decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


Contact PJ

Click here to email PJ. You won't find me on Facebook Donate Paypal


User Functions

Username:

Password:

Don't have an account yet? Sign up as a New User

No Legal Advice

The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

Here's Groklaw's comments policy.


What's New

STORIES
No new stories

COMMENTS last 48 hrs
No new comments


Sponsors

Hosting:
hosted by ibiblio

On servers donated to ibiblio by AMD.

Webmaster
Bilski - What It Means, Part 4 - The Microsoft Brief - Updated
Wednesday, November 12 2008 @ 06:48 AM EST

I said I'd write next about Microsoft in my series of articles trying to explain what In Re Bilski means. I also said it would be the last in the series, but it's not. I'm sorry it took me so long, but I decided as I was constructing the article that without the full text of the amicus brief Microsoft filed in the Bilski case, it was almost impossible to be comprehensible. So I took the time to do the text version of the PDF. You'll also want to have the decision [PDF] itself handy. The text version we did of the Bilski decision is here.

The Microsoft brief was filed along with Dell and Symantec, and it's an attempt to get the court to deny the Bilski claims while at the same time trying to keep the court from going all the way and deciding software should not be patentable. There are some logic bumps along the way, as you will see. The court diverged from Microsoft's argument about three-quarters of the way through, and it didn't directly address software patents, except in one footnote, mainly because Bilski wasn't about software. So it left unaddressed Microsoft's chief argument about why software should patentable, namely because of what it does to a computer. There will be future cases, though, that certainly will be on this point, so it seems a good time to point out everything we can think of to help the court understand what's wrong with the Microsoft-Dell-Symantec position. I'll start, but jump in any time. You'll see more than I will, since so many of you are programmers.

I'm smiling already just thinking about it. Anyway, what I thought would be just one article is now two, because of the length. Here, I'll just address what I understand Microsoft's arguments to be and what a "particular machine" is to Microsoft. I'll save the part about what it may mean for Microsoft's threats against Linux for the next article.

But you can get a hint from the opening words on page 1:

Amici both own process patents and are frequently defendants in suits alleging infringement of such patents owned by others. They thus have a profound interest in the standard that governs whether such patents claim patent-eligible subject matter.
So Microsoft acknowledges that some of its patent portfolio, if not all of it, is made up of process patents. So its arguments involve efforts to distinguish what it owns from Bilski's claims. Here's the main difference, to Microsoft's way of thinking, on page 3 and 4:
These principles are easily applied to the process claims at issue here, which can be construed to consist of nothing more than "mental steps" that neither effect a transformation of physical subject matter nor are tied to a specific apparatus. Such "mental steps," divorced from any physical foundation, do not constitute a patentable process. In contrast, when a series of steps is tied to a particular apparatus or effects a transformation of physical subject matter, and produces a useful, concrete and tangible result, a patent-eligible invention under Section 101 has been claimed. As applied to software-related inventions, these fundamental principles lead to the following conclusions:
  • Computer-implemented processes that produce useful, concrete, and tangible results are patent-eligible subject matter for at least two reasons: (1) they are tied to the use of a specific apparatus -- a programmed computer, and (2) they effect a physical transformation, specifically, the transformation of physical subject matter (e.g, electrical or electromagnetic signals) into different physical subject matter.

  • A computer that has been programmed to implement particular software instructions is itself patent-eligible subject matter, i.e., a machine. It has distinct physical properties relative to an unprogrammed, or differently programmed, computer.

  • This does not mean that an unpatentable abstract idea can become patentable merely by reciting that a computer should be used. Although such a recital may satisfy Section 101, that is only the first step on the road to a patent. Concerns with respect to the patentability of claims that include only general references to a computer or other apparatus are properly addressed not by engrafting unwritten requirements onto Section 101, but rather by rigorously enforcing Sections 102, 103, and 112.
So, their argument in essence is that Bilski isn't tied to a particular machine, and it doesn't transform any physical thing, so it's merely mental steps, abstract ideas, and that's not patentable. So far, the court agreed with them.

But did you notice the part about a particular apparatus? That's where we start to stub our toes on the first logic bump. A programmed computer is different from one that isn't programmed, according to Microsoft: "It has distinct physical properties relative to an unprogrammed, or differently programmed, computer." Say, what? Well, Microsoft argues, it goes like this, beginning on page 17 and then jumping to page 20:

Before software can be contained in and continuously performed by a computer, an actual physical embodiment of the software must be delivered by CD-ROM or some other means capable of interfacing with a computer. See Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746, 1756 (2007). This is in contrast to the concept of software detached from any physical embodiment or activating medium, which, at that basic level, is merely a set of instructions....

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." Alappat, 33 F.3d at 1545; see also Aristocrat Techs. Australia Pty. Ltd. v. Intl. Game Tech., No. 2007-1419, slip op. at 8 (Fed. Cir. March 28, 2008). The fact that the program software, divorced from the computer or other physical medium, might be termed an algorithm or might incorporate mathematical concepts is irrelevant. All machines operate pursuant to algorithms, and computers are no different. Once the algorithm or software takes physical form as part of a computer (or other machine), Section 101 is satisfied, for "a computer ... is apparatus, not mathematics." Alappat, 33 F.3d at 1545; cf. Microsoft Corp. v. AT&T Corp., 127 S. Ct. at 1750 (machine within scope of patent's apparatus claim is created when computer is programmed with software).

Does *all* software programmed into a computer via a CD, then, create a particular machine or apparatus? Wait, don't laugh yet. It gets better. There's a footnote, footnote 4 on page 20:
4 This analysis rests on a solid technological foundation. When a program is installed on a computer, the program instructions change the machine's physical structure by aligning pairs of bands of magnetically-charged particles on the hard disk, with each pair corresponding to a "1" or "0" of the object code and causing one of the processor's internal switches to open or close. Ron White, How Computers Work, 144-45 (8th ed. 2006).
Voila, ladies and gentlemen: a transformed machine! Now it's patentable! What? You say that what Microsoft is wishing to patent is the software, not the hardware? And that such a transformation as this isn't the part that matters to the patent? That those whirring 1s and 0s are tangential? And that by Microsoft's definition all software would be patentable, since it all runs on a transformed machine, since all software creates 0s and 1s? Quibble, quibble. Yet if you noted in the Bilski ruling, in the footnote 23, the court said clearly that not all software is patentable. At least, that is how I read this sentence:
Thus, the facts here would be largely unhelpful in illuminating the distinction between those software claims that are patent-eligible and those that are not not.
So I don't think software that makes a computer hum is quite enough. And what was that about electricity being patentable? Phenomena of nature are not patentable, you raise your hand to say? True, but if you use electricity in a process that changes something, then it is, Microsoft points out. And the Bilski ruling concurs:
After all, even though a fundamental principle itself is not patent-eligible, processes incorporating a fundamental principle may be patent-eligible. Thus, it is irrelevant that any individual step or limitation of such processes by itself would be unpatentable under § 101.
So, is the software math? Or an individual step in a process that is patentable because it's tied to any old computer? Samuel Morse attempted to broadly claim any and all uses of electromagnetism in connection with telegraphy, Microsoft points out on page 8, which was denied:
In this sense, the Benson claims suffered from the same defect as Samuel Morse's broad claim to any use of electromagnetism to produce signs for telegraphy, which the Court rejected in O'Reilly v. Morse, 50 U.S. 62 (1853). Just as Morse's eighth claim sought to patent a fundamental principle without tying it to specific process steps or a specific apparatus, so too did the claims in Benson seek to patent an abstract idea, a mathematical algorithm. Morse, however, unlike Benson, also claimed specific physical process steps and an apparatus, which made his other claims patentable. Id. at 123. It was in this context that the Court in Benson, relying on its 19th Century precedents concerning "arts" or processes, explained that the "clue to patentability" of a process claim is that the process as claimed must be "tied to a particular machine or apparatus or must operate to change articles or materials to a 'different state or thing.'" 409 U.S. at 70-71.
So, suppose Morse had described in minute detail all known steps in all known processes involving the use of electromagnetism in telegraphy, then could he patent all known uses of electromagnetism to make signs in telegraphy? Or instead, perhaps he could patent electromagnetism by attaching it to a computer process? Now what have you done? Given one man control of electromagnetism in an entire field. Happily, Intellectual Ventures didn't exist back then, or they'd have tried to find a way, I've no doubt. But what happens to the world when an entire field of activity, including a process that includes a naturally existing phenomenon, is controlled by one person or one company?

All software does is make a computer achieve a particular effect, Microsoft argues, so even if software on its own isn't anything but math, and hence not patentable, if you use it to make a particular apparatus do useful things, then it is. See?

Wait, wait, don't tell me...

The problem is this: Microsoft wants to patent the software, not the combination of software and hardware. It uses the math or algorithm, which isn't patentable on its own, but finds a way via a back door, by calling it a step in a process that is patentable? But that's patenting the math. Because if I try to use that math or that algorithm, they'll send lawyers after me for infringing their patent, one assumes.

Now, if Microsoft wants to patent the Xbox, fine with me. But if it wishes to patent just the software, the math that makes the Xbox run, but not the combination of the two, is that OK? See the logic problem? Just exactly what is a *particular* machine, anyway? I asked a programmer to tell me what I'm missing here. He wrote this, in part:

What do you do about the usual loophole that lets people patent math by patenting all instances of the abstraction while claiming this is not patenting math because the mental process is not patented? Eventually patent lawyers will figure it out. The court left the loophole because they didn't see it. Or perhaps they didn't have enough facts in front of them to see why they needed specificity on transformative processes. They thought specificity on the machine part of the test was sufficient. I think this mess follows from a lack of understanding of abstraction, otherwise the loophole would have been obvious.

From my layman point of view I would bet the court will eventually extend the requirement of specificity to transformative processes. Specificity is the opposite of abstraction. Mathematics is about abstractions and by definition abstractions are not specific. When the patent is so broad as to be equivalent to patent all instances of a mathematical concept or formula, then it is not specific enough.

On page 15, Microsoft argues that all patentable inventions, whether process or not, "must be physical in nature" -- hence the 1s and 0s argument -- and/or it has to be tied to "a particular apparatus or effect a transformation of physical subject matter". So, how does XML transform physical subject matter? No. Really. Be specific. Microsoft has a patent on XML, does it not?

OK. Is it enough, then, to obtain a patent to just say that your process or abstract concept "runs on a general purpose computer"? That's what XML runs on. Microsoft's answer to that thorny question:

Moreover, to ensure that a claim to what appears to be patent-eligible subject matter is not in reality a claim to an abstract concept, the claimed invention must produce a "useful, concrete and tangible result."

Unfortunately for Microsoft, that's exactly the language that the court just tossed out of the lifeboat, to a watery death in the deep. It said this:

Therefore, we also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.
So, where does that leave Microsoft's argument? Without some essential underpinning, I'd wager. Even if that language hadn't been thrown out, there's another logic problem, because Microsoft admits that Bilski's claims might actually be useful, on page 16:
Measured against these principles, the Bilski claims plainly do not describe patent-eligible subject matter. The claimed invention, although it may have some practical utility, encompasses an abstract concept. It is neither tied to a particular apparatus, nor does it transform physical subject matter. It is thus indistinguishable from the inventions in Flook, Schrader, Comiskey, and other cases which involved arguably useful concepts where the claims when properly construed were wholly lacking in physical substance.
So it has to be useful *and* meet the other two prongs, according to Microsoft. The useful test isn't stand-alone. It's just what you can use to double check your work. It doesn't matter, in the sense that the court threw out the "useful blah blah" language that Microsoft relies on, but here it argues that being useful isn't enough anyway. The invention has to meet the other two prongs, which are the two that the court in fact accepted as being the only two. Why does it matter? It doesn't, except that it's the kind of difficulty you can get into when your position doesn't actually make sense. If you need the test of usefulness to make sure you are not actually patenting things that you shouldn't, and that test just got thrown overboard, now what?

Look at this, too, on page 26, where Microsoft actually quotes from a case that said that a general purpose computer *isn't* enough to make a process patentable:

In such cases, "this court has consistently required that the structure described in the specification be more than simply a general purpose computer or microprocessor." Aristocrat Techs., slip op. at 7. Instead, Section 112 requires that such claims be supported by disclosure of specific structure or specific steps that will produce the claimed result, not merely by a general reference to a computer or microprocessor, as in Comiskey. See, e.g., id., slip op. at 7-12; Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005); WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). If the specification fails to provide this disclosure, the claim is invalid. See Aristocrat Techs., slip op. at 4, 7-16 (disclosure of "a standard microprocessor-based gaming machine with 'appropriate programming'" is not sufficient)...
Does that mean that if you are careful to be very specific in your patent application, outlining all the steps your software will take, then all software is patentable? To Microsoft, it seems so. If Bilski had written up his claims so that they were not just abstract ideas but abstract ideas performed by software -- computers can do simple tasks too, after all -- and the software ran on a general purpose computer, would it transform the 1s and 0s, according to Microsoft's description, sufficiently so then it would be patentable? Idiotic, but I think if I follow Microsoft's reasoning, that is the only conclusion I can reach. How can something abstract be patented at all?

