by Dennis Crouch
Two pending Supreme Court now have higher profiles with the Supreme Court’s invitation to the Solicitor General to provide views of the administration. In both cases, the petitioners have set-up the Federal Circuit as a misguided court.
The focus of Google v. Oracle (Sct. Docket No. 14-410) is the extent that software is eligible for copyright protection. The petition asks:
Whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way.
Unlike patent law, the copyright eligibility statute includes a set of express exclusions. In particular, although “original works of authorship” are generally eligible for copyright protection, “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). In its decision the Federal Circuit found Oracle’s Java API taxonomy copyrightable as a whole. In particular, the appellate panel led by Judge O’Malley rejected the idea/expression merger doctrine since there are many other ways that functionally equivalent method-calls could have been constructed besides those found in Java. “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.” [Read my prior discussion here and here]
The second case – also involving Google – is Google v. Vederi (Sct. Docket No. 14-448). In that case, the Google raises the following question:
Whether, when an applicant for a patent amends a claim to overcome the PTOs earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.
Although the first part of the question is interesting, the second part appears quite misguided as Federal Circuit law does not presume that claims maintain the identical scope following an amendment to overcome a rejection by the PTO. That said, the Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942); Keystone Driller Co. v. Nw. Eng’g Corp., 294 U.S. 42, 48 (1935); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789–90 (1931); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443–44 (1926); and Hubbell v. United States, 179 U.S. 77, 84 (1900).
Arguments that claim amendments must cause estoppel are not consistent with the day-to-day circumstances of patent prosecution.
Today, I handled a case where the independent claims provide something like:
Of course, the specification presents several examples of such frequencies – e.g., performing step #1 once a minute, or once an hour; and performing step #2 once a day, or once a week.
The examiner rejected the claims citing a bizarrely unrelated reference. During the interview, the examiner said: “The claims don’t make sense, because this is what the term ‘frequency’ means.” The examiner pulled out a sheet of paper, draw a sine wave, and circled one cycle of the sine wave.
This examiner is an EE who is examining a software invention. He doesn’t understand software. He understands radio communication, and he sees everything through that filter. “Frequency,” to him, only means “periodic signal frequency,” or perhaps “radiofrequency.” It doesn’t matter that nothing in the application deals with any of those concepts.
On the one hand, I could have argued, at length, with the examiner over the meaning of the term “frequency.” Taking this tack would have required creating all kinds of estoppel, and maybe jamming some unnecessary definitions into the claims. Complete waste of time and resources.
Instead, I chose an easier solution:
This amendment is, literally, synonymous. There is literally no difference in meaning between these two amendments: it is solely to address the examiner’s embarrassing mistake.
A “presumption that the amendment narrowed the claim,” requiring the court to “strictly construe the amended claim language against the applicant,” does not jive with circumstances like this. And these circumstances occur ALL THE TIME.
I don’t expect Supreme Court justices to understand these circumstances – collectively, they have prosecuted zer0 patent applications. That’s probably true of the litigators as well. But I’d hope that someone within Google would raise a concern that this proposal is not only unrealistic – it threatens Google’s patents as much as anyone else’s.
Good points, David. I don’t think the CAFC recognizes that there are many valid reasons to amend claims that have nothing to do with the rejections (which may be terrible). The first thing I do is look at the claims and see if they make sense to me. If they don’t make sense to me, I amend them, but the amendments have nothing to do with rejections.
In order for there to be a rational discussion as to whether the Vederi’s patent claims were actually narrowed, here is claim 1 from Vederi’s U.S. Patent 7,239,760:
1. In a system including an image source and a user terminal having a screen and an input device, a method for enabling visual navigation of a geographic area from the user terminal, the method comprising:
receiving a first user input specifying a first location in the geographic area;
retrieving from the image source a first image associated with the first location, the image source providing a plurality of images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area, wherein the images are associated with image frames acquired by an image recording device moving along a trajectory;
receiving a second user input specifying a navigation direction relative to the first location in the geographic area;
determining a second location based on the user specified navigation direction; and
retrieving from the image source a second image associated with the second location.
