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Mathematical algorithm exception? | 179 comments | Create New Account
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Mathematical algorithm exception?
Authored by: macliam on Sunday, March 17 2013 @ 07:43 PM EDT

Is a mathematical algorithm necessarily in itself patent-ineligible subject matter?

Is a process implemented in software necessarily in itself patent-ineligible subject matter?

Quotation from Funk Bros. v. Kalo Inoculant:

For patents cannot issue for the discovery of the phenomena of nature. See Le Roy v. Tatham, 14 How. 156, 175. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. See Telephone Cases, 126 U.S. 1, 532-533; DeForest Radio Co. v. General Electric Co., 283 U.S. 664, 684-685; Mackay Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94; Cameron Septic Tank Co. v. Saratoga Springs, 159 F. 453, 462-463.

Quotations from Gottschalk v. Benson:

The Court stated in Mackay Co. v. Radio Corp., 306 U. S. 86, 94, that “[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” That statement followed the longstanding rule that “[a]n idea of itself is not patentable.” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. “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.” Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U. S. 127, 130, “He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the present case deals with a “process” claim. But we think the same principle applies.

[…]

It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

Quotations from Parker v. Flook:

Respondent applied for a patent on a "Method for Updating Alarm Limits." The only novel feature of the method is a mathematical formula. In Gottschalk v. Benson, 409 U. S. 63, we held that the discovery of a novel and useful mathematical formula may not be patented. The question in this case is whether the identification of a limited category of useful, though conventional, post-solution applications of such a formula makes respondent's method eligible for patent protection.

[…]

As the Court of Customs and Patent Appeals has explained, “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” In re Richman, 563 F. 2d 1026, 1030 (1977).

[…]

Respondent's process is unpatentable under 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

[Note that the dictum that “once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention” was repudiated in Diehr.]

Quotations from Diamond v. Diehr:

We granted certiorari to determine whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U. S. C. § 101.

[…]

In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a general purpose digital computer. We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.

[…]

In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.

[…]

Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Gottschalk v. Benson we noted: “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.“ 409 U. S., at 71. Similarly, in Parker v. Flook we stated that “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.“ 437 U. S., at 590. It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e. g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S. 45 (1923); Cochrane v. Deener, 94 U. S. 780 (1877); O'Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone explained four decades ago:

While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86, 94 (1939).[11]
We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by § 101.

____________

I suggest that relying on the above quotations (and any similar quotes from Benson, Flook and Diehr) for the proposition that there is an established judicial exception for mathematical algorithms per se is wishful thinking. Accordingly I now present an argument that mathematical algorithms are not necessarily patent-ineligible.

We start with 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, supra, at 309, 100 S.Ct. 2204. 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.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years. See Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853). The concepts covered by these exceptions are “part of the storehouse of knowledge of all men… free to all men and reserved exclusively to none.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

[…]

Any suggestion in this Court's case law that the Patent Act's terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas. See Parker v. Flook, 437 U.S. 584, 588-589, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978). This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute's purpose and design. Concerns about attempts to call any form of human activity a “process” can be met by making sure the claim meets the requirements of § 101.

Then on to Mayo v. Prometheus:

The Court has long held that this provision contains an important implicit exception. “[L]aws of nature, natural phenomena, and abstract ideas” are not patentable. Diamond v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981); see also Bilski v. Kappos, 561 U.S. ___, ___, 130 S.Ct. 3218, 3233-3234, 177 L.Ed.2d 792 (2010); Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853); O'Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); cf. Neilson v. Harford, Webster's Patent Cases 295, 371 (1841) (English case discussing same). Thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of ... nature, free to all men and reserved exclusively to none.’” Chakrabarty, supra, at 309, 100 S.Ct. 2204 (quoting Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948)).
“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.
The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Thus, in Diehr the Court pointed out that “‘a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.’” 450 U.S., at 187, 101 S.Ct. 1048 (quoting Parker v. Flook, 437 U.S. 584, 590, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)). It added that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diehr, supra, at 187, 101 S.Ct. 1048. And it emphasized Justice Stone's similar observation in Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 59 S.Ct. 427, 83 L.Ed. 506 (1939):
“‘While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.’” 450 U.S., at 188, 101 S.Ct. 1048 (quoting Mackay Radio, supra, at 94, 59 S.Ct. 427).
See also Funk Brothers, supra, at 130, 68 S.Ct. 440 (“If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end”).