The ruling by the court told us what Bilski's claim 1 was:

Claim 1 reads:

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter- risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

Now, apply Microsoft's logic to that, imagining that they wrote up the software that makes the above process happen using a computer. Is it patentable now?

Yes, I'm laughing, but what else can Microsoft argue? They have to tie software to the two prongs -- that it's tied to a particular machine and/or it transforms something physical. Here's my question: if the transformation is just 1s and 0s, what *isn't* physical transformation? And pray tell: what is the transformation that Microsoft Word achieves in those mysterious computers' innards? And all software runs on computers. So if a general purpose computer will do, then it's all patentable, assuming it's not obvious and there's no prior art. See the problem? Microsoft argues:

As for process inventions, the "clues" to their patentability are well settled and directly applicable to software-implemented processes. At the most basic level, a classic industrial process, like the rubber-curing process in Diehr, that is implemented using computer software plainly "is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing)."
So, what is the transformation of an article to a different state or thing with the software Microsoft sells as Microsoft Word? On page 26, Microsoft tries to deal with the question they evidently discern the court by then might be thinking:
The cases in which the "useful, concrete and tangible" phrase originated -- Alappat, State Street, and AT&T Corp. v. Excel Comms., Inc., 172 F.3d 1352 (Fed. Cir. 1999) -- all involved claims with physical limitations that satisfied the essential requirement of Section 101 as articulated by the Supreme Court. As the Supreme Court also made clear, however, physical limitations do not necessarily satisfy Section 101, if the practical effect of allowing the claim, viewed as a whole, would be to grant patent rights on an abstract idea or fundamental principle. See, e.g., Diehr, 450 U.S. at 191; Flook, 437 U.S. at 590; Benson, 409 U.S. at 72-73. Thus, where a process claim incorporates an abstract idea or fundamental principle, Section 101 requires confirmation that the claim is not simply a dressed-up version of that idea or principle -- that is, does the claimed process, viewed as a whole, have specific, practical utility? See, e.g., Diehr, 450 U.S. at 187. This Court's "useful, concrete and tangible" formulation is a useful analytical tool to confirm that an invention that is sufficiently physical in nature is indeed patent-eligible under Section 101. It does not, however, function as a stand-alone test or alternative to the requirement that a patent-eligible invention have a physical foundation.
The problem Microsoft has now, post Bilski, is, as we said, that that language is no longer good law. The Bilski ruling got rid of it, and that means the test Microsoft offered as the way to know if an abstract thought or fundamental principle had been dressed up into an improper claim is not available. So, now how do we know? We don't. And so how will you protect math and algorithms that shouldn't be patented from being patented? You tell me. The arguments from Microsoft hit the wall and that's the end.

This court chose not to address the issue of what constitutes a particular apparatus. But it did say this:

We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.
That is where this court seems to feel one should draw the line, letting folks patent pretty much anything as long as it's tied to a particular apparatus and/or that it transforms something into something physically different. It imagines that this will protect fundamental principles from becoming monopolized. The problem with the apparatus part of the standard is that if you say a general purpose computer is a "particular apparatus," simply because you've programmed it (as if a computer is ever not programmed with software), I think it won't be long before no one can write software at all any more. The court doesn't yet see that.

The fact that I find Microsoft's argument ridiculous doesn't mean the court will.

[ Update: Another programmer sent me an analogy I'd like to share with you:

Programmers are musicians; a computer is an instrument. The concept of programs are the same concept as music and song.

The source form of a program is like sheet music.

In binary form stored on a specific media (which is how binary form must be stored) it's like the music stored on to a vinyl record, or an 8-track cassette, or DAT, or any other directly playable music storage media.

A CPU is like a brass horn; using the buttons on the horn you could represent the 1's and 0's in memory and blowing air through the horn would be like providing electricity to a CPU so it can execute that instruction. Creating a mechanism to take in sheet music and automatically press the buttons while blowing the air would be a CPU executing software.

An orchestra with all its various instruments would be the full computer as we know it.

You can patent a specific horn (CPU).

You can patent a specific button (types of memory).

You can't patent a musical note (the specific combination of 1's and 0's that form an instruction).

You can't patent a song (a series of instructions).

You can't patent a type of song (my understanding of what software patents try to be).

The full execution of software on a general purpose computer is an orchestra of many self-playing instruments executing several compositions.

Each part of the orchestra executing its own part of the symphony (or, jokingly, cacophony when things go wrong).

Using his analogy, then, Microsoft wishes to patent a song and/or types of songs. It tries to do so, by its argument, by saying that the full symphony can't happen separately from the physical instruments, so it's a machine, something tied to a physical apparatus. And it's a transformed machine, because you can make a player piano bang on the keys or something. I'm sure they can come up with a more sophisticated explanation of how the instruments are physically changed by being played, actually -- after all, if you play them long enough, they wear out eventually, so that proves transformation -- but my capacity for silliness is finite, and I've reached my personal limit. - End update.]

*************************

No. 2007-1130

______________________________________

IN THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

_____________________________________

IN RE BERNARD L. BILSKI AND RAND A. WARSAW,

Petitioners.

_____________________________________

Appeal from the United States Patent and Trademark Office,
Board of Patent Appeals and Interferences

______________________________________

BRIEF OF AMICI CURIAE DELL INC.,
MICROSOFT CORPORATION, AND SYMANTEC CORPORATION
IN SUPPORT OF NEITHER PARTY

_______________________________________

Carter G. Phillips
Jeffrey P. Kushan
SIDLEY AUSTIN LLP
[address, phone]

Constantine L. Trela, Jr.
Richard A. Cederoth
SIDLEY AUSTIN LLP
[address, phone]

Counsel for Amici Curiae

CERTIFICATE OF INTEREST

Counsel for Amici Curiae certifies that following in compliance with Federal Circuit Rule 47.4:

1. The full name of every amicus represented by me is:

Dell Inc.
Microsoft Corporation
Symantec Corporation

2. The names of the real parties in interest represented by me are:

None.

3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the amici curiae represented by me are:

None.

4. X There is no such corporation as listed in paragraph 3.

5. The names of all law firms and the partners or associates that appeared for the amici now represented by me in the trial court or agency or are expected to appear in this Court are:

Carter G. Phillips
Jeffrey P. Kushan
SIDLEY AUSTIN LLP
[address]

i

Constantine L. Trela, Jr.
Richard A. Cederoth
SIDLEY AUSTIN LLP
[address]

Date: April 7, 2008.

Respectfully submitted,

Constantine L. Trela, Jr.
SIDLEY AUSTIN LLP
[address]

Counsel for Amici Curiae

ii

TABLE OF CONTENTS

TABLE OF AUTHORITIES ....................................................................................iv

STATEMENT OF INTEREST OF AMICI CURIAE ................................................1

INTRODUCTION .....................................................................................................2

DISCUSSION ............................................................................................................4

I. BASIC PRINCIPLES GOVERNING APPLICATION OF SECTION 101. ................................................................................................4

A. The Statute And Early Precedent. .........................................................4

B. These Fundamental Principles Continue to Apply in the
Modern Electronic Age. ........................................................................7

1. Gottschalk v. Benson...................................................................8

2. Parker v. Flook ...........................................................................9

3. Diamond v. Diehr......................................................................10

4. This Court's Application of Benson, Flook, and Diehr............12

II. APPLICATION OF THE SECTION 101 PRINCIPLES..............................16

A. The Requirement of Section 101 That a Patent-Eligible
Invention Be Physical Is Satisfied by Computer Software-
Implemented Processes and Programmed Computers Operating
Pursuant To Software Instructions. .....................................................18

B. The Court Should Make Clear That "Useful, Concrete and
Tangible" Is Not An Independent Test Under Section 101. ...............21

C. Concerns With Respect To Claims That Include Only General
Recitations of Structure Are Properly Addressed Under
Sections 102, 103, and 112, not Section 101. .....................................24

III. ANSWERS TO THE COURT'S SPECIFIC QUESTIONS. ........................27

CONCLUSION........................................................................................................29

iii

TABLE OF AUTHORITIES

CASES

In re Alappat,
33 F.3d 1526 (Fed. Cir. 1994) (en banc) ......................... 7, 14, 15, 20, 21, 23, 27

Aristocrat Techs. Australia Pty. Ltd. v. Intl. Game Tech.,
No. 2007-1419 (Fed. Cir. March 28, 2008)..................................................20, 26

Arrhythmia Res. Tech., Inc. v. Coranozix Corp.,
958 F.2d 1053 (Fed. Cir. 1992) ........................................................14, 18, 19, 20

AT&T Corp. v. Excel Comms., Inc.,
172 F.3d 1352 (Fed. Cir. 1999) ........................................................21, 22, 23, 29

Brenner v. Manson,
383 U.S. 519 (1966)............................................................................................22

In re Chatfield,
545 F.2d 152 (CCPA 1976) ..................................................................................5

Cochrane v. Deener,
94 U.S. 780 (1877)..........................................................................................5, 10

In re Comiskey,
499 F.3d 1365 (Fed. Cir. 2007) ....................................... 7, 13, 16, 23, 25, 26, 27

Corning v. Burden,
15 How. 252 (1854) ............................................................................................19

Diamond v. Chakrabarty,
447 U.S. 303 (1980)........................................................................................6, 24

Diamond v. Diehr,
450 U.S. 175 (1981).....................................................................................passim

In re Fisher,
421 F.3d 1365 (Fed. Cir. 2005) ..........................................................................22

Gottschalk v. Benson,
409 U.S. 63 (1972).......................................................................................passim

iv

Harris Corp. v. Ericsson Inc.,
417 F.3d 1241 (Fed. Cir. 2005) ..........................................................................26

Laboratory Corporation of America Holdings v. Metabolite Labs., Inc.,
126 S. Ct. 2921 (2006)..........................................................................................7

Le Roy v. Tatham,
55 U.S. 156 (1852)................................................................................................6

Mackay Radio & Telegraph Co. v. Radio Corp. of America,
306 U.S. 86 (1939)..............................................................................................12

In re Maucorps,
609 F.2d 481 (CCPA 1979) ..........................................................................13, 23

In re Meyer,
688 F.2d 789 (CCPA 1982) ..........................................................................13, 23

Microsoft Corp. v. AT&T Corp.,
127 S. Ct. 1746 (2007)............................................................................17, 20, 21

In re Nuitjen,
500 F.3d 1346 (Fed. Cir. 2007) ................................................................8, 19, 22

O'Reilly v. Morse,
50 U.S. 62 (1853)............................................................................................8, 19

Parker v. Flook,
437 U.S. 584 (1978).....................................................................................passim

Rubber-Tip Pencil Co. v. Howard,
87 U.S. 498 (1874)................................................................................................6

In re Schrader,
22 F.3d 290 (Fed. Cir. 1994) ............................................................12, 13, 14, 16

In re Sherwood,
613 F.2d 809 (CCPA 1980) ................................................................................19

State Street Bank & Trust Co. v. Signature Financial Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998) ..............................................7, 15, 21, 22, 23, 29

v

Tehrani v. Hamilton Med., Inc.,
331 F.3d 1355 (Fed. Cir. 2003) ..........................................................................26

The Telephone Cases,
126 U.S. 1 (1888)................................................................................................19

In re Warmerdam,
33 F.3d 1354 (Fed. Cir. 1994) ............................................................................13

WMS Gaming Inc. v. Int'l Game Tech.,
184 F.3d 1339 (Fed. Cir. 1999) ..........................................................................26

CONSTITUTIONAL PROVISIONS AND STATUTES

U.S. Const. Art. 1, § 8................................................................................................4

Patent Act of 1793, ch. 11, § 1, 1 Stat. 318 ...............................................................5

35 U.S.C. § 101.................................................................................................passim

35 U.S.C. § 102........................................................................................4, 24, 25, 27

35 U.S.C. § 103..................................................................................4, 24, 25, 26, 27

35 U.S.C. § 112..................................................................................4, 24, 25, 26, 27

OTHER AUTHORITIES

I. D. Chisum, Patents § 1.01 (1993) ..........................................................................5

H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952), reprinted in 1952
USCCAN 2394 .....................................................................................................6

Ron White, How Computers Work (8th ed. 2006)...................................................20

S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952) ......................................................6

vi

STATEMENT OF INTEREST OF AMICI CURIAE

Amici Curiae Dell Inc., Microsoft Corporation, and Symantec Corporation are leading computer, information technology, and software companies. Although their interests with respect to many legal questions diverge, Amici join in urging this Court to adopt a standard for determining whether process inventions satisfy 35 U.S.C. § 101, which will give meaning and effect to the statutory language and provide needed guidance to the Patent and Trademark Office, the lower courts, and the patent bar.

