Ongoing Debate: Is Software Patentable?

by Dennis Crouch

A pair of recent Federal Circuit decisions continue to highlight ongoing ambiguities and difficulties regarding the scope of patent subject matter eligibility for software related patents.

  • Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), — F.3d —-, 2012 WL 3037176 (Fed. Cir. 2012) (computer related financial claims are not patent eligible).
  • CLS Bank Intern. v. Alice Corp. Pty. Ltd., 103 U.S.P.Q.2d 1297 (Fed. Cir. 2012) (computerized stock trading platform claims are patent eligible).

Both decisions agree on several main points: that the mere inclusion of a computer limitation does not make a claim patent eligible and that the claim form (method, system, etc.) does not change the subject matter eligibility analysis. Although perhaps a revisionist history, Bancorp explains that the differing outcomes are based upon factual distinctions in the two cases:

In CLS, we reversed the district court and held that method, system, and medium claims directed to a specific application of exchanging obligations between parties using a computer were patent eligible under § 101. In faulting the district court for “ignoring claim limitations in order to abstract a process down to a fundamental truth,” we explained that the asserted claims in CLS were patent eligible because “it [wa]s difficult to conclude that the computer limitations … d[id] not play a significant part in the performance of the invention or that the claims [we]re not limited to a very specific application of the [inventive] concept.” Here, in contrast, the district court evaluated the limitations of the claims as a whole before concluding that they were invalid under § 101. As we explained above, the computer limitations do not play a “significant part” in the performance of the claimed invention. And unlike in CLS, the claims here are not directed to a “very specific application” of the inventive concept; as noted, Bancorp seeks to broadly claim the unpatentable abstract concept of managing a stable value protected life insurance policy.

Despite this attempted reconciliation, it is clear that the CLS majority has a different approach to subject matter eligibility questions. Perhaps the key difference is the question of how we think of “the invention.” In CLS, the invention is defined by the claim. In Bancorp and the CLS dissent, the court looks for the core inventive concept as the starting-point for its subject matter eligibility analysis.

It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.

410 thoughts on “Ongoing Debate: Is Software Patentable?

  1. 408

    “and not every software claim will pass (let’s not be overally inclusive, 101 Integration Expert.”

    Hello anon:

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

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

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

    Bells claims as well as Morse 1-7, would pass concept, application, and integration, while the infamous claim 8 would fail. Diehrs claims 1-11 all pass concept, application and integration but claim 11 fails M o T, as well as an unlimited Benson based pre-emption analysis. ( See Stevens Dissent in Diehr arguing claim 11 fails Benson). While Prometheus claims passed M o T but failed concept, application and integration.

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

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

  2. 407

    How a person uses a computer is an asinine question. It is a purposeful obfuscation, as what a person does is immaterial to the discussion.

    If you have a point, make it. If you want to play games and ask asinine questions that can only confuse, go somewhere else.

  3. 406

    Mr. people, regardless of your opinion, it is not an asinine question.  It is central to the whole debate about programmed computers.  The fact that you don't understand this illustrates that either you do not know what the debate is about, or you have a position such that the answer to whether or not you are claiming the use of a computer or new computer is irrelevant.

  4. 405

    It’s an asinine question no matter why you ask it Ned.

  5. 404

    Mr. People, because most advocates of software patents actually cannot distinguish between using a computer and the computer itself.  If you cannot describe how to use a computer, I know exactly where you stand.

  6. 403

    How do you use a computer?

    What kind of asinine question is that?

  7. 402


    I show a consistent bias towards understanding and following the law.

    It only appears to you that I have a bias in favor of patenting software.

    You need to realize that it is a matter of perspective (especially from you) and your bias colors your viewpoint.

    Again, thanks for the compliment.

  8. 399

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    Rich?  Rich would have authorized the claims in Diehr
    simply because the math was run on a computer.  In re Benson. 


  9. 398

    Anon ranks among the most agenda driven intentional miss-readers of cases I have ever seen.

    Since I have been clear that I do not have an agenda, that I treat all categories equally (a point that Ned has refused to discuss), I can only take this statement to mean that Ned acknowledges that I have a much better grasp of the law and I am much more capable of effectively using the law to support my statements. Ned has no examples of any “mis-reading” of mine that have not been shown to be overtly false.

    Thank you Ned, I humbly accept your compliment, however disguised.

  10. 397

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

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

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

    It NEVER is.

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

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

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

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

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

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

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

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

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

  11. 396

    Exactly and to claim whether I didn’t realize what they were doing was to keep the thieves at bay, or to steal it outright makes no difference. It was an illegal POWER GRAB!
    And to have all the evidence to show what happened and not allow me to have it for my Complaint or kept from the knowledge of an atty that was being paid by me for Marketing nothing is still “IS”. So no matter how you slice it. It is my Patent that was stolen. Whether you dress it up with a Strap to destroy my rights, or hide the fact that there were different figures represented befire the Strap was added.
    Do you really think that takinh control of something that was mine illegally can be dressed up in a suit and tie to claim it is for my own good, when I didn’t know what you did? You can’t do that.

