Guest Post by Martin Goetz
In the Alice vs. CLS Bank case that is before the Supreme Court the question by Alice is "Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…". That's the wrong question to ask.
Equally wrong is to boil down that question to "Is software patentable"which both IP lawyers and the media are quick to do (see Crouch'sblog "Is Software Patentable?: Supreme Court to Decide"and Forbes articleSupreme Court Takes Up Case Challenging Software Patents).
The correct question, which the Supreme Court has answered indirectly and affirmatively in the past, but never in the way I have re-phrased the question is, "Is a 'true invention' that contain as part of (or all of) its disclosure (in its patent application) a digital computer (and a computer program), entitled to US patent protection."
I deliberately put in quotes true invention for that's not part of the debate. In previous patently-O articles I give just a few examples of true inventions which used a digital computer and software as part of their implementation of the invention e.g., artificial retina, voice translation, driverless car, Reading machine for the Blind and 3-D printer. Few, I believe, would debate whether those examples deserve the protection of the US patent System.
For a more in-depth discussion on my arguments of why "Is software patentable?" is the wrong question to ask, see my four patently-O blogs Do the Wright Brothers Deserve a Patent for their Flying Machine?: Why Eliminating Software Inventions from the Patent System Makes No Sense. , "No" to Software Patents Per Se: Software is Only a Means to an End. , In Defense of Software Patents and In Defense of Software Patents – Part 2.
Today, there are hundreds if not thousands of true, and undebatable, inventions that contain a digital computer and computer programs as part of their disclosure in virtually all world-wide industries, including the software industry.
For those that believe that the US patent system has spurred innovation and the growth of the United States since the patent system became law in 1790, eliminating true inventions that contain software as part of their disclosure, would be a catastrophe for the growth and health of the US economy.
“So what if a True Invention Uses a Computer!”He’s a “truther”
Wow! Martin Goetz is still around? Do the readers here realize that Goetz holds the first software patent?I’m not sure that the term “true invention” is helpful in a legal context. It’s helpful to people who think “software”, per se, is patentable under current law. The readers here (well, most of them) presumably know better. It’s the invention inside, expressed as software, that is patentable. The “machine or transformation of matter” test is enough to encompass most software-related inventions. Most software inventions can be expressed in hardware if the need for speed is great enough. This is routinely done today for graphics algorithms (which are hard-wired into graphics ICs), high-frequency trading (which is sometimes done on custom hardware to save a few microseconds and gain speed over other traders) and, amusingly, Bitcoin mining (which started out as software and is now done almost exclusively by custom hardware.) The “covered business method” issue seems to be coming under control. Nobody is getting away with patenting tax strategies or hedging strategies any more.
“Do the readers here realize that Goetz holds the first software patent?”We’re aware. Not impressed, but aware.
Hmmm,…software is equivalent to firmware is equivalent to hardware
Today, yes. You can take small programs written in C (a programming language) and run them through a program which converts them to VHDL, a description language for chip design. Then you can run the VHDL version through a electronic design automation system and get a chip layout. You then send the chip layout to an IC foundry and you get custom chips back. All this is a routine operation – you can get it done at “http://www.mosis.com/”, for example. It’s an expensive process to get the first chip made (about as much as legal fees for a patent from a major law firm; less than one patent litigation), but then you can have millions made cheaply.
Is there such a thing as Peak Patent Teabagger? If so, this post by Mr. Goetz is pretty to close to how I imagined it would look.