Amici both own process patents and are frequently defendants in suits alleging infringement of such patents owned by others. They thus have a profound interest in the standard that governs whether such patents claim patent-eligible subject matter. They also have an interest in the patent system as a whole and in the harm done to that system by the issuance of patents that claim nothing more than abstract concepts. By requiring that process inventions, like machines, manufactures, and compositions of matter, must be physical in nature and must produce a result that has specific practical utility -- a result that is, in this Court's words, "useful, concrete and tangible" -- this Court can restore proper balance to the system and provide guidance to the courts, the PTO, the bar, and the public.

1

INTRODUCTION

The Bilski patent application claims a process -- specifically, "a method for managing the consumption risk costs of a commodity." The claimed process neither requires the use of a machine or other apparatus, nor effects a transformation of physical subject matter into a different state or thing. The claimed process is, however, arguably useful, with practical, real-world applications. The question before the Court, then, is whether such a process, unbounded by any physical limitations but with practical utility, is a patentable process within the meaning of 35 U.S.C. § 101.

It is not. In the trilogy of Benson, Flook, and Diehr, the Supreme Court set out the principles that govern whether a process claim describes patent- eligible subject matter under Section 101. Those principles require that, to be eligible for patenting, a process must be more than merely an abstract idea or concept, even if it unquestionably is a useful abstract idea or concept. Rather, a patentable process must make use of or operate upon something physical, be it uncured rubber, or electrical circuitry, or signals made up of electrons or photons or electromagnetic impulses. This requirement is apparent in the Supreme Court's repeated direction that a "process" within the meaning of Section 101 must be tied to a specific apparatus or must effect the transformation or reduction of subject matter to a different state or thing. Although the Supreme Court has never

2

attempted an exhaustive articulation of how to demonstrate that a process claim defines non-abstract, patent-eligible subject matter, it also has never suggested that a physical foundation is unnecessary. This understanding of "process" as tied to something fundamentally physical in nature places process inventions on the same footing as the other Section 101 categories -- machine, manufacture, composition of matter -- all of which are physical by definition.

These principles are easily applied to the process claims at issue here, which can be construed to consist of nothing more than "mental steps" that neither effect a transformation of physical subject matter nor are tied to a specific apparatus. Such "mental steps," divorced from any physical foundation, do not constitute a patentable process. In contrast, when a series of steps is tied to a particular apparatus or effects a transformation of physical subject matter, and produces a useful, concrete and tangible result, a patent-eligible invention under Section 101 has been claimed. As applied to software-related inventions, these fundamental principles lead to the following conclusions:

  • Computer-implemented processes that produce useful, concrete, and tangible results are patent-eligible subject matter for at least two reasons: (1) they are tied to the use of a specific apparatus -- a programmed computer, and (2) they effect a physical transformation, specifically, the transformation of physical subject matter (e.g, electrical or electromagnetic signals) into different physical subject matter.

3

  • A computer that has been programmed to implement particular software instructions is itself patent-eligible subject matter, i.e., a machine. It has distinct physical properties relative to an unprogrammed, or differently programmed, computer.
  • This does not mean that an unpatentable abstract idea can become patentable merely by reciting that a computer should be used. Although such a recital may satisfy Section 101, that is only the first step on the road to a patent. Concerns with respect to the patentability of claims that include only general references to a computer or other apparatus are properly addressed not by engrafting unwritten requirements onto Section 101, but rather by rigorously enforcing Sections 102, 103, and 112.

By making clear that patent-eligible processes must be physical, this Court can rationalize seemingly inconsistent precedent, subject process inventions to the same fundamental requirement that applies to machines, manufactures, and compositions of matter, and provide the PTO, the lower courts, and the public with a standard that will enable them to determine which inventions satisfy the Section 101 threshold, and which do not.

DISCUSSION

I. BASIC PRINCIPLES GOVERNING APPLICATION OF
SECTION 101.

A. The Statute And Early Precedent.

The Constitution's Patent Clause empowers Congress to "promote the Progress of Science and the Useful Arts...." U.S. Const. Art. 1, § 8. Congress has implemented this grant in Section 101 by identifying certain subject matter, the

4

invention or discovery of which may merit a patent: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. The terms used in Section 101 have been used for over 200 years -- since the beginning of the American patent system -- to define the scope of patent-eligible subject matter. See In re Chatfield, 545 F.2d 152, 159 (CCPA 1976) (Rich, J., dissenting); I. D. Chisum, Patents § 1.01 (1993).

Thus, the Patent Act of 1793 defined statutory subject matter as "any new and useful art, machine, manufacture or composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, ch. 11, § 1, 1 Stat. 318. Although "process" did not appear in the statute until 1952, it is settled that this change in language was not a change in substance, for the original statutory term, "art," encompassed processes. See Diamond v. Diehr, 450 U.S. 175, 182 (1981). What qualified as a patent-eligible "art" or process is also settled. As the Supreme Court explained in Diehr, "the nature of a patentable process" had been "defin[ed]" over 100 years earlier: "A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject- matter to be transformed and reduced to a different state or thing...." Diehr, 450 U.S. at 183, quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1877).

5

To be sure, Section 101's description of patent-eligible subject matter is broad, intended by Congress to "include anything under the sun that is made by man." S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952), reprinted in 1952 USCCAN 2394, 2399. But it is also unquestionably not without boundaries. See Diehr, 450 U.S. at 185 ("[E]very discovery is not embraced within the statutory terms.") (emphasis added). Most fundamentally, patent-eligible subject matter cannot be abstract. Thus, as early as Le Roy v. Tatham, 55 U.S. 156 (1852), the Supreme Court explained that "[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Id. at 175. Since then, the principle that abstract ideas are unpatentable has repeatedly been confirmed. See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874) ("An idea of itself is not patentable"); Diehr, 450 U.S. at 185; Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) ("The laws of nature, physical phenomena, and abstract ideas have been held not patentable."); Parker v. Flook, 437 U.S. 584, 589 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972).

From the text of the statute and the Supreme Court's consistent construction of that text, then, two prerequisites for patent-eligible subject matter can be discerned. First, a patent-eligible invention, whatever its form, is fundamentally physical -- a machine, manufacture, composition of matter, or

6

process ("an act, or a series of acts, performed upon the subject-matter to be transformed ...," Cochrane, 94 U.S. at 787-88). And, second, although a patent-eligible invention may not consist of an abstract idea, law of nature, or physical phenomenon, the application of an abstract idea, law of nature, or physical phenomenon to produce a new machine, manufacture, or composition of matter having a useful, concrete and tangible result may be patent-eligible.

B. These Fundamental Principles Continue to Apply in the Modern
Electronic Age.

These principles, despite their age and their roots in the pre-electronic era, remain the touchstone for applying Section 101. The Supreme Court made this clear in Diehr, and its predecessors, Benson and Flook, all of which presented claims that involved, in one way or another, computer-related technology.1 This Court, too, has recognized that Benson, Flook, and Diehr continue to provide the foundation for the Section 101 analysis, regardless of the technology or field of endeavor involved. See, e.g., In re Alappat, 33 F.3d 1526, 1543-44 (Fed. Cir. 1994) (en banc); State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998); In re Comiskey, 499 F.3d 1365, 1375-76

7

(Fed. Cir. 2007); In re Nuitjen, 500 F.3d 1346, 1363-64 (Fed. Cir. 2007). As an examination of the controlling precedent makes clear, that Section 101 foundation is physical.

1. Gottschalk v. Benson The applicant in Benson sought to patent "a method of programming a general-purpose digital computer." 409 U.S. at 65. The claims were not limited to any particular apparatus or end use, id. at 64, but their result -- converting binary-coded decimals into pure binary numerals -- was indisputably useful, id. at 65. The claims also described a "process," as ordinarily understood. See Flook, 437 U.S. at 588-89 (Benson claims described a "process").

They did not, however, describe a patentable process. The claims in Benson recited only "a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another." 409 U.S. at 65. Although "programs may be developed as specific applications" from "the generic formulation" of the claims, id., Benson's claims did not purport to do so. Rather, they were "abstract and sweeping," id. at 68, and properly understood, sought "a patent on the algorithm itself." Id. at 71-72.

In this sense, the Benson claims suffered from the same defect as Samuel Morse's broad claim to any use of electromagnetism to produce signs for telegraphy, which the Court rejected in O'Reilly v. Morse, 50 U.S. 62 (1853). Just

8

as Morse's eighth claim sought to patent a fundamental principle without tying it to specific process steps or a specific apparatus, so too did the claims in Benson seek to patent an abstract idea, a mathematical algorithm. Morse, however, unlike Benson, also claimed specific physical process steps and an apparatus, which made his other claims patentable. Id. at 123. It was in this context that the Court in Benson, relying on its 19th Century precedents concerning "arts" or processes, explained that the "clue to patentability" of a process claim is that the process as claimed must be "tied to a particular machine or apparatus or must operate to change articles or materials to a 'different state or thing.'" 409 U.S. at 70-71. Although other such "clues" conceivably might exist, id. at 71, Benson's "abstract and sweeping" claims did not describe a patent-eligible process.

2. Parker v. Flook

The fundamental principles articulated in Benson were easily applied to the claims at issue in Flook. Those claims, according to the Supreme Court, provided only "a formula for computing an updated alarm limit," 437 U.S. at 586, a numerical parameter used in chemical processes. The Court assumed that the formula was useful, id. at 588, and it agreed that the claims literally described a "process," id. That "purely literal" definition, however, was not the definition contemplated by Section 101. Id.

9

In reaching this conclusion, the Supreme Court held, as it had in Benson, that a patent-eligible "process" is physical in nature -- i.e., "tied to a particular apparatus" or operating "to change materials to a 'different state or thing.'" Id. at 589, quoting Cochrane, 94 U.S. at 787-88. Although the Flook claims referred to particular catalytic conversion processes, they provided no disclosure of those process steps. Id. at 586. As the Court explained in Diehr, the Flook claims "did not purport to explain how the variables used in the formula were to be selected," 450 U.S. at 192 n.14, nor did they "contain any disclosure relating to the chemical processes at work, the monitoring of the process variables, or the means of setting off an alarm system." Id. at 187. The Flook claims also were not tied to any particular apparatus, either for implementing the claimed method itself or for the underlying chemical processes. See 437 U.S. at 596-97. The claimed invention was, in short, nothing more than an improved method of mathematical calculation -- i.e., an abstract idea and not the kind of process covered by Section 101. Id. at 593-95.

3. Diamond v. Diehr

The claims in Diehr were, on a superficial level, very similar to those in Flook: they described the use of a mathematical formula to improve the operation of an industrial process. The relevant teaching of Diehr emerges from consideration of the differences between the Flook and Diehr claims.

10

The key difference is that, unlike the claims in Flook (and Benson), the claims in Diehr described a step-by-step process for converting one physical substance, uncured rubber, into another, precision-cured rubber. They did not merely claim, as in Benson, an algorithm for converting one form of number into another, 450 U.S. at 185-86, nor did they claim, as in Flook, "`a formula for computing an updated alarm limit,'" id. at 187, quoting Flook, 437 U.S. at 586. Although the Benson and Flook inventions both could be put to practical use as parts of patentable processes, the claims themselves did not describe such processes. The Diehr claims did:
That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents' claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.
450 U.S. at 184.

The mere fact that the Diehr process made use of a mathematical formula, and a computer, did not change the patent-eligible nature of the claimed process. The Court explained that although a formula or fundamental principle is not patentable "in isolation," "a novel and useful structure created with the aid" of that formula or principle satisfies the Section 101 threshold. Id. at 188, quoting

11

Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939); see also Diehr, 450 U.S. at 192. The decisions in Benson and Flook, the Court explained, "stand for no more than these long-established principles." Id. at 185. Accordingly, a process that employs particular machines or effects the transformation of physical subject matter to a different state or thing is a "useful structure," and thus patent-eligible. Id. at 184, 192. And, although the Court again signaled, as it had in Benson and Flook, that "particular machines" or "transformation and reduction" may not be the only indicia of a patent-eligible process, id. at 192, the Court left no doubt that such a process is, like other Section 101 subject matter, physical in nature.

4. This Court's Application of Benson, Flook, and Diehr.

This Court consistently has applied these principles since the decisions in Benson, Flook, and Diehr. This is evident, for example, in decisions rejecting claims to processes that consisted entirely of so-called "mental steps." Thus, in In re Schrader, 22 F.3d 290 (Fed. Cir. 1994), this Court held unpatentable a "method constitut[ing] a novel way of conducting auctions" by allowing competitive bidding on a plurality of related items. Id. at 291. The fact that the process utilized machines was not determinative. Two of the alleged machines -- a "display" in the front of the auction room and "a closed-circuit television system" for bidders in different cities -- were not claimed, and the third -- a "record" in

12

which bids could be entered -- did not perform any particular function, and could have been "a piece of paper or a chalkboard." Id. at 293-94. The patent, therefore, impermissibly claimed a series of "mental steps."