In that claim, the particular added matter under discussion is: “images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area”. The application leading to the patent initially contained claims reciting “images providing a non-aerial view of the objects.” The Patent Office rejected those claims in view of U.S. Patent No. 6,140,943 (Levine). The applicant responded by amending the claims to remove “nonaerial view” and add “substantially elevations.” The applicant also correctly noted that Levine was directed to “map images, which may include names of streets, roads, as well as places of interest” that a traveler could use to navigate through a geographic area. Therefore, Levine did not disclose images “depict[ing] views that are ‘substantially elevations of the objects in a geographic area’” or “acquired by an image recording device moving along a trajectory.”
The accused product—Google’s Street View—provides context for the parties’ disagreement. According to Google, Street View combines images of a wide range of views recorded by multiple cameras having wide-angle lenses mounted on a moving vehicle. Those photographs are overlapping pictures taken from a single location at approximately the same time. These images are stitched together into a virtual spherical composite image. The resulting image is a two-dimensional representation of a spherical shape.
Thus, infringment or lack thereof depends upon whether spherical or curved images fall outside the scope of Vederi’s ‘760 patent claims. Vederi stated that the limitation “depicting views of objects . . . the views being substantially elevations of objects” means “front or side views of objects.” Google contended that the limitation means “vertical flat (as opposed to curved or spherical) depictions of front or side views.”
The district court sided with Google’s interpretation, while the Federal Circuit reversed, discerning no clear and unambiguous disavowal of spherical
or curved images, and concluding that the prosecution record shows that “views being substantially elevations of the objects” refers to “front and side views of the objects,” such that the claims do not exclude curved or spherical images depicting views that are substantially front or side views of the objects in the geographic area.
I’ll ask the obvious question: Where is the technical effect? How does a method involving only the steps of “retrieving” and “determining” have any utility?
While I maintain my strong reservations about the existential threat that Alice and its progeny pose to the patent system, I’d have expected, and in fact hoped, that this patent would have been easily invalidated on that basis. On its face, the method accepts and processes data… full stop.
I recognize that this patent issued in 2007, during the “carefree days of State Street Bank & Trust Co.” era of 101 law. Also, I notice that the CAFC decision issued on March 14, 2014, before Alice. But I wouldn’t have expected this case to survive the Freeman-Walter-Abele test, let alone the stricter standard imposed by Bilski v. Kappos.
I’m curious as to why Google didn’t argue that issue at the CAFC. If it were heard today, I’d expect the CAFC to raise the issue sua sponte. I don’t know if the Supreme Court can address that issue if it wasn’t raised at the lower courts – but I’ll be extremely surprised if the Court doesn’t at least mention the issue in passing.
>a method for enabling visual navigation of a geographic area from the user terminal,
Why is that not a technical problem?
I’d also not that determining and selecting probably make up a large part of what you do.
> Why is that not a technical problem?
“Enabling visual navigation” is certainly a technical problem. So is “synthesizing images of a locale to generate a composite image that provide a panoramic view of the locale,” which is the alleged purpose of the claimed method.
However, neither of these results can be achieved solely by any combination of “retrieving,” “receiving,” and “determining” steps. In this case, all the claim does is retrieve two images. There’s no discussion whatsoever of how the images are used – e.g., “synthesizing,” “generating,” etc.
Simply put – the claimed method has no output. In order for any calculation to be useful, something has to be done with it. That seems rather axiomatic.
>the claimed method has no output. In order for any calculation to be useful, something has to be done with it. That seems rather axiomatic
I don’t agree with that. Inventors and PHOSITA don’t think like that. Courts think like that. The usefulness is evident to any person skilled in the art. It is a component of a larger system that does the output. Probably the output is in dependent claims.
What I think is this whole notion that patent applications need to be re-tooled to fit the courts bizarre understanding of science is wrong. The patent bar should push back hard on the SCOTUS. We should publish articles in the popular press lambasting the ignorance and arrogance of justices like Ginsburg.
Overall, by the way, I have a very high regard for the quality of your posts.
I’ve always had problems with claims that don’t “do” anything. If what is shown above is really a version of the claim, then I agree with you that there’s no output. If there’s no output (i.e., the claim doesn’t “do” anything), then in my mind the claim is questionable.
We see a lot of these types of claims. For instance, the claims calculate something but don’t use the result of the calculation. What good is the calculation if you don’t use the output of the calculation? They make no sense.