Before you ask any question, determine which aspect of Justice is more important to you in this debate: Truth or Efficiency? I think this audience can generally agree that there are some categories of business methods which deserve patent eligibility, though where one draws the lines can be debated. I think this audience can also agree that a large portion of existing business method patents should be invalid under 102/103/112 grounds, and it is generally these improvidently granted patents which are abused by PAE/trolls.If you value the Truth of the matter, digging to the heart of each patent and technology, figuring out the 102/103/112 issues is the best approach and leads to the best result. In an ideal situation, this would be fine, and I think this is the perspective that Goetz is coming from, figuring out if something is a “true invention”. However, litigation is expensive and almost never ideal; often the pragmatic course of action is to settle. So defendants (and some trial judges) look to leverage the (apparently) most efficient tool available to them, which is 101. It does not lead to the “best” questions to ask, because the answers are likely over-broad. But if the 101 questioning leads to an end result quicker, and close enough to the Truth of the matter most of the time, then it remains attractive because of its Efficiency and probably outweighs the cost of the process of getting to the Truth.I think J. Newman has seen this for a long time, and her recent concurrences sound to me like she just wants to move on from 101 so that it doesn’t distract and detract from the more precise application of 102/103/112. Given the amount, cost, and nuisance/extortion-like quality of litigation in this area though, I can see the Sup.Ct. supporting the use of 101 to get rid of PAE/troll suits at an early stage.
Always (and I mean always) be wary of the legal mindset of the ends justify the means.
(sigh) I know, but this isn’t just a legal mindset. After the seemingly endless and intractable back-and-forth on 101, the engineer in me thinks, “If it’s within an order of magnitude, it gets the job done, move forward” and the lawyer in me can’t see the value in arguing against that mindset anymore.
You are on a patent law blog, talking about patent law. You better d@mm have a legal mindset.(ps, don’t get worn down)
I have the legal mindset, but in practice that includes keeping the client’s business interests at the forefront. Having an engineers pragmatism and experience in industry adds to that. The law is meant to serve and facilitate society, and when the law fails to do so, it is the law which is wrong, not the individuals and businesses walking though the legal minefield.
Careful with that relativism, especially with law, as the client is NOT always right.
Certainly the client isn’t always right, but at this point we have years of data points to evaluate across a broad spectrum of clients, and I’d wager that most would say that this continued debate and progression of litigation is stifling actual innovation and simply not worth the cost. If the law is failing, the law needs to change.Also, absolutism doesn’t make one a very good lawyer either.
I could not disagree more.In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.Anything less and all you are doing is pandering to the forces that would twist law to their ends.
“In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.”That’s awesome, anon. Have fun storming the castle!
In this case, the absolutism is to the very heart of the law and is a strict requirement for maintaining the purity of law.LOL! As has been noted many times before, the patent teabaggers are beyond parody.
As a client to several firms, I have to tell you, I AM ALWAYS RIGHT.
101 is efficient only if there is an easily-applied, bright-line test
I’d still argue that hashing through 101 even as it stands is still more efficient than the discovery needed to work though 102/103/112, but yes, a easily-applied bright-line test would be great. Dear Supreme Court, please get on that. Thanks.
and a test based on the statute
And not some “implicit” twisting of the nose of wax.(how deep do the words that can be found implicitly run?)
Oh come on. This 101 stuff is a joke. It is not applying the law, but trying to find an excuse to implement policy. Policy that the SCOTUS doesn’t even understand.And, this 101 stuff leads in only one direction–arbitrary enforcement of the law. It makes it so the judge/jury can decide whatever they want to decide. No law. Just do what you want.Don’t fool yourself. This 101 stuff is a cancer. Lemley is a parasite on our system.
It is not applying the law, but trying to find an excuse to implement policy.Because Congress intended purely mental processes to be eligible for patenting. Right? Isn’t that what “the law” says, after all? And that’s all that should matter because … Progress! Or something.
Must you soil my posts. Computer don’t think. They are machines. Repeat after me. A machine doesn’t think. Think is a word we use for our own information processing.MM wrote:” purely mental processes to be eligible for patenting”
Computer don’t think.That’s nice. “Thinking” is a “process”, though, isn’t it? What does “the law” say about the eligibility of “processes,” NWPA?I’m talking about “the law” as you choose to read it, of course, which appears to be “literally, like a kindergartner would read it.”Let everyone know what “the law” says about the eligiblity of purely mental processes, NWPA. In your opinion, of course.
What a ridiculous post MM. Man up to your nonsense.
“Computer don’t think. “Could have fooled the popular press. Why I just read in the newspaper today that there are learning compooters! (nevermind that they’ve been working on/with those for decades, it’s apparently news to some) Seems to me like if it can learn then it is thinking.