  12. 395

    Watch the tendency towards “personification.”

    A machine is not a person. For a machine “to use” software, the machine must make the software a part of the machine. There is no higher conscience involved, only and merely a mechanism, only a machine.

  13. 393

    Mr. Heller:

    You definitely want to consider what Breyer said about “Integration” in relation to Diehr, which of course was a case based on the legacy and work of Rich.

    See From the Syllabus in Prometheus: “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

    Mr. Heller, your insane hatred of Rich, and agenda to invalidate all software and business method patents has clouded your judgement and skewered your ability to perform sound legal analysis.

    Of course you can demonstrate that to not be the case by performing “Integration Analysis”, on Ultramercial’s claims, according to the Official Guidelines on Integration from the USPTO.


  14. 392

    Mr. Heller:

    Your latest round of juvenile invectives will not negate the fact that the GVR for Ultramercial was in view of Integration Analysis.

    A fact that was confirmed by the Office using “Integration Analysis” in it’s Official Guidelines. link to

    Yet, you continue to comment about Ultramercial without even applying the Office guidelines on Integration to Ultramercial’s claims.

    Attack and evade all you like but it won’t change the facts or the law.

  15. 391

    “And the GVR for Ultramercial is not on point as that GVR was in relation to Prometheus and not in relation the reliance on Alappat (that’s just more dust kicking).”

    Exactly! The GVR is not for anything having to do with overruling Alappat or Rich or any such non sense. The point made clear in Prometheus was “integration”. The Office saw that point as well, and use it in their new guidelines. Yet, Ned completely ignores Promethues reliances on Diehr for integration.

    Ned, who is supposed to be smarter than all attorneys,( because he uses his real name) claims he can’t find the Ultramercial claims or the Office guidelines to even perform the Integration Analysis on Ultramerial’s claims!


  16. 390

    This is not the first time that Ned Heller has tried to make up law like this. During one of our conversations, he tried to reinstate the Court of Appeals decision in Taffas. He then claimed that he did not know what the status of the case was. Unimaginable, as it was the single largest case of its day, and the concept of vacatur (denied) was everywhere.

  17. 389

    Overruled by the vacated In re Bilski

    Are you Fn kidding me? Using a vacated decision as a point of law?

    You should be sanctioned even if this is only a blog.

    T O O L

  18. 388

    Mr. Expert, my lack of response to you may have more to do with the fact that I don’t even read your posts than anything else. You in your various guises are a form of pollution. I only wish we had a filter. But until then, know I do my best to skip over anything you have to say.

    Have a nice day. Why don’t you go to the beach and have some fun. Please leave us alone.

  19. 387

    You might want to consider what Rich said about Alappat:

    “In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result” — the smooth waveform.”

    State Street Bank & Trust Co. v. Signature Financial Group, 149 F. 3d 1368, 1373 (Fed. Cir. 1998)

  20. 386

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    Mr. Me, OK, one more try…


    State Street Bank.


    Overruled by the vacated In re Bilski, but which was condemned by the
    Supreme Court for its use of “concrete, tangible result.” 


    From State Street Bank,


    “Thus, claim 1, properly construed, claims a
    machine, namely, a data processing system for managing a financial services
    configuration of a portfolio established as a partnership  …A "machine" is proper statutory subject matter under §
    101. We note that, for the purposes of a § 101 analysis, it is of little
    relevance whether claim 1 is directed to a "machine" or a "process," as long as
    it falls within at least one of the four enumerated categories of patentable
    subject matter, "machine" and "process" being such


    “The plain and unambiguous meaning of § 101 is that any
    invention falling within one of the four stated categories of statutory subject
    matter may be patented, provided it meets the other requirements for
    patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112,
    ¶ 2”


    “In Alappat, we held that data, transformed by a
    machine through a series of mathematical calculations to produce a smooth
    waveform display on a rasterizer monitor, constituted a practical application of
    an abstract idea (a mathematical algorithm, formula, or calculation), because it
    produced "a useful, concrete and tangible result" — the smooth


    At this point I pause.  Look at what
    Rich himself described the holding of Alappat to be.  Why all this talk
    about a practical application if disembodied machines were per se


    in the end, the court said this about the


    “Today, we hold that the transformation of data,
    representing discrete dollar amounts, by a machine through a series of
    mathematical calculations into a final share price, constitutes a practical
    application of a mathematical algorithm, formula, or calculation, because it
    produces "a useful, concrete and tangible result" — a final share price
    momentarily fixed for recording and reporting purposes and even accepted and
    relied upon by regulatory authorities and in subsequent


    This was the reason the both Supreme Court
    and the Federal Circuit condemned State Street


    But it is also true that State Street did
    not consider that programmed GP digital computer were per se patent
    eligible.  The court, as it did in Alappat, went out of its way to limit
    the use of the machine to a practical application. 