As a component to a bigger system.
What good is a transistor by itself?
“What good is a transistor by itself?”
Great question.
But a method is not a component.
This is yet another reason to avoid getting sucked into the “convenient to discuss software as a method” fallacy.
Software IS a component and a manufacture in its own right. Do not let anyone try to tell you that software is a method.
anon, this could just as easily apply to a method claim for a transistor.
I agree with you, though, that trying to separate information processing into only methods is wrong and another game of the judicial activist.
>>>method accepts and processes data
Gee, that is what you do for a living.
Recall that the Supreme Court split 4-4 on Lotus v. Borland, in which the copyrightabilty of an interface by which software (Lotus 123) was controlled.
These Google appeals sound like every other product from Google, always in Beta and never thought through well enough to get to final. Innovative, but unreliable.
🙂
‘In both cases, the petitioners have set-up the Federal Circuit as a misguided court.’
Inventors would agree that SCOTUS is misguided. After all, it was they who in eBay destroyed the rights of inventors and other small entities to get injunctions -substantially weakening their property rights. A court or any government body that does not justly enforce property rights is not just.
To inventors, Google is just another invention thief. May their demise be slow and tortuous.
Don’t fall for propaganda from China and large invention thieves. Just because they call it patent “reform” doesn’t mean it is.
It’s about property rights and jobs. When government fails to uniformly and justly enforce property rights they contribute to the wealth and power of the well placed few, suppress the ability and rights of the rest to make better lives for themselves and their families, and support giant monopolies that enslave and impoverish the public and commandeer the government.
Property rights and jobs in America are now hanging from a frayed thread. These changes are killing our small and startup firms and the jobs they would have created. Some in Congress and the White House continue to follow the lead of their giant multinational campaign donors like lambs…pulling America along to the slaughter.
link to townhall.com
link to npr.org
All this patent troll and ‘reform’ talk is mere dissembling by China, huge multinational thieves and their paid puppets. If you tell a lie often enough and can dupe others to repeat that lie, eventually it is accepted as fact. As Mark Twain said, ‘truth is not hard to kill, and (that) a lie well told is immortal’. Those who use the amorphous phrase ‘patent troll’ expose themselves as thieves, duped, or doped and perpetuate the lie. They have already damaged the American patent system so that property rights are teetering on lawlessness. Simply put, their intent is to legalize theft -to twist and weaken the patent system so it can only be used by them and no one else. Then they can steal at will and destroy their small competitors AND WITH THEM THE JOBS THEY WOULD HAVE CREATED. For the last several years now they have been ransacking and looting small entities taking everything they can carry. Meanwhile, the huge multinationals ship more and more American jobs to China and elsewhere overseas.
Do you know how to make a Stradivarius violin? Neither does anyone else. Why? There was no protection for creations in his day so he like everyone else protected their creations by keeping them secret. Civilization has lost countless creations and discoveries over the ages for the same reason. Think we should get rid of or weaken patent rights? Think again.
Most important for America is what the patent system does for America’s economy. Our founders: Jefferson, Franklin, Madison and others felt so strongly about the rights of inventors that they acknowledged inventors rights to their creations and discoveries in the Constitution. They understood the trade off. Inventors are given a limited monopoly and in turn society gets the benefits of their inventions (telephone, computer, airplane, automobile, lighting, etc) into perpetuity AND THE JOBS the commercialization of those inventions bring. For 200 years the patent system has not only fueled the American economy, but the world’s. If we weaken the patent system, we force inventors underground like Stradivarius and in turn weaken our economy and job creation. For a robust and stable economy America depends on a strong patent system accessible to all -large and small, not the watered down weak system the large multinationals and China are foisting on America.
For the truth, please see link to truereform.piausa.org
link to piausa.wordpress.com
link to dailycaller.com
link to law360.com
It is incredible the power that Google is wielding (and spending more money than Goldman Sachs to get their way).
Funny, but I think this is a lot like environmentalist and the steel industry. The steel companies (and most polluters) didn’t want any environmental regulation. Google doesn’t want any IP. Their business model does not need IP. Their business model (as explained by them) is about size and infrastructure and making things available to people.
Funny, that the liberal professors are cow towing to Google.
