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my comment
Authored by: Ian Al on Wednesday, October 10 2012 @ 07:05 AM EDT
What the Federal Circuit say they are considering is
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
These are two excellent questions. Unfortunately, for decades the Federal Circuit have shown that they don't comprehend the issues. The second question does not say what it means by 'matter'. It should ask how such claims address 35 USC § 101 - Inventions patentable:
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.
The patent law does not say that one invention can be all of 'process, machine, manufacture, or composition of matter' and the USPTO say that there can only be one invention claimed in each patent application. So, one patented invention cannot be a method and a system (aka machine) and a storage medium with software installed in it (aka not an invention).

Some of the groundwork has already been set for the first question. The precise definition set by the courts for a 'computer-implemented invention' is ' where software constitutes part of a best mode of carrying out an invention'. Fonar v. GE give the legal explanation about the framework for inventions that include computer-implementation:
As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.

It is well established that what is within the skill of the art need not be disclosed to satisfy the best mode requirement as long as that mode is described. Stating the functions of the best mode software satisfies that description test. We have so held previously and we so hold today.
To explore the patentability, or not, of software I use the example of a novel patented auto gearbox.

If the chosen mode is mechanical, then the patent is on the arrangement of gears, actuators, clutches and the control mechanism. The invention is the arrangement of the components and there may be some novel components that warrant a patent in their own right. You can replace the control mechanism with a computer (a microcontroller) that electrically interfaces with the actuators. What is patentable is the whole device and not the components. If the original electro-mechanical control mechanism was patentable in its own right then it would be the precise control function that would be patented. Doing the precise control function with a computer should be equally patentable. The software/software function would not be patentable, only the computer/electrical interface/controlling function combination. Most automatic gearbox control mechanisms will not be any more patentable than the gears they manipulate so that even the special purpose computer assembly would be the patent equivalent of a standard nut or bolt.

Although the gearbox is controlled by a microcontroller, the magic is achieved by measuring the gear speeds and electro-mechanically operating the levers The actual software in the microcontroller is irrelevant to the functions claimed for the invention. All that is important is to state what functions related to engine speed, output shaft speed, engine power and similar aspects of the design are carried out by the software.

It is irrelevant what software language is used to program the microcontroller and what software algorithms or functions are used. If the same algorithms and functions are used with some other gearbox, then the other gearbox only infringes if the inventive concept in the patent is also used. The inventive concept is not in the software functions carried out by the software, but is in the functions of the gearbox.

The microcontroller is the best mode of carrying out those control functions, but it could be replaced by mechanical alternatives. The bit in Fonar that is almost universally ignored is that the patented invention may be defined only by the functions if the software is only a part of a best mode and, in that situation, it is only within the skill of the art once its functions have been disclosed.

My auto gearbox example (which I have been using for years to make this point) is the sort of patent that Fonar encompasses. However, Fonar is clear that if software constitutes all of the best mode for carrying out an invention, then disclosing the function is not sufficient for a patent award. Also, if software is all of the carrying out of the invention then by Benson, Flook, Diehr, Bilski and Mayo the software process (or software machine) when considered as a whole must be shown to have an inventive concept.

More seriously, it must be shown that the software, itself, is patentable subject matter under §101’s implied list of excluded subject matter including math, “laws of nature, physical phenomena, and abstract ideas.”.

In other words, anything that is not a novel invention in the area of 'process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' cannot be a patented invention. In Mayo, the Supreme Court has expressed its fury that §101 was being skipped in the rush to patenting.
[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity’” (quoting Diehr),
Using a formula or math algorithm in a computer is limiting that algorithm to a particular technological environment. Computers only work because they can execute software and the software has to be mathematically valid algorithms in its entirety for it to work. All computer programs are math algorithms in each and every part.

For a computer programmer, the variables become his pets and the APIs become his toolbox. Only by an abstract visualisation of all of the 'things' in software, can he write more software. Software starts to use 'objects', 'recognise' 'gestures' and 'play' music. It is not surprising that this abstract world takes on the mantle of reality. Even software users believe they are making 'gestures' control the computer. It's all clever stuff. It is not patentable stuff, under the law.

Since I have revisited so many of my past rants, it would be churlish to miss some other of my fav. raves.

In Microsoft v. AT&T the Supreme Court opined that AT&T's codec was manufactured by installing Windows Media Player in a general purpose computer. In other words, WMP installed in a computer is an infringing machine and not a 'new and useful process, manufacture, or composition of matter, or any new and useful improvement thereof'.