  21. 385

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    Convince me, I’m not so sure.  I think the SC decision did approve of
    that portion of In re Bilksi that overruled State Street Bank.


    But, you might be right, not technically.  But for all practical
    purposes, overruled.




  22. 384

    Rich and the anti-patent Justices of the Supreme Court are like oil and water.


  23. 383


    Way to punk MM.

    As if it isn’t bad enough that his [old_step]+[new_thought] paradigm was ignored by the Court, by the Office and dismantled by Logic Steps, you throwing his self defeating proclamation in his face is sure to set off one of his famous eplectic rants of rage.

  24. 382

    ” I think number systems are abstract. ”

    You are wrong.

    Just go to the bank and try and withdraw money from an imaginary abstract account .

    You will quickly be labeled delusional.

    But you know what is real?

    Integration Analysis ( IA). And (IA) destroys all your delusional beliefs about patent law.

    Read all about it right here.

    link to

  25. 381

    Hello MM:

    I looked at those cases, and then looked further at Prometheus, and went back to Diehr, the case Prometheus referenced in it’s 9-0 holding, and found this:

    “In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    Now we know that Prometheus’s “integration” is the key to 101 statutory subject matter and as the Court said: :transform the process into an inventive “application” of the formula. ( See Prometheus )

    Thanks for being the biggest proponent of integration analysis on the blog by reminding everyone of the Courts 9-0 holding!!

    Oh, and since you are such a big fan of “Integration Analysis” check out the new Office Guidelines on Integration!

    link to

    It’ a thriller! Glad to have you on our side 🙂

  26. 380

    And I would just like to add, that while denigrated, the State Street Bank case was technically NOT overruled.

    Mistatements of law like that are also not very compelling.

  27. 379


    You still show nothing to counter.

    Your answers here are just not compelling. They are more of the same rehash that you usually post.

    I am not convinced.

    Your point 1 is inapposite. You need something post-Alappat to combat Alappat. Your view of what Gottschalk v. Benson means is immaterial. The transition from In re Benson to Gottschalk v. Benson contains enough differences that the opinion of Alappat surpasses what you say.

    Your point 2 is inapposite. As BoRM already indicated (and it is really annoying when you ignore points that people make), the GVR in Ultramercial has nothing to do with the point under discussion.

    Your point 3 is a non-sequitur. The 101 as threshold has nothing to do with the point under discussion.

    Your last comment is unsubstantianted opinion. It is not compelling at all.

    If this was the legal argument you would bring to my court, quite frankly, you would lose. You bring tangents, non-sequiturs and mere opinion. Nothing of substance and nothing authoritative. In the end, the “dicta” still trumps the arguments you have “presented.” It still is a better argument and to quote BoRM: “All I see in your response is a lot of dust kicking. I see nothing that overcomes the mighty compelling ‘dicta’ of ‘There is no basis in law.’

    You have to do better. Provide a basis in law.

  28. 378

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    Les, I don’t care where the software is stored so long as it become
    “integral” with the machine.  I think we need understand that firmware is
    broader that simply storing the programs in ROM.


    The critical point being that if the machine is sold, it infringes. 
    If the software is simply sitting on the shelf and the machine is sold, it
    cannot be said the machine infringes.  The patent really is on the


    In such a case, there is something wrong, very wrong with the claimed
    subject matter.  While the claim may purport to cover a new machine, in
    fact, it does not.  Rather it covers the software and the machine is simply
    being used.




  29. 377

    “The computer is still the hardware as is the boat that was made from wood.”

    No, you go to a hardware store to buy wood. You don’t go to a hardware store to buy a boat.

    Would is the hardware used to build the boat or plane.

    The computer is the hardware that is used to build the talkin’ to writin’ machine.

  30. 376

    I agree that new firmware makes a new machine.

    However, I don’t think there is anything special or magical about implementation in a ROM. New software installed on a hard drive, or loaded into RAM is also sufficient to make a new machine.

    Methods are patentable. So if software implements the method, then the sale of the software is at a minimum a contributory infringement, assuming the software is eventually run to carry out the patented method.

  31. 375

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    I would just like to add, that the overruled State Street Bank case, the
    one unanimously reviled by the Supreme Court in Bilski, was a programmed
    computer case.




  32. 374

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    1.  This was the same position of the CCPA in In re Benson.  It
    did not prevail in Gottschalk v. Benson.