Google’s business model is leveraging the network effect of its advertising/placement business, ergo, its’ market power in advertising. Everything is free (so long as tethered to google advertisement/data collection). IP in just a nuisance, a piece of bubble rap on the road before a steamroller, in the google ad leveraged universe. The google lobby army therefore serves two purposes (1) keep the regulators looking away from its market power and (2) remove all barriers to the expansion of said market power. Google innovation, patent trolls, net neutrality, etc etc all serve as PR props for that strategic purpose.
I agree. And they have actually said about what you wrote at various times if you piece it together.
> Funny, that the liberal professors are cow towing to Google.
No it isn’t, Google gives lavishly to the Democratic Party.
Not sure Stradivarius is a great example. He might not have had a patentable method, and the product appears identical structurally to his competitors.
His success may have been through using common methods, combined with good marketing and branding, along with potentially something unique in the products he was sourcing. (Indeed some argue that there is no functional distinction at all, as blind tests do not indicate any particular benefits from his products).
As to the claim that there was no protection for patents in his day, that is simply wrong. Had he had been interested in patent protection, there were jurisdictions that provided it at the time (England and Venice in particular, and to an extent France as well) but he did not avail himself of those options.
Further, if his methods are so hard to reproduce, trade secret protection would seem to be a good approach whether or not patents are available.
So, your argument is 1) What Stradivarius did was worthless, so we didn’t lose anything by him not disclosing; and, 2) there was protection so he could have gotten a patent no matter that the jurisdictions were very limited and he would have had to disclose everything for the patent.
OK. Sure. Your aren’t an anti-patent person at all. Be nice if you stayed a bit closer to reality like in the same universe.
Rather: 1) we don’t know whether his contribution would meet the requirements for obtaining a patent, so he is not a great example to use of someone who would have brought us all benefit through the patent system and 2) you shouldn’t be basing your arguments on a false premise, i.e. his not being able to obtain patent protection at the time, when in fact he lived in a time and place where there was at least two countries nearby who offered patent protection (including to those who were the first to bring the idea to their country), and that 3) given that his invention if any is still protected by trade secret, a rational actor in his position may well have chosen to take the trade secret route rather than patenting in any event.
Your point 2 is ridiculous. The patent protection in “nearby” countries is what you are offering the inventor. What a joke. Face it: there was effectively no patent protection for him. You lose on point 2.
Point 1: No we don’t know if it would meet the requirements because we don’t know what he did. But, I think most people that build musical instruments would say he probably did.
Point 3: Pretty funny point. Funny as you illustrate very well one problem with trade secrets. They often plunge a society into darkness. Information isn’t shared and there can little to no progress. So, often an individual maximizing decision to hide what one has done does not benefit the greater society. This is much like Google’s push to end all IP rights with massive spending going into the pockets of our Congress.
Also, funny, that you bring up England where the industrial revolution occurred because of patents.
I wish I had more time to lambast your misdirections….
And let’s try to remember the big point: that we don’t know what he did and likely never will, but patents may have persuaded him to share.
Why do you anti-patent people junk up posts with loads of nonsense?
Night Writer,
The answer to your question is easy: soundbyte propaganda works.
You even have the Leader of the patent office espousing the benefits of NOT using patents, but instead using trade secrets.
Truthiness, as in why we have a patent system at all, has nothing to do with the attacks on the patent system (from the Left or from the Right).
The focus of Google v. Oracle (Sct. Docket No. 14-410) is the extent that software is eligible for copyright protection.
This was such a terrible holding. There’s nothing Oracle does that is good.
The second case – also involving Google – is Google v. Vederi (Sct. Docket No. 14-448).
I’m always curious about what an examiner can do about this. For example, it’s common for applicants to send an after final that modifies the scope, just so they have on record that the scope has been modified so that they can safely submit it as a RCE without fear of us immediately going final. That’s a relatively clear situation. But beyond that its hard to document beyond a conclusory statement that the scope has or has not been modified.
I’m not particularly interested in actually writing up the interviews we have, so if I wanted to document that a change is necessary to get around the prior art without having to do a full blown multipage analysis? Thoughts anyone?