Similarly, in In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), a process for controlling objects to avoid collisions was unpatentable because the claims described "nothing more than the manipulation of basic mathematical constructs, the paradigmatic 'abstract idea.'" Id. at 1360. A machine was not required, id. at 1358,2 nor did the process transform any physical subject matter. See also In re Meyer, 688 F.2d 789, 795-96 (CCPA 1982) ("a mental process that a neurologist should follow" held not patentable because "not limited to any otherwise statutory process, machine, manufacture, or composition of matter."); In re Maucorps, 609 F.2d 481, 486 (CCPA 1979) (invention "directed toward optimizing the organization of sales representatives" held unpatentable).

Most recently, in In re Comiskey, the Court held that claims to an arbitration method that required no apparatus and did not describe "a process of manufacture or a process for the alteration of a composition of matter," 499 F.3d at 1379, are not patent-eligible under Section 101. The claims essentially sought to

13

patent "the use of mental processes to resolve a legal dispute." They were, like the claims in Schrader, "directed to an abstract idea itself rather than a statutory category" of patentable subject matter. Id.

The requirement that a patentable invention have a physical foundation is evident as well in this Court's decisions approving claims that involved, in some fashion, mathematical algorithms, abstract concepts, or fundamental principles. In Arrhythmia Res. Tech., Inc. v. Coranozix Corp., 958 F.2d 1053 (Fed. Cir. 1992), the Court considered a patent on a process and apparatus "for detecting and analyzing a specific heart activity signal...." Id. at 1058. The defendant argued that the claims were unpatentable because they embodied an abstract process or mathematical algorithm. The Court rejected that characterization because the claimed process physically transformed electrical signals generated by a particular apparatus. As the Court explained, the "claimed steps of 'converting,' 'applying,' 'determining,' and 'comparing' are physical process steps that transform one physical, electrical signal into another." Id. at 1059. This process involving physical subject matter satisfied Section 101.

The Court has applied the same analysis to machine or apparatus claims. In Alappat, the applicant claimed a machine, a "rasterizer," which employed circuits configured using mathematical algorithms to transform a waveform for display in an oscilloscope. The Court had little difficulty concluding

14

that an electrical apparatus configured to transform particular electronic signals into different signals was a "machine" under Section 101, and the fact that its circuits were configured using mathematical concepts did not remove it from Section 101's coverage. 33 F.3d at 1544-45. Moreover, because the claimed machine produced a "useful, concrete, and tangible result," it could not be said (as was true in Benson) that the claims effectively claimed only an abstract concept. It was patent-eligible subject matter under Section 101. Id. at 1544.

To the same effect is State Street Bank. The claims there described a machine, in means-plus-function form, and the specification disclosed the requisite structure. 149 F.3d at 1371. A "machine," consisting of specific physical components, is Section 101 subject matter. Id. at 1372. It was true, as in Alappat, that the claimed machine made use of mathematical operations. Id. It was undisputed, however, that the machine produced, as in Alappat, a "useful, concrete, and tangible result." Id. at 1375. The claimed invention, therefore, was not "merely abstract ideas constituting disembodied concepts or truths," id. at 1373. It complied with Section 101.

* * *

The governing principles are clear. The range of patent-eligible subject matter is very broad, but it is not unlimited. Among other limitations, it does not include abstract concepts. To be patent-eligible under Section 101, an

15

invention -- whether process, machine, manufacture, or composition of matter -- must be physical in nature; where a process is concerned, this means that the claimed steps must be tied to a particular apparatus or effect a transformation of physical subject matter. Moreover, to ensure that a claim to what appears to be patent-eligible subject matter is not in reality a claim to an abstract concept, the claimed invention must produce a "useful, concrete and tangible result."

II. APPLICATION OF THE SECTION 101 PRINCIPLES.

Measured against these principles, the Bilski claims plainly do not describe patent-eligible subject matter. The claimed invention, although it may have some practical utility, encompasses an abstract concept. It is neither tied to a particular apparatus, nor does it transform physical subject matter. It is thus indistinguishable from the inventions in Flook, Schrader, Comiskey, and other cases which involved arguably useful concepts where the claims when properly construed were wholly lacking in physical substance.

This Court's decision, however, will have significance far beyond Bilski's claim to a method for managing risk, for the principles that govern what is patent-eligible subject matter under Section 101 apply to all inventions, regardless of form, and all technologies, regardless of field. In particular, this Court's decision is likely to have direct application to information technology-related

16

inventions, including those implemented in software, combinations of software and hardware, firmware, and other current and future formats.

With respect to an invention implemented in software, a patentable claim must include physical limitations -- i.e., it must effect a physical transformation of subject matter or be tied to a particular apparatus. Software-implemented processes do just that in that they are tied to a specially programmed computing device and effect a transformation of physical matter, such as electrical or electromagnetic signals. Before software can be contained in and continuously performed by a computer, an actual physical embodiment of the software must be delivered by CD-ROM or some other means capable of interfacing with a computer. See Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746, 1756 (2007). This is in contrast to the concept of software detached from any physical embodiment or activating medium, which, at that basic level, is merely a set of instructions. Id. The way in which this Court draws the line between that which is sufficiently physical and useful to satisfy Section 101 and that which is a mere abstract concept thus will have direct application to the Section 101 analysis of claims that involve computer software. Amici therefore propose the following approach.

17

A. The Requirement of Section 101 That a Patent-Eligible Invention
Be Physical Is Satisfied by Computer Software-Implemented
Processes and Programmed Computers Operating Pursuant To
Software Instructions.

That software-related inventions must have a physical foundation is the inescapable conclusion of Benson, Flook, and Diehr, and this Court's decisions in their wake. What that means at a practical level may be less clear, but Amici submit that the Supreme Court's analysis of computer-related process inventions and this Court's analysis of computer-related machine claims point to the answer.

As for process inventions, the "clues" to their patentability are well settled and directly applicable to software-implemented processes. At the most basic level, a classic industrial process, like the rubber-curing process in Diehr, that is implemented using computer software plainly "is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing)." 450 U.S. at 192. The use of a programmed computer in an otherwise patent-eligible process does not remove it from the coverage of Section 101. Id. at 187. Moreover, as this Court has made clear, the physical subject matter that undergoes a physical transformation can include electrical signals, electromagnetic signals, and the like. "[C]omputer-performed operations transform a particular input signal to a different output signal, in accordance with the internal structure of the computer as configured by electronic instructions." Arrhythmia Research, 958 F.2d at 1060. These operations

18

"convert[] one physical thing into another physical thing," In re Sherwood, 613 F.2d 809, 819 (CCPA 1980), i.e., they perform "a function which the patent laws were designed to protect." Diehr, 450 U.S. at 192. See also Nuitjen, 500 F.3d at 1355 (a "signal made of electrical or electromagnetic variances ... is physical and real."); id. at 1356 (an electric or electromagnetic transmission "is man-made and physical -- it exists in the real world and has tangible causes and effects").3 So long as the product of these physical operations is not a mathematical abstraction, but rather is of "practical utility and specified application," Arrhythmia Research, 958 F.2d at 1061 -- which will typically be the case -- the threshold requirements of Section 101 have been satisfied.

Consideration of the other "clue" to patentability -- that a patent-eligible process be "tied to a particular machine or apparatus," Benson, 409 U.S. at 70-71 -- leads to the same conclusion. A computer operating pursuant to software instructions is "a particular machine or apparatus" -- in the words of

19

Arrhythmia Research, its "internal structure" has been "configured by electronic instructions." 958 F.2d at 1060. 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." Alappat, 33 F.3d at 1545; see also Aristocrat Techs. Australia Pty. Ltd. v. Intl. Game Tech., No. 2007-1419, slip op. at 8 (Fed. Cir. March 28, 2008).4 The fact that the program software, divorced from the computer or other physical medium, might be termed an algorithm or might incorporate mathematical concepts is irrelevant. All machines operate pursuant to algorithms, and computers are no different. Once the algorithm or software takes physical form as part of a computer (or other machine), Section 101 is satisfied, for "a computer ... is apparatus, not mathematics." Alappat, 33 F.3d at 1545; cf. Microsoft Corp. v. AT&T Corp., 127 S. Ct. at 1750 (machine within scope of patent's apparatus claim is created when computer is programmed with software).

The relevant Section 101 principles thus come down to this where computer software-related inventions are concerned: (1) A software-implemented

20

process is patent-eligible under Section 101 for two separate reasons -- it effects a physical transformation of physical subject matter, and it is tied to a particular apparatus, the "special purpose" programmed computer; and (2) A programmed computer is itself patent-eligible subject matter under Section 101 because it is a new machine, having different physical properties relative to an unprogrammed or differently programmed computer.

B. The Court Should Make Clear That "Useful, Concrete and
Tangible" Is Not An Independent Test Under Section 101.

Despite the clear precedent, it has been suggested that whether a process effects a physical transformation or is tied to a particular apparatus is beside the point, that the real test under Section 101 is simply whether a claimed process produces a "useful, concrete and tangible result."5 Amici submit that this view rests on a misreading of this Court's decisions and that the en banc Court should dispel this misconception.

The cases in which the "useful, concrete and tangible" phrase originated -- Alappat, State Street, and AT&T Corp. v. Excel Comms., Inc., 172 F.3d 1352 (Fed. Cir. 1999) -- all involved claims with physical limitations that satisfied the essential requirement of Section 101 as articulated by the Supreme Court. As the Supreme Court also made clear, however, physical limitations do

21

not necessarily satisfy Section 101, if the practical effect of allowing the claim, viewed as a whole, would be to grant patent rights on an abstract idea or fundamental principle. See, e.g., Diehr, 450 U.S. at 191; Flook, 437 U.S. at 590; Benson, 409 U.S. at 72-73. Thus, where a process claim incorporates an abstract idea or fundamental principle, Section 101 requires confirmation that the claim is not simply a dressed-up version of that idea or principle -- that is, does the claimed process, viewed as a whole, have specific, practical utility? See, e.g., Diehr, 450 U.S. at 187. This Court's "useful, concrete and tangible" formulation is a useful analytical tool to confirm that an invention that is sufficiently physical in nature is indeed patent-eligible under Section 101. It does not, however, function as a stand-alone test or alternative to the requirement that a patent-eligible invention have a physical foundation. See Nuitjen, 500 F.3d at 1354 (State Street did not hold that the Section 101 inquiry is "subsumed into an overarching question about patentable utility.").6

22

This is clear from Alappat and State Street, both of which first determined that the claims at issue presumptively described Section 101 subject matter -- machines -- and only then addressed the machines' "useful, concrete and tangible" output. See Alappat, 33 F.3d at 1544; State Street, 149 F.3d at 1373. It is clear as well from the myriad cases in which claimed inventions that produced useful results were nevertheless held unpatentable under Section 101 because they were "abstract" -- i.e., non-physical. See, e.g., Flook, 437 U.S. at 590; Benson, 409 U.S. at 72-73; Meyer, 688 F.2d at 796; Maucorps, 609 F.2d at 486; Comiskey, 499 F.3d at 1375-76. To the extent that confusion exists on this score, it may flow from AT&T v. Excel and its suggestion that physical limitations are irrelevant when process claims are at issue. 172 F.3d at 1358. But the claims there in fact included physical limitations, requiring "the use of computers and switches," id. at 1355, and called for processing "through switching and recording mechanisms to create a signal useful for billing purposes," id. at 1358. As this Court explained in Comiskey, the Excel process claims satisfied Section 101 "because they claimed practical applications and were tied to specific machines." 499 F.3d at 1377 & n.14 (emphasis added). The question whether a process can be patented in the absence of physical limitations therefore was not presented in Excel, so any suggestion that such limitations are not required is not only contrary to controlling precedent, but also is dictum.

23

C. Concerns With Respect To Claims That Include Only General
Recitations of Structure Are Properly Addressed Under
Sections 102, 103, and 112, not Section 101.

The approach outlined above is subject to the criticism that its requirements can be easily circumvented, that an abstract series of steps can be converted into Section 101 subject matter merely by reciting, for example, that the steps should be implemented using a computer, and that a more stringent Section 101 standard is necessary. This criticism is not without substance, for it is indeed a simple matter to add "implemented by computer" to almost any otherwise abstract concept. The solution, however, lies not with Section 101 but with the other statutory requirements for patentability.

Section 101, as the Supreme Court reminded in Diehr, is only one doorway of several through which a claimed invention must pass on the way to a patent. It is "a general statement of the type of subject matter that is eligible for patent protection," subject to the other requirements of the statute. 450 U.S. at 189. The bedrock principle that a court should not read into a statute limitations that Congress did not adopt is of particular relevance to Section 101, for both its text and its legislative history make clear that Congress intended a broad scope. See Diehr, 450 U.S. at 182; Chakrabarty, 447 U.S. at 315. Indeed, much of the confusion in this area can likely be traced to the understandable desire to block unwarranted patents at the very first statutory threshold.

24

Amici respectfully submit that preventing the issuance of unwarranted patents is best achieved not by adding to Section 101 requirements not found in that general statute, but rather by rigorously enforcing the more specific requirements of Sections 102, 103, and 112 -- novelty, nonobviousness, definiteness, written description, and enablement.

