Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or software program . . . ” How about that?????
Mooney says: I’m right
I can see the level of debate hasn’t improved any around here.
Where does Mooney get the energy to be so annoying day after day? And how does he manage not to miss a day? Oh wait, maybe I know.
“As I recall, the term “business methods” wasn’t meaningfully defined by Congress so … it’s rather pointless to hang your hat there.”
MM,
Once more, I’m going to make an exception to responding to your meaningless drivel. That Congress didn’t define “business method” in 35 USC 273 may have been an unfortunate oversight (Congress is notorious for those), but that they even mention “business methods” as something subject to prior user rights means to most intelligent folk that Congress considered “business methods” to be patentabl subject matter. Or are you going to use the oxymoronic logic of that district court judge who ruled that 35 USC 3 didn’t permit a private suit to remove Margaret Peterlin as unqualified because the standard for a “person who has a professional background and experience in patent or trademark law” was too vague? Like I told 6, a “man has got to know his limitations.” When it comes to your understanding of patent law, you are frankly clueless. And that’s the end of my story to you on this subject.
The exclusion of business method patents was entirely judicially created and the CAFC was correct to overturn that line of thinking in State Street. Subject matter should not be excluded just because it happens to fall within a certain category. 101 does not enumerate what is patentable, but what is not.
If something is no more than an abstract idea with no tangible or functional result, then it probably does fail under 101.
“It’s a joke of a patent and a joke of an appeal, as Mr. Mooney points out, and as I meant to convey in my reference to Rule 36.”
You’re right, I was being obtuse. Your Rule 36 reference should have been a dead giveaway to your views. I still think 103 and 112 rejections would have been better in this case, and I disagree with Mooney about whether that matters. But I’m not going to lose sleep over it, because this is one case where nearly everyone agrees the claims are empty. It’s rare when agreement on anything is so across the board.
“”then reject under 112 not 101”
“Reject it on whatever grounds are appropriate.”
Indeed. 101 is surely an appropriate means for rejecting a claim to a “paradigm”, “concept”, “scenario” or any other “abstract idea”.
smashmouth writes:
“You don’t think SCOTUS would grant cert in this case, do you? Bilski stands a better chance. . .”
MM writes:
“‘the cert petition’
BWHAHHAHAHHAHAHAHHAHAHAAHHAAHH!!!!!!!!!!!!!”
My reference to him writing a cert petition is based on the law.com article about the case, which mentioned that “Harris … add[ed] that he may appeal to the Supreme Court.” link to law.com
It’s a joke of a patent and a joke of an appeal, as Mr. Mooney points out, and as I meant to convey in my reference to Rule 36. I hope Mr. Harris doesn’t take his “paradigm” to the Supreme Court. Every minute spent reading that petition could be better spent doing just about anything else.
“then reject under 112 not 101”
Reject it on whatever grounds are appropriate. But get this garbage out of the PTO. It is sheer, unadulterated crapola like this POS that is clogging up the works over there. For every POS application like this that is being examined, another application for an actual invention is being ignored.
Let’s get garbage like this out of the PTO, get the backlog and pendency down, start examining applications for actual inventions, and then RIF half the examining corps once this crapola is cleared out.
“How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?”
then reject under 112 not 101
“The number of users (i.e., programmers) far out number those of yesteryear.”
That may be. However, the number of patents to codes written on punch cards is zero.
I believe zero is also the number of patents on unique piano rolls (distinguished only by the functionality, i.e., the music content, imparted to the player piano), a very closely related technology. Were there “limited users” of that technology as well?
Your most glaring and fundamental error is your failure to recognize that the change in the ***business*** of patenting between now and the golden age of punchcard technology is far more important than any change in the relative number of software developers. While there have always been a finite amount of abusers and crooked exploiters of the patent system (Lemelson immediately jumps to mind), the full potential of what could be achieved was realized relatively recently. Hence we have the Scott Harris’ of the world unabashedly admitting that he and his cohorts filed “a new style of claims” as part of a scheme to achieve “wealth and fame off the Internet.”
This sort of money-grubbing game has nothing to do with “promoting innovation” and “protecting inventions.” There is no quid pro quo. The granting of claims such as those filed by Fergusen et al would be tantamount to government-approved theft. This is true of all claims to methods of “making money,” and its true of nearly all claims to compositions and methods for making a computer do something “new.” The “public” does not benefit from the issuance of these patents. Only a “limited few” benefit.