    2.  This was the position of Rader in Ultramercial.  GVR.

    3.  The premise of the position is that programmed machines are
    machines and machines are per se eligible.  See, In re Benson.  The
    premise is faulty.   New and useful machines are eligible.  Rich
    was the leading advocate of the theory that 101 was a threshold issue, that
    “new” was to be ignored.  That theory met its dust in Prometheus.



    In the end, the dicta is fundamentally in opposition to all SC cases on
    101-type issues since 1852.






  33. 373

    I read the case and the quote is not out of context. You are not going to win with a “no patents for components” argument.

    I suggest you stop making arguments against what your opponent is saying and start making arguments for your case.

    I also suggest you stop the dicta/holding line of thought – it does nothing to advance your position.

    As BoRM notes, all you are doing is “kicking up dust” and advocating a position that was clearly said to have no legal foundation. Even if that statement is dicta, it is authoritative dicta and you show nothing to counter it.

  34. 371

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    Mr. Reasonable, the dicta remains dicta, though.  Then there
    is the matter that Judge Rader followed the dicta in Alappat in
    Ultramercial.  The Supreme Court GVRed that case.  Obviously,
    you don't consider that relevant.


  35. 370

    A bunch of components make a Computer. A bunch of wood makes a Boat. So to say that a Boat being built from wood is equal to Software in a computer is a stretch. The computer is still the hardware as is the boat that was made from wood. So the software is still not there yet. It is still not a component. It may be added to redefine the Computers capability, but it still needs the computer to run. Ok so lets stretch that to the Boat needs water to float?

  36. 369

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    Mr. Reasonable, if that dicta was from the SC, I would
    agree.  But it was from Rich, who also penned State
    Street Bank
    and In re Benson.  Rich and the Supreme Court are
    like oil and water.  They are never too long found in the same place.


  37. 368

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    Mr. Me,

    The quote is taken out of context.  In context, the
    court had just held that the claim was directed to a machine, a
    rasterizer.  That claimed rasterizer was claimed as part of a graphics unit
    of a display, namely at an oscilloscope.  As claimed, the rasterizer
    smoothed the data for the display.  A programmed general-purpose is
    computer out of context that only calculated data was not before the

    As discussed in the portion of the paragraph that was not quoted,
    the Federal Circuit was rebutting the argument of the patent office that just
    because a general purpose digital computer could perform the calculations
    recited in the claim, that the claim read on nonstatutory subject matter.

    Now the words of the Federal Circuit in the quoted passage did not seem
    to limit its remarks the context of the claims at issue, which were directed to
    a rasterizer.  Rather, they seemed to be directed to programmed computers
    general.  As such, it clearly was dicta.  If however the remarks are
    construed to be limited to their context, where the calculations take place in a
    rasterizer which is part of a graphics unit that operated to display images on a
    display, the passage could be construed to state that it makes no difference
    whether the rasterizer is implemented with circuits, which the court had earlier
    in the case construed the claims to be limited to, or whether the rasterizer of
    the graphics unit could be implemented using a programmed computer.

    more limited view is consistent with Diehr, which held that simply
    including a programmed computer to perform calculations in an otherwise
    patentable process did not render the subject matter unpatentable. 
    Alappat said nothing different.  It said exactly the same thing,
    in the more conservative view.

    However the more liberal view, the view
    taken by many, the quoted passage is pure dicta because a
    disembodied programmed computer that did nothing more than
    calculate data was not before the court.




  38. 367

    Sorry Ned,

    All I see in your response is a lot of dust kicking.

    I see nothing that overcomes the mighty compelling “dicta” of “There is no basis in law.”

    And let’s not forget that even “dicta” is authority, granted albeit not binding authority.

    The problem I have with your point of view is that you offer nothing in response to what the court has so clearly stated. Give me something after Alappat that negates what Alappat had to say (in itself and about Benson). And the GVR for Ultramercial is not on point as that GVR was in relation to Prometheus and not in relation the reliance on Alappat (that’s just more dust kicking).

    How is a reasonable mind expected to act but to accept the “dicta?”

  39. 366

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    Les, “ Just as a gear fits into a spot made for it in a transmission,
    software fits into a spot made for it in a computer.”


    Les, if you have followed my posts on this topic you will note that I agree
    that if software becomes part of the machine that the machine may well comprise
    a new machine and be patent eligible.  But the way many many people view
    software is not that way.  They do not view software as being patentable
    only if it becomes part of the machine.  They do software as patentable in
    and of itself, such that the computer is simply being used to run the
    software.  There is a significant difference between the two

    As I have said, and I have repeatedly said, I view firmware which
    is a form of software that becomes part of the machine, as a component of the
    machine.  I do not view software in the same category because software is
    not part of the machine, but the machine is used to run the software.