This Court reached just this conclusion in In re Comiskey. Several of the claims at issue there recited steps that involved no apparatus and no transformation of physical subject matter, while others explicitly required the use of a computer or other apparatus. 499 F.3d at 1376-78. The Court held that the former merely reflected mental processes, i.e., abstract concepts, and thus did not satisfy Section 101. Id. at 1378. The claims requiring the use of an apparatus, however, were different because "[w]hen an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter." Id. at 1379. The Court reached this conclusion even though these claims included only general language requiring the use of "the Internet, intranet, World Wide Web, ... or other communication means." Id. at 1369-70. The Court noted that the "routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness," but determined that this was a Section 103, not Section 101, issue. Id. at 1380.

25

Section 112 is another tool for ensuring that claims that merely add general recitations of structure to otherwise unpatentable subject matter do not mature into issued patents. Indeed, this Court has particular experience in applying Section 112 to claims that call for the use of computer devices, particularly claims in means-plus-function or step-plus-function form. In such cases, "this court has consistently required that the structure described in the specification be more than simply a general purpose computer or microprocessor." Aristocrat Techs., slip op. at 7. Instead, Section 112 requires that such claims be supported by disclosure of specific structure or specific steps that will produce the claimed result, not merely by a general reference to a computer or microprocessor, as in Comiskey. See, e.g., id., slip op. at 7-12; Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005); WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). If the specification fails to provide this disclosure, the claim is invalid. See Aristocrat Techs., slip op. at 4, 7-16 (disclosure of "a standard microprocessor- based gaming machine with 'appropriate programming'" is not sufficient); see also Tehrani v. Hamilton Med., Inc., 331 F.3d 1355, 1362 (Fed. Cir. 2003); WMS Gaming, 184 F.3d at 1358.

Amici submit that concerns with overly broad or vague "machine- implemented" claims are best addressed by enforcing Section 112 as applied in these decisions, and Section 103 as suggested in Comiskey. To use Section 101 for

26

this purpose distorts its language and purpose, and produces uncertainty concerning its proper scope. Congress has provided the tools necessary to prevent abuse of the patent system, and those tools are, as the Supreme Court explained in Diehr, the "specific conditions for patentability" of Sections 102, 103, and 112. 450 U.S. at 189.

III. ANSWERS TO THE COURT'S SPECIFIC QUESTIONS.

Based on this analysis, Amici's answers to the Court's specific questions can be briefly stated:

1. Whether Claim 1 of the Bilski application claims patent-eligible subject matter under Section 101?: No. As "a method of managing the consumption risk costs associated with a commodity sold at a fixed price for a given period," Claim 1's process does not effect a transformation of physical subject matter, nor is it tied to a specific apparatus. Therefore, it falls outside the scope of Section 101.

2. What standard should govern in determining whether a process is patent-eligible subject matter under Section 101?: As Benson, Flook, and Diehr make clear, and as this Court observed in Alappat and, most recently, Comiskey, a process, for purposes of Section 101, must be physical -- that is, it must be tied to particular apparatus or effect a transformation of physical subject matter -- and it must produce a useful, concrete and tangible result.

27

3. a. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process?: It is not patent-eligible because it is not a process under Section 101 -- it neither transforms physical subject matter, nor is it tied to a specific apparatus. A "process" that lacks such a physical foundation is an unpatentable abstract concept.

3. b. When does a claim that contains both mental and physical steps create patent-eligible subject matter?: A process claim is eligible for patent protection when the claimed process as a whole physically transforms physical subject matter or is tied to specific machines, and the result of the process is useful, concrete and tangible.

4. Whether a process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under Section 101?: Patentability under Section 101 requires that a claimed invention be physical. Machines, manufactures, and compositions of matter are inherently physical; a "process," literally defined, is not. The Supreme Court has made clear, however, that the requirement that a patent-eligible invention be physical also applies to processes. Although other means of demonstrating that a process is physical in character are not foreclosed, the only means recognized thus far by the Supreme Court are that a process result in a transformation of the physical properties of specific physical subject matter or be tied to a specific apparatus.

28

5. Whether it is appropriate to reconsider the State Street Bank and AT&T v. Excel decisions, and if so, whether those cases should be overruled in any respect?: The outcome in both cases is consistent with the correct standard for patentability, so neither case need be overruled. Both cases, however, contain language that can be, and has been, read to relax patentability standards beyond what can be justified consistent with Supreme Court precedent -- in particular, the "useful, concrete and tangible" result formulation. State Street, 149 F.3d at 1375-76; Excel, 172 F.3d at 1355. The en banc Court should make clear that this is not an independent patentability standard but rather is only a part of the Section 101 inquiry.

CONCLUSION

Amici Curiae respectfully submit that the Court should embrace the following principles to determine whether process inventions qualify as patent- eligible subject matter under Section 101:

  • A patent-eligible process must be physical in nature -- e.g., it must be tied to a specific apparatus or effect a physical transformation of physical subject matter.

  • Physical subject matter includes electrical and electromagnetic signals.

  • The result or product of such a physical process must be useful, concrete and tangible. However, such a result is not itself sufficient for patentability. A patent-eligible process must both be physical in nature and must produce a useful, concrete and tangible result.

29

Amici submit that this standard properly implements Section 101 as a broad, but not unlimited, patentability threshold, and will enable the PTO, the courts, and the bar to determine whether Section 101 has been satisfied in a particular case, whatever the form of the claimed invention, the technology employed, or the field of endeavor.

Dated: April 7, 2008.

Respectfully submitted,

Carter G. Phillips
Jeffrey P. Kushan
SIDLEY AUSTIN LLP
[address, phone]

Constantine L. Trela, Jr.
Richard A. Cederoth
SIDLEY AUSTIN LLP
[address, phone]

Counsel for Amici Curiae

30

CERTIFICATE OF COMPLIANCE WITH
FRAP 29(d) AND 32(a)(7)(B)

Counsel for Amici certifies that the body of this brief, beginning with the Statement of Interest of Amici Curiae on page 1 and ending with the last line of the "Conclusion" on page 30, contains 6,972 words, as measured by the word- processing system used to prepare this brief, in compliance with Federal Rules of Appellate Procedure 29(d) and 32(a)(7)(B).

__________________________
Constantine L. Trela, Jr.
Counsel for Amici Curiae


1 More recently, although the Supreme Court has not squarely confronted Section 101, several Justices have made clear that the Court's prior decisions continue to apply. See Laboratory Corporation of America Holdings v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2925-28 (2006) (Breyer, J. dissenting, joined by Stevens, J. and Souter, J.) (citing Benson,et al.).

2 Indeed, underscoring that patent-eligible subject matter must be physical, the Court held that Warmerdam's Claim 5 was a claim to "a machine," and thus "is clearly patentable subject matter." 33 F.3d at 1360. Claim 5 simply claimed "A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4." Id. at 1358.

3 That the subject matter on which a patentable process operates may include electrical and electromagnetic signals is a well-established principle, long predating computer-related technology. For example, Alexander Graham Bell's process of transmitting speech employed electricity, "one of the forces of nature.... The art consists in so controlling the force as to make it accomplish the purpose," which Bell did by "changing the intensity of a continuous electric current." The Telephone Cases, 126 U.S. 1, 532 (1888). See also Corning v. Burden, 15 How. 252, 267-68 (1854) (a patentable process may employ "some element or power of nature"); Nuitjen, 500 F.3d at 1368 (Linn, J. dissenting) (discussing approved process claim in O'Reilly v. Morse, which used electromagnetism).

4 This analysis rests on a solid technological foundation. When a program is installed on a computer, the program instructions change the machine's physical structure by aligning pairs of bands of magnetically-charged particles on the hard disk, with each pair corresponding to a "1" or "0" of the object code and causing one of the processor's internal switches to open or close. Ron White, How Computers Work, 144-45 (8th ed. 2006).

5 See, e.g., Opening Brief of Appellants (March 12, 2007), at 10-11; Brief for Amicus Curiae AIPLA (April 30, 2007), at 13-15.

6 Confusion on this score has arisen, in part, because of the similarity of this inquiry to the independent Section 101 requirement that a claimed invention possess practical utility. See Brenner v. Manson, 383 U.S. 519, 528-29 (1966); In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005) (patentable invention must have "real world value"). As the Supreme Court held in Brenner, "a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion." 383 U.S. at 536. The practical utility requirement reflected in the "useful, concrete and tangible" inquiry operates to enforce this independent statutory requirement.


  


Bilski - What It Means, Part 4 - The Microsoft Brief - Updated | 214 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
It can work against them though.
Authored by: Anonymous on Wednesday, November 12 2008 @ 07:19 AM EST
Microsoft sued over patents. Link

[ Reply to This | # ]

Microsoft - patent vs copyright
Authored by: nola on Wednesday, November 12 2008 @ 07:28 AM EST
I know that Microsoft has copyright protection on 1's and 0's.

But now they're claiming *patent protection* on them too !!

This is too much, just too much ...

[ Reply to This | # ]

First claim alredy fails you in CS class
Authored by: Winter on Wednesday, November 12 2008 @ 07:38 AM EST
"Computer-implemented processes that produce useful, concrete, and tangible
results are patent-eligible subject matter for at least two reasons:

(1) they are tied to the use of a specific apparatus -- a programmed computer,
and

(2) they effect a physical transformation, specifically, the transformation of
physical subject matter (e.g, electrical or electromagnetic signals) into
different physical subject matter. "

Actually, this is so bad I cannot stand reading past it without commenting.

Ad 1)
That is what an emulator is for. You can always run a software program on
another architecture. If a second year CS student claims such a thing s/he
should FAIL.

Turing invented the abstract idea of the Universal Turing Computer (UTM, he left
out his name though).

This invention is so remarkable because he proved that ANY of these machines can
emulate ANY other UTM.

Which means that if you have a computer program for ANY computer in any form
(even processor OP codes), you can produce a program (emulator) for another,
unrelated, UTM that will do EXACTLY the same when fed the original program.

That is, you can build a UTM in anything, from ARM processors to water valves,
neurons, or DNA that will emulate a standard I86 standard PC. And that will be
able to run your initial I86 program "unaltered".

And the UTM is definitely NOT a specific apparatus. Nor is it even a specific
class of physical objects.

So claiming that a certain program is tied to a certain apparatus is so wrong
that only complete ignorance with computing or bad faith could produce it. Given
the core competences of MS and Dell, I would bet on bad faith.

Ad 2)
Inventing a CRT or LCD might give you a valid patent claim.

Using one to present data by changing electrical currents to emit light is
definitely NOT new. In no way can changing bit values inside some memory to
generate a different and non-obvious "process" from those used already
in the early days of television.

And we have already seen in an earlier court case that combining two existing
processes in an obvious way to generate a "new" combined process
patent worthy.

In short, this is so bad, it should have been corrected in grammar school.

Or maybe it is simply pure desperation?

Rob

---
Some say the sun rises in the east, some say it rises in the west; the truth
lies probably somewhere in between.

[ Reply to This | # ]

How MS tried to patent XML
Authored by: Winter on Wednesday, November 12 2008 @ 07:41 AM EST
"What do you do about the usual loophole that lets people patent math by
patenting all instances of the abstraction while claiming this is not patenting
math because the mental process is not patented? "

This is exactly how MS tried to patent XML. They claimed they would not patent
the XML standard.

However, they then started to patent every possible use of XML.

Rob

---
Some say the sun rises in the east, some say it rises in the west; the truth
lies probably somewhere in between.

[ Reply to This | # ]

Corrections here please
Authored by: tiger99 on Wednesday, November 12 2008 @ 08:11 AM EST
To assist PJ

[ Reply to This | # ]

Off topic here please
Authored by: tiger99 on Wednesday, November 12 2008 @ 08:14 AM EST
The splendid discussions about all sorts of interesting things, not related to
the main article, for which Groklaw is renowned, should go here. Please remember
the clickies!

[ Reply to This | # ]

Newspicks discussions here please
Authored by: tiger99 on Wednesday, November 12 2008 @ 08:16 AM EST
Groklaw, newspicks, that is. Please remember to indicate which newspick item you
are referrring to in the title of your post. Thanks.

[ Reply to This | # ]

Semi OT: CAFC tightening on "descriptions"
Authored by: Anonymous on Wednesday, November 12 2008 @ 08:16 AM EST
This ruling is pertaining to genetics but the details pertaining to
"descriptions" may be relevant to software as well.

http://www.mondaq.com/article.asp?articleid=69586

[ Reply to This | # ]

The practical problem with software patents 2X
Authored by: Winter on Wednesday, November 12 2008 @ 08:23 AM EST

The practical problem with software patents by Michael Tieman

There is no question that as a concept, software patents are about as helpful to innovation as unregulated credit default swaps are to hedging risky financial bets. The question is how to protect ourselves from the negative effects of a terrifically one-sided view. Ten years ago I used to subscribe to the theory that the Internet made the concept of nation-states completely obsolete. Today, I now believe that one feature of a nation-state is that it represents a useful impediment to progress. That is to say, when things are working, it means that some efficiency is lost, but when things fail, it means that things may not fail as catastrophically as they might in a system of monoculture.