To be honest with you, I have never filed an after-final amendment to meet this criteria: “just so they have on record that the scope has been modified so that they can safely submit it as a RCE without fear of us immediately going final. I file an after-final amendment because I think it’s a wise thing to do (even if I believe the Examiner to be wrong or correct; many times, we believe the Examiner is wrong, but don’t want to spend the money and time to appeal).
As for the interview summary, why don’t you say that you discussed certain issues, including that you thought the applicant(s) needed more in their claims to overcome the cited references? The applicant is then free to respond in their interview summary, should they desire to do so.
To be honest with you, I have never filed an after-final amendment to meet this criteria
If you think the examiner is wrong, you’re filing an after final without amendments, because you’re arguing in preparation for appeal. Those after finals are proper and not what I’m talking about.
The office has a AF 2.0 practice that allows an amending change of scope in an after final. Whether we take something under 2.0 is optional for us, but AF2.0 requires a special request be submitted. Normal after final practice doesn’t allow any amendments other than those to cure, e.g. an antecedent basis, or moving a dependent up to simplify issues for appeal. The rule is if you even have to think about whether you might need another reference you don’t enter the amendment.
Examiners aren’t supposed to and never do enter non-conforming amendments, as it’s a question of doing no work versus doing work.
So the first time I saw someone file this the response from my spe was that it was intentional to avoid us going final (as we can go directly final on a first action if there is no scope change in an RCE). I’ve seen it happen maybe two dozen times in the last couple of years. Either there’s a lot of attorneys that don’t get it (and keep coming back for more) or they’re doing as my spe said, because there’s nothing that can be accomplished by routinely submitting non conforming filings.
As for the interview summary, why don’t you say that you discussed certain issues, including that you thought the applicant(s) needed more in their claims to overcome the cited references?
The general office rule is we simply don’t document interviews. The few times I have tried to document interviews (like when the applicant admitted something that I thought would be important later) the response is a counter-filing that disputes it was said. There’s really no point in it and maybe their shouldn’t be because if we actually held lawyers to what they said they would stop talking, and then we’d miss that sweet sweet hour of other time.
What really needs to happen is to say that the change to limitations X and Y narrows the scope, and the narrowed scope is necessary because otherwise I would do Z. But that is just doubling your work (as you’re both rejecting the actual claim and all the permutations from the previous claim) for no benefit to the examiner. I think we should do a better job of building the record, but I’m not going to go overboard with double the work without being compensated for it when nobody else does. I need a more streamlined approach and can’t think of any that would give any challenging attorney firepower.
“The general office rule is we simply don’t document interviews.”
The examiners have actually had quite a lot of training in recent years about documenting interviews. Examiners are supposed to provide a concise description of the issues discussed during interviews – and applicants are free to provide their own description.
That being said, it’s rare (and, I think, generally unwise) for an examiner to say that an applicant made an admission during an interview. Even if they did make an admission, if it’s not on the written record then it would carry no weight. Rightly so, as no one wants prosecution to devolve into a he-said-she-said contest.
The examiners have actually had quite a lot of training in recent years about documenting interviews. Examiners are supposed to provide a concise description of the issues discussed during interviews – and applicants are free to provide their own description.
Except this training comes alongside training of how useful interviews are and how you want to “work together” to reach a conclusion. It is abundantly clear to examiners that if interviews were truly on the record there would be no interviews.
That being said, it’s rare (and, I think, generally unwise) for an examiner to say that an applicant made an admission during an interview. Even if they did make an admission, if it’s not on the written record then it would carry no weight. Rightly so, as no one wants prosecution to devolve into a he-said-she-said contest.
Well you can’t have it both ways. If you want to not apply the rule, say you’re not applying it (as I do) and be done with it. If you’re going to apply it, you don’t apply it half way.
If you say something to a cop that gives him probable cause during a stop, the court doesn’t disregard it because it wasn’t in writing. It devolves into a he-said-she-said. That’s probably for a fine, this is for a possibly multimillion dollar patent.
So the first time I saw someone file this the response from my spe was that it was intentional to avoid us going final (as we can go directly final on a first action if there is no scope change in an RCE). I’ve seen it happen maybe two dozen times in the last couple of years. Either there’s a lot of attorneys that don’t get it (and keep coming back for more) or they’re doing as my spe said, because there’s nothing that can be accomplished by routinely submitting non conforming filings.