The installed Windows Media Player and computer was opined to be an infringing machine. Fonar either tells us that the software on-a-computer is the whole of the 'best mode of carrying out [the] invention and that defining just the functions of the invention results in an invalid patent, or it tells us that the invention is just the math and laws of nature and not the computer. It is not patentable subject matter. As the Supreme Court said in Mayo v. Prometheus:
Although “laws of nature, natural phenomena, and abstract ideas” are not patentable subject matter under §101 of the Patent Act, Diamond v. Diehr, “an application of a law of nature . . . to a known structure or process may [deserve] patent protection,”. But to transform an unpatentable law of nature into a patent-eligible application of such a law, a patent must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Gottschalk v. Benson. It must limit its reach to a particular, inventive application of the law.
The AT&T patent asserted that the laws of nature are such that human hearing does not require all of the data in a computer digital data file in order to enjoy the content. The patent goes on to say that a math algorithm may be used to reduce the unnecessary data. The codec patent was just the math of taking the digital symbols representing audio and created using the CCITT international standard and reducing the data so produced, but not required to store the audio symbolised by the binary values. The only time this is a useful invention is in a computer memory used for storing the data symbolising the original analogue audio.

The patent says, use the math whenever using computers for audio to get the best out of the laws of nature. It makes no claims about the software or the processor or the computer sound card or the software language or the operating system or the storage media.

The Supreme Court opined that when software that used the laws of nature and included the math algorithm was installed in the memory of a computer that made a patent protectable machine.

In Oracle v. Google, one of the few patents to survive the USPTO patent review was one that claimed that resolving the text-based symbolic references to blocks of code implementing the instruction set of a virtual processor just before the program requiring the instructions was actually run, was the patented invention.

Resolving the symbolic references at any other time did not infringe the invention. Google resolved the symbols in Dalvik when the program to be run using Dalvik was installed in a smartphone and thereby Dalvik did not infringe. The stand-out points raised by the patent are that,

  • Computer software is not 'the best mode of carrying out the invention', it is the only mode because the patent is an invented method of writing computer software. How much innovation and experimentation was required to come up with the invention of the software writing method? Just to remind you what Fonar says:
    As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.
  • Even though a system, a memory and a method were all claimed, the invention did not appear in any accused devices. The programmer used the method to write the Dalvik program and the Dalvik program was deemed to possibly infringe because the method was claimed as a patentable part of the skill of the art of writing software.
  • Even though Microsoft v. AT&T opined that writing of the software using a patented method was not infringing. Oracle asserted that installing Dalvik software that was written using the method of resolving symbols in a smartphone infringed the patented method because it became a protected system and it was in a memory when installed in the smartphone.
  • Using a machine by employing a patented method to manufacture articles has never been patentable subject matter, except when the machine is a computer with a software compiler.
  • The devices manufactured by employing a patented method have never been considered to infringe on the patented method, except when the device is software installed on a computer.
  • The invention was only claimed to be useful when used to write software that was used on a smartphone. It was not a useful and protected invention when used on any other computer.

    In other words, the invention is just about the writing of software and deciding when to resolve symbols and is well within the art of writing software. It is narrowed to the circumstance when the symbols resolved are only text-based symbols symbolising the instruction set of a virtual processor written in software. A virtual processor is an abstract idea of a hardware processor expressed in software algorithms. The virtual processor need not be an abstraction of an actual hardware processor. In this case, it would not be possible to implement an equivalent hardware processor because the architecture of the computer only includes binary numbers to symbolise computer instructions. The hardware processor would have to include a software preprocessor to load and interpret the text-based symbols. Because the invention is a patented method of writing software, it can only be infringed by practising the method.

    Any software manufactured by practising the method cannot, of itself, infringe on the patented method. Software written using a patented method cannot turn into a patent infringing machine depending upon in which computer it is installed. However, that is what is patented in the Oracle patent.

    So, nice questions: shame about the comprehension.

    ---
    Regards
    Ian Al
    Software Patents: It's the disclosed functions in the patent, stupid!

    [ Reply to This | Parent | # ]

  • Yet Another Reason not to patent software
    Authored by: Imaginos1892 on Thursday, October 11 2012 @ 01:53 PM EDT
    Software is NOT a machine, method, or process. It does not function, or transform, or actually
    do anything. It is merely a description of a method or process to be performed by a computer.
    It has to be a very detailed description, and it can be very difficult to get it exactly right, but it
    remains only a description or definition of a series of operations to be done by a machine
    which may not even be specified at the time the program is written. This is in addition to it
    being math and abstract logic.
    --------------
    "Camelot!"
    "Camelot!"
    "Camelot."
    "It's only a model."
    "SSHHHHHHH!!!!"

    [ Reply to This | Parent | # ]

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