    I think, Les, that we may agree if you and I are talking about the same thing:
    software that becomes part of the machine such that the sale of the machine


  40. 364

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    Mr. Mind, if you would think that the SC would have allowed the claims in
    Benson had they been framed as a programmed computer instead of a method of
    programming a computer, then I would agree that you would make a good bet.


    However, you also have to consider that Rich’s views on 101 have all now
    been soundly rejected by the Supreme Court.  He was the leader of the
    revolution that would view software as patentable without regard to any new
    utility.  He was also the leader of section 101 is a threshold issue,
    whereby any considerations of novelty were forbidden.  He was also of the
    view that business methods were patentable subject matter without more. 
    Every one of these views was way out there – inconsistent with nearly two
    centuries of Supreme Court jurisprudence.  And yet you think that you
    should follow them rather than follow the Supreme Court?

    In Ultramercial,
    Judge Rader attempted to rely on Alappat to support his view that simply being a
    programmed computer was enough to render the claims patent eligible.  What
    did the Supreme Court do?  GVR! 


  41. 363

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    Not, sir, by the Supreme Court.  I agree that Rich always had the view
    that a programmed computer not dedicated to a particular use was a new
    machine.   He said as much in In re Benson.


    But, Mr. Revisionist, you will have to accept that what you call holding in
    Alappat is orbiter dictum under the law.



  42. 361

    Being told a few times that i looked just like my mother. and Ramona is the only one I really look like. That would make you RAY a first class Pr@–. Lets hope and pray you are still alive.

  43. 360

    And just so you all realize just how livid I am. I heard this morning.. listen and you can hear the Angels in the background singing to him. My buddy Jerimiah Johnson the one I wanted to give 1000.00 to was found dead this morning in bed! Thanks for everything.

  44. 357

    Mr. Heller, how convenient that you retreat when confronted once again with your sophistry.  This really gets old, Ned.


  45. 356


    Putting the dicta/holding debate aside for the moment, are you saying that Ban The Revisionist is misquoting the actual words of the court, the court is dead wrong in the words it has chosen, or both?

    If you think the words are acurately presented, but the court is wrong, (dicta or not), how do you counter what the court says? The point that you are advancing an argument that the court identifies as having no basis in law should cause to give you pause. Saying “but it’s dicta” is a rather weak rebuttal to the substance of the discussion. Such does not help establish your view as surpassing that dicta.

    You need a better response, something on point and more compelling.

  46. 355

    We disagree.

    I see software as a component of a machine. Just as a gear fits into a spot made for it in a transmission, software fits into a spot made for it in a computer. Changing the gears changes the transmission. Changing the software changes the computer. If it didn’t change the computer, why would we bother installing it or installing its updates?

    You want to say that a computer comes from the factory capable of being a word processor or a video game and using it for either does not change the machine.

    I say that is your point of view. Mine is that a computer is a component that can be used to make many different machines.

    Similarly, a pile of lumber is a component that can be used to make a boat or an airplane. The fact that the lumber came from the mill with the potential to be a component of a Wright Flier doesn’t mean the Wright Flier shouldn’t be patentable. Similarly, the fact that a computer comes from the factory with the potential be be a component in a voice to text transcriber doesn’t mean that the machine that lets me simply dictate this tirade rather than type it isn’t new and not obvious or isn’t patentable. At a minimum, the software that provides this feature is an improvement to the machine. Improvements to machines are patentable subject matter.

  47. 354

    On the balance, a reasonable person would put his bet on “dicta” (let’s call it that for argument’s sake) over what that “dicta” directly contravenes.

    “There is no basis in law” is mighty compelling “dicta.”

  48. 353

    Lorraine is calling the shots picking the Lawyers? Why is that? Ray is the one that got the Jan 16, 1997 Application. Guerwood even called Lorraine to tell her to have me park away from the house, because I had it with me in the Car. To bad my instincts that were screaming to me weren’t answered. They wanted me out of the 22 Porrazzo so they could search, but I had it with me. Why would it matter that Ray was blood. Do you think it is going to hurt me more than it hurts all of them to know what they did to me. And do you think their Crimes will be easy to deal with if Lorraine picks the lawyers? Mind your business Lorraine .. Worry about where the chips are going to fall.

  49. 351

    And Ned Heller, it is plain as day that you are trying to peddle the exact same argument rejected by a court of law.

    Repeat after me: This reasoning is without basis in the law.

  50. 348

    can’t distinguish between holding and dicta is the problem we have in communicating.

    No, the problem is that you are trying to revise history in express and direct opposition to the observation of that history by a court of law.

    Repeat after me: This reasoning is without basis in the law. They are talking about the exact same reasoning you are trying to pawn off today. It did not work then. It does not work now.

  51. 347

    To the extent the language in the
    dicta is broader than this the context of the claim

    It is not broader (it does in fact “read on”).

    It is required in order to defeat the argument put forth by the government.