I’ve recommended this to clients on several occasions, for the reason you suggest, but generally only when I can make a colorable argument that the amendments merely place the claims in better condition for appeal.
a colorable argument that the amendments merely place the claims in better condition for appeal.
And just for the record, the only three times I can think of this being true are: 1) you do exactly what we told you to do to solve whatever we said it would solve, 2) you act on your own but it’s to solve a blatantly simple issue like antecedent basis, or 3) you do nothing more than move up a single dependent, and then only if that movement doesn’t create an issue with the other dependents. In my experience the office is strict on “better condition for appeal.” That being said, I wouldn’t worry about the colorability of your argument, just submit it and argue that the scope has changed and you’ll get a response saying its not being entered because the scope has changed and then you’re set when you file the RCE.
This comment surprises me.
I used to submit after-final amendments that, I believed, made some progress in the case. Almost uniformly, examiners refused to enter them because they “raise new matters of patentability that would require a new search.”
The only after-final amendments that I’ve had accepted were those involving a clear agreement with the examiner about allowable claim language. And even a few of those instances led to a rejection of the claim amendments because the examiner had a spontaneous change of heart (or their SPE balked at an allowance).
To demonstrate just how severely this concept is applied:
I once received a final rejection reading: “Your claims recite a ‘horizontal element width’ of a ‘horizontal element,’ but I think it makes more sense to call this a ‘vertical width’ – i.e., the width, measured vertically across the horizontal element. I’m applying that interpretation in my rejection.” En route to an appeal, I submitted a claim amendment changing the term “horizontal element width” to “vertical width,” exactly as the examiner suggested – and the examiner rejected it as “raising new issues of patentability.”
I used to submit after-final amendments that, I believed, made some progress in the case. Almost uniformly, examiners refused to enter them because they “raise new matters of patentability that would require a new search.”
They would be correct to do so. The time to “make progress” is in the amendment. After final isn’t meant to be another amendment, that’s what the RCE is for. An after final is largely to accept identified allowable scopes (i.e. not make progress but “actually solve”) or to clear small issues en route to an appeal. If you submit an amendment after final that adds a limitation to get around art (which I assume is what you mean by “make progress”) what you’re really doing is forcing the examiner to conduct a new search (as he can’t tell you whether the amended limitation has been done before without searching it) and thus you’ve increased the issues in the case, not decreased them. The examiner isn’t awarded any time for doing an after final, which means any action by you that would cause a search to happen would definitely require an RCE.
The only after-final amendments that I’ve had accepted were those involving a clear agreement with the examiner about allowable claim language. And even a few of those instances led to a rejection of the claim amendments because the examiner had a spontaneous change of heart (or their SPE balked at an allowance).
Correct. Well, they shouldn’t be telling you something is allowable without prior SPE approval, but otherwise correct. The only after finals that I allow are to fix small 112, 2nd issues or to move up allowable claims into the independent.
I submitted a claim amendment changing the term “horizontal element width” to “vertical width,” exactly as the examiner suggested – and the examiner rejected it as “raising new issues of patentability.”
That is rather rough, I would have allowed it given what was said, but I can also understand looking at it like this: If the examiner just said he was interpreting it one way without issuing a rejection on it (i.e. without making a formal objection on the term or a 112 rejection to the claim) then any attempt to change the term could be seen as an attempt to modify the meaning. In other words, if your intention was to have agreement on the interpretation of the value, then non-entrance preserved that meaning while entrance might have disturbed it somehow – maybe he was going by “don’t try and fix what isn’t broken”?
You misunderstand my statement.
Google argues that (1) an API is a system or method of operation like the double-entry accounting system in Baker, separable from Selden’s particular expression of the system, and not copyrightable subject matter under 102(b), and (2) if the API is not so separable, then the idea and expression of the API are “merged.”
The Question Presented as Google expressed is directed primarily to (1).
My understanding of Paul’s suggested question presented is that is directed primarily to (2) and probably concedes (1).
Oops. In response to anon at 1.1.1.1.1.1.2.
Thanks Lurk,
But I do not misunderstand your statement and do understand ‘arguing in the alternative.’
The point remains though that merger precludes any attempt at making – de facto – the thought that an item is directed to a system or function, that that same item cannot have aspects that can be protected by copyright. Such is the equivalent of not having a merger doctrine at all.