6: Anthropomorphicationadd: link to screen.yahoo.com…a nice little piece highlighting the fact that we don’t even truly understand how the human brain works yet…Old (but still good math): “6” + “seems to me” = “babbling wrongness”
“Lemley is a parasite on our system.”Said a parasite on the patent system.
Martin, there really is no debate, as far as I know, about the patentability of inventions that otherwise pass the MOT but nevertheless use a computer. Diehr. All your examples clearly pass the MOT. Instead the debate centers on business methods that inherently manipulate abstract concepts but involve the use of computers and programming. The question really is this:Whether a claimed invention that does not pass the MOT but instead manipulates abstract concept is nevertheless eligible because it is implemented on a computer?I would suggest that a “yes” answer would involve overruling Benson and restoring In re Benson — after all, it was Rich’s view in In re Benson that a programmed computer was eligible subject matter because a computer was a “machine.”But does Alice really fail the MOT? Clearly it fails the T. But the M? I think it passes the M because it requires specific steps to be taken in the computer in specific time-dependent order.
MoT and business methods and a misunderstanding of the Supreme Court case Benson…Really Ned, the same old merry-go-round?
I think the question in Alice could also be broken done into whether a claim that does not pass the T of the MOT can nevertheless pass the M when specific computer-implemented steps beyond mere calculation are required.
You accusing others of inventing patent law, all the while you seek to resurrect MoT is a bit disingenuous.Please, please, please, please STOP misrepresenting patent law when it comes to MoT.
MoT doesn’t need to be resurrected, because it’s not dead.
Ned’s version of MoT certainly is dead.It (Ned’s version) is being attempted to be resurrected to a certain status – see In re Bilski.And I won’t even charge you my hourly rate for that lead.(and to the point of the comment, Ned is misrepresenting patent law)
Why are you directing me to the Federal Circuit case when its holding on MoT was overturned by the Supreme Court? You really charge people for this?
Why?Because that is the source of the error – it answers your question and shows why Ned is wrong.You are doing that red-cape-charging thing again…
“Because that is the source of the error – it answers your question and shows why Ned is wrong.”What question of mine does In Re Bilski answer?You are doing that not-making-any-sense thing again…
The question as to why Ned should drop his MoT crusade.The sense is here – you missing the sense, well that is another matter altogether – you are doing the blind-bull-charging thing again.
“The question as to why Ned should drop his MoT crusade.”That wasn’t my question. “The sense is here …”Apparently I’ll have to take your word for it.
“your” question?LOL – what was “your” question? – You do realize the topic here revolves around Ned and his misuse of MoT, right? You are doing that dissembling thing again..”I’ll have to” – or you can take the blinders off, open your eyes and try to understand Ned’s misuse of MoT without reacting first to the word “anon.”
I think that’s an interesting (and potentially very useful) way of looking at it, Ned.
…so you too think it should be Machine AND Transformation…?…and you want Justices to rewrite patent law (the 1952 Act was already pretty clear about new uses of old machines)?Add: even if the Random guy is clueless as to the actual law.
Let us just say, anon, that you do not agree with the MOT or with Benson.
I agree with the law – as properly understood and applied.Please stop misrepresenting the law.Benson does not hold against software patents.Bilski: MoT not requiredPrometheus MoT not sufficient.Yes, Ned, properly understood and applied says it all – please stop doing the opposite.
“As properly understood”… says it all.
Proposedamendment to 35 USC § 101:Whoeverinvents or discovers any new and useful process, machine, manufacture, orcomposition of matter, or any new and useful improvement thereof, may obtain apatent therefor, subject to the conditions and requirements of this title.Patentabilityand patent eligibility of an invention shall be considered only for each claimtaken as a whole, without disregarding any element of the claim based on theelement’s presence or prominence in the prior art, the routineness orconventionality of application of the element at the time of filing, or theelement being or embodying written matter, mental steps or processes,algorithms, abstract ideas, laws of nature, or natural phenomena. The inventive concept of a claim is the claimtaken as a whole.Subjectto the conditions and requirements of other sections of this title, patentabilityand patent eligibility of an invention shall not be negated by (a) preemptionof any subject matter by the invention, including algorithms, abstract ideas, lawsof nature, and natural phenomena; (b) a lack of a spark of genius orinventiveness embodied by the invention, beyond the conditions and requirementsof other sections of this title; (c) the invention embodying a combination ofelements known in the prior art or found separately in nature, so long as theinvention satisfies the conditions for patentability of sections 102 and 103; (d)implementation of the invention in a computer, computer readable media, or asystem including a computer; (e) an inventive concept embodied by less than awhole claim in its entirety; (f) consideration of any limit the patentedinvention would place on use of the invention; or (g) the invention comprisingintangible or transient effects so long as a useful result is produced.