So now I move in for the kill.

In the most recent cases related to patent-eligibility under Section 101, namely Bilski and Mayo, the Supreme Court affirmed that laws of nature, natural phenomena and abstract ideas are not in themselves patent-eligible subject matter. In Bilski, the Court declined to recognise an additional per se exclusion for business methods. This would imply that the Supreme Court would not now recognize and affirm an exception for mathematics per se. If mathematical subject matter is not patent-eligible, then the justification for this must be on the grounds either that it is the expression of a law of nature, a natural phenomenon, or an abstract idea, or else that it is in itself an abstract idea. Benson, Flook and Diehr suffice to establish that mathematical formulae and equations are not patent-eligible under Section 101, and moreover the formulae and equations at issue in those cases represent laws of nature or abstract ideas. It is certainly established that some mathematical algorithms are patent-ineligible, and that, in particular, that algorithms for converting binary-coded decimal representations of integers to binary are not patent-eligible.

Let us suppose that a mathematical algorithm is not a law of nature. Is it then guaranteed to be an “abstract idea”? To show that it is an abstract idea, it is surely not sufficient to show merely that it is abstract. An idea must surely be comprehensible. (Note that “comprehensible” derives from the Latin verb comprehendere, which means “to grasp, catch, seize, arrest”.) Now, in order that an idea be comprehensible, minds must be able to conceive and retain the idea as a whole. Mathematical formulae and equations meet this requirement. Similarly a simple mathematical algorithm of the sort that might fairly be described as a “procedure for solving a given type of mathematical problem” (Diehr) is likely to be comprehensible. If schoolchildren, university students, accountants etc. can learn a mathematical algorithm and apply it to carry out calculations (without the need to refer continually to instruction manuals etc.), then such an algorithm is surely comprehensible and should most likely be capable of being categorized as an abstract idea.

Moreover, it should be noted that Benson states that

Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.

Now an abstract intellectual concept must surely be capable of being conceived. The Latin verb concipere means “to absorb, perceive, conceive, imagine, understand, become pregnant”. It surely follows that abstract intellectual concepts must be comprehensible.

Therefore I would suggest that Benson, Flook and Diehr only affirm that those mathematical algorithms that can be conceived (i.e., understood and internalized by the human mind) are not patent-eligible subject matter. This conclusion is surely consistent with the proposition that algorithms and processes whose steps can be carried out in the human mind (with or without the assistance of pencil and paper) are not patent-eligible subject matter.

But now suppose that data is stored in the "memory" of a computing device, and that the internal state of the computing device evolves in accordance with a process completely determined by the stored data in accordance with logical principles, and that, in principle, in principle, the outcome of the process could be represented by a formula in some flavour of formal logic (that might be capable of being represented electronically and stored on an electronic storage device, though being in itself incapable of being grasped as a whole by a human mind). Do the holdings and dicta in Benson, Flook and Diehr suffice to establish that such a process is, per se not patent-eligible subject matter?

According to the Supreme Court in Mayo:

The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.

This would caution against extrapolating from Benson, Flook, Diehr the principle that an algorithm whose evolution in time is determined in terms of rules expressible through formal logic must necessarily be patent-ineligible subject-matter. Accordingly these cases provide little if any ground for asserting that a process implemented in software that implements a ‘mathematical’ algorithm must therefore also be in itself patent-ineligible subject-matter.

[ Reply to This | Parent | # ]

Watches and clocks: patent-eligible or not?
Authored by: macliam on Sunday, March 17 2013 @ 10:33 PM EDT
Are watches and clocks patent-eligible?

Should John Harrison have been able to patent his chronometers had patent law
been well-established in his time?

Ignoring questions of novelty, would a traditional mechanical watch with an hour
hand and minute hand be patent-eligible?

If that mechanical watch were replaced by a digital watch or clock incorporating
a microprocessor that took into account calendars, leap years, maybe also leap
seconds if predictable or if information obtainable from a WiFi signal, and if
that digital watch displayed the date and time in figures and letters, would
such a watch or clock be patent-eligible. The only output would be the time
display. Would that display be categorized as an identificant or a referent.
If I understand the semiotic principles you expound, it seems to me that the
display would be an identificant, and the corresponding referent would be
somewhat hard to pin down.

[ Reply to This | Parent | # ]

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