This week’s decision in DET v. GOOGLE focuses on patent eligibility of a muti-sheet spreadsheet displayed with notebook tabs. The case is reminiscent of a 2014 Patently-O post by Howard Skaist written in the still roiling wake of Alice and Mayo. In his post, Skaist considered ways that the inventor of VisiCalc (Dan Bricklin) might have claimed the computerized spreadsheet he first created in 1979.
Skaist’s claims (proposed as thought experiments):
1. A method comprising: implementing a spreadsheet on a computer.
2. A method comprising:
generating and displaying a matrix of cells comprising an electronic spreadsheet on a computer, said electronic spreadsheet to implement on said computer one or more user-specified mathematical operations in which one or more operands for said one or more user-specified mathematical operations are to be entered in particular cells of said matrix and results of performing said one or more user-specified mathematical operations on said one or more operands are to be displayed in other particular cells of said matrix; and
displaying on said computer, in said particular cells and in said particular other cells, after said one or more operands are entered, said one or more operands and said results of performing said one or more user-specified mathematical operations on said one or more operands, respectively.
3. The method of claim 1, wherein said results of performing said one or more user-specified mathematical operations on said one or more operands comprise one or more operands of one or more other user-specified mathematical operations either with or without displaying said one or more operands of said one or more other user-specified mathematical operations in cells of said matrix.
In some pre-Bilski writing, Dan Bricklin explained why he didn’t actually try to patent the spreadsheet. His basic answer — the invention was made in the wake of Flook and pre-Diehr — software wasn’t patentable at the time. “If I invented the spreadsheet today, of course I would file for a patent. That’s the law of the land…today.”
The idea to get rid of § 101 is not a good one. § 101 is essential as a subject matter to filter out the fine arts, social sciences, etc.
Think about Beethoven’s 5th Symphony in 1808. Novel for § 102 purposes? Yes. Nonobvious? Yes. Enabled? Beethoven’s full score allows performance without undue experimentation (if you can read his handwriting). Written description? Yes. Utility? We allow aesthetic function to satisfy § 101 utility in some circumstances (the Virginia Slims “elegant appearance” cigarette case, for example).
We’re all so used to seeing only what’s patentable under current law that we forget that there’s lots of other stuff in the world that is well outside the realm of the patent system.
Also, the spreadsheet was patented, In re Pardo link to scholar.google.com The patent was held unenforceable by District Judge Sonia Sotomayor on facts run down by David Boundy. link to scholar.google.com and affirmed in REFAC v Lotus link to scholar.google.com
I do not know whether it is impressive — or impressively sad — to consider the contortions on patent eligibility for a form of innovation that began so long ago, and that STILL draws disdain.
Thanks for the links – enjoyed reading the items.
You gave pretty short shrift to utility, which knocks out just about everything you are concerned about.
I still have not seen a set of claims that Alice invalidated that 103 or 112 would not have sufficed to invalidate.
I don’t think that he gave short shrift to utility at all.
He focuses on utility vis a vis the Useful Arts, and while not explicitly using the term, does show how expansive that concept may be with a nod to “aesthetic function” edging away from pure non-Useful Arts. He does not reach the conclusion with Beethoven’s works, which is perhaps a bit of a drawback on his post, but all in all, it’s far better than the usual anti-patent swill that one often sees.
(to be clear, the often seem swill is from others)
I read through the 4,398,249 patent and the legal documents. I have not run the program, to which I have no access. Long ago I used the GE400 for some undergraduate assignments. I have some concept of the computing environment.The claims do not really protect aspects of a spreadsheet of the VisiCalc type.
[VisiCalc was first released in 1979 to run on the Apple II and is conceptually the ancestor of all spreadsheet programs currently in use.]
Pardo seems to have obtained a patent, whose claims protect a multipass Domain Specific Language compiler, whose output object program implements a custom software business calculator specified by the programmer.
The claims mostly protect applied mathematics of compiler construction and of symbolic computation with a dash of praxis (well-understood, routine, conventional activity, to wit, “do it on a computer”).
It is hard to argue that an invention consisting of mathematics + praxis should be 101-eligible. Some patent professionals here in Boston believe really hard mathematical results should be § 101-eligible, but it is hard to know which mathematical results should be considered really hard.
I agree totally with David Boundy that § 101 is essential. I could be wrong, but the real problem with current § 101 doctrine is simply inconsistency.
Because of the inconsistency, lower courts can now issue a judgment of invalidity in practically any case in patent law and still claim to be following guidance of the Supreme Court. Analyzing the plain meaning of Alice indicates complete obliviousness of the Court to the inconsistency of the Alice/Mayo two-part test with Mayo.
I explain in Did SCOTUS Botch Its Own Test in Mayo v. Prometheus and Break the US Patent System?
The above essay is short but unfortunately uses mathematical symbols.
While I understand Mr. Skaist’s thinking at the time, I don’t believe any of these claims would be patent eligible under current jurisprudence. Of course, claim 1 is right out. But for claims 2 and 3, the sole steps performed are “generating and displaying a matrix of cells,” and “displaying results of operations.” The remaining additional limitations on what the matrix is intended to implement or what the user-specified mathematical operations could include are non-functional in the claim, and would be disregarded like the additional limitations in Electric Power Group.
Specifically, in line with both the DET decision and other decisions we’ve seen both confirming eligibility or rejecting it, these example claims recite a result, but not how to achieve that result – they’re claiming the solution, but not the implementation – and are therefore almost certainly ineligible.