    An answer by the court REQUIRED for the decision is a HOLDING.

    You may wish that the alternative was not pursued. Too bad, IT WAS

    You cannot erase history. You cannot change the facts.

  52. 346

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    And that sir, is dicta.


    The fact that you can’t distinguish between holding and dicta is the
    problem we have in communicating.


  53. 345

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    You really like dicta.


    Here is the ultimate holding of the case with the first
    sentence of the paragraph in which your quoted dicta


    “Furthermore, the claim preamble's recitation
    that the subject matter for which Alappat seeks patent protection is a rasterizer
    for creating a smooth waveform is not a mere field-of-use label having no
    significance. Indeed, the preamble specifically recites that the claimed
    rasterizer converts waveform data into output illumination data for a display,
    and the means elements recited in the body of the claim make reference not only
    to the inputted waveform data recited in the preamble but also to the output
    illumination data also recited in the preamble. Claim 15 thus defines a
    combination of elements constituting a machine for producing an antialiased
    The reconsideration Board majority
    also erred in its reasoning that claim 15 is unpatentable merely because it
    "reads on a general purpose digital computer `means' to perform the various
    steps under program 1545*1545 control." …
    The claim was directed
    to a machine.  The use of a programmed GP digital computer in the machine
    did not render the claim unpatentable.  To the extent the language in the
    dicta is broader than this the context of the claim, it is no authority at
    all.  It is shear opinion, no more.  It certainly is not a holding of
    the court.




  54. 344

    And there is more:

    Under the Board majority’s reasoning, a pro-grammed general purpose computer could never [**55] be viewed as patentable subject matter under § 101. This reasoning is without basis in the law. The Supreme Court [Benson included]has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Benson, 409 U.S. at 71. Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35.

  55. 343

    Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 U.S.P.Q. (BNA) 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 U.S.P.Q. (BNA) 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 U.S.P.Q. (BNA) at 549-50 n.29

  56. 342

    if the machine already takes any binary number and adds it to any
    other binary number, simply changing the number does not make it a new machine
    no matter how much you want to dress up the claim.

    My what pretty straw you have. The point is that it is not “just any binary number” !

  57. 341

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    Les, if the machine already takes any binary number and adds it to any
    other binary number, simply changing the number does not make it a new machine
    no matter how much you want to dress up the claim.


    If the machine will progress from one such instruction to another such
    instruction automatically, just varying the instructions or data does not make
    the machine new.


    The computer becomes new if the “program” become part of the machine
    itself, as in a micro-program that converts a simplistic reduced instruction set
    computer into a complex instruction set computer.  I would also go so far
    as to call the bios to be part of the computer.  I would even go so far as
    to call the operating system part of the computer.   I would even go
    so far as to call device drivers part of the computer.  But software 

  58. 340

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    Les, that it issued tells us little.  “Held” implies a court.


    That said, the claim is limited to images and image processing.  This
    might be enough, but methinks the claims are far too similar to Flook’s claims
    to pass muster.  Had the image processing system been limited to a printer
    as disclosed in the spec, I think the claims might easily pass the grade. 
    But, as it is, the claim ends in a abstraction and is not limited to any process
    or apparatus, but simply to the field of image processing.  That is




  59. 339

    Nice strawman Ned.

    You not so subtly have made the unwarranted jump that the software IS the algorithm.

    Except no one but you has ever said such a thing.

  60. 338

    So indeed – I was simply pointing out your non-sequitur (one amongst many on this thread).

    So the question comes back to you: So?

  61. 335

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    Other uses? 


    Let’s see.


    Suppose the particular machine detects deep space radio signals and it uses
    commercially available software that employs a well known algorithm that reduces
    noise in the signals.  The software sold employs that algorithm, but the
    same algorithm is used to suppress noise in 150 or so different
    applications.   The algorithm may be used in all of them.  (This
    kind of  like the Diehr software that employs a particular well known
    algorithm that may be used in many different applications.)


    Now, let me get this right …It is your theory that the software has no
    other use because it is software; and that because it is software I do not have
    to prove lack of non infringing uses, of which there are many in the example,
    and I do not have to prove knowledge of the patent.  And your basis for
    this: the software can only run on computers?


    Ahh!  I see your logic there.  Quite!


  62. 334

    Ned –

    Your premise is confused. Is adding 1 + 1 the alleged point of novelty or not? You say it is, then you say its been know since the dawn of time.

    In any event, the adding machine, with gears and levers was surely patentable, even though people had been using their fingers to add since the Monolith appeared the first time. Your claim reads on the adding machine, so, yeah, when it was new, it was patentable.

    When I claim a computer programed to do a task, I claim, using your example

    an input module operative to receive a first operand and a second operand;

    a summing module operative to receive the first and second operands and add the values represented thereby to generate a sum; and

    an output device operative to receive the sum and present the sum to a user.