By the way, does CNBC crybaby clown Jim Cramer remind anyone of a few notorious, whining patent litigators? You know, the kind who represent trolls?
Nice information, 6.
Though we also see this:
“Indeed, Lowry does not seek to patent the Attributive data model in the abstract. Nor does he seek to patent the content of information resident in a database. Rather, Lowry’s data structures impose a physical organization on the data.”
So perhaps this case would not stand for supporting standard Beauregard claims except to rule out using the PMD to dispose of them.
Also you can see how the board rejected the claims in In Re Lowry using the printed matter doctrine, I would be willing to bet that wasn’t the first time data structures were treated in that fashion and that was the first time the CAFC overruled it.
I thought there was specific caselaw that stopped the punchcard patenting. That’s why it took until the genius in Beauregard to come up with the faux method of distinguishing a medium in terms of something else. Though it really looks like In Re Lowry was the real turning point as to mediums.
link to bitlaw.com
Way back in the day it appears that software was regarded as simply not being patentable in any form, under the various decisions of the day. Even though the decisions did not relate to mediums and etc.
link to ipwatchdog.com
I have to say, it’s such an exciting time in patent law to be living through. First we have major shifts in 103, then some shifts in 112, some major shifts in 101, and hopefully soon we’ll have a big shift as to software as well as some stuff pertaining to other fringe areas of abuse.
Malcolm Mooney,
“history of punchcards”
Yes, enjoyed by the limited few users of mainframes relative to the number of users of PCs. Do you actually suggest that the number of users of mainframes were anywhere proportional to the number of users of PCs? If you are, then you’re hopeless or you weren’t around to enjoy logging into a “dumb terminal” in the computer lab and placing a telephone handset into a modem comprising of two rubber-like cups.
Remember, it is not those who have actually touched the punch card; it is those who wrote the code from which one line of code was punched into the card. The number of users (i.e., programmers) far out number those of yesteryear.
Any more “facts” from which I can shoot down your “why didn’t they do it for punch cards” theory?
Malcolm Mooney,
“Thank you. Of course, the actual facts re the history of punchcards and the behavior of patent applicants today in areas where a technology is “enjoyed by a limited few” completely undermine your argument.”
To what “facts” are you using in your conclusory statement?
“How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?”
That’s easy. After the patent issues, you wait until you are sued and then a judge will tell you. 😉
West Coast Guy “The reason why is simple: no money to be made when software was enjoyed by the limited few.”
Thank you. Of course, the actual facts re the history of punchcards and the behavior of patent applicants today in areas where a technology is “enjoyed by a limited few” completely undermine your argument.
link to en.wikipedia.org
“the cert petition”
BWHAHHAHAHHAHAHAHHAHAHAAHHAAHH!!!!!!!!!!!!!
Malcolm Mooney,
“Can you tell me why, “historically,” nobody bothered to patent specific programs as encoded on punch card media?”
I will now bother, for the answer is quite simple when you look at the profit centers of today versus yesteryear.
With the advent of the PC and the internet, the masses began to enjoy the processing power of computers. Because computing power was now opened up to the desktop of the masses and not just those select few at institutions (e.g., universities, government labs, etc…) who had access to mainframes which employed punch cards, selling software to the masses became profitable. This was due in part to the evolution of a standardized operating system (e.g., Microsoft operation system) and the internet browser (e.g., Netscape and Microsoft Internewt Explorer).
This way not the same prior to the PC. Mainframe manufacturers (e.g., IBM) were profitable by selling or renting access time to their machines. Software was not a profit center; rather, software programming was a service provided by mainframe manufacturer. There was simply no profits to be made in software, especially during the day when mainframes were not standardized to one particular operating system.
To anticipate your next question, yes, a box of punchcards arranged in a unique, sequential order and imparting functionality onto a mainframe was definitely patentable and could have been patented. The reason why is simple: no money to be made when software was enjoyed by the limited few.
“I would say that one skilled in the art would be able to understand the metes and bounds of what was intended to be claimed.”
Huh? How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?
This claim is garbage. Pure and simple.
Good riddance.