An improved claim would require details about how those calculations are performed or how cells are selected for the display of calculation results. In particular, spreadsheets are not just a simple matrix of cells, but really can be considered two matrices – the first includes the formulas and references to other cells, while the second includes the output of the calculation from the first, which is what you then display (it could also be done as a single matrix of cells, but with each cell having two data values, one for the formula and one for the output). If you don’t do it that way, then when you go to calculate the results, you overwrite the formula in the cell, making it impossible to recalculate.
These claims don’t address the problems of actually making a working electronic spreadsheet and thus don’t claim an implementation, but rather just claim the solution of having a working spreadsheet.
If someone says, “gosh, wouldn’t it be nice if we had [x],” you could immediately write a claim that says “a method, comprising providing [x]” or “displaying an electronic [x]” or “receiving data [y], and then using [x] to generate results.” But of course, you haven’t actually invented anything yet – you’re just reciting solving the problem that they proposed, which you could do as soon as you identify the problem. And even if you do eventually come up with an implementation, if your claim could be written by someone who doesn’t know any of those implementation details, it’s probably only claiming the solution.
Specifically, in line with both the DET decision and other decisions we’ve seen both confirming eligibility or rejecting it, these example claims recite a result, but not how to achieve that result – they’re claiming the solution, but not the implementation
As far as I know (happy to be proven wrong), none of the pro-software patent CAFC cases has ever recited in the claims an actual working “implementation” of anything. It’s always the solution that is being claimed. Sure, maybe there is some reference to an ineligible data table, but that’s not an “implementation”. The coding (i.e., the actual work, the implementation) is always left to the programmer who can “implement” the “solution” in any manner he or she chooses (the details will always depend on the operating system and computer language). It’s the solution that will get the software developer in trouble with the patent system, not the actual “implementation” because there are no actual “implementations” recited in the claim.
Even cases which recite actual working implementations in the specification are incredibly rare in the “do it on a computer” “arts”.
You are confusing the legal requirement of enablement with some (not there) engineering level documentation. Patents are legal documents – not engineering documents. Clearly, this is something that you should know full well.
…additionally, you can thank the Supreme Court for their efforts to super empower PHOSITA, which even more accentuates the difference between a legal document and an engineering document. See KSR.
Meet “anon”, serving up nothinburgers for a decade.
There’s plenty of engineering details in the grown up arts, Billy. Nothing about “legal document” that precludes detail in a claim or spec. Also written description is still a thing the last time I checked, and if you want to admit that everything in the logic arts is enabled then don’t be a hypocrite when the prior art comes down on you like a sledgehammer.
Lol
Jk on that last part. You’ll always be a hypocrite.
You are still confused and your pointless, mindless, and misaimed ad hominem does not change that.
Maybe address the actual point of my post instead of kicking up dust on something that I did not say…
In your proposed claim 3, as an examiner, I love when attorneys get so lost in their cleverness and attempts to claim broadly that they include phrases like “with or without displaying,” as I can ignore it because the prior art clearly either does or does not display. Those two options cover the entirety of the world of options, and thus do not limit the claims one iota.
*when I say “ignore” the claim limitation, I mean that I will discuss the limitation in the rejection, but conclude that the limitation covers all possibilities, and that my other art clearly either does or does not display the operands, or that it would have been obvious to either display or not display the operands, as there are no other options.
101 is just so off the rails these days. 112, 102, and 103 are more than sufficient for any of the so-called judicial exceptions.
Law of nature or naturally occurring? 102. Anticipated by nature.
And “preempting” a whole field? Then how did they get a patent? Did that whole “field” exist prior to the invention? If it existed, then you have prior art to invalidate the claims that would “preempt” or cover the whole field, including the parts that already exist. So use 102 or 103.
Vague, broad, and indefinite computer claims that are at a very high level? Use 112 and reject based on lack of showing that inventor had possession of the invention, or that the specification isn’t enabling. Or if the broad specification is argued as enabling “one of skill in the art,” then the examiner can turn around and use that impressive skill in the art in a 103 rejection to show that the invention was obvious to that talented person of skill in the art that can program any concept you throw at them.
Anyway, I think at this point we’re better off getting rid of 101 altogether. I don’t really see how it changes what is patentable (other than what the judges and PTO have written into the law, which is a whole lot).
I think at this point we’re better off getting rid of 101 altogether.
Section 101 contains the “useful” requirement. The patent act would not be constitutionally supportable if there were no utility requirement. Maybe we could get rid of the rest of §101, but we need that “useful” bit.
,,or we can just remove the scrivining gloss of the Supreme Court and return to the actual words of Congress that set out two — and only two — (intentionally low) bars to entering the patent system:
1) the utility you mention (having utility within the Useful Arts)
2) the innovation being portrayed in at least one of the statutory categories.
That
Is
All
That
Is
Needed
Since the Court will not on their own accord respect the word of Congress, Congress needs to exercise its Constitutional Authority of jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court.
A bonus here is that the patentlyo link has within its comments some of my details of just how Congress could go about this.
. . . but, useful to who? for what?
Everything is useful for something . . . to someone.
Isn’t it?
t’man is correct. 101 needs to be removed.
LOL
Have fun with this j0 ker, Greg.
Easy enough to modify 35 USC 100 to define “patent eligible invention” as an invention or discovery** within the Useful Arts.
**to preserve another part of 35 USC 100.
“Dan Bricklin has explained why he didn’t actually try to patent the spreadsheet. His basic answer — the invention was made in the wake of Flook and pre-Diehr — software wasn’t really patentable. “If I invented the spreadsheet today, of course I would file for a patent. That’s the law of the land…today.””
This of course flies in the face of those who think that the Supreme Court does not WRITE patent law (and the ensuing silence as to violations of separation of powers that any such WRITING entails).
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