OK, Mr. Inventor of patent laws: deal with this:I claim the combination of a monkey wrench; anda monkey.Assume that combination is non obvious, and I think it is non obvious.I would think such a claim eligible and patentable under your new laws. If not, why not?
LOL, and Ned, you accuse others of strawmen?Here, you create the strawman of utility when such is not a part of the discussion. Clearly, disparate items conglomerated together can create something that is not patent eligible – under EITHER Hodges’ proposed amendment OR existing law. Further, and just as clearly, software as a machine component has the necessary functional relationship.Your post is excrement and has nothing to do with the conversation. It is you that is attempting to kick dust on the issue at hand.Please stop and address (and incorporate) the actual points raised.
You are right of course Anon that the example is ridiculous, but it does raise a point that one cannot discard 101 utility and simply confine 101 to whether the claimed subject matter falls within the four classes. The ridiculous claim otherwise passes 102, 103 and 112. So, that leaves 101 as the only way to hold these claims unpatentable.I did this, of course, to illustrate this very point.
Ned – it is a strawman and a diversion away from the topic under discussion.It is exactly what you accused me of doing. No one – and I mean no one is saying that utility aspect of 101 is waived away.That you try to defend your egregious posting – your accusing others of the CRP that you do – makes you no better than Malcolm on this point. I expect far better. I expect an intellectually honest attempt – or at least your silence (which screams volumes), and not the CRP that I see here.
I’m Sorry, there seems to be an assumption that the combination of a monkey and a monkey wrench would not be useful. I submit that that assumes facts not in evidence.
Ned, nothing in the proposed additions to 101 negates the utility requirement of the first paragraph of 101 (“any new and useful…). Your example appears to lacks utility, but if your combination had a utility (the monkey was properly trained(?)), I do not see why the combination should not be patent eligible.
Robert, then you may consider rephrasing the following, as I see nothing in this that would limit random combinations of unrelated things.”(c) the invention embodying a combination of elements known in the prior art or found separately in nature, so long as theinvention satisfies the conditions for patentability of sections 102 and 103;”
The Question Presented by SCOTUS is supremely frustrating and just not helpful. I fear that they are going to affirm on very narrow grounds and provide no guidance at all to the patent world.What needs to be addressed are the following: (1) What is an abstract idea? No one knows what an abstract idea is. The “guidance” provided by SCOTUS is nonsensical and just as bad as the phrase “abstract idea”. Even the Federal Circuit has recognized that there is no guidance on this issue aside from processes that can be performed “in the human mind alone” or “with a pen and paper alone.” Rader specifically called this issue out in Ultramercial when he recognized that the claim may not cover an abstract idea at all, which would have rendered the entire discussion moot, but didn’t consider that point because it wasn’t raised by the parties. This is extremely important and often overlooked. If the claim does not cover an abstract idea, then there is no 101 issue. As an aside, Examiners routinely miss this point (as expected), which is supremely frustrating.(2) What claim limitations save an abstract idea? This is simply picking one of the methodologies raised in the concurring/dissenting opinions of CLS Bank or SCOTUS coming up with its own.
Software patentability is NOT the issue in CLS v. Alice. But the question you are asking is circular: how do you define a “true invention”? What is patentable subject-matter? In Bilski the Supreme Court simply was reluctant to answer that question! Note that non obviousness is NOT the criterion: it is a separate test. Value is not a criterion either, even polically. IMHO at least part of the answer is that “protection” must be an exception in a free market economy.