But even more interesting still is the original (Indian) article: The practical problem with software patents by Venkatesh Hariharan

The argument in favor of software patents is that patents promote innovation. The social contract between an inventor and society was that the inventor disclosed details of the invention in return for the patent, and this disclosure would lead to future inventions. However, the history of the software industry shows that innovation flourished long before software patents came into force during the 1980s. Some of the fundamental inventions of the computer age—the Internet, compilers, spreadsheets etc--were created despite the lack of patent protection. It is therefore clear that patent protection is not necessary for innovation in the software industry.
The article gives some explanations about the COSTS of software patents.

Rob

---
Some say the sun rises in the east, some say it rises in the west; the truth lies probably somewhere in between.

[ Reply to This | # ]

Implicit Assumption in the law?
Authored by: Anonymous on Wednesday, November 12 2008 @ 08:39 AM EST
I seem to remember that "Software as such" is not patentable.

Does this not have an implicit assuption that the software has to run on
something, be it card punch and airvalves, magnetic charges and microprocessors
or quantum entanglement.

The idea that software is only not patentable if it doesn't run does not seem to
be the implication of the law, which seems to implicitly distiguish between
"patentable software" and "non-patenable software".

IANAL

[ Reply to This | # ]

Screwdriver Software
Authored by: Anonymous on Wednesday, November 12 2008 @ 09:12 AM EST
I have in my hand a screw driver. On the handle it says "Pat. 24584".
Doesn't say who issued the patent, but that's OK - I accept that someone
designed and manufactured this object, and has a patent on the design.

However, when purchased, this screwdriver came with no instructions, and as
such, it is useless. To transform this thing into a useful tool, I need to apply
a transformative algorithm, such as an insertion and rotation algorithm.

This of course transforms the screwdriver into a unique object, since clearly no
other screwdriver can be inserted and rotated in the same way simultaneously.
Therefore, using the Microsoft definition, I should be able to patent this
particular "insert and rotate" algorithm, as it transforms the default
screwdriver hardware into a unique machine to implement the driving of a screw.

So I'm convinced.

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief
Authored by: Anonymous on Wednesday, November 12 2008 @ 09:30 AM EST
A magnetic field on mangnetic disk drive storage device or drum memory is a
phenomenon of nature too. You can patent a machine that induces the magnetic
field in the magnetic spinnining medium, but you can't patent the field itself.

I can have the same piece of software on a hard drive, on a CD, or on a
semiconductor san disk. I can run a live CD where I don't write to the hard
drive at all. The software is not tied to any specific storage medium. So any
patents for software that can be run from any medium should not be patentable.
Any software that is linked to a specific computer by use of something like a
computer's serial number and is authorized to run only on that PC by some
central authority is an artificial linkage, and therefore should not be
patentable. Software on a stored program computer will be the same whether you
use a read/write semiconductor memory, ferrite core memory read only memory. If
I can conceivably implement your program in any of these storage devices, then
there is no linkage to a specific machine.

Quite frankly, in my opinion, Microsofts argument that loading a program on a
hard drive creates a specific machine out of a general purpose stored program
computer lacks credibilty in the light of hard facts.

[ Reply to This | # ]

I've Changed my Mind
Authored by: Anonymous on Wednesday, November 12 2008 @ 10:05 AM EST
PJ asked: "if the transformation is just 1s and 0s, what *isn't* physical
transformation?"

So if I read this article, and as a result I change my mind, then the article
itself was transformative, and therefore patentable!

Or is that a metaphysical transformation?

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief
Authored by: JamesK on Wednesday, November 12 2008 @ 10:10 AM EST
This analysis rests on a solid technological foundation. When a program is
installed on a computer, the program instructions change the machine's physical
structure by aligning pairs of bands of magnetically-charged particles on the
hard disk, with each pair corresponding to a "1" or "0" of
the object code and causing one of the processor's internal switches to open or
close. Ron White, How Computers Work, 144-45 (8th ed. 2006).


So, to follow this theme, if I take a blank piece of paper and write something
on it, I can get a patent? Perhaps for making a particular message visible to
the naked eye? Didn't writing make a change to that paper, by leaving all those
ink molecules on it in a certain pattern?


---
I'm not a complete idiot. Some parts are missing.

[ Reply to This | # ]

Where does it stops?
Authored by: PolR on Wednesday, November 12 2008 @ 10:26 AM EST
If loading software on a programmable computer creates a different machine, then
so does loading data.

I have this codec they say is patented because it creates a new machine when
loaded. I play Total Recall. Oops it is now a different machine. This one is NOT
patented because it isn't the same as the computer + codec anymore. And when I
play Star Wars I can get six (count them) different machines!

[ Reply to This | # ]

O no O no no no
Authored by: Anonymous on Wednesday, November 12 2008 @ 11:26 AM EST
If you would like to get a software patent the way
you put it down, "The way to do it and not the result..."
One will have to write down exactly how the the given
function, algorithm or program works.
That is, you will have to give all the instructions and in the right sequence.

If one does this you don't need a patent because you are already protected by
copyright.

/Arthur

[ Reply to This | # ]

  • sorry wrong click - Authored by: Anonymous on Wednesday, November 12 2008 @ 11:31 AM EST
Magnetic bits on a disk makes it patentable
Authored by: DannyB on Wednesday, November 12 2008 @ 12:18 PM EST
Wow. Just wow.

It makes this Lett er from 2020 seem quite prescient < /a>.

The following text was first published on september 19th 2000 by Mark Summerfield in
OsOpinion under the name Lett er from 2020 .
Dear Me,

I'm not sure if reading this letter is illegal. I thought it only fair to warn you; it might be better to just destroy it. The actual writing has been a bit of a chore. Word.NET isn't what it used to be. Even Microsoft.NET couldn't afford to patent everything, so whilst I can do Find, there's no Replace anymore. One good thing about having only one legal operating system is that it's very stable. I'm glad they never update Windows.NET; anyone can live with three or four crashes a day and the hourly rent is less than I pay for my apartment.

I try to remember what it was like when I was a kid but it's really difficult; the world has changed so much since then. I found a paper book the other day that described the rise and fall of something called the "Internet". It started out with people putting up links on computers so that they could follow the link and read things on other computers for free. After it got to be popular, companies started to create machines with lots of links that you could search to find things of interest. But someone put up a link to something illegal and got sued and had their machine shut down. This happened a few times and people started to take the links off their machines. The search engine companies were the first to go and without them, you couldn't find anything. Eventually no one put up links anymore because the legal risk was too great. The important thing is that it reduced terrorism. I'm not sure how it could have worked anyway. Anything I write on my computer or any music I create gets stored by Word.NET and Music.NET in encrypted formats to protect my privacy. No one but me, Microsoft.NET and the National Corporation can read or hear my stuff even if they could link to it.

I shouldn't admit it, but sometimes I go to certain places and speak to the subversives. I know its wrong but their warped views on things have some kind of morbid fascination. For example, I spoke to someone who claimed to be a historian the other day. She had courage all right, admitting to an illegal activity like that. I hadn't understood why it was illegal until she explained. History, she told me, gives you context. You can compare today with some time in the past; ask questions like, "are people better off", "look at the different forms of doing business", "compare corporate records or the rights of citizens" (I think she meant employees).

But what interested her was that future generations will know nothing about us; all our records and art are stored digitally, most of it will simply disappear when no one rents it anymore -- remember the sadness when the last digital copy of Sgt. Pepper was accidentally erased? And the data that does survive will all be encrypted and in proprietary formats anyway -- even if there were historians they'd have no right to reverse engineer the formats. I can vaguely remember that people used to have physical copies of music and films, although I'm not sure how that was possible, or what the point was when we can rent whatever we like from the air interface. I don't think it matters that those who come after us can't read our writings or hear our music or see our films; these things are temporal anyway, if no one rents them then they can't be worth keeping.

The saddest subversive I met claimed to be a programmer. He said that he was writing a program using Basic.NET. He must have been insane. Even if his program worked he wouldn't be allowed to run it. How could one person possibly check every possible patent infringement in a program they wrote? And even if he hadn't infringed he couldn't sell it without buying a compatibility license from Microsoft.NET and who could possibly afford that? He had said something about gippling the software, which apparently means giving it away, but mad as he was, even he knew that under WUCITA that would be illegal.

These subversives really don't seem to understand that a few restrictions are necessary for the sake of innovation. And progress has been made. We don't have spam since most people can't afford an email license due to the expensive patent royalties. Our computer systems all have the same operating system, user interface and applications so everyone knows how to use them, and although they crash and don't work very well, we all know the limitations and can live with them. We have no piracy of intellectual property since we rent it as we want it and have no means of storing it.

It was the USA that showed the world the way of course. First the Digital Millennium Copyright Act, then more and more software patents. The Japanese followed suit. The Europeans were a problem, which is only to be expected, with their anti-business un-Christian socialist tendencies. Fortunately, common sense prevailed, helped along by the good old dollar I've no doubt and they accepted both software patents and a redefinition of copyright to suit global corporations. Once the USA, Japan and Europe had uniform intellectual property laws to protect our corporations and our way of life, everyone else had to play ball or they couldn't trade. The result has been that every algorithm and computer program and every piece of music and film (after all music and film can be put into digital form and are therefore a form of software) have been patented. No more variations on Beethoven (unless you've got the patentees approval). No more amateur participation in music or film which might risk lowering standards. No more challenge to established business and business practices.

I'm crazy to have written I know. But I am so happy in the world and I remember how unhappy I used to be. I wanted to somehow pass back to you the knowledge that its all going to be okay, that the world really is getting better.

Sincerely,

Mark.


Using Microsoft's argument, Music should be patentable because the magnetic bits recorded on the disk drive "transform" the computer from a general purpose machine to one that can play music. Don't believe it? Just try removing the music bits from the disk and see if the music will play.

At the very least music, PDF's, and just about anything else that can be expressed digitally would be patentable as a component of a transformed machine.

Nice that Microsoft wants to pave the way to 2020 for us.

---
The price of freedom is eternal litigation.

[ Reply to This | # ]

"a specific apparatus"
Authored by: Anonymous on Wednesday, November 12 2008 @ 12:24 PM EST

Microsoft: Computer-implemented processes that produce useful, concrete, and tangible results are patent-eligible subject matter for at least two reasons: (1) they are tied to the use of a specific apparatus

Well, GNU/Linux software is not - except for a relatively small part of the kernel, and parts of device drivers - "tied to the use of a specific apparatus". An Intel-compatible CPU is completely different from an ARM RISC CPU. And Debian Linux runs on them both. So none of the packages in a Debian distro are tied to the use of a specific apparatus (with the very minor exceptions just mentioned).

[ Reply to This | # ]

Where I think sanity lies
Authored by: Anonymous on Wednesday, November 12 2008 @ 12:51 PM EST
1. You can't patent some obvious process "with a computer" or
"on the internet".

2. You can't say that something is unpatentable just because it involves a
computer.

As an example of the latter, consider anti-lock brakes. To do this well, you
need faster response than you can get from hydraulics alone. You need at least
analog or digital electronics, but it's easiest to do with a microprocessor.
That, by itself, does not make anti-lock brakes unpatentable.

The over-riding principle seems to be looking at what is actually being done,
and not worrying about whether it's done on a computer or in software or not.

Thought experiment: Imagine the idea of a linked list was done for physical
items, say paper files. Ignoring the issue of prior art, should it be
patentable? If so (perhaps a bit if), why is doing the same thing to the same
data inside a computer unpatentable?

I realize that the previous paragraph is pretty close to heresy, but it's a real
question. (I suspect that the answer is that the linked list wouldn't be
patentable even in a paper implementation, but I don't know why...)

MSS2

[ Reply to This | # ]

According to Microsoft, novels are patentable.
Authored by: Anonymous on Wednesday, November 12 2008 @ 01:17 PM EST
<i>This analysis rests on a solid technological foundation. When a program
is installed on a computer, the program instructions change the machine's
physical structure by aligning pairs of bands of magnetically-charged particles
on the hard disk, with each pair corresponding to a "1" or
"0" of the object code and causing one of the processor's internal
switches to open or close. Ron White, How Computers Work, 144-45 (8th ed. 2006).
</i>
<p>
So let me get this right - novels are a series of specific ink shapes imprinted
on pieces of paper so as to change the pattern of light reflecting off them. The
ink patterns are even more physical than magnetic charge on particles, and so
the content of the novel should be patentable.

[ Reply to This | # ]

A parallel analogy
Authored by: Dick Gingras on Wednesday, November 12 2008 @ 01:35 PM EST

Let's consider a television as analogous to a computer.

If I produce an educational TV show (programming) for children and play (run) it on a specific TV set, does that transform the combination into a patentable "child learning device"?