    The device is “programmed” when those modules exist. I would assert that the exist when the code therefore is available to be run by a processor, even if the op codes are fetched one at a time over the internet. That odd embodiment of the device, would include the local processor, the internet, and the remote hard drive or device providing the op codes.

    The claim covers equivalents as well…. so, if you choose to suggest an even more bizarre embodiment, that’s covered too.

  63. 333

    link to

    Claim 1 of the patent available at the link above, sets an image processing condition. Nothing, other than unspecified control bits is transformed. No image is output.

    Yet the patent issued, therefore, as you requested it was “held to be an eligible process that was not directed to a particular machine or which did not transform an article into a new state or thing.”

  64. 332

    Whoever made the software might be an infringer. Go talk to them.

    Good advise.

  65. 331

    Patented and infringing are two different things.


    You cannot have infringement on something that you cannot have a patent on.

    Bullets can have patents. Components to machines can have patents. Software can have patents.

    Time to stop dissembling your true agenda.

  66. 330

    Do patents exist for bullets in and of themselves?

    Yes or no.

    (hint, the answer has already been shared).

    Does this mean that components can have patents apart from the machine they go into?

    Yes or no.

    (hint, the answer has already been shared).

    Case closed. Thank you.

  67. 329

    Isn’t an element of a component analysis the question of whether there are other (non-infringing) uses of the component?

    What other uses of the software component would there be?

    And by the way – I hope you recognize that you are tacitly agreeing that software IS a component.

  68. 328

    Ned couldnt be more wrong if he tried.

    Oh wait, he is trying.

    resident… automatically… non permanency… More canards with no place in law.

    when software executes, it reconfigures the machine – this is the same reconfigure that makes a new machine as recognized in fact and in law (See Alappat).

    loaded from whatever location – that is all that is necessary, as the component is then a part of the machine (the bullet is chambered). Execution = configuration = making a new machine (a particular machine). The computer is most defintely NOT unchanged. Point in fact, a computer without the software cannot do what the computer with the software can do.

    Just because Ned closes his eyes and wishes that history was different does not make it so.

  69. 327

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    Machines can change?




    So I have the software located on my shelf and I sell my old
    computer.  Do I infringe?


    Do I infringe if I buy a new computer?


    You really need to pin down your thinking Mr. Sophist.


    As well, when you say “configured,” but then simply describe an algorithm
    that uses the computer for calculation, I think there may be a problem. 
    The machine it self must be changed and that has to be described in the
    specification.  Agreed?


  70. 326

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    If the claim is to a particular programmed machine or to a computer
    process, selling the software for use in that particular machine or in the
    process may well be infringement under 271(b) or (c).   But there are
    other elements of proof required, such as knowledge of the patent.


  71. 324

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    simple regarding bullets on the shelf,


    make use sell.  We are not talking about patentability at all. 
    We are talking about infringement.



  72. 323

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    simple, “is the only difference between firmware and software is that
    firmware is software in a designated location.”




    Misses the point entirely.


    Firmware is a resident part of the machine.  It is automatically
    executed by the machine when required.


    In contrast, software implies by its name and history non permanency. 
    It is not part of the machine.  When one wants to run the software, one
    commands its execution.  The software is then loaded from whatever location
    it happens to be, and executed.


    In truth, this is USING the computer.  The computer is
    unchanged.  No particular machine is involved.





  73. 321

    Does a bullet have to be chambered to be patentable?

    Best question of the thread.

  74. 320

    The context was surely clear (hence the “pedantic” putdown). There is no need to “change the question.” There is a need for being reasonable.

  75. 319

    must be loaded permanently

    Permanently? That canard was exposed as false long ago.

    Machines can change. They can be upgraded. If (and when) they upgrade, and THEN they infringe, it is still infringement.

    Your particular penchant for pecularizing firmware flounders famously.

    But the computer must be altered and it must operate differently to be new.

    That is exactly what configuring a machine with software does.

    Thank you for finally admitting the truth.

    Benson is the case.

    No. You over read Benson (pay attention to the part of “this we do not so hold.”) The case you mean is Alappat.

    Class dismissed.

  76. 318

    Making using and selling a bullet is an infringement. Sitting on a shelf is not.


    Making using and selling software is an infringement. Sitting on a shelf is not.


  77. 317

    Are you sure that there was no infringement involved?

    You didn’t ask whether there was any infringement “involved.” Are you changing the question? If so, please try to state it clearly.