“IMHO at least part of the answer is that ‘protection’ must be an exception in a free market economy.”The problem with you anti-patent people is that you just assume all the good things that come from patents just are part of the system and that patents don’t provide them. Like disclosure and incentives for investment. You attribute only the negatives that patents bring–the quid pro quo part: the exclusion of others. You provide nothing of interest to the debate, but hot air.
You are framing the discussion I am not radically opposing patents I am only saying that they have a limited use. And typically business methods are applied in public so that disclosure is not a benefit here. And otherwise patentees often disclose too little to be useful, especially for software patent. Finally the intent to apply for patent require the applicant to disclose nothing until he is finished which is problematic for inventors who depend on a professional debate with peers not just in their own firm. But otherwise the disclosure is useful, of course.
One invention you forgot is robot. The real hard part of building a robot is the information processing.
The real hard part of building a robot is the information processing.Actually, it is just one of the hard parts. Others include obtaining all the information to be processed. Still others include creating mechanisms that are capable of performing specific movements. Still others involve doing all of this within a constrained space. The amount of “technology” that goes into a modern robot is mind-boggling (for those that appreciate all the technology that goes into one).
I didn’t go to his Wedding because he knew I was not related to him. His second Wedding the same scenario. And when his wife died he solidified the facts that we are not related yet again.. So in relationship to my TRUST… tell me again why my Trust was handled by him. claiming no Will. But we know there was. the TRUST! So who did you share it with? All that aren’t related? and the inbreed or the Sarah of JFJ .. and on top of all that you on Phyllis’s ( by the way also not related) ok to invest in Mize’s Club. I can’t wait to hear the minutes of this case LOLOLOL! I believe that’s called PRIMA FASCIA. aka BITING THE BULLET!
I don’t know about that, it took hundreds of thousands of years for mankind to be able to make the body.
I think what you are saying is basically right. (I notice, by the way, the decrease in posts from the paid bloggers as they are on vacation.) The reason the question of is software patentable is wrong is because software/firm/hardware are equivalent. This follows from the Church-Turing Thesis. So, the question is are machines and methods that process information patentable? To say no is to say that a machine that can perform the functions that people perform is not patentable which cannot be the right result.Moreover, what we have is a number of intentional lies regarding information processing from a group of people that are trying to use publicity to get rid of information processing.The following is just an ad hoc list of some scientific truths about information processing.1) Software has structure. The lie: Software has no structure, which leads to the contradiction that two machines with the same structure perform different functions;2) Functional claiming conveys a very definite set of solutions to one skilled in the art. Functional claiming conveys no structure; wrong–to those skilled in the art it conveys a very precise set of solutions;3) Claim scope should be policed using the procedures used in LizardTech–not a judicial exception of abstract.4) A picture that information processing has a real scientific basis. Processing information requires space, time, and energy.5) Consider the claim: “A circuit configured to”. Isn’t software and hardware a circuit configured to?One problem with CLS bank is that we are again running into a problem of something that is well known being implemented on a computer system and then it going to the supreme court rather than a new way processing information going to the supreme court. The oddest thing to my mind is why isn’t a 102 found for these ancient methods? Or a 103? If these systems are really so well known, then why not cite a first year text book? Why is the nuclear option of 101 being used rather than patent law?
#’s 2 and 5 are right. #1 is a pointless argument until you clearly define what you mean by “software” and “structure.” #3 – You seem to be saying that 101 has no place at all in evaluating whether a claim is patentable – I think that horse is already out of the barn. #4 – so what?
The horse might be out of the barn on 101, but it must be put back if it is ever going to be hooked to the wagon again. Right now we are going nowhere on subject matter eligibility – the same unanswered questions year after year. 102, 103, 112 answer the question.
” the same unanswered questions year after year.”We’ll have to disagree on that, I suppose. I think we’ve received a lot of answers over the last few years. In my practice, which involves lots of software-implemented technologies (generally well below the application layer, however), I really don’t have that much difficulty in applying 101 to claims or potential claims.
If they are not unanswered, then why did the Supreme Court take CLS?