This exactly parallels the software/computer combination in that we have a copyrightable part being "played" on a patentable device. Both have complex infrastructures behind them to produce and distribute the "software". Both are transformative in that they convert a device that is useless by itself into one with a purpose.

It follows logically that the two systems should be treated identically insofar as their patentability, yet we have supposedly smart people speciously arguing that patents should be allowed for computer software when they would probably snort loudly at the idea of allowing it for TV programming (Hollywood's minions excepted).

---
SCO Caro Mortuum Est!

[ Reply to This | # ]

On things without a physical embodiment...
Authored by: wjaguar on Wednesday, November 12 2008 @ 02:05 PM EST
This is in contrast to the concept of software detached from any physical embodiment or activating medium, which, at that basic level, is merely a set of instructions....

The "small" problem is, nothing at all can exist in this physical world if "detached from any physical embodiment". A program loaded in memory has a physical embodiment in an arrangement of electric charges; a program stored on disk is a physical arrangement of magnetic domains; a program written on paper is a physical arrangement of pigment particles; a program recited aloud is a physical arrangement of sound waves; and a program being thought about is a physical arrangement of molecules of neurotransmitters and receptors in the brain.

Therefore, by Microsoft's reasoning, thinking of a piece of software should be patentable either - such an act definitaly creates a brain which "has distinct physical properties relative to an unthinking, or differently thinking, brain". :-)

[ Reply to This | # ]

Writing processes in a special way makes them patentable
Authored by: Anonymous on Wednesday, November 12 2008 @ 02:08 PM EST
You can pretty much replace "programmed in a computer" with "written on paper" throughout Microsoft's argument, and doing so reveals how silly most of it is.

Microsoft argue that processes are patentable when written down in a special way because:
  • (1) they are tied to the use of a specific apparatus -- a written-on piece of paper, and (2) they effect a physical transformation, specifically, the transformation of physical subject matter (e.g ink) into different physical subject matter (colored paper).
  • A piece of paper which has been written-on is itself patent-eligible subject matter, i.e., a machine. It has distinct physical properties relative to a blank paper, or paper with different writing.
  • Before instructions can be read from a piece of paper, an actual physical embodiment of the writing must be delivered by mail, or some other means...
  • Writing "creates a new machine, because blank paper becomes in effect in effect becomes a special purpose machine once it is printed...
And so on. You really can't parody this stuff - giafly

[ Reply to This | # ]

A Cook Book and a Recipe
Authored by: SilverWave on Wednesday, November 12 2008 @ 02:47 PM EST
Book=Computer
Recipe=Software.

I Load the Software into a Computer.
I Print the Recipe on the Paper.


2---
# A computer that has been programmed to implement particular software
instructions is itself patent-eligible subject matter, i.e., a machine. It has
distinct physical properties relative to an unprogrammed, or differently
programmed, computer.

# A Book that has been printed to implement particular Recipe instructions is
itself patent-eligible subject matter, i.e., a machine. It has distinct physical
properties relative to an Blank Book, or differently programmed, Book.

1---
Computer-implemented processes that produce useful, concrete, and tangible
results are patent-eligible subject matter for at least two reasons: (1) they
are tied to the use of a specific apparatus -- a programmed computer, and (2)
they effect a physical transformation, specifically, the transformation of
physical subject matter (e.g, electrical or electromagnetic signals) into
different physical subject matter.

A Book-implemented processes that produce useful, concrete, and tangible results
are patent-eligible subject matter for at least two reasons: (1) they are tied
to the use of a specific apparatus -- a Non-Blank Book, and (2) they effect a
physical transformation, specifically, the transformation of physical subject
matter (e.g, Paper) into different physical subject matter (Printed Paper).

----
4 This analysis rests on a solid technological foundation. When a program is
installed on a computer, the program instructions change the machine's physical
structure by aligning pairs of bands of magnetically-charged particles on the
hard disk, with each pair corresponding to a "1" or "0" of
the object code and causing one of the processor's internal switches to open or
close. Ron White, How Computers Work, 144-45 (8th ed. 2006).

4 This analysis rests on a solid technological foundation. When a Recipe is
Printed on a Book, the program instructions change the machine's physical
structure by adding Ink to the paper.

D'oh!

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief
Authored by: Anonymous on Wednesday, November 12 2008 @ 02:57 PM EST
Disclaimer: I haven't read Pamela's entire posting; I may do so in about ten
hours.

Microsoft's brief pulls together, in a nice little(?!) package with a bow, the
entire problem of non-manufacturing patents:

"software should patentable, namely because of what it does to a
computer." (PJ's paraphrase)

At the lowest level, what is software but the voltage/current states of silicon
switches? The switches themselves may be patentable, just like a wall switch or
a circuit breaker.

But how can patents extend into the realm of "effects" on a system
that do not alter the physical composition of the system itself? That's like
saying it's a patent violation to flip the circuit breakers in the Empire State
Building to write

L
O
V
E

in the New York City night sky. After all, isn't it just an *arrangement* of
switches to produce a particular effect?

[ Reply to This | # ]

"a programmed computer" what use is a "non programmed computer" | Printed Book/Blank Book.
Authored by: SilverWave on Wednesday, November 12 2008 @ 03:04 PM EST
Speechless.

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

The Orchestral Analogy Update
Authored by: webster on Wednesday, November 12 2008 @ 04:15 PM EST
..
As one who has not been able to read all the installments on the Bilski
decision, one finds this update to be the simplest and quickest explanation
extant. It is no wonder PJ recognized it as such and posted it. Thanks.

It is going to be used in court.

[it provokes more intriguing thoughts since a computer can emulate an orchestra.
Isn't that what a synthesizer is?]


~w

.

[ Reply to This | # ]

Horsehair
Authored by: sciamiko on Wednesday, November 12 2008 @ 04:49 PM EST
IANAL, etc. When reading Microsoft's arguments, I couldn't help but remember a visit I made earlier this year to a factory in Castle Cary weaving horsehair fabrics. They are still using the original belt-driven Victorian looms, well over 100 years old, although the driving force is now an electric motor instead of a steam engine. Some parts of this are done in a distinctly non-obvious way and could be patentable, like the way they pick out a single hair from a bunch and draw it across as the weft. Occasionally, a loom would fail to pick up a hair, but then it detected this and did not move on the pattern chain, which consisted of a number of wooden bars on cords which had holes into which pegs could be placed to define the weaving pattern. A variation on Jacquard looms still in operation.

So here we have a general purpose weaving machine, and a list of instructions on what to weave. Suppose, instead of doing the usual fabric patterns for furniture coverings, drapes, etc. I decided to weave a chessboard to roll up and take away for use on the road. MS seems to be saying that the pattern to weave the board is patentable because it translates forms of matter (the silk and horsehair) into a different form (a portable chessboard), and operates on a general weaving machine that has been particularized by this "program".

What am I missing?

s.

[ Reply to This | # ]

  • Horsehair - Authored by: PJ on Wednesday, November 12 2008 @ 09:15 PM EST
  • Castle Cary - Authored by: tiger99 on Thursday, November 13 2008 @ 08:18 AM EST
Magnetic state as part of the physical material
Authored by: jws on Wednesday, November 12 2008 @ 04:58 PM EST
I wonder if this argument about magnetism, etc. would be valid if the
discussion were about a method of charging a material to be magnetic, say to
function as a magnet where such phenomena were unique. I would think that would
be very patentable.

So whether this magnetism represents something by how it is charged becomes the
question. If the fact that you have an invention that makes the state of the
materials magnetic properties (not the only thing relevent by the way, what
about embedded machines with no magnetic memory) the issue and not how the get
magnetized makes it a different question.

I would think that because the process makes some sort of different pattern
appear somewhere in the machine, that is anywhere in the machine is too little
to hang your argument on.

When you have a machine to process and transform cotton or grain into some other
state, you will have many intermediate states of the material before blue jeans
or corn flakes pop out.

It is the notion of making an embodiment of a method that is being performed by
computers, whether they are electronic, or a bunch of fifth graders doing a
"computer" exercise by having each kid do a step, and in the end you
discover that Fibonacci numbers are coming out. (last refers to at least one
exercise I had many years ago that showed that computers were about the methods
not the implementation of them)

Would not one expect that the first purely optical processing system will run
some form of Linux? What will transform then (if you even want to speculate)

[ Reply to This | # ]

Re: Microsoft Brief Particular Machine^H^H--^H Specific Apparatus
Authored by: dio gratia on Wednesday, November 12 2008 @ 05:03 PM EST
So what happens if you're running on a virtual machine, or better yet cloud computing? Is there a fast one being pulled substituting specific Apparatus for particular machine?

apparatus (noun)

1 a: a set of materials or equipment designed for a particular use b: a group of anatomical or cytological parts functioning together [mitotic apparatus] c: an instrument or appliance designed for a specific operation
2: the functional processes by means of which a systematized activity is carried out [the apparatus of society]: as a: the machinery of government b: the organization of a political party or an underground movement
Contrast definitions 1a and 2. 1a is a 'particular machine', while 2: is the process itself.

specific (adjective)

1 a: constituting or falling into a specifiable category b: sharing or being those properties of something that allow it to be referred to a particular category
2 a: restricted to a particular individual, situation, relation, or effect [a disease specific to horses] b: exerting a distinctive influence (as on a body part or a disease) [specific antibodies]
3: free from ambiguity : accurate [a specific statement of faith]
4: of, relating to, or constituting a species and especially a biological species
5 a: being any of various arbitrary physical constants and especially one relating a quantitative attribute to unit mass, volume, or area b: imposed at a fixed rate per unit (as of weight or count) [specific import duties]
In the phrase specific apparatus, specific follows 1 b: or 2 a: and isn't free from ambiguity (3:). The two phrases 'specific apparatus' and 'particular machine' are not interchangeable. You could note that in the introduction of their amicus brief Microsoft shows a machine and an apparatus to be distinct. Substituting 'specific apparatus' for 'particular machine' would allow virtual or unidentifiable machines (as in not free from ambiguity as to which one) somewhere in the cloud to be protected as implementing a patented process. Why, the patent would be executed by a (gasp!) intangible machine! Using the 2: definition of apparatus would also cover Bilski, me thinks. Microsoft isn't making a definitive distinction between their idea of a software patent and Bilski, certainly not by expanding from particular machine to apparatus with the cunningly not free from ambiguity use of specfic. The court adopting Microsoft's language might not have blocked Bilski, much less pure software patents. No need to fret over tangibility of physical transformations, either.

IANAL but would imagine the side that gets their language defining a problem accepted might generally be expected to prevail. Maybe it's time for Congress to disambiguate process in § 100, or otherwise clarify whether whether they intended particular machine as opposed to an apparatus. It might help keep the weasel words out unless in such cases as this, the use is intentional as to cause some effect.

[ Reply to This | # ]

Cloud computing -> patent the net
Authored by: gfim on Wednesday, November 12 2008 @ 05:29 PM EST
By Microsoft's logic, setting those 1's and 0's in a program that is stored in
"the cloud" transforms the cloud. Hence, they should be able to patent
the whole net!!

---
Graham

[ Reply to This | # ]

Postscripts documents are patentable
Authored by: PolR on Wednesday, November 12 2008 @ 05:57 PM EST
From the wikipedia
PostSc ript (PS) is a dynamically typed concatenative programming language created by John Warnock and Charles Geschke in 1982. PostScript is best known for its use as a page description language in the electronic and desktop publishing areas.
So if computer + program = patentable machine, then why not a program written in Postscript? You can patent electronic documents now.

See also Page description language and domain specific programming language. How about patenting a spreadsheet? Won't this makes your spreadsheet patentable? It is written in some ODF that will be transformed into bits to make a new machine isn't it?

Microsoft's theory is ridicule.

[ Reply to This | # ]

A philosophical view...
Authored by: drh on Wednesday, November 12 2008 @ 07:53 PM EST

An IDEA is thought without form or substance and has no protection beyond the mind.

When one expresses an IDEA it takes on a form so that it is recognizable by others, but yet it has no substance and requires separate physical media to allow the expression. This EXPRESSION of an IDEA can be protected by copright.

When one creates a physical object from an EXPRESSION, that object now has both form and substance and can be protected by a patent.

Good in theory.. Software does not have substance, only form, and therefore would not be patentable. It will always require external hardware to allow it's expression.

Downside is, scuplture becomes patentable.

OK, so it ain't perfect.

---
Just another day...

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief - Updated
Authored by: Anonymous on Wednesday, November 12 2008 @ 08:34 PM EST
tangible results are patent-eligible subject matter for at least two reasons: ... (2) they effect a physical transformation, specifically, the transformation of physical subject matter (e.g, electrical or electromagnetic signals) into different physical subject matter.

To the extent that software "transforms" electrical signals, they are still electrical signals, in much the same was as thoughts are accomplished by transforming neurons. A brain is a Turing machine too.