  78. 316

    Making using and selling a bullet is an infringement.  Sitting on a shelf is not.
    Take my example of the switches.  The POs attorney, in court, using the switches, enters the program into the my computer.  Who infringes the programmed computer claim?
    This is simple, the PO, not me, the owner of the computer.
    The programmed computer claim is infringed, if at all, each time the computer program is loaded or executed.  What really is going on is that the instructions must be in the computer to infringe.  Further, it is the person who loads the program who infringes.  But it does not become a new machine unless the sale of the machine infringes.
    Thus my point: if the claim really is to the programmed computer, it must infringe when sold.  That means the software must be loaded permanently, be part of the machine.  This is what is known as firmware.  But it is also charateristic of operating systems and the like, software essential for the operation of the machine and which esssentially becomes part of the machine.
    In this sense, I see nothing fundamentally wrong with programmed computers being potentially eligible as new machines.  But the computer must be altered and it must operate differently to be new. 

    The USPTO and perhaps the Federal Circuit still does not see the distinction between a truly new machine and using an old machine to do something ineligible.  I think, however, the Supreme Court gets it.  Benson is the case.


  79. 315

    So the bullet magically appeared on your shelf?

    You did not make it?

    Someone did not sell it to you?

    Do you want to stick with your answer that there is no infringement involved?

    Do you?

  80. 314

    because possession of a patented item is not infringement.

    Really? How did you get that bullet? Are you sure that there was no infringement involved?

  81. 313

    And isn’t the point made by The Wares pertinent (that the only difference between firmware and software is that firmware is software in a designated location)?

    Does a bullet have to be chambered to be patentable?

  82. 312


    Aren’t you overlooking the point made by Piece Parts Deserve Patent Protection Too?

    Bullets, after all, do get patents, right?

  83. 310

    I have a bullet, exactly like the bullet claimed in United States patent 8,225,718. I do not own a gun and there is no gun in my house. Do I infringe?

    No, because possession of a patented item is not infringement. Why do you ask?

  84. 309

    The bullet is an article of manufacture that is useful.  It is patenable.  A bullet sitting on a shelf, however, does not infringe.  Infringement: make, use, sell.  Sitting on a shelf does nothing.  Ditto a lens blank.
    Software are instructions to a computer.  Depending on what the machine does with the software, the process may be useful and patentable.
    Process patents are infringed by use. 

    Even if the software on the shelf was intended to become part of a programmed computer, just sitting there, it does not infringe.
    Make, use, sell.  Sitting on a shelf is not infringement.

  85. 308

    He “taught” me that years ago. I’m not concerned one bit about the claims in Myriad inhibiting medical scientry, although it may well have.

    “exploring why the two groups have come to such diametrically opposite conclusions may be informative.”

    Yeah, I explored that with Kev a year ago. The “why” is because patent lawltards indoctrinated themselves into overruling the supremes about 30 years ago and that went unchallenged until recently.

  86. 307

    Simple, Software are instructions that cause the computer to operate in a particular fashion.  They may induce infringment if the computer as programmed is doing something patentable.
    Firmware, OTH, permanently resides with the computer and CAN make into a new machine, depending.

    Therefor, FIRMWARE is a component of a machine.  Not software.


  87. 306

    Software sit on the shelf in my computer room. Do I infringe?

    I have a lens blank, partially ground but not yet ground to a claimed configuration.

    Do I infringe?

    (hint: there is no other common use for the partial lens blank).

    I have a bullet, exactly like the bullet claimed in United States patent 8,225,718. I do not own a gun and there is no gun in my house.

    Do I infringe?

  88. 305

    I said, in some fashion.

    Would that be in the same fashion that anyone (anyone that is serious, that is) looks at software as a component to a machine?

    What exactly is the difference that you see with the “software as component” argument that is somehow different than the bullet example so ablely provided Ned?

    Do you think that Piece Parts Deserve Patent Protection Too has not made her point? Clearly, “gun” is nowhere in the claim, not even “in context,” is it?

  89. 304


    It looks like Dr. Noonan is trying to teach you something:

    One thing has become abundantly clear in the public debate about the patent-eligibility of isolated human DNA. That something is that there is a great deal of uninformed opinion extant, predominantly by well-educated people with scientific backgrounds, who believe wholeheartedly that patenting genes is pernicious because it has or will inhibit medical science and progress in the diagnosis or treatment of disease. But that doesn’t appear to be the situation to those with a background in biotechnology patent law, and so exploring why the two groups have come to such diametrically opposite conclusions may be informative.

  90. 303

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    Software sit on the shelf in my computer room.  Do I


    I buy a new computer.  Do I infringe again?


    The computer has switch whereby I can manually set the ALU
    inputs, and a dial where I can select the operation.  At trial, the POs
    attorney sets the switches and the dial to the program settings.  I own the
    computer.  Do I infringe?



  91. 302

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    “Bullet” limits its use. 


    I said, in some fashion. 


    The same issue divided Alappat’s majority and dissent as
    well.  See the claim there to understand the point of disagreement and why
    the majority held the preamble sufficient.


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