Heh. C’mon, anon, make the leap from monochrome to 32-bit … the grass really is (many different shades of) greener over here.
The conclusion says “That said, the Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as ….[old cases cited].” Festo is the definitive decision on disclaimer, and in that case the Supremes narrowed the scope of the disclaimer (and created some exceptions), over what the Federal Circuit had held it was.
I was wondering about that too. Festo pretty much is the standard. Pre-1952 cases? Seriously? Congress needs to wipe the SCOTUS cases.
It reminds me of reading Chisum on Patents. Many concepts are introduced using cases that are well before the CAFC or even the CCPA, and of limited to no use. I think it’s just laziness on the part of the authors.
In this case, though, I also thought that Festo was the latest word so far on this topic.
It will be interesting to see whether the Supreme Court agrees with you that its pre-52 decisions are no longer relevant. For the most part, those decisions tend to be much less pro-patentee than later decisions – certainly when comparing them against Federal Circuit determinations.
It should be vederi, nor veredi.
Thanks. Fixed that.
[…] Google Looks to Narrow both Copyrights and Patents through Supreme Court Action […]
The Google v. Veredi cert petition raises the interesting legal research question of “what is in a name,” as the Fed. Cir. and its predecessors moved over the years from “file wrapper estoppel” to “prosecution history estoppel” to “clearly expressed forfeiture” [in the en banc Phillips decision].
P.S. did the Sup. Ct. ignore “file wrapper estoppel” in Graver Tank?
Yes. At least I always thought so.
The Google v. Oracle cert petition “question presented,” does not make copyright sense and is not the real issue in the case. But the odds of this petition being granted anyway seem significant in view of the alleged great commercial impact on the software industry, presumably including all Android-using phones and tablets, which are the majority of all smart phones and tablets.
The following and other parts of the cert petition brief [plus amicus briefs] get to the real alleged copyright law issue – copyrighting of functionality, for an alleged essential method:
“Because those programmers know and often prefer to use the [ubiquitous]
Java programming language, Google concluded that programmers “would want to find the same 37 sets of functionalities in the new Android system callable by the same names as used in Java.” App. 9. For those shorthand commands to work on the Android platform, Google had to replicate the method headers precisely; any change to the headers would have prevented the shorthand commands from working properly. App. 109–10. As the district court found, therefore, “Android and Java must be identical when it comes to those particular lines of code.” App. 109. .. Google replicated only the[se] method headers, [not the] body of each method (the implementing code)..”
P.S. Could the authors of the “question presented” have possibly simply made a typographical error in leaving out the word “not” before “have”?
Google’s point is that if the API is copyrightable, then the copyright effectively swallows all possible implementations of the functions that comprise the API. Those implementations can be written in more than one way and would include works that were never written (i.e., not fixed in a tangible medium).
? I still think the “issue presented” could have much been better written more along the lines of the above-quoted section of the petition brief. A copyrighted expression is not a generic patent claim that “swallows” later different expressions or methods, it only protects from copying that same specific expression. What is really being asserted here is that these particular expressions are not copyrightable subject matter because they are utilitarian functional expressions for which there is NO other (NON-different) way they can be expressed without destroying their function and utility.
A problem with presenting the question that way is that it too narrowly defines “function and utility” as “interoperability with Java.”
It is undeniable that Google could have implemented those functions without copying the Java API without “destroying their function and utility”–they just wouldn’t have been *as* useful.
And thus, it was found, that merger was not reached.
Is Google really merely saying “was too”…?
I think so.
Google’s primary argument is that, even if it is an original work of authorship, the API is excluded under 17 USC 102(b) as a system or method. Merger is the alternative.
I do not think that “it’s a system” and “merger” can be alternatives.
The very nature of what “merger” entails means that things that are not totally merged – things that are systems or that do have some aspects of functionality – still have aspects for which copyright protection is allowed.
Your statement seems to say that Google is seeking a complete disjunct between anything with any functionality and anything with any expressive element.
The law – as written – simply does not support that view. Such an argument is frivolous on its face.
The copyright for the API could pre-empt that feature for 95 years, much longer than the dastardly would-be-monopolist-patentee might have pre-empted it if not eviscerated by Alice.
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