[ Reply to This | # ]

All You Minds are Belong to Us!
Authored by: Anonymous on Wednesday, November 12 2008 @ 09:44 PM EST
"thoughts that produce useful, concrete, and tangible
results are patent-eligible subject matter for at least two reasons:

(1) they are tied to the use of a specific apparatus -- a human brain,

and

(2) they effect a physical transformation, specifically, the transformation of
physical subject matter (e.g, glucose) into
different physical subject matter (eg: amino acids and proteins for laying down
long-term memories. "

So... stop thinking, we do all that! (or pay to join the club... or get
yourselves uploaded!)

[ Reply to This | # ]

What It Means - Alternative Interpretation
Authored by: The Mad Hatter r on Thursday, November 13 2008 @ 12:51 AM EST
The Microsoft brief was filed along with Dell and Symantec, and it's an attempt to get the court to deny the Bilski claims while at the same time trying to keep the court from going all the way and deciding software should not be patentable. There are some logic bumps along the way, as you will see.
Ah, but there are always logic bumps in dealing with patents. Patent law tries to treat various types of ideas as if they were physical property, and this is just not possible. Ideas of any sort are intangible.

Let’s skip all the blather specifically about computers, and get to the meat.
Now, if Microsoft wants to patent the Xbox, fine with me. But if it wishes to patent just the software, the math that makes the Xbox run, but not the combination of the two, is that OK? See the logic problem? Just exactly what is a *particular* machine, anyway?
And this is the point where I diverge. Why should Microsoft be allowed to patent the X-Box (or X-Box 360)? Just what specifically is new, or novel about it? Or new and novel about a portion of it? This is where we run into complications. The law makes a flawed assumption here - that new and/or novel devices are common, and that they are worth protection via a limited monopoly.

But we know that this is not true. Out of all the patents that you have seen which were appealed to the Patent Office:

How many were upheld in full?
How many which were upheld were upheld upon appeal?

And then we have to consider those cases which made it to court (with the possible exception of those tried in Eastern Texas, where there appears to have been legal issues with a number of rulings), and which in court were invalidated?

When you add the number, not very many patents are upheld. And of those which were upheld, based on the reading of them (remember that the Amazon One-Click patent was originally upheld) it appears that they were upheld due to an error in law, for example KSR vs Teleflex had to be fought all the way to the Supreme Court due to earlier rulings which the Supreme Court decided were in error. If KSR had been willing to settle on reasonable terms, Teleflex would have paid rather than fighting, and this error in law would not have been addressed.

From my layman point of view I would bet the court will eventually extend the requirement of specificity to transformative processes. Specificity is the opposite of abstraction. Mathematics is about abstractions and by definition abstractions are not specific. When the patent is so broad as to be equivalent to patent all instances of a mathematical concept or formula, then it is not specific enough.

On page 15, Microsoft argues that all patentable inventions, whether process or not, "must be physical in nature" -- hence the 1s and 0s argument -- and/or it has to be tied to "a particular apparatus or effect a transformation of physical subject matter". So, how does XML transform physical subject matter? No. Really. Be specific. Microsoft has a patent on XML, does it not?
I agree. Microsoft’s position on this is ludicrous, but really it’s only a variation on KSR’s position, which is the position of the majority of patent holders. And the reason for this is economics. If Microsoft or KSR can prevent the competition from competing, they can charge more for the product, increasing their margins, and the shareholder return. They see nothing wrong with taking a legally dubious position to do this, after all the company’s first responsibility is to the shareholders. There is no provision in the law which would properly punish a corporation which takes a position which is morally dubious.

As for process inventions, the "clues" to their patentability are well settled and directly applicable to software-implemented processes. At the most basic level, a classic industrial process, like the rubber-curing process in Diehr, that is implemented using computer software plainly "is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing)."
Again, the law makes the assumption that new and/or novel ideas are common. I have not seen as many process patents being contested as yet, and I will admit that many of them are beyond me, but I did read two that weren’t, and the processes described were not new and/or novel, instead they were variations on a theme. When you read the patents referenced carefully, the differences were so marginal I do not understand why the patent office bothered to issue them.

There are however hopeful signs - the first paragraph is from the court, the second from PJ:
We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.

That is where this court seems to feel one should draw the line, letting folks patent pretty much anything as long as it's tied to a particular apparatus and/or that it transforms something into something physically different. It imagines that this will protect fundamental principles from becoming monopolized. The problem with the apparatus part of the standard is that if you say a general purpose computer is a "particular apparatus," simply because you've programmed it (as if a computer is ever not programmed with software), I think it won't be long before no one can write software at all any more. The court doesn't yet see that. The fact that I find Microsoft's argument ridiculous doesn't mean the court will.
While you think that this means that physical apparatus are patentable, I read it differently. The court says

So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.

While this specifically mentions

physical objects or substances

the main portion of it is actually a warning, specifically

We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles.

This is a warning to both the Patent Office and the lower courts that care must be exercised in issuing patents with their limited monopolies. The important word is

prevention.

The Court is warning that patents that are issued must be carefully vetted. Whether the issue is a “fundamental principle”, or our old friend from Amazon, the “obvious” clause, the Patent Office has a legal duty to prevent the issuance of spurious patents.

At least that’s how I read it. It will be interesting to watch going forward.

---
Wayne

http://sourceforge.net/projects/twgs-toolkit/

[ Reply to This | # ]

Contents of cookery books, technical manuals patentable?
Authored by: Anonymous on Thursday, November 13 2008 @ 04:24 AM EST
According to Microsoft's arguments, they are. Just like software loaded into a
computer or hard drive changes electrical or magnetic patterns on a computer and
that may have the effect of the computer causing something physical to happen,
the patterns imprinted on the manuals create physical changes in the
electro-chemical state of neurons in the brain, and these have the physical
effect of the person preparing food or assembling a machine.

The content of the books/manuals are by using Microsoft's logic, patentable.

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief - Updated
Authored by: Anonymous on Thursday, November 13 2008 @ 08:44 PM EST
It should be pretty obvious where this is headed: If it is published on CD-ROM
or other physical medium, then it is patentable, but if it is downloadable
online then it is not. Ergo, commercial software sold in shelves is patentable,
and downloadable software--mostly open source--is not. This reminds me of the
first licensing program offered for SMB--that required a per user license,
discreetly disadvantaging freely downloadable open source and attracting yet
another EU investigation. They've since revised that licensing program to allow
an entity to pay a one time fee.

[ Reply to This | # ]

Bilski - What It Means, Part 4 - The Microsoft Brief - Updated
Authored by: CustomDesigned on Thursday, November 13 2008 @ 09:12 PM EST
"...because a general purpose computer in effect becomes a special purpose
computer..."

Yup, that sums up M$ Windows pretty well.

[ Reply to This | # ]

Do they divulge enough to allow anybody else to implement what they are patenting?
Authored by: mtew on Friday, November 14 2008 @ 12:32 AM EST
I have never looked at a software patent and never intend to do so. However I
have questions:

Do the patents describe the 'software' in sufficient detail for someone else,
from the patent documents and general knowledge, reconstruct a working version
of the code that has all the properties claimed?

A listing of the source code might (but is not guaranteed to) be sufficient, Do
the patents include such information?

One of the things that should be possible is to examine a particular piece of
code and determine if it infringes the patent(s). However, from Microsoft's
propaganda, this is something that has not happened. I suspect that the reason
for this is that there is NOT sufficient disclosure in the patent(s) to do this.
Wouldn't that make the patent(s) invalid?

Or is it that anything that matches all the CLAIMS is infringing?


---
MTEW

[ Reply to This | # ]

Sheet music == source code
Authored by: Anonymous on Friday, November 14 2008 @ 08:21 AM EST
Further to PJ's update,

[ Update: Another programmer sent me an analogy I'd like to share with you:

Programmers are musicians; a computer is an instrument. The concept of programs are the same concept as music and song.

The source form of a program is like sheet music.

If we compared a computer to a pianola... the binary form of the sheet music is a music roll which is loaded into the pianola.

The holes and non-holes in the music roll would be your 1's and 0's entering the CPU.

j

[ Reply to This | # ]

algebraic automata
Authored by: reiisi on Friday, November 14 2008 @ 10:07 AM EST
I think the problem is the number of lawyers thinking that if a mathematician
calls a thing a machine, it must be a machine.

Abstract machines are still abstract, of course.

But if we accept the idea that a programmed computer is a machine different
from a computer programmed differently (or not at all), we are stuck with a
conundrum:

What is the design of the machine, but the source code?

Setting aside the old observation that copyright is more appropriate for
literary works, including source code, if one patents a machine implemented
in source code, there must be rather severe limits on the scope of the patent.

It would be hard enough to figure out how to apply the patent to later
versions of the same program (for instance), how could one extend the
patent to an implementation of the same algorithms in a different language,
or even in the same language but with a different (literary) structure?

Which leads back to indicating copyrights for source code instead of patents,
but I want to ask this again -- how can a patent on a virtual machine
implemented in source code fail to be a patent on the implementation in the
source code? How can such a patent fail to be anything but narrow? And how
can a patent on the underlying algorithms fail to be, by definition, too broad
to be allowed?

[ Reply to This | # ]

"Software" is a set of instructions
Authored by: Tanka Tennen on Friday, November 14 2008 @ 11:14 AM EST
Disclaimer: IANAAL.

One of the central elements of law is definition. Indeed, as PJ has pointed out many times, one of things that people find confusing about the law is how a word that they understand to mean one thing in the common vernacular has a different meaning in a legal context.

Likewise, the courts themselves have trouble with words that are outside the legal context. After all, lawyers' and judges' expertise are in their field, not necessarily the field that they are adjudicating. I believe this lack of appropriate definition is at the heart of the entire "software patents" mess.

I do not believe that adequate definitions of "hardware" and "software" have been conveyed to the Court. At the end of the day, after those of us in technology have gotten over being enamoured by our own cleverness and the need clothe it in "fancy dress" language:

"Hardware" is a physical, general purpose machine. "Software" is a set of instructions for that machine, for the purpose of transforming it into a specific-purpose machine that may then be operated to perform that specific purpose.

Yes, there are some nuances, but really that's fundamentally what these things are. CPUs do not "run software." CPUs execute machine instructions.

With these definitions in hand, the question: "should software be patentable" is clarified to: "should a set of instructions be patentable?" As I said, IANAAL, but it seems to me that the answer is obviously "no."

After all, what is so special about the particular instructions that we call "software," compared to, for example, the instructions for assembling a car on a semi-automated assembly plant? (Side note for /. readers - woo-hoo, car analogy!) Why do the instructions for this machine (the general purpose computer) warrant patentability as opposed to that machine (the assembly plant)? Note that we're NOT talking about the patentability of the machine (computer in its initial state or assembly plant), nor are we talking about the patentability of the physical output of the machine after running the instructions (computer in its final state or car). We are talking about the patentability of the instructions themselves - that is what "software patents" are.

The point that I hope this example illustrates is that once you are operating with appropriately clear definitions, the matter will be clear to the court and ultimately prove a simple task to apply the rule of law to those definitions and these "instruction set patents" will be thrown out; the only reason they were allowed in the first place is due to imprecise language.

---
Ex vitio sapiens aleno emendat suum

[ Reply to This | # ]

copyright vs patents vs DMCA
Authored by: Garick on Friday, November 14 2008 @ 11:59 AM EST
I think patents are a monumental failure in our current system not just for the
reasons often stated here, but also because of the injustice they represent on
the rest of the emerging world. People in the emerging world are deprived of
access to capital, goods, life saving treatments, and more philosophically
access to the benefits of the fruits of their own labor to an extent that does
not exists in technologically developed nations.

Now, patents are supposedly justified by a utility that should be measurable.
The first problem is nobody attempts to adjust terms on patents this should be
the case much the way the Fed adjusts interest rates and measures economic
growth, an government agency within some limits should be able to adjust terms
up and down within different industries. The second problem is little effort is
made to balance the social injustice of the patent system. If it is truely an
economic and social net positive, value is created. That value is created at
the disproportionate expense of certain others. Some of that value should
arguably go to offset the wrongs the system creates in the developing world.

Now, I am am going to admit. I don't think the previous suggestion I made is
good either, but it is at least more _fair_ and I think fairness is not a
criteria that is not examined enough.

As opportunity costs (barriers to entries) become lower. Copyright and
trademarks to me seem to make more sense (even if I think the length of
copyright is far too long), but patents make less and less sense.

It is easier to turn an idea into a thing these days. So the expression of an
idea does perhaps represents a larger fraction of the value that should be
protected (assuming we accept this is true at all) and the 'idea' seems less and
less deserving of protection because opportunity costs _are_ so low.

(Now, I imagine the opportunity cost thing could be argued to be the reason
inventors need stronger patents, but then, in my mind, that is a lost the
argument. That would imply strongly the system would be rewarding inventors at
the _expense of society_ and operating at a net loss for society and should
therefore be abolished on those grounds)

Thanks again, PJ!

I found this article particularly interesting.

Garick

[ Reply to This | # ]

Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )