I'll try to address your article comprehensively, to the extent that I have
any excess free time remaining to do so. But I must make this my last
post on
the subject for a while.
You said:
Fonar says that where the
software doesn't contain the
inventive concept and is only part of the best way
of carrying out the
invention then just disclose the functions of the software
part of the
invention. The reason is that, in this circumstance, the software
is a prior art,
general purpose component of the whole invention. It's just
nuts and bolts.
I don't know whether you are reading a
different Fonar case than I am,
but you must be. The case I am reading
[Fonar Corporation v. General
Electric Company, 107 F.3d 1543 (Fed.
Circ., 1997)] has at issue whether
a patent was invalid based upon GE's
argument that the patent fails to
disclose two software routines, the LGRAD and
GETMAO programs, which the
inventors testified were the best means they knew of
to accomplish MAO
imaging. Fonar argued that the disclosure was adequate to
satisfy the best
mode requirement because the description of a software's
functions is what is
important for a best mode disclosure.
Thus, this issue
is whether the best mode disclosure requirement of
section 112 of the patent
law was met, not whether the software was obvious
under section 103 or whether
the software was unpatentable subject matter
under section 101. The patentees
were arguing that, by disclosing the
functions in the manner done in the
patent, the best mode
requirement was met. Don't confuse the
Court's holdings
in the case with the buzzwords used by anti-patent trolls --
context is
everything here. Despite the use of some of the same buzzwords,
Fonar was not
a case about obviousness or patentable subject matter.
Continuing, you
said:
This is what the judge said:
Let's hit
the pause key there for a moment. I note that you have
emphasized certain
words quoted from the opinion by using italics. Neither the italics
nor the emphasis exists in the actual opinion.
Emphasizing words without
indicating that they are not in the actual
opinion can change the whole meaning
of the section of the opinion you
quote, without justification or support. For
example: I never suggested you
stole the money. Now go through that sentence
seven times, each time
emphasizing a different one of the seven words in turn.
Which one of the
seven differently emphasized sentences did I actually mean,
and what is your
justification for your answer? Did I mean that someone else
suggested that
you stole the money, or perhaps that I said to someone that, in
fact, you stole
the money -- instead of merely suggesting that you did? Or
perhaps that I
suggested that you stole the paintings rather than the money?
(Credit for this
example needs to be given to Meryl Runion's
Speakstrong Method
blog.)
Removing the unexplained emphasis and reverting to the original
text of
the opinion, you said:
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.
The proper part of the above quotation that
should
have been emphasized is the part that says, "... normally,
writing code for
such software is within the skill of the art, not requiring
undue
experimentation, once its functions have been disclosed." [By the
patent application, itself, of course.]
Continuing:
Thus,
flow charts or source code listings are not a
requirement for adequately
disclosing the functions of software. ... Here,
substantial evidence supports a
finding that the software functions were
disclosed sufficiently to satisfy the
best mode requirement.
Thus, the Fonar patent was upheld
as being valid. Also,
the case was about the best mode written
description requirement,
NOT that ".. in this circumstance, the
software is a prior art, general
purpose component of the whole invention." I
think you are completely
wrong about
that, and thus also about everything else
you assert that the Fonar
decision stands for.
You quote from Bilski v.
Kappos:
The Court’s precedents provide three specific exceptions
to §101’s broad patent-eligibility principles: “laws of nature, physical
phenomena, and abstract ideas.” (Chakrabarty). While these exceptions are
not
required by the statutory text, they are consistent with the notion that a
patentable process must be “new and useful.”
But you fail to
quote, from other parts of the same majority opinion of
the
Court:
In the course of applying the machine-or-transformation
test to emerging technologies, courts may pose questions of such intricacy
and
refinement that they risk obscuring the larger object of securing patents
for
valuable inventions without transgressing the public domain. The dissent
by
Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a
result, in deciding whether previously unforeseen inventions qualify as
patentable "process[es]," it may not make sense to require courts to confine
themselves to asking the questions posed by the machine-or-transformation
test. Section 101's terms suggest that new technologies may call for new
inquires. See Benson, supra at 71 (to "freeze process patents to old
technologies, leaving no room for the revelations of the new onrushing
technology[,] . . . is not our purpose"). [emphasis, bracketing, and ellipsis
as
in original Supreme Court opinion]
It is important to emphasize that the
Court today is not commenting on
the patentability of any particular invention,
let alone holding that any of the
above-mentioned technologies from the
Information Age should or should
not receive patent protection. This Age puts
the possibility of innovation in
the hands of more people and raises new
difficulties for the patent law. With
ever more people trying to innovate and
thus seeking patent protections for
their inventions, the patent law faces a
great challenge in striking the balance
between protecting inventors and not
granting monopolies over procedures
that others would discover by independent,
creating application of general
principles. Nothing in this opinion should be
read to take a position on where
that balance ought to be
struck.
Continuing, you cite Gottschalk v. Benson for the
following purpose:
Benson also points out that the math process
run on an old
computer is not a new machine under §101, because it 'can be
carried out in
existing computers long in use, no new machinery being
necessary'.
Not exactly. The opinion states elsewhere
that:
It is argued that a process patent must either be tied to
a
particular machine or apparatus or must operate to change articles or
materials to a 'different state or thing.' We do not hold that no process
patent
could ever qualify if it did not the requirements of our prior
precedents. It is
said that the decision precludes a patent for any program
servicing a
computer. We do not so hold.
This decision also
indicates a possible practical reason for not extending
patent laws to cover
mathematical formulas that have no practical application
in connection with a
digital computer. The court said that, "It may be that the
patent laws should
be extended to cover these programs, a policy matter to
which we are not
competent to speak. The President's Commission on the
Patent System rejected
that proposal that these programs be patentable."
One of the reasons quoted
by the Court decision from the Commission's
report was
that:
The Patent Office now cannot examine applications for
programs because of a lack of classification technique and the requisite
search files. Even if these were available, reliable searches would not be
feasible or economic because of the tremendous volume of prior are being
generated. Without this search, the patenting of programs would be
tantamount
to mere registration and the presumption of validity would be all
but
nonexistent.
Benson was decided in 1972, and the Commission's
report was issued in
1966. Do you think that the state of the computer art has
improved a bit in
the 40 or so years since? Perhaps I should turn the question
around and ask
whether an invention that allowed such a search to take place
should have
been patentable sometime in the interim between the Benson and
Bilski
decisions.
And finally, Parker v. Flook, decided in 1978, says in a
portion of the
opinion that you omitted:
To a large extent our
conclusion is based on reasoning
derived from opinions written before the
modern business of developing
programs for computers was conceived. The youth
of the industry may
explain the complete absence of precedent supporting
patentability. Neither
the dearth of precedent, nor this decision, should
therefore be interpreted as
reflecting a judgment that patent protection of
certain novel and useful
computer programs will not promote the progress of
science and the useful
arts, or that such protection is undesirable as a matter
of policy.
I think I will have to let my part of the
discussion end with this comment.
Unfortunately, I now have to get back to
work that is "useful" in the sense of
§101, which this discussion is not. :-)
It may be weeks or even months before I can participate in this level of
detail in any discussion, but I will still be lurking here and will try to
insert a
concise comment every now and then.
Thanks, PJ and others, for
allowing me to use a platform for trying to
introduce a more constructive level
of debate on